[Use the following heading in the event there is no acquired distinctiveness claim OR there is such a claim as a principal claim: Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

[Use the following heading in the event there is an acquired distinctiveness claim as a subsidiary claim: Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)]

Alicante, 06/10/2017

MÜLLER FOTTNER STEINECKE Rechtsanwalts- und Patentanwaltspartnerschaft mbB

Prielmayerstr. 3

D-80335 München

ALEMANIA

Application No:	016863615
Your reference:	2017W12147EU
Trade mark:	NEOdiagnosis
Mark type:	Word mark
Applicant:	Siemens Healthcare GmbH Henkestraße 127 D-91052 Erlangen ALEMANIA

The Office raised an objection on 28/06/2016 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 28/07/2017, which may be summarised as follows:

• The combination of the terms ‘NEO’ and ‘diagnosis’ is unusual, presenting an unclear meaning and being capable of being memorable for the public.

• The trademark will not be seen as a direct and specific connection with the goods and services but will has, in any case, a suggestive character.

• The distinctive character of the trademark at hand has to be examined taking into consideration the particular perception of the professional public of the field at stake since the sign is not addressed to the average consumers. Besides, the field for which the trademark is applied for in class 5 (the applicant refers to medicine and pharmaceutical preparations) is a very specialised sector in which it is common to use suggestive or evocative trademarks.

Pursuant to Article 94 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 (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).

Concerning the first applicant’s argument, since the trade mark at issue is made up by two word elements, 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). Said so, the words contained in the mark consist of a combination of English-language words which as a whole will be readily identifiable to the relevant public. As such, the Office puts forward that there is nothing unusual about the structure of that sign. The words are presented in a sequence that is intellectually meaningful and thus there is no doubt that the relevant consumer will not perceive the expression ‘NEOdiagnosis’ as unusual, but rather as a meaningful expression, on this basis the message conveyed by the mark is clear, direct and immediate to the relevant public and in relation to the contested goods and services. The expression is not vague or ambiguous in any way, nor does it lend itself to different interpretations, nor is it unusual or akin to an allusive fanciful sign in relation to the goods and services at issue.

Despite the applicant’s arguments making reference to the ‘illogical’ meaning of the combination, the Office considers the sign ‘NEOdiagnosis’ as no more than the sum of its parts and consists exclusively of the simple and clear juxtaposition of two immediately identifiable words, not being these unclear, unequivocal or unusual as argued. The prefix ‘NEO’ before the term ‘diagnosis’ cannot give the latter a complete different perspective or dimension as stated by the applicant, but it provides a meaningful incapable of giving it distinctive character. The relevant public will establish a direct and specific relationship between the trade mark and the goods and services at issue.

Consequently, the Office maintains its viewpoints that the previously mentioned word elements whether isolated or combined are not sufficient to overcome or disguise the lack of distinctive character.

Regarding the argument that the trademark is not descriptive but a mere suggestive sign, the Office cannot agree with the applicant’s viewpoint. As quoted before, the examination of compound trademarks can be done taking into account the individual elements. The Office remains of the opinion that the combination of the words elements ‘NEO’ and ‘diagnosis’ does not present any variation nor changes such to endow the trade mark applied for with any distinctive character on the basis that the elements mentioned do not possess any feature, as regards the way in which they are combined, that allows the mark to fulfil its essential function in relation to the contested goods and services covered by the trademark application. The use of the term ‘diagnosis’ will directly and without further reflection makes reference to the goods and services applied for since is ‘the act or process or discovering or identifying a diseased condition by means of a medical examination, laboratory test, etc. (www.collinsdictionary.com on 05/10/2017). Whilst the term ‘NEO’ would just reinforce the message sent by the trademark, this is a new or the latest method of diagnosis.

To fall under the Article 7(1)(c) EUTMR the descriptiveness of the sign must be beyond any doubt. Besides, for a trade mark that consists of a neologism or a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) EUTMR, ‘it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so’ (12/01/2005, T 367/02 - T 369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 31). At the case at stake, the descriptive message conveyed by the sign is obvious and patent whether considering both elements isolated or combined, not being the relevant public capable of distinguishing the applicant’s goods and services from the ones of others undertakings and as a consequence being incapable of performing the essential function of a trademark.

The Office cannot accept the applicant’s arguments that the connection between signs and goods and services applied for is indirect given that, as proved before, the target consumer (professional public) will perceive unequivocally the message conveyed by the trademark. Besides, there is no element within the sign that would provoke on the consumers to make a special effort to associate the sign with the goods and services applied for. Therefore, the sign ‘NEOdiagnosis’ will transmit a descriptive message concerning the goods and services applied for, namely that they are or include a modern or the latest method of diagnosis.

Finally, as stated in the notification of deficiency the relevant public would be in the case at stake the professional public, namely a professional from the field of the biology or the medicine. Bearing in mind the aforesaid, the Office cannot accept the applicant’s arguments concerning the different perception that professional public might has concerning the lack of distinctive character and the descriptiveness of the trademark. Furthermore, terms that may not be fully clear to consumers of inexpensive mass-consumer goods and services can be immediately clear to a professional audience, particularly if the mark consists of words related to the field in which this specialized audience is active (11/10/2011, T-87/10, Pipeline, EU:T:2011:582, § 27-28).

Moreover, it has to be stated 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).

It is clear that the relevant public (in the case at hand, professional public related to medicine and biology) would not perceive the term ‘NEO’ as the acronym for one of the applicant’s licensee as stated by the applicant. Even in the case that the Office could accept this argument, the proper abbreviation for the licensee would be composed by the letters ‘N’ and ‘O’, not ‘NEO’.

As regards the applicant’s argument that a number of suggestive registrations are present in the market of this particular field (applicants refers to medicine and pharmaceutical preparations), 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).

The trademark assessment must be carried out taking into consideration the relevant public, as said before, the professional public in the field of medicine and biology. Said so, that does not imply that the Office must examine a particular field within a specific market given that the existence of suggestive, non-distinctive or weak distinctive trademarks is widespread regardless the goods and services applied for and in consequence the market where they belong.

Consequently, for the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(1)(c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark 16 863 615 is hereby rejected for all the goods and services claimed.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 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.

Ignacio IGLESIAS ARROYO