Refusal of application for a European Union trade mark

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

Alicante, 26/05/2017

VIERING, JENTSCHURA & PARTNER mbB

Grillparzerstraße 14

D-81675 München

ALEMANIA

Application No:	015548423
Your reference:	WZ62279
Trade mark:	EXACT IMAGING
Mark type:	Word mark
Applicant:	Exact Imaging Inc. 7676 Woodbine Avenue, Unit 15 Markham Ontario L3R 2N2 CANADÁ

The Office raised an objection on 07/07/2016 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.

Following an extension of the time limit, the applicant submitted its observations on 07/11/2016, which may be summarised as follows:

1. The specification of goods and services has been limited. The mark should be assessed in relation to the new list.

2. The relevant consumers are highly skilled professionals, who are well informed about the brands under which the goods and services in question are distributed and are very careful when selecting them, especially considering that they are expensive health-related goods and services.

3. ‘EXACT IMAGING’ is not a definite description of characteristics of the goods in question, especially as regards biopsy apparatuses, maintenance and/or training services.

4. The relevant consumers will not perceive the mark as conveying the meaning of accurate production of clinical images but as a clever play on words. ‘EXACT IMAGING’ belongs to the group of ‘speaking trade mark’

5. Given that the information transmitted by the mark about the goods and services is indirect and vague and that one or more mental steps have to be taken in order to reach a conclusion as to the nature of the goods and services, ‘EXACT IMAGING’ is merely suggestive.

6. Competitors are not dependent on using the mark ‘EXACT IMAGING’.

7. Not being descriptive the mark does not lack distinctive character. Even a minor degree of distinctiveness is sufficient to allow a trade mark to be accepted for registration.

8. ‘EXACT IMAGING’ has passed the examination procedure in Canada without any objection being raised.

9. EUIPO has accepted similar marks in the past and the principle of equal treatment should apply.

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.

1. Before dealing with the arguments regarding the mark’s alleged prima facie inherent distinctiveness, the Office must clarify that the specification of goods and services has been amended in accordance with the request made by the applicant on 29/08/2016, to the following:

Class 9 Software for ultrasound and biopsy apparatus.

Class 10 Medical ultrasound and biopsy apparatus; Ultrasound scanners for medical purposes, ultrasound imaging devices for medical purposes, ultrasound machines for medical purposes, ultrasound transducers for medical purposes, ultrasound probes for medical purposes, ultrasound transducer accessories for medical purposes, ultrasound probe accessories for medical purposes, ultrasound consoles for medical purposes, ultrasound biopsy apparatus for medical purposes; ultrasound biopsy apparatus.

Class 37 Maintenance of medical ultrasound and biopsy apparatus.

Class 41 Training services for using medical ultrasound and biopsy apparatus.

After giving due consideration to the applicant’s arguments and limitation, 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).

2. The descriptiveness of a sign must be assessed first, by reference to the goods or services in respect of which registration of the sign is sought and, second, by reference to the perception of the section of the public targeted, which is composed of the consumers of those goods or services.

As already explained in the notice of grounds for refusal the goods and services covered by the mark applied for are specialised goods and services and are mainly aimed at a professional public. Moreover, since the mark ‘EXACT IMAGING’ consists of English words, the relevant public with reference to which the absolute ground for refusal must be examined is the English-speaking consumer in the Union.

Next, it must be borne in mind that how the relevant public perceives a trade mark is influenced by the consumers’ level of attention, which is likely to vary according to the category of goods or services in question. In view of the nature of the goods and services applied for, and as mentioned in the provisional refusal, the awareness of the relevant public will be high.

In addition, in view of the nature of some of the goods and 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).

In this respect, it is to be noted that the fact that the consumer pays particular attention when purchasing specific goods and services does not necessarily mean that the ‘descriptiveness threshold’ of the sign must be ‘higher’ to a certain extent in order for that sign to fall under the ground for refusal set out in Article 7(1)(c) EUTMR (by way of analogy, 12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48). Even taking into account that the public concerned is considered to consist of especially circumspect individuals, this especially high degree of attention does not mean that the absolute grounds for refusal should be applied to the mark in a more relaxed manner (11/10/2011, T-87/10, Pipeline,EU:T:2011:582, § 27–28). In the present case, the Office cannot find any valid reason to consider that the greater degree of attention paid by the relevant public constitutes a determining factor as to whether or not the sign will be perceived as descriptive.

Furthermore, it has to be put forward that there is no evidence to suggest that the relevant professional consumer in the area of the goods and services claimed would be particularly trade mark ‘educated’ and would instantly perceive ‘EXACT IMAGING’ as a trade mark in relation to the applied for goods and services rather than as a descriptive message.

