Refusal of application for a European Union trade mark

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

Alicante, 10/10/2016

Weickmann & Weickmann Patentanwälte - Rechtsanwalt PartmbB

Richard-Strauss Str. 80

D-81679 München

ALEMANIA

Application No:	015341514
Your reference:	62086WEM/UHzi
Trade mark:	VANGUARD
Mark type:	Word mark
Applicant:	Contego Medical, LLC 3921 Sunset Ridge Road Raleigh 27607 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 28/04/2016 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 10/06/2016, which may be summarised as follows:

1. The trade mark is not descriptive.

2. The trade mark is distinctive.

3. The Office has previously registered identical and comparable trade marks.

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.

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

1. The trade mark is not descriptive

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).

In its letter of 10/06/2016 the applicant argues, that the mark consists of an unusual word, which is not in everyday use in the English language, and refers, inter alia, to the judgment of 27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 30, and to an internet search performed by the applicant, enclosed as enclosures 1 and 2.

Firstly, the judgment of 27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 30, referred to by the applicant does not state that the mark ‘QUICK’ is descriptive or non-distinctive because it is in everyday use in the English language, and because it is derived from the English language. In § 30, the court made an assessment of the relevant public for which the absolute grounds of refusal must be assessed. In that case, the court found that the relevant public was the English-speaking public because the word ‘QUICK’ is derived from the English language and is in everyday use in the English language. However, when assessing which part of the public is relevant, it cannot be seen as an acknowledged criterion that the word(s) composing the mark has to derive from or be in everyday use in a language.

In the present case, the word in question is clearly an English word. Even if it derives from another language, the English definition of the word is clearly evident from English dictionaries. (¹) It cannot be seen as a criterion that the word composing the mark must be in everyday use; moreover, it cannot be seen, as ascertained by the applicant that the word is not in everyday use. Therefore, the Office maintains that the relevant public for which the absolute grounds of refusal must be assessed is the English-speaking public.

In relation to the assessment of the absolute grounds for refusal, whether or not the words composing the mark are in everyday use cannot be seen as relevant; if it is assessed that the relevant public will perceive the mark as descriptive of the goods and services in question, a mark must be refused registration.

In the present case, the mark merely indicates that the goods for which registration is sought have a position at the forefront of new developments; therefore, it describes a quality of the goods in question.

The applicant elaborates about the many different meanings the mark may have; however, for a trade mark to be refused registration under Article 7(1)(c) EUTMR,

it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added.)

Therefore, as long as the trade mark is descriptive of the goods in one of its meanings, it should be refused.

It is therefore irrelevant for the assessment of the mark in question that it could also be understood in a military meaning. The mark ‘VANGUARD’ can, inter alia, be defined as ‘a position at the forefront of new developments or ideas’ and, in relation to the goods, the relevant consumer would perceive the mark as indicating that the medical devices and medical stents are at the forefront of new developments.

The applicant argues that the mark does not give information about the purpose of the goods and that the use of the mark is unusual, which is why it cannot be considered as describing the quality of the goods.

It is the Office’s clear and unambiguous position that the mark cannot be seen as sufficiently unusual so as not to be perceived as giving information about the quality of the goods in question. It should be recalled that the Office has not claimed that the mark indicates the purpose of the goods in question.

2. The trade mark is distinctive

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

In addition, in view of the nature of some of the goods in question, even if the awareness of part of the relevant public is high, given the relatively high technical level and cost of the services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 24).

It must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

The applicant argues that the mark is unusual and not customary in English-speaking countries, which is why the mark must be seen as distinctive.

The Office maintains its position and finds that the mark would be perceived as laudatory, merely conveying the message that the medical devices and medical stents demonstrate the newest developments within their areas. The mark would therefore not be perceived as indicating the commercial origin of the goods in question.

In addition, the Boards of Appeal has, in its decision of 19/11/2015, R 0069/2015-2, VANGUARD, § 35, stated that:

Thus, the term ‘VANGUARD’ is also immediately perceived as laudatory, the purpose of this being to highlight the positive qualities of the contested goods or services. Independent of its use in the specific fields at issue, the term ‘VANGUARD’ clearly conveys the message that the IR holder’s goods and services are created by or provided by the leaders in their field (concerning specific projectiles and advertising or distribution of advertising material respectively). Such a message is devoid of distinctive character.

3. The Office has previously registered identical and comparable trade marks

The applicant submits that the Office has previously registered identical trade marks and marks containing the word ‘VANGUARD’ for various classes.

Firstly, the Office submits that even if it has previously registered a number of similar or identical registrations, according to settled case law, ‘decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35).

‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

The Office is therefore not bound by any of its previous decisions. In addition, the Office refers to the decision of the Boards of Appeal regarding the mark ‘VANGUARD’ mentioned above.

Further proceedings

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 15 341 514 is hereby rejected for all the goods claimed.

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.

Cecilie Leth BOCKHOFF