Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 15/01/2018

HGF LIMITED

Cavendish House 39-41 Waterloo Street

Birmingham B2 5PP

REINO UNIDO

Application No:	017218504
Your reference:	RJF/T248230EP
Trade mark:	QED INNOVATIONS
Mark type:	Word mark
Applicant:	Quality Electrodynamics LLC 6655 Beta Drive, Suite 100 Mayfield Village Ohio 44143 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 03/10/2017 pursuant to Article 7(1)(b) and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 29/11/2017, which may be summarised and quoted as follows:

1. The dominant definition of the letters QED is the Latin phrase ‘quod erat demonstradum’ meaning ‘what was to be demonstrated,’ not ‘quantum electrodynamics’ (see attached printout). Even considering the meaning ‘quantum electrodynamics’, the sign ‘QED INNOVATIONS’ is also meaningless in the context of the goods under consideration, as the goods at stake are physical devices while ‘quantum electrodynamics’ refers to a field of physics which considers rapidly changing electric and magnetic fields at the atomic particle level; therefore, when combined with ‘INNOVATIONS’, ‘QED’ is not descriptive of any product. In addition, given that a measure of interpretation is required to decipher any possible meaning of the sign, ‘QED INNOVATIONS’ must be considered distinctive in line with 21/01/2010, C‑398/08 P, Vorsprung durch Technik, EU:C:2010:29,. Furthermore, as established in SAT.1 (sic), there is no specific level of linguistic or artistic creativity or imaginativeness; therefore, ‘QED INNOVATIONS’ has a level of creativity and imaginativeness, given that it is a distinct concept in relation to the goods.

2. There are 2 distinct groups of consumers that may be considered. The first is a group of non-specialists who would not know that QED means ‘quantum electrodynamics’ and if they had any understanding of a definition of QED it would be that it means ‘quod erat demonstradum’. In the second specialist group, the Latin definition will still dominate, but even if they did understand it to mean quantum electrodynamics, given that this term does not describe the goods, they would simply perceive ‘QED INNOVATIONS’ as a badge of origin. Therefore, professionals will view ‘QED INNOVATIONS’ as distinct given that it has no descriptive meaning and identify the mark as indicating commercial origin.

3. The applicant’s other EU Application Number 16 943 094 for QED (stylised) with an identical specification, has already passed examination and did not receive any objection, this emphasises that these three letters are not associated with the definition ‘quantum electrodynamics’.

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)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered. Article 7(2) of that Regulation provides that Article 7(1) EUTMR is to apply notwithstanding that the grounds of non-registrability obtain in only part of the EU.

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).

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). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

In the present case, the goods at issue are ‘radio frequency coils for MRI diagnostic apparatus; parts and fittings for the aforesaid goods’, in Class 9, and ‘MRI diagnostic apparatus; parts and fittings for the aforesaid goods’, in Class 10. These goods primarily target specialist consumers, in particular in the scientific/medical field, who not only have knowledge of the specialist scientific/medical terminology, but also normally pay an increased level of attention to the goods concerned (09/03/2012, T‑207/11, Isense, EU:T:2012:121, § 17). In addition, since the sign consists of English words, account must be taken of the public in the English-speaking territory of the European Union, bearing in mind that the knowledge of English of the relevant public may be expected to be even higher than that of an average consumer, as this public is composed of professionals in the scientific/medical field.

The Office examined the word elements ‘QED INNOVATIONS’ of the sign both as a whole and individually (see the attached letter of provisional refusal). The meaning in English of the word elements forming the sign can easily be ascertained on the basis of generally known and publicly available sources such as the Oxford Dictionaries. The expression ‘QED INNOVATIONS’ does not go beyond the mere combination of the individual components and follows the rules of syntax and English grammar, which means that it is immediately comprehensible for the relevant specialist consumers. Moreover, as English is widespread as a specialist technical language in the scientific/medical field, it may be assumed that specialist consumers in the entire EU will perceive the sign applied for in its entirety as a mere combination of components which together form a logical factual statement.