3. The mark applied for is exclusively composed of two English words ‘EXACT’ and ‘IMAGING’. The combination of these words is not meaningless, but merely a combination of two words, each of which maintains its own separate meaning and written form, as confirmed by the definitions and explanations provided in the provisional refusal. The sign in question contains readily identifiable and ordinary words from the English Language. There is nothing unusual about the structure of the sign at hand. The combination follows ordinary composing and spelling rules of English grammar. There is no unusual variation as to syntax or meaning. The sign as a whole is immediately intelligible to English speakers as a meaningful expression : accurate production of a clinical image (using x-rays, ultrasound, CT, MRI, radionuclide scanning, and thermography; especially, cross-sectional imaging, such as ultrasonography).

Contrary to what the applicant seems to believe, the expression resulting from the combination of the abovementioned components does not create an impression which is sufficiently far removed from that produced by the elements ‘EXACT’ and ‘IMAGING’.

Therefore, and bearing in mind the definitions and analysis already provided, when ‘EXACT IMAGING’ is applied to the goods and services of reference (including e.g. software for ultrasound and biopsy apparatus, medical ultrasound and biopsy apparatus, devices and accessories; maintenance of and training for medical ultrasound and biopsy apparatus) the relevant consumers will perceive this expression as indicating that the goods and services on offer are, are intended for or concern an accurate production of clinical images (using x-rays, ultrasound, CT, MRI, radionuclide scanning, and thermography; especially, cross-sectional imaging, such as ultrasonography).

This holds true also as regards biopsy apparatus and maintenance and training services concerning medical ultrasound and biopsy apparatus. More precisely, and contrary to what the applicant seems to believe, a biopsy test can be directly involved with the use of imaging procedures and devices. As a matter of fact different medical procedures such as breast biopsy imaging, lymph node biopsy imaging, prostate biopsy imaging and node biopsy imaging, among others, combine both biopsy procedures and imaging devices. Stereotactic biopsy, for example, is a biopsy procedure that uses a computer and imaging performed in at least two planes to localize a target lesion (such as a tumour or micro calcifications in the breast) in three-dimensional space and guide the removal of tissue for examination by a pathologist under a microscope (for purely illustrative purposes see Annex 1). Likewise, maintenance services can be specifically intended for accurate production of clinical images (accurate imaging) and the content or subject matter of training services may be the accurate production of clinical images.

Furthermore,

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).

Bearing in mind the relevant context of reference, it is undeniable that the claim that the goods and services of offer are (high quality) goods and services specifically involved with the production of clinical images that are characterised by accuracy and precision is one of the characteristics that the relevant consumer will deem relevant when considering the goods and services on offer.

Thus, contrary to the applicant’s contention, the expression ‘EXACT IMAGING’ is particularly suitable to describe desirable characteristics of the goods and services which remain designated, such as their kind, intended purpose or other characteristics of the goods and services in question such as their subject matter or content.

Moreover, such a claim is undoubtedly attractive from a commercial point of view and immediately gives information about a clear advantage. It cannot be denied that such a claim represents a relevant quality desired by the relevant consumer, who for practical reasons would consider it highly beneficial to be able to rely on the provider of the goods and on the quality of the goods for purchase.

4. The above conclusion is not called into question by the applicant’s argument that ‘EXACT IMAGING’ is a play on words, in this respect it is reminded that :

Furthermore, 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 [holder’s] goods and services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s [holder’s] goods and services from those of a different commercial origin.

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

5. For the reasons set out above, it cannot be reasonably maintained that the trade mark applied for will merely be perceived as allusive or suggestive because it is vague and requires clarification, rather than being directly descriptive, and that it will enable the relevant consumers to identify the origin of the goods and services objected to. In this context, the Office refers to the following decision of the Board of Appeal of 13/10/1998, R 62/1998 - 3 – ‘LASER TRACER’, paragraph 11:

a trade mark is considered to be allusive whenever it makes reference to certain characteristics of the products or services in an indirect way (See Decision of the Second Board of Appeal of 22 September 1998, in Case R 36/98-2, The Oilgear Company, ‘OILGEAR’, paragraph 10), or through a mental association process which requires a special effort on the part of consumers who are expected to transform a suggestive or emotional message, into a rational evaluation.

(See also decision of 27/11/1998, R 26/1998 - 3 – ‘NETMEETING’, § 24.)

This is clearly not applicable in the present case, since the message conveyed by the trade mark is not merely allusive but rather directly descriptive of the kind, intended purpose or other characteristics of the goods and services in question such as their subject matter or content. When faced with the trade mark ‘EXACT IMAGING’ in relation to the relevant goods and services, the public will readily comprehend its descriptive meaning, as already defined above, without the need for a mental association process requiring a special effort. It follows that the link between the expression ‘EXACT IMAGING’ and the goods of concern 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.

Furthermore, according to the case-law of the European Courts, a word mark that is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services for the purposes of Article 7(1)(b) EUTMR (12/06/2007, T 190/05, Twist & Pour, EU:T:2007:171, § 39). In the present case, moreover, the applicant’s mere claim, unsupported by any evidence, that the sign is not descriptive and therefore has distinctive character can only be disregarded as unconvincing.

6.

