Refusal of application for a European Union trade mark

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

Alicante, 12/12/2016

Katarzyna Binder-Sony

First Floor, 3 More London Riverside

London SE1 2RE

REINO UNIDO

Application No:	015499817
Your reference:	451270
Trade mark:	MTHFRSUPPORT
Mark type:	Figurative mark
Applicant:	MTHFR SUPPORT LLC 4 WOLLOMBI RD, NORTHBRIDGE, SYDNEY 2063 AUSTRALIA

The Office raised an objection on 27/06/2016 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 29/08/2016, which may be summarised as follows:

• The applicant claims that the goods at issue are aimed at the generic public since the goods are also sold via online means and, therefore, anyone can buy them without any prescription. The applicant claims low awareness of the public.

• The mark applied for will not have any meaning for the average public. The public will see it as an inventive term without any meaning.

• There is no such word as ‘mthfr’ or ‘mthfrsupport’ in daily English or any language.

• The goods are dietary supplements to reduce vitamin e.g. B vitamin deficiencies.

• The mark applied for is a figurative mark in unique style and, at least, because of the graphic elements it is distinctive. The letters are presented in the way which requires substantive amount of time to recognize them, e.g. a letter ‘M’ looks like a wave, ‘FR’ looks like one figurative element, ‘PP’ look more like hooks or question marks. As such, the unique type of fonts passes minimum distinctiveness requirements.

• The mark is a fanciful and unusual artwork showing distinctiveness in terms of article 7(1)(b) EUTMR.

• The mark is not purely descriptive with respect to applied goods as does not consist exclusively of signs to designate the kind and intended purpose of the goods or of rendering of the service or other characteristics of the goods. The mark is only indirectly associated with the goods and does not describe them directly.

• The sign applied for is more than just a simple combination of two words or its sum. As a whole it acquires its own meaning, an independent meaning and it is capable of distinguishing the goods of the applicant from those of other undertakings.

• The applicant invokes some earlier trade marks consisting of the term ‘support’ registered by the Office.

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.

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.

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).

For a sign to fall within the scope of the prohibition of that provision, it must indicate a sufficiently direct and concrete link to the goods in question to enable the public concerned immediately, and without further thought, to perceive a description of the goods in question or of one of their characteristics (27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 40 upheld on appeal by 05/02/2004, C-150/02 P, Streamserve, EU:C:2004:75 and 22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 25).

As regards, the applicant’s claim that the goods at issue are aimed at the generic public since the goods are also sold via online means and, therefore, anyone can buy them without any prescription. The applicant claims low awareness of the public. The Office notes that the goods as applied for: nutraceuticals for use as a dietary supplement, even if considered that they may be directed also to average public, as these are pharmaceutical preparations, the average public’s degree of attention will be relatively high, whether or not issued on prescription. Non-professionals show a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health. Therefore, the applicant’s claim that the awareness of the average public will be low has to be rejected.

Even though the attentiveness of the average public may not be the same as in case of professionals in the field of medicine, in this case, this does not imply that the mark applied for is less subject to any absolute ground of refusal. The terms of the sign applied for can be fully understood by professionals, that compose the relevant public, as the sign includes words which relate to the field in which the doctors or pharmacists are active.

As regards the applicant’s claim that the mark applied for is a figurative mark in unique style and, at least because of the graphic elements, it is distinctive. According to the applicant, the letters are presented in the way which requires substantive amount of time to recognize them, e.g. a letter ‘M’ looks like a wave, ‘FR’ looks like one figurative element, ‘PP’ look more like hooks or question marks. In this context the Office points out that where standard typefaces incorporate elements of graphic design as part of the lettering, those elements need to have sufficient impact on the mark as a whole to render it distinctive. In the sign at issue the figurative elements are not sufficient to distract the attention of the consumer from the descriptive meaning of the word elements nor likely to create a lasting impression of the mark. The font of the letters, contrary to the example invoked by the applicant of ‘FLAVOUR AND AROMA’, is not fanciful to depart from the standard typeface and, such, to render the sign distinctive as a whole. The font of the letters is not able to attract the consumer’s attention and to let the sign fulfil the function of the commercial origin of the product in question. This font is not sufficient to confer the required minimum degree of distinctive character on the trade mark applied for so as to make it eligible for registration.