The first element, ‘QED’, will be interpreted as an abbreviation which, together with the word ‘INNOVATIONS’, will be understood directly, immediately and without any particular mental exertion as meaning quantum electrodynamics innovations. The above meaning is relevant for all the applied goods, as they are magnetic resonance imaging diagnostic apparatus, and their coils, parts and fittings and they may be considered as innovations under the perspective of quantum electrodynamics theory. Moreover, whilst acknowledging that a trade mark can be perceived both as a promotional message and an indication of commercial origin, the present sign will not be perceived by the relevant public as a specific indication of commercial origin beyond the promotional information it contains. From the point of view of the relevant consumers, the expression ‘QED INNOVATIONS’ may apply to all possible goods to which the quantum electrodynamics theory may concern and, thus, it cannot distinguish the goods in terms of their commercial origin.

The sign ‘QED INNOVATIONS’ is not ambiguous, humorous or unusual. It does not constitute a play on words, and contains no imaginative, surprising or unexpected element capable of rendering it distinctive in the mind of the relevant public. No cognitive process is required. The message is clear and precise. It does not induce consumers to ask questions, but merely incites them to use the applicant’s goods. The terms lack the minimum degree of distinctiveness for them to be registered since any magnetic resonance imaging diagnostic apparatus, and their coils, parts and fittings may be considered as innovations under the perspective of quantum electrodynamics theory. Consequently, the sign at issue will be perceived by the relevant public as a banal slogan, with a clear and unambiguous laudatory meaning. Apart from its promotional meaning, it does not contain any element enabling the relevant public to perceive it as an indication of the commercial origin of the goods at issue (06/06/2013, T‑515/11, Innovation for the real world, EU:T:2013:300, § 53, and 12/06/2014, C‑448/13 P, Innovation for the real world, EU:C:2014:1746 § 36‑37).

As regards the applicant’s argument at number 1 above specified, the decisive factor is whether the relevant public allocates a meaning to the element ‘QED’ and what that definition is. Although it is true that the definitions contained in a dictionary meeting the relevant scientific standards set out in detail a term’s semantic content, a mark’s conceptual content is not necessarily identical to those definitions since, during the short space of time in which the consumer is faced with a mark, they perceive the meaning of the terms intuitively rather than in a linguistically scientific way (18/05/2017, T-375/16, INSTASITE, EU:T:2017:348, § 58). The mere fact that the element ‘QED’ may have several meanings is irrelevant for the question of the eligibility for registration of the sign. In this respect, it is not necessary for a term to have only one descriptive meaning in order to be ineligible for registration. Rather, a sign must be refused registration under Article 7(1)(b) EUTMR if it lacks any distinctiveness in one of its possible meanings (29/04/2010, T-586/08, BioPietra, EU:T:2010:171, § 35; 23/01/2014, T-68/13, Care to care, EU:T:2014:29, § 41; 02/12/2015, T-528/14, Growth Delivered, EU:T:2015:920, § 46).

As regards the applicant’s argument at number 2 above specified, terms that may not be fully clear to consumers of inexpensive mass consumer goods can be immediately clear to a professional audience, particularly if the mark consists of words related to the field in which this specialised audience is active (11/10/2011, T‑87/10, Pipeline, EU:T:2011:582, § 27‑28). Moreover, even if, as claimed by the applicant, the meaning of the sign might not be known to all the consumers, this is irrelevant for the finding of a lack of distinctive character. The knowledge generally possessed by a proportion of the consumers, specifically the scientifically/medically trained specialist consumers, is sufficient. In fact, Article 7(2) EUTMR provides that the provisions of Article 7(1) shall apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union and for a proportion of the consumers. It is established in the present case that a significant proportion of the relevant public will recognise the sign ‘QED INNOVATIONS’ as innovations under the perspective of quantum electrodynamics theory, which in itself justifies the refusal of the trade mark (12/11/2015, T‑253/13, IRAP, EU:T:2015:843, § 36).

As regards the applicant’s argument at number 3 above specified, the office fails to see how the fact that an application for a figurative mark containing the word element ‘QED’, for the same goods, has not been objected would lead to the conclusion that this element is not associated with ‘quantum electrodynamics’. In fact, the case at issue concerns a different application for a word mark consisting of the expression ‘QED INNOVATIONS’, with the above specified meaning, which is relevant for the good concerned. It is important to bear in mind that, 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).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 17 220 501 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.

Birgit FILTENBORG