Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 20/10/2017

MARKS & CLERK LLP

Aurora

120 Bothwell Street

Glasgow G2 7JS

REINO UNIDO

Application No:	016891822
Your reference:	AVC/HG/TG447607EMA
Trade mark:	THERMOCHIP
Mark type:	Word mark
Applicant:	SureFlap Ltd 7 The Irwin Centre Scotland Road Dry Drayton Cambridge Cambridgeshire CB23 8AR REINO UNIDO

The Office raised an objection on 27/06/2017 pursuant to Article 7(1)(b) and (c) 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 24/08/2017, which may be summarised as follows.

1. A clear and distinct reasoning for the objection raised by the Office is missing, case law and practice unambiguously demonstrates that a clear and specific link between the mark and the relevant goods and services must be established for a mark to be refused registration under Article 7(1)(c) EUTMR.

2. The term ‘THERMOCHIP’ does not give any direct clue that the goods analyse or measure temperature of animals, as claimed by the Office, quite the contrary, several mental steps on account of the consumer would be necessary to reach such a conclusion. Consequently, the mark does not describe the intended purpose of the goods. Furthermore, the sign may allude to temperature; however, it cannot be supposed that it describes the goods as performing operations in relation to heat and temperature, again, several mental steps on account of the consumer would be necessary to reach such a conclusion. Accordingly, the sign does not describe the kind of goods in question. Therefore, the mark is not descriptive, but, rather, allusive of the characteristics suggested by the Office.

3. It is an established fact that a mark must be devoid of any distinctive character to be refused registration under Article 7(1)(b). This is not the case for the mark in question. It is a combination of two abbreviations, ‘THERMO’ will most probably be understood as ‘thermodynamics’ and ‘CHIP’ as ‘microchip’. This is a unique combination without any descriptive meaning, and therefore, it clearly possesses, at least, the necessary minimum degree of distinctive character.

4. The mark is not a customary term used in the relevant trade, therefore it cannot be claimed to be devoid of distinctive character on such a basis.

5. In addition, the Office has already registered the mark EUTM No 003120698 ‘BIO-THERMO’, a mark that arguably possesses a lower degree of distinctive character than the present one and is registered for identical goods. Moreover, the Office has registered a wide variety of marks containing the term ‘THERMO’ or closely related versions of the term, 21 such examples have been cited.

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).

In response to the applicant’s submissions, the Office states the following:

1.

The Office agrees that a clear and specific link between the mark and the relevant goods and services must be established for a mark to be refused registration under Article 7(1)(c) EUTMR. It also maintains that this link exist in the present case, this will be further argued below.

2.

The Office agrees that the meaning of the mark, ‘THERMOCHIP’, is not directly describing anything regarding animals, and, the Office has not claimed that it does. What was argued in the L110 letter (also attached) was “the goods applied for are microchips specially adapted to perform operations in relation to heat and temperature, for example measuring, analysing and/or sensing heat and temperature of animals”, accordingly, the office argued that the intended purpose of the goods is to perform operations in relation to heat and temperature, thereafter, the example in relation to animas was introduced as several of the goods in question are microchips for use with animals: temperature-sensing implantable microchips for use in pets, livestock and other animals. Consequently, what was claimed, and maintained in this letter, is that the sign in all likeliness immediately will be perceived as microchips performing operations in relation to temperature, for example temperature-sensing, when encountered on goods such as temperature-sensing implantable microchips, and that this can be used, for example, in relation to animals.

As regards the meaning of the terms making up the mark, ‘THERMO’ is a generic term which indicates heat or temperature, as demonstrated by the dictionary result in the L110 objection letter. Therefore, the mark consists of two unambiguous terms combined, furthermore, ‘THERMO’ is a prefix that is normally combined with other terms to indicate that the combination as a whole is related to heat or temperature, for example ‘thermodynamics’ or ‘thermonuclear’. Consequently, the mark conveys a straightforward message that these microchips perform operations in relation to heat and temperature. In addition, the relevant consumer is accustomed to the fact that microchips perform operations/have a purpose, for example temperature-sensing, so the Office disagrees that an interpretive effort would be required to perceive this, it would make less sense if the microchip was passive, without any function.

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.)

Consequently, the mark, ‘THERMOCHIP’, taken as a whole, will immediately inform consumers without further reflection that the goods applied for are microchips specially adapted to perform operations in relation to heat and temperature, for example measuring, analysing and/or sensing heat and temperature of animals. Therefore, the relevant consumers would perceive the sign as providing information about the kind and intended purpose of the goods in question.

3.

As regards the meaning of ‘THERMO’, the Office disagrees and maintains that this term will be understood as its actual meaning, namely as related to temperature and heat, and not the expression ‘thermodynamics’, which is one of several expression that includes the term ‘THERMO’. In addition, the mere fact that a mark consists of a neologism does not automatically endow it with distinctive character. The neologism must also be striking and fanciful in order to fulfil the function of a trade mark. The meaning of the present combination does not convey an impression that is sufficiently far removed from that produced by the mere combination of the meanings lent by the words ‘THERMO’ and ‘CHIP’, but rather a straightforward message that can be immediately linked to the goods in question.

Therefore, the Office maintains that the sign in question is not capable of distinguishing the goods for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) EUTMR. Only a minimum degree of distinctive character suffices for the absolute ground for refusal set out in that Article not to apply. However, in the present case, the required minimum degree of distinctive character could not be established. It is clear from the case-law of the Court of Justice in relation to Article 7(1)(b) EUTMR that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings and, therefore, being able to fulfil the essential function of a trade mark. From the impression produced by the mark, the connection between the relevant goods and the mark is not sufficiently indirect to endow the mark with the minimum degree of inherent distinctiveness required under Article 7(1)(b) EUTMR (see also 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 99). The Office considers, therefore, that it is highly unlikely that, without substantial use, the consumer would perceive the mark as a badge of origin distinguishing the goods for which registration is sought.

4.

As regards the argument that expression ‘THERMOCHIP is not used in the relevant market, ‘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).

Furthermore, it is not up to the Office to show that other similar signs are used in the market, the Court has confirmed that:

where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods… In such a case, the Board of Appeal is not obliged to give examples of such practical experience.

(15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19).

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

5.

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).

The Office strives to be consistent and always has regard for previous registrations; however, each examination must be taken on its own merits and must dynamically reflect changes in linguistic norms and commercial realities and the jurisprudence which reflects them. In addition, the fact that a part of the present mark (THERMO) forms part of previously registered marks can have no decisive impact when making this decision, in particular as all these other marks also contain other words forming different combinations and meanings than ‘THERMOCHIP’. Each mark must be assessed solely on its own merits, and how these merits relate to settled case law and practice must be the decisive factor when assessing distinctiveness. As explained above, the mark in question is descriptive and devoid of distinctive character.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 16 891 822 is hereby rejected for all the goods 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.

Lars Paalgard SOYLAND