Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 17/04/2018

HOGAN LOVELLS

Avenida Maisonnave 22

E-03003 Alicante

ESPAÑA

Application No:	017255911
Your reference:	ALI-T-724071
Trade mark:	ASTHMASCAN
Mark type:	Word mark
Applicant:	Omron Healthcare Co., Ltd 53, Kunotsubo, Terado-cho, Muko-shi, Kyoto 617-0002 JAPÓN

The Office raised an objection on 17/10/2017 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 19/12/2017, which may be summarised as follows.

1. The Examiner conducted its analysis by dissecting the mark “ASTHMASCAN” without taking into account the impression created by the sign as a whole.

2. The unusual nature of the combination of elements in relation to the goods in question creates an impression that is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed.

3. Abbreviations of descriptive terms are in themselves descriptive only if the relevant public recognizes them as being identical to the full descriptive meaning.

4. The relevant public would need a certain mental effort in order to immediately perceive the mark as providing information about the goods concerned.

5. EUIPO did not adduce further evidence or valid explanations to support that ASTHMASCAN might represent a normal way of referring to the goods.

6. The eligibility for protection of the mark is indirectly supported by the previous acceptance by the EUIPO of the marks “ASTHMATUNER” and “ASTHMASENSE” in classes 10 and 9 respectively.

7. The mark applied for has been accepted for registration for the same goods in class 10 in the US, where the target public is entirely English speaking.

8. The mark applied for is a neologism due to the combination of the two terms of which it is composed and therefore has a sufficient degree of distinctive character to be eligible for registration.

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 line of argument that the Examiner conducted its analysis by dissecting the mark “ASTHMASCAN” without taking into account the impression created by the sign as a whole, the Office highlights that 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 (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59).

As regards the Applicant’s next line of argument that the unusual nature of the combination in relation to the goods in question creates an impression that is sufficiently far removed from the sum of its parts, it must be noted 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 this respect, the office is convinced that the fact that both terms “ASTHMA” and “SCAN” are conjoined does not add any distinctive character to the mark. Therefore, the Office is of view that the relevant public would understand the expression “ASTHMASCAN” as having the following meaning: to examine a disease of respiration, characterized by intermittent paroxysms of difficult breathing, with a wheezing sound, a sense of constriction in the chest, cough, and expectoration as already noted in our previous notification of 17/10/2017. It must be recalled that regarding the goods to which the objection is raised, the Office considers that they belong to a highly specialised market sector, more precisely, a professional English-speaking consumer in the field of medicine. Therefore, the relevant public would perceive the sign as providing information about the kind and intended purpose of the goods in question, namely, that the sensors and detectors applied for, are for detecting respiratory sound for medical use as noted by the Applicant in the list of goods applied for.

As regards the Applicant’s next argument that abbreviations of descriptive terms are in themselves descriptive only if the relevant public recognized them as being identical to the full descriptive meaning, the Office respectfully does not share this argument. Indeed, 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 argument that the relevant public would need a certain mental effort in order to immediately perceive the mark as providing about the goods concerned, the Office strongly contests this argument. The Office is of the opinion that, when taken as a whole, the meaning of the expression “ASTHMASCAN” will be clear to the relevant consumer who will, without any difficulty, establish a direct and specific link between the mark and the objected goods for which registration is being sought.

As regards the Applicant’s argument that the Examiner did not adduce further evidence or valid explanations to support that ASTHMASCAN might represent a normal way of referring to the goods, 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).

As regards the Applicant’s argument that the eligibility for protection of the mark is indirectly supported by the previous acceptance by the EUIPO of the marks “ASTHMATUNER” and “ASTHMASENSE” in classes 10 and 9 respectively, 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).

As regards the national decision referred to by the applicant, according to case-law:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

Finally, as regards the Applicant’s last argument that the mark applied for is a neologism due to the combination of the two terms of which it is composed and therefore has a sufficient degree of distinctive character to be eligible for registration, the Office has demonstrated that, given all the factors outlined above, the mark applied for does not possess the minimal distinctive character required under Article 7(1)(b) EUTMR in relation to the objected goods for which registration is sought, and therefore, is not capable to fulfil its essential function as indicator of commercial origin in relation to such goods.

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 017255911 is hereby rejected for the following goods:

Class 10 Sensors for detecting respiratory sound for medical use; detectors for respiratory sound for medical use; respiration monitors for medical use.

The application may proceed for the remaining 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