As regards the applicant’s argument that third parties, and more particularly its competitors, do not need to use the sign at issue to designate the goods and services to which the application relates, it must be observed that … the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) [EUTMR], does not depend on there being a real, current or serious need to leave a sign or indication free.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 39).

7. As regards the applicant’s argument that ‘EXACT IMAGING’ is perfectly well adapted to performing a trade mark function, it is noted that given that the mark has a clear descriptive meaning in relation to the goods and services objected to, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

Consequently, the relevant consumers will be incapable of perceiving the sign as a commercial identifier belonging to a particular supplier. They will see it as only an informative statement. They will focus only on the inherent meaning of the expression rather than on its function as a trade mark.

Due to the impression produced by the mark as a whole, the connection between the relevant goods and services and the mark applied for is not sufficiently indirect to endow it with the minimum level of inherent distinctiveness required under Article 7(1) (b) CTMR.

Moreover, as regards the applicant’s claim that the sign applied for, not being descriptive, is not devoid of any distinctive character, it should be noted that

in order to have the minimum degree of distinctiveness required under Article 7(1)(b) EUTMR, the mark concerned must simply appear prima facie capable of enabling the relevant public to identify the origin of the goods or services covered by the European Union trade mark application and to distinguish them, without any possibility of confusion, from those of a different origin.

(13/06/2007, T‑441/05, I, EU:T:2007:178, § 55.)

As stated by the General Court,

the fact remains that if an applicant [holder] claims that a trade mark applied for is distinctive, despite EUIPO’s analysis, it is for the applicant [holder] to provide specific and substantiated information to show that the trade mark applied for has either intrinsic distinctive character or distinctive character acquired through usage.

(03/07/2013, T 236/12, Neo, EU:T:2013:343, § 62).

8. As regards the national decision 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).

9. As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO such as EUTM 6 879 852 EXACT registered among others for dental software in Class 9, EUTM 4 981 759 ExAct registered among others for fire-extinguishing apparatus, in Class 9, and repair services in Class 37, EUTM 9 612 177 Exact for among others for education services in the field of software in Class 41, the Office points out that the validity of a decision that is inherently well-reasoned and has been made in accordance with the EUTMR cannot be called into question on the basis of the fact that less restrictive criteria were applied in other cases. 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).

This has been confirmed in recent case law:

It must be recalled that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration. Having regard to those two principles, EUIPO must, when examining an application for registration of a European Union trade mark, take into account the decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not. That said, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and comprehensive in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal.

(21/05/2015, T‑203/14, Splendid, EU:T:2015:301, § 47-60, emphasis added).

Indeed, the Office must take into account the decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not. The way in which those principles are applied must, however, be consistent with respect for the principle of legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. Such an examination must therefore be undertaken in each individual case (03/12/2015, T‑628/14, FORTIFY, EU:T:2015:769, § 33-37 and 25/09/2015, T‑591/14, PerfectRoast, EU:T:2015:700, § 65 and 57).

In this respect it is to be noted that EUTM No. 4 481 784 EXACT IMAGE, EUTM 948 539 and EUTM No. 496 257 EXACT FIT, EUTM No. 15 325 475 EXACT FIT, EUTM No 8 244 758 EXACTBP, amongst others, have been refused.

Furthermore, the Office considers that none of the cases quoted by the applicant appear to be relevant to the registrability of the present case, since no identity can be established with ‘EXACT IMAGING’. In the cited cases the marks include only the word ‘EXACT’ and the message that the marks convey is not as straightforward and unequivocal with regard to the goods and services they cover, as in the case under analysis and, therefore, in those cases, a special effort or mental process is required. As a consequence, the referenced cases cannot be considered to be similar to the present application and a different treatment is justified.

Like the previous EUTMs, the sign applied for was subject to the rigorous examination required under the EUTMR according to its own merits. Those merits might have been different at the time of filing. Following the judgment of 06/03/2003, T-128/01, ‘Grille’, paragraph 46, the previously registered trade marks could have enjoyed, at the time of filing, an unusual character that the mark applied for, due to the evolution of the market and/or perception of the relevant public will not enjoy (emphasis added).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for European Union trade mark No 15 548 423 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.

Isabel DE ALFONSETI HARTMANN

Annex 1

Information extracted from the internet on 26/05/2017 :

Stereotactic biopsy

From Wikipedia, the free encyclopedia

Stereotactic biopsy, also known as stereotactic core biopsy, is a biopsy procedure that uses a computer and imaging performed in at least two planes to localize a target lesion (such as a tumor or microcalcifications in the breast) in three-dimensional space and guide the removal of tissue for examination by a pathologist under a microscope. Stereotactic core biopsy makes use of the underlying principle of parallax to determine the depth or "Z-dimension" of the target lesion.

Stereotactic core biopsy is extensively used by radiologists specializing in breast imaging to obtain tissue samples containing microcalcifications, which can be an early sign of breast cancer.

https://en.wikipedia.org/wiki/Stereotactic_biopsy