Refusal of application for a European Union trade mark

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

Alicante, 28/11/2016

REDL LIFE SCIENCE PATENT ATTORNEYS

Gerda Redl

Donau-City-Str. 11

A-1220 Wien

AUSTRIA

Application No:	015473911
Your reference:	TS001EUtm
Trade mark:	TRANSFORM SCIENCE
Mark type:	Word mark
Applicant:	Transform Science GmbH Jesuitensteig 24A/3 A-1230 Vienna AUSTRIA

The Office raised an objection on 14/06/2016 pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 13/07/2016, which may be summarised as follows:

1. The trade mark does not lack distinctive character.

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 waive the objection for the following services:

Class 35 Business management; business management services, including business management consulting, planning, assistance and analysis; business consultant and advisory services in the field of Life Sciences, including business strategy, organization performance, business project management and business related policy areas; professional business consultation relating to the setting up of businesses, development of economic promotions and improvement of business performance; business administration; business administration services in the field of Life Sciences; interim business management; business project management; marketing; lobbying services for commercial purposes.

The objection is maintained for the remaining services, namely:

Class 42 Scientific and technological services and research in the field of Life Sciences; scientific project and quality management in the field of Life Sciences.

The trade mark does not lack distinctive character

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

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).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

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 services 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 expression ‘TRANSFORM SCIENCE’ does not bear any meaning and only makes sense as a phrase within a sentence.

The Office does not share this opinion. As mentioned in the Notice of grounds for refusal, it is under Article 7(b) EUTMR sufficient that the semantic content of the expression indicates a characteristic of the services relating to their market value. (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198, § 31).

The relevant consumers would perceive the word ‘science’ as a subject that is studied carefully using scientific methods. Seen in connection with the word ‘science’ the relevant consumers will understand the word ‘transform’ as something that undergo a transformation, in other words ‘to change’, ‘to alter’ or ‘to convert’, as acknowledge by the applicant. The expression ‘TRANSFORM SCIENCE’ therefore gives a clear indication that a specific studied subject undergoes a transformation or change.

The fact that the word ‘transform’ or the term as a whole can have different meanings does not alter the fact that the mark is devoid of distinctive character.

The fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s services from those of a different commercial origin.

(15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

The applicant argues that the mark is not fanciful nor requires considerable mental efforts of the relevant consumers to perceive the laudatory meaning of the expression. Contrary to the opinion of the applicant, the Office considers ‘TRANSFORM SCIENCE’ as a laudatory message, which function is to highlight positive aspects of the services concerned. Namely, that the scientific services, such as technological services and research within the field of Life Sciences, uses the knowledge on a subject that is studied carefully to change or alter results.

Scientific services and research, such as those applied for in Class 42, are usually based on changes or alterations with the aim of obtaining better results and the expression ‘TRANSFORM SCIENCE’ therefore indicates positive aspects of those services.

Therefore, the Office maintains that there is a direct and specific relationship between the services in Class 42 and the expression ‘TRANSFORM SCIENCE’ and that the expression will be perceived as a laudatory message.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 15 473 911 is hereby rejected for the following services:

Class 42 Scientific and technological services and research in the field of Life Sciences; scientific project and quality management in the field of Life Sciences.

The application may proceed for the remaining services, namely:

Class 35 Business management; business management services, including business management consulting, planning, assistance and analysis; business consultant and advisory services in the field of Life Sciences, including business strategy, organization performance, business project management and business related policy areas; professional business consultation relating to the setting up of businesses, development of economic promotions and improvement of business performance; business administration; business administration services in the field of Life Sciences; interim business management; business project management; marketing; lobbying services for commercial purposes.

Class 36 Capital investments; investment business services; financial and fiscal evaluations and reviews; information and knowledge distribution in financial matters, namely financial advisory and financing services, financial analysis, information on state and private funding, particularly for start-ups, small and midsize companies.

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.

Anja Pernille LIGUNA