Refusal of application for a European Union trade mark

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

Alicante, 03/05/2017

Patentanwälte

BEETZ & PARTNER mbB

Steinsdorfstr. 10

D-80538 München

ALEMANIA

Application No:	015991409
Your reference:	038-76596WEN
Trade mark:	MonoStereo
Mark type:	Word mark
Applicant:	MEDICALTEK CO., LTD. 4F., NO. 26, KEYA RD., DAYA DIST., TAICHUNG CITY, CENTRAL SCIENCE PARK TAIWAN (R.O.C.) TAIWÁN

The Office raised an objection on 10/11/2016 pursuant to Article 7(1)(b) and (c) EUTMR and 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. After a two-month extension, the time limit set by the Office was 10/03/2017.

The applicant submitted its observations on 09/03/2017, which may be summarised as follows:

1. The applicant has deleted the term ‘ophtalmoscopes’ from the list of goods in Class 10.

2. The goods are specialised goods that are aimed at professionals in the field of medicine. The combination ‘MonoStereo’ is fanciful enough for the relevant public to know that the goods are not related to the mark applied for.

3. The goods endoscopy cameras for medical purposes and gastroscopes do not produce any sounds. Therefore, there is no relation between the mark and the goods at issue.

4. The EUIPO has registered simple marks that are constructed in the same way as the mark applied for: ‘MONO-MOLD’ (EUTM No 74 377), ‘MONO-SHAPE’ (EUTM No 130 625), ‘MONO-COAT’ (EUTM No 145 763), ‘Monocast’ (EUTM No 10 117 869) and ‘Mono-Ring’ (EUTM No 11 619 152).

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 goods:

Class 10 Endoscopy cameras for medical purposes; gastroscopes.

The objection is maintained for the remaining goods, namely for:

Class 10 Diagnostic apparatus for medical purposes; surgical apparatus and instruments.

Article 7(1)(c) EUTMR – general remarks

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 the present case, the trade mark applied for is the sign ‘MonoStereo’, which means ‘monophonic and stereophonic (sound)’. Although this combination of words is not found as such in the dictionary, its meaning can be easily understood or deduced by the relevant English-speaking part of the public, as it is composed of the words ‘Mono’ and ‘Stereo’. The first word means ‘monophonic recording or reproduction; freq. in mono; Opposed to stereo’ (information extracted from the Oxford English Dictionary on 09/11/2016 at www.oed.com). The second word means ‘short version of “stereophonic”; giving the impression of a spatial distribution in reproduced sound; spec. employing two or more channels of transmission and reproduction so that the sound may seem to reach the listener from any of a range of directions’ (information extracted from the Oxford English Dictionary on 09/11/2016 at www.oed.com). The relevant consumer will perceive it not as an unusual expression but, rather, as a meaningful one.

The public interest underlying Article 7(1)(c) EUTMR is that no exclusive rights should be created in purely descriptive expressions that other traders might wish to use; it is also in the interest of the public that expressions that have a purely informational value should not be reserved for one single trader (such a mark may, of course, be registered if the applicant can show evidence of acquired distinctiveness).

Registration of a trade mark gives the holder of the mark a monopoly right over the signs or indications of which it is composed, so any signs or indications that are descriptive must be left free for trade use. Descriptive indications are, by definition, not capable of constituting trade marks.

The mark has a clear meaning for consumers, who will perceive it not as an unusual expression but, rather, as a meaningful one. The mark conveys the idea that all the goods for which registration is sought, namely diagnostic apparatus for medical purposes; surgical apparatus and instruments, are goods that can reproduce either mono or stereo sound. The mark describes, in an unambiguous way, the characteristics of the goods by giving consumers relevant information as regards the function of the goods offered.

The goods for which registration is sought target the professional consumer. It is clear that the relevant consumer will understand, in relation to the contested goods, the words, or the combination of words, as a meaningful expression referring to medical apparatus that can reproduce sound.

The mark applied for, ‘MonoStereo’, clearly conveys obvious and direct information about the contested goods, which are diagnostic apparatus for medical purposes and surgical apparatus and instruments, namely their function. Although the combination as such might be novel, the words that make up the mark applied for are very common; the expression ‘MonoStereo’ is not imaginative, metaphorical or unusual, as it is no more than the sum of its parts and consists exclusively of the simple and clear juxtaposition of two immediately identifiable words. The combination of the two words does not contain, in relation to the separate components, any additional element capable of giving it distinctive character. The relevant public will establish a direct and specific relationship between the trade mark and the goods at issue.

The Office considers that it is highly unlikely that, without substantial use, consumers would perceive the mark applied for as a badge of origin distinguishing the applicant’s goods from those of its competitors.

Article 7(1)(b) EUTMR – general remarks

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).

It is settled case-law that ‘[a] sign’s distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign’ (09/10/2002, T‑360/00, UltraPlus, EU:T:2002:244, § 43).

Assessment of the distinctive character of the mark

A mark’s distinctiveness can be assessed only, first, in relation to the goods or services for which registration is sought and, second, in relation to the perception of the relevant part of the public.

As set out in the notice of absolute grounds for refusal, the sign at issue, ‘MonoStereo’, is devoid of any distinctive character, as consumers will fail to perceive it as an indication of trade origin and instead will understand that the goods are medical apparatus and instruments with the function of reproducing sound.

The mark is composed of the expression ‘MonoStereo’ written in normal characters. The goods to which an objection has been raised and which are covered by the mark applied for are diagnostic apparatus for medical purposes and surgical apparatus and instruments, which are specialised goods that target a professional public. In view of the nature of the goods in question, the degree of awareness of the relevant public will be high.

It must be held that the fact that the relevant public is specialist 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).

A mark that, as in the present case, would simply be seen as a descriptive expression cannot guarantee the identity of the origin of the goods under the mark to consumers or end users by enabling them, without any potential for confusion, to distinguish the said goods from others that have a different origin. Therefore, it 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 English-speaking part of the public and other consumers in the EU who understand basic English words will see the mark not as a badge of a particular trade origin for the goods at issue but, rather, as a descriptive expression with an obvious meaning.

As regards the applicant’s argument that a number of similar registrations have been accepted by 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, § 47; 09/10/2002, T‑36/01, Glass pattern, § 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, § 67).

Moreover, the Office does not agree that there is an analogy that can usefully be drawn between the sign at issue and EUTMs No 74 377, No 130 625, No 145 763, No 10 117 869 and No 11 619 152. The Office must examine each mark on its own merits and must take into consideration changes in linguistic norms and commercial realities, and the jurisprudence that reflects them. In addition, it is not part of the examination of the current trade mark to examine other trade marks that have been examined by the Office before.

Finally, the applicant did not claim that its mark had acquired distinctive character through genuine use. Since the mark for which protection is sought will be perceived by the relevant public as purely descriptive, it will not be able to fulfil the primary function of a trade mark, which is to distinguish the applicant’s goods from those of competitors, and it will not be recognised by the public as an indication of the commercial origin of the goods. Therefore, it is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C‑265/00, Biomild, § 19; 12/02/2004, C‑363/99, Postkantoor, § 86).

Conclusion

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and 7(2) EUTMR, the application for European Union trade mark No 15 991 409 is hereby rejected for the following goods:

Class 10 Diagnostic apparatus for medical purposes; surgical apparatus and instruments.

The application is accepted for the remaining goods.

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.

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