Refusal of application for a European Union trade mark

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

Alicante, 27/06/2017

WYNNE-JONES, LAINE & JAMES LLP

Essex Place 22 Rodney Road

Cheltenham,

Gloucestershire GL50 1JJ

REINO UNIDO

Application No:	016165722
Your reference:	VC/FA/TM7349EU00
Trade mark:	MICROMEDICINE
Mark type:	Word mark
Applicant:	MicroMedicine, Inc. 313 Pleasant Street Watertown Massachusetts 02472 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 05/01/2017 pursuant to Article 7(1)(b) and (c) 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.

The applicant submitted its observations on 09/02/2017, which may be summarised as follows:

1. The level of attention is high since the purpose of the goods at issue is to separate cells from complex fluids.

2. The relevant public do not refer to medicine in respect of its physical size. Furthermore, the Office has conducted an examination of the individual elements of the sign applied for which is incorrect.

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.

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 (judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 25).

‘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’ (judgment of 26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

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 (judgment of 19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59).

As regards the second argument of the applicant, it must be said that to refuse to register a trade mark 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 provisions 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 (see judgment of 23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added).

In respect to the argument that the mark is not descriptive, the Office respectfully disagrees. The expression ‘MICROMEDICINE’, as mentioned in the objection letter of 05/01/2017, taken as a whole, immediately informs consumers without further reflection that the goods applied for refer to the function, mode or size of the goods at issue. The relevant public will be able to immediately grasp the meaning of the expression in relation to these goods (see also decision of 15/11/2013, R 66/2013-2, MICRO INTERVENTIONAL DEVICES, § 18).

Furthermore, the sign is not a fanciful combination. As a main rule, the mere combination of several descriptive terms remains essentially descriptive. The only exception is where the unusual nature of the combination of word elements creates an overall impression which is sufficiently far removed from that produced by the mere combination of its constituent elements, thereby making the resulting compound term more than the mere sum of its parts (19/04/2007, C-273/05 P, Celltech, EU:C:2007:224, § 76,78). Furthermore, given that the words ‘micro’ and ‘medicine’ are well-known basic words with a clear and distinct concept, combined in accordance with English grammar rules without any graphic or semantic modification, the relevant consumer will immediately and without any mental effort deduce the conceptual content of the combined mark as stated in the letter of 05/01/2017.

Even when the mark displays minor elements of vagueness in its conceptual content when viewed in isolation, such vague or unclear elements can be minimised or eliminated when consumers are confronted with the mark in the context of the relevant goods. In the present case, there are no good reasons to assume that the consumer perceive the sign as a badge of origin.

Furthermore, the fact that the relevant public is a specialist one and its degree of attention is higher than average cannot decisively influence the legal criteria used to assess the distinctive character of a sign. As stated by the Court of Justice, ‘it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist’ (judgment of 12/07/12, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

Moreover, according to well-established case-law from the General Court, the level of attention of the relevant public may be relatively low when it comes to promotional indications, whether what is involved are average end consumers or a more attentive public made up of specialists or circumspect consumers. This finding is applicable even for goods and/or services where the level of attention of the relevant public is generally high, such as financial and monetary services (judgments of 29/01/2015, T-609/13, SO WHAT DO I DO WITH MY MONEY, EU:T:2015:688, § 27; T-59/14, INVESTING FOR A NEW WORLD, EU:T:2015:56, § 27 and cited case-law).

In the case at issue it was also stated that the sign ‘micromedicine’ can also be a promotional statement which merely conveys information about the goods for which protection is sought. Therefore, this argument has to be set aside.

Finally, the applicant argued that the t

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR, the application for European Union trade mark No 016165722 is hereby rejected for all the goods claimed.

According to Article 59 EUTMR, you have a right to appeal this decision. According to Article 60(1) EUTMR, notice of appeal must be filed in writing with the Office within two months of the date of notification of this decision. 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.

Martin EBERL