Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 28/03/2018

BOEHMERT & BOEHMERT Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte

Kurfürstendamm 185

D-10707 Berlin

ALEMANIA

Application No:	017201708
Your reference:	P60490EU
Trade mark:	PRECISION NUTRITION
Mark type:	Word mark
Applicant:	Precision Nutrition Inc 1 Younge Street, Suite 1801 Toronto Ontario CANADÁ

The Office raised an objection on 26/09/2017 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 23/11/2017, which may be summarised as follows.

1. The relevant public will not understand the word “PRECISION NUTRITION” as providing information about the kind and intended purpose of the goods and services in question.

2. The Office has not given a proper definition of what the two words PRECISION NUTRITION mean.

3. The definition given by the Office is too narrow – the “normal” meaning of the word “nutrition” that comes into one’s mind is “food” or the process of providing or obtaining the food necessary for health and growth.

4. The whole term “PRECISION NUTRITION” becomes vague since there is no rule or accepted hierarchy regarding which kind of food is “precise”.

5. Even if there was a clearly defined meaning of “PRECISION NUTRITION” consumers would think of goods in classes 29, 30, 31, 32 (and only from far of goods in 33 and 34).

6. The applicant contests the Office’s view that the trade mark “PRECISION NUTRITION” is devoid of any distinctive character as the mark possesses a minimum degree of distinctiveness as looking at the mark as a whole it must be concluded that this made-up phrase shows a certain level of linguistic creativity.

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).

As regards the Applicant’s first argument that the relevant public will not understand the word “PRECISION NUTRITION” as providing information about the kind and intended purpose of the goods and services in question, it must be noted that the Office respectfully disagrees with this view. Indeed, the Office is convinced that the relevant consumer will not tend to perceive any particular indication of commercial origin in the mark applied for beyond the descriptive message conveyed by the mark. As already mentioned in the previous notification of 26/09/2018, the assessment of descriptiveness is based on how the relevant consumer would perceive the sign in relation to the goods and services for which registration is sought. In the case of hand, the relevant consumer would be a professional English-speaking consumer in the field of nutrition who would understand the sign as having the following meaning: the branch of science that deals with nutrition and nutrients in humans with exactness, accuracy.

Therefore, the link between the mark applied for “PRECISION NUTRITION” and the goods applied for in class 16 and services in class 42, is sufficiently closed to fall within the meaning of Article 7(1)(b) and (c) and Article 7(2) EUTMR.

As regards the Applicant’s next line of argument that the Office has not given a proper definition of what the two words “PRECISION NUTRITION” means, it must be noted that the Office does not share this view. The two words have both been given a definition from one of the most reliable and trusted English dictionary: the Oxford English Dictionary.

As regards the Applicant’s third argument that the “normal” meaning of the word “nutrition” that comes into one’s mind is “food” or the process of providing or obtaining the necessary food for health and growth, it must be noted that 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.)

As regards the Applicant’s next argument that the whole term “PRECISON NUTRITION” becomes vague since there is no rule or accepted hierarchy regarding which kink of food is “precise”, the Office claims that the definition given regarding the term “NUTRITION” is “the branch of science that deals with nutrition and nutrients esp. in humans; the study of food and diet”. Therefore, in the Office’s view, the term “precision” in relation to the branch of science, or study that deals with nutrition and nutrients in humans can, contrary to the Applicant’s argument, be very precise.

As regards the Applicant’s argument that even if there was a clearly defined meaning of “PRECISION NUTRITION” consumers would think of goods in classes 29, 30, 31, 32 (and only from far of goods in 33 and 34), it must be noted that in the Office’s view, this argument is not relevant for the case at hand, as the contested goods and services are classified in classes 16 and 42.

Furthermore, it must be recalled, that the contested goods and services for which registration is sought, relate all to the field of nutrition, as the Applicant listed.

Finally, as regards the Applicant’s last argument that it is contested that the mark is devoid of any distinctive character as the made-up phrase “PRECISION NUTRITION” shows a certain level of linguistic creativity, the Office highlights that a trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts …

(12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

In the same sense, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (30/11/2004, T‑173/03, Nurseryroom, EU:T:2004:347, § 21).

Moreover, the ‘absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual or striking’ (05/04/2001, T‑87/00, Easybank, EU:T:2001:119, § 39).

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 017201708 is hereby rejected for all the goods and services claimed.

The application may proceed for the remaining goods/services.

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.

Soledad PALACIO MONTILLA