Refusal of application for a European Union trade mark

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

Alicante, 21/03/2017

J A KEMP

14 South Square

Gray's Inn

London WC1R 5JJ

REINO UNIDO

Application No:	015885205
Your reference:	TM403883EM-CHS/JXM
Trade mark:	SCIENCE TO MEDICINE
Mark type:	Word mark
Applicant:	Regeneron Pharmaceuticals, Inc. 777 Old Saw Mill River Road Tarrytown, NY 10591-6707 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 24/11/2016 pursuant to Article 7(1)(b) 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 23/01/2017, which may be summarised as follows:

1. The mark is distinctive.

2. The Office has previously accepted similar marks.

3. The mark has been registered in the United Kingdom and the USA.

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.

Distinctiveness

According to 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).

The applicant argues, that the applicant's highly specialised services cannot clearly and directly be discerned from the mark ‘SCIENCE TO MEDICINE', because of the opaque nature of the terms ‘science' and ‘medicine'. Furthermore, the applicant adds, that the mark must be considered as a whole. The preposition ‘to’ links the two words ‘science’ and ‘medicine’ together and conveys an abstract concept, namely converting or transforming ‘science’ to ‘medicine’, which has no relation to the applicant's specialised services.

The Office agrees with the applicant that since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59).

The fact, that the definitions of ‘science’ and ‘medicine’ are very broad and encompass larger concepts, does not imply that when used together, the meanings remain as broad. In the perception of the mark ‘SCIENCE TO MEDICINE’ as a whole, the scope of ‘science’ will only be interpreted as science relating to medicine. Therefore, the mark will not be perceived as very broad and abstract concept, but a concept specific related to medical science.

Furthermore, and contrary to the arguments of the applicant, the presence of the preposition ‘to’ links the two words ‘science’ and ‘medicine’ together and create a meaningful concept in relation to the applicant’s services, namely converting, transforming or translating ‘science’ to or into ‘medicine’.

The services of the applicant are research services (science) and development (the transformation) of pharmaceutical products (the medicine). The genetic engineering services and genetic and medical research services are closely related hereto, by being the development and application of scientific methods, procedures, and technologies within the field of medicine that permit direct manipulation of genetic material in order to, for example, alter the hereditary traits of a cell or organism¹. With regard to the provision of information, the theoretical knowledge behind the development process of the medicine is essential, for example, in relation to information on side effects of pharmaceutical products and services.

Even though the mark might be perceived as a slogan, the Office maintains that the mark, is devoid of distinctive character and that it will not be perceived as an indication of the services commercial origin.

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 concept of converting, translating or transforming ‘science’ into ‘medicine’ is commonly used in medical literature to express the process of converting the theoretical knowledge into a cure, for example, a pharmaceutical product or a therapy. See the following examples:

http://www.escif.org/ESCIF,,extra_navi,sci_research,research_for_regeneration,from_science_to_medicine.htm

https://www.perkins.org.au/news/winning-researcher-translates-science-to-medicine

http://sites.cardiff.ac.uk/events/view/light-clocks-and-sleep-from-science-to-medicine/

http://www.closerlookatstemcells.org/from-lab-to-you/how-science-becomes-medicine

(Internet search performed on 21/03/2017).

The fact that the mark is shortened to a more snap expression, does not remove the overall meaning of the expression from the mark. The relevant consumers would still perceive the mark ‘SCIENCE TO MEDICINE’ as converting, transforming or translating theoretical scientific knowledge into a medicine product.

In the relation to the services, for which registration is sought, the mark ‘SCIENCE TO MEDICINE’ will immediately be perceived by the relevant consumers as the process of converting scientific knowledge about medicine into a substance or method that is used in treating disease or relieving pain. In other words, convert knowledge from scientific research into, for example, pharmaceutical products or genetic services to treat diseases or relieve pain. Therefore, the Office maintains that the mark is non-distinctive for all the services applied for.

Similar marks previously registered by the EUIPO

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, 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).

Furthermore, as some of the marks referred to were applied for many years ago, the Office practice or the language may have changed or evolved and a direct comparison of the level of distinctiveness with previously registered marks may therefore not necessarily be a valid argument in order to prove that the mark is distinctive.

With regard to the reference made to the example in the guidelines of a distinctive slogan, the Office does not see the similarity between the example and the mark for which registration is sought. The meaning of the mark ‘SCIENCE TO MEDICINE’ will immediately be understood by the relevant consumers, whereas the example referred to requires interpretation.

National registrations

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).

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 15 885 205 is hereby rejected for all the services 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.

Anja Pernille LIGUNA