Refusal of application for a European Union trade mark

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

Alicante, 24/03/2017

JONES DAY

Prinzregentenstr. 11

D-80538 München

ALEMANIA

Application No:	016023905
Your reference:	104787EM
Trade mark:	BEHIND THE SEIZURE
Mark type:	Word mark
Applicant:	Biomarin Pharmaceutical Inc. 105 Digital Drive Novato, California 94949 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 23/11/2016 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 23/01/2017, which may be summarised as follows:

1. Although the Office claimed that the mark ‘BEHIND THE SEIZURE’ is descriptive, the Office was not able to describe in a sufficient detail what kind of services is provided under a designation ‘BEHIND THE SEIZURE’.

2. The Office stated, in its notice of 23/11/2016, meanings of the word elements ‘BEHIND’, ‘THE’ and ‘SEIZURE’. However, the word ‘BEHIND’, next to the referenced meaning, it has e.g. also an equally important pure geographical meaning of something that is placed behind something else. There are various further and equally valid interpretations of the mark ‘BEHIND THE SEIZURE’ which come to mind of the average consumers than is the one provided by the Office. The Office ruled out further equally possible meanings for the mark ‘BEHIND THE SEIZURE’ to come the allegedly only valid conclusion.

3. It is not immediately obvious what ‘BEHIND THE SEIZURE’ points to for the claimed services at all. The mark ‘BEHIND THE SEIZURE’ does not convey any obvious or direct information regarding the kind and intended purpose of the services claimed.

4. The mark ‘BEHIND THE SEIZURE’ is not commonly used in the medical field to describe what causes a sudden attack of a disease.

5. The Internet search carried out on the Google website reveals for the first page as the top three hits the trade mark of the applicant.

6. The applicant referred to the number of trade marks that have been registered by the Office and that contain word element ‘BEHIND’ or ‘BEYOND’.

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. The list after amendments reads as follows:

Class 44 Providing websites with information concerning the identification and treatment of medical conditions giving rise to epileptic seizures; Epilepsy testing services.

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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).

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.

‘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).

1. As regards the applicant’s first argument, the Office states that the distinctive character and descriptiveness of a trade mark have to be assessed in relation to the goods and services applied for and in relation to the perception of the relevant public. The relevant consumers will not perceive the mark alone but in relation to the services for which registration is sought. Therefore, the kind of services is already specified by the list of services for which registration is sought; they are epilepsy testing services and providing websites with information concerning the identification and treatment of medical conditions giving rise to epileptic seizures. The relevant consumers will interpret the mark in relation to the services in question. The Office maintains its opinion that the mark ‘BEHIND THE SEIZURE’ immediately informs consumers without further reflection that the services are epilepsy testing services focused on testing what is a cause of an epileptic attack and related information services provided online (providing website with information concerning the identification and treatment of medical conditions giving rise to epileptic seizures). Therefore, the mark conveys obvious and direct information regarding the intended purpose and subject matter of the services in question.

2. Regarding the applicant’s second argument, the Office does not contest the applicant’s claim that the words contained in the mark and the mark as a whole can have another meanings than one provided by the Office. However, the Office assessed how consumers would interpret the mark against the services for which registration is sought. While the Office does not dispute the possibility that the part of the relevant public could interpret the mark other way, it is of the opinion that it is more likely that the interpretation set forth by the Office will be the first and primary interpretation of a substantial part of the relevant consumers.

Furthermore, for a trade mark to be refused registration under Article 7(1)(c) EUTMR,

it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added.)

3. Regarding the applicant’s third argument, the Office reiterates its response to point 1.

4. As regards the applicant’s fourth argument that the mark is not commonly used in the medical field, the Office states that, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

5. As regards the applicant’s fifth argument, the Office states that the fact that the mark is not commonly used on the relevant market does not automatically mean that the relevant consumers would see the mark as a badge of commercial origin.

6. 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).

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 16 023 905 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.

Klara BOUSKOVA