Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 16/09/2016

LONDON IP LTD

Lymington Business Centre Solent House Cannon Street

Lymington SO41 9BR

REINO UNIDO

Application No:	015194004
Your reference:	K721/EM/Oncologica/ONCOFOCUS
Trade mark:	ONCOFOCUS
Mark type:	Word mark
Applicant:	Oncologica UK Limited Suite 15-16, The Science Village , Chesterford Research Park, Chesterford CB10 1XL REINO UNIDO

The Office raised an objection on 01/04/2016 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 27/05/2016, which may be summarised as follows:

1. a minimal degree of distinctiveness is required for a trademark to be registrable (EUROCOOL). The mark must be assessed as a whole taking into account all relevant factors.

2. It is established case law that a trademark cannot be refused simply because it conforms to English grammar or semantics. It should be assessed based on whether there is a 'sufficiently direct and specific link' between the sign and goods or services in question to enable the relevant public to immediately perceive, without further thought, a description of one of the characteristics of the goods or services concerned (see CFI, T-345/99, "Trustedlink", paragraph 35). As such, there must be a sufficiently close relationship between the services covered and the mark ONCOFOCUS (see CFI, T-219/00, "Ellos", paragraph 35).

3. Registration of a sign as a trademark is not subject to a finding of a specific level of linguistic orartistic creativity or imaginativeness on the part of the proprietor of the trademark. It suffices that the trademark should enable the relevant public to identify the origin of the goods or services protected thereby and to distinguish them from those of other undertakings Applying this guidance to the trade mark ONCOFOCUS, we submit that the mark is distinctive and non-descriptive for the services included in the specification.

4. the mark ONCOFOCUS has been accepted as registrable by the UKIPO (please find attached a copy of the registration certificate).

Pursuant to Article 75 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

The applicant requests the opportunity to file new observations under Rule 71 CTMIR. The Office has given the applicant two month time n to submit its observations in reply to the objection sent on 01/04/2016. Furthermore, the applicant has not invoked Article 7(3) CTMR in order to obtain additional time to provide evidence of use. Under these circumstances, the Office refuses the applicant’s request.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C 329/02 P, SAT/2, EU:C:2004:532, § 25).

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR

pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

(23/10/2003, C 191/01 P, Doublemint, EU:C:2003:579, § 31).

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T 222/02, Robotunits, EU:T:2003:315, § 34).

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially.

(12/02/2004, C 363/99, Postkantoor, EU:C:2004:86, § 102).

As regards the applicant’s argument that the word cannot be refused simply because it conforms to English grammar or semantics, as stated in the Office previous notification, the link between the word ONCOFOCUS and the services related has been found to be direct enough.

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the [applicant][holder] to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T 194/01, Soap device, EU:T:2003:53, § 48).

As regards the national decisions referred to by the applicant, according to case-law:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T 106/00, Streamserve, EU:T:2002:43, § 47).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 15 194 004 is hereby rejected.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

Agueda MAS PASTOR