The mark at issue comprises two elements that are recognizable and comprehensible. The applicant argues that ‘mthfr’ and ‘mthfrsupport’ do not exist in daily English or any language. The Office in its notification of 27/06/2016 defined the words composing the sign. The Office referred to https://www.acronymfinder.com/Methylenetetrahydrofolate-Reductase-%28gene-mutation%29-%28MTHFR%29.htm defining ‘MTHFR’ as an abbreviation for ‘Methylenetetrahydrofolate Reductase (gene mutation)’. The applicant argued that the public will see the sign applied for as an inventive term without any meaning. In the letter submitted to the applicant, the Office relied on the meaning of the abbreviation ‘mthfr’ based on generally available information, without the need to refer to specialist publications. It has to be noted that the abbreviation is used universally both in publications designed for specialists and in information for patients

The applicant claims that the goods are dietary supplements to reduce vitamin e.g. B vitamin deficiencies. According to the information found on the internet on ‘mthfr’: ‘When you have mthfr gene mutations you lack the enzymes responsible for the conversion of folate that you eat into the active form 5-Methyltetrahydrofolate, this important reaction is then directly involved in the utilization of vitamin B12 which is vitally important in the processing of homocysteine. So, if your vitamin B12 is not working properly because your folate metabolism isn’t working properly this causes homocysteine imbalances which is considered a serious health problem for anyone especially for those with mthfr gene mutations (https://mthfrgenehealth.com/mthfr-vitamin-b12/ ). ‘(…) about 50% of the population is estimated to have at least one mutation at the MTHFR gene and 10% has two mutations, meaning they're less able to methylate B12 or convert cyanocobalamin to methylcobalamin (…) In fact, the more mutations one has at this gene, the less able one is to make this conversion, requiring supplementation with Methyl-B12, Folate, and B6 (http://www.mindbodygreen.com/0-10776/everything-you-need-to-know-about-b12-deficiency.html ). Therefore, this shows that the sign applied for is descriptive with respect to the goods covered by the mark, contrary to the applicant’s allegations.

As to the applicant’s argument that the sign applied for is more than just a simple combination of two words or its sum. The Office notes that a trade mark consisting of terms each of which is descriptive of characteristics of the goods in respect of which registration is sought is itself descriptive of the characteristics of those goods, unless there is a perceptible difference between the mere sum of its parts. That assumes that because of the unusual nature of the combination in relation to the goods the sign creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the sign is more than the sum of its parts.

The Office does not consider that the combination ‘MTHFRSUPPORT’ would be perceived as more than the sum of its parts. The Office in its previous notification considered that, in relation to the goods applied for, the mark would be seen merely as information that the goods applied for help people with problems relating to synthesis of MTHFR enzyme. This is also confirmed by the applicant stating that the goods at issue are dietary supplements to reduce vitamin e.g. B vitamin deficiencies.

It is considered that the expression ‘MTHFRSUPPORT’, without any semantic modification, does not imbue it with any additional characteristic such as to render the sign, taken as a whole, capable of distinguishing the applicant’s goods from those of other undertakings.

Thus, taking into account the above, the Office notes that when seeing the applicant’s sign affixed to the goods applied for and as claimed by the applicant that the goods are aimed to reduce vitamin deficiencies, the relevant public will perceive, without any hesitation, that these are products that help with problems relating to synthesis of MTHFR enzyme. The message conveyed by the mark is not vague in some way or other; it is not imprecise or akin to a ‘suggestive’ sign.

In consequence, the sign directly informs the relevant public as to the kind and intended purpose of the goods applied for. The descriptive content of the sign applied for is clear and unequivocal with respect to the goods concerned, as confirmed also by the applicant. When being confronted with the expression applied for, the relevant public will not require any analytical effort to grasp its descriptiveness which is based on the common meanings of the two words, ‘MTHFR’ and ‘SUPPORT’. There are no reasons to believe that the relevant public will understand the sign applied for as nothing other than having the plain meaning of ‘methylenetetrahydrofolate reductase help’ .

Therefore, the Office finds that, for the English-speaking part of the public, the mark at issue, taking account all its components and considered as a whole, affords a link with the goods to such an extent that this nexus is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) and 7(2) EUTMR.

Since the sign for which protection is sought will be seen as a purely descriptive indication in respect of the goods claimed, it is therefore, according to case-law, also devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C 265/00, Biomild, EU:C:2004:87, § 19; and 12/02/2004, C 363/99, Postkantoor, EU:C:2004:86, § 86). The sign is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (03/07/2003, T 122/01, Best Buy, EU:T:2003:183, § 20).

The fact that the sign is composed of the abovementioned words that inform the public of a characteristic of the relevant goods, prevents the sign in question from being perceived as a badge of commercial origin.

As regards the applicant’s argument that trade marks containing the word ‘SUPPORT’ have been registered by EUIPO, these are not comparable signs to the mark at issue. 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).

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 15 499 817 is hereby rejected for 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.

Marzena MACIAK