Total refusal of an application for a EU trade mark under Articles 7 and 42 of the European Union Trade Mark Regulation (EUTMR) no. 2017/1001

Alicante, 03/05/2018

NLO Shieldmark B.V.

P.O. Box 29720

2502 LS The Hague

The Netherlands

Application No	17391707
Your reference	T3065059EM
Trade mark	REGAIN CONTROL; SIRS AND SEPSIS
Applicant	CytoSorbents Corporation 7 Deer Park Drive, Suite K Monmouth Junction, NJ 08852 USA

• Procedure

The Office raised an objection on 7 November 2017, pursuant to articles 7(1)(b), (c) and 7(2) EUTMR, because it was found that this sign is descriptive of the quality, the nature and the subject matter or intended purpose of the goods, as well as devoid of any distinctive character for the reasons set out in the attached letter.

On 5 January 2018 the applicant replied with the following counter-arguments:

1. There is no descriptive link between the words and the goods (absorption materials).

2. At best, the subject sign abstractly refers to the overall result a patient may gain from using the products.

3. Signs may be laudatory and still function as a trade mark (Vorsprung durch Technik).

4. The specification does not mention “beads”.

5. The words are totally vague and may relate to an abstract status of a non-concretely mentioned person, of a non-specified body part.

6. The sign was accepted in the USA.

• Decision

Pursuant to article 94 EUTMR, it is up to the Office to make a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due and careful consideration to the applicant’s arguments, the Office has decided to maintain the objection and refuse the application for all goods:

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Medical devices, namely, adsorption and absorption materials and systems for treating the blood of patients who are at risk of or who have medically destabilizing conditions such as the systemic inflammatory response syndrome SIRS, sepsis and infection, other immunologic conditions, or organ dysfunction or failure.

• Refutal of counterarguments

The Office comments on this refusal and the applicant’s arguments hereunder:

1. There is no descriptive link between the words and the goods (absorption materials).

2. At best, the subject sign abstractly refers to the overall result a patient may gain from using the products.

The applicant is mistaken. REGAIN CONTROL has a very clear meaning in English and describes exactly what one would like to achieve with the goods (adsorption and absorption materials): They are used to treat infectious diseases (for instance: SIRS and sepsis) and their aim is to regain control on the infection. This is what the applicant itself calls “the overall result a patient may gain from using the products”. When a sign describes this overall result, it cannot be registered based on article 7(1)(c) EUTMR:

(not to be registered are) “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 services”.

3. Signs may be laudatory and still function as a trade mark (Vorsprung durch Technik).

“Vorsprung durch Technik” was one of the very few slogans whose registrability was upheld before the Court in Luxembourg. The immense majority of the slogans were refused:

T-157/08 INSULATE FOR LIFE dated 8 February 2011

T-251/08 PASSION FOR BETTER FOOD dated 23 September 2011

C-311/11P WIR MACHEN DAS BESONDERE EINFACH dated 12 July 2012

T-22/12 QUALITÄT HAT ZUKUNFT dated 11 December 2012

T-126/12 INSPIRED BY EFFICIENCY dated 6 June 2013

T-515/11 INNOVATIONS FOR THE REAL WORLD dated 6 June 2013

T-570/11 LA QUALITÉ EST LA MEILLEURE DES RECETTES dated 12 February 2014

T-539/11 LEISTUNG AUS LEIDENSCHAFT dated 25 March 2014

T-601/13 PIONEERING FOR YOU dated 12 December 2014

T-59/14 INVESTING FOR A NEW WORLD dated 29 January 2015

T-609/13 SO WHAT DO I DO WITH MY MONEY? dated 29 January 2015

T-499/13 SMARTER SCHEDULING dated 5 February 2015

T-545/14 ENGINEERING FOR A BETTER WORLD dated 6 October 2015

T-336/14 NOURISHING PERSONAL HEALTH dated 8 October 2015

T-301/15 DU BIST, WAS DU ERLEBST dated 31 May 2016

T-620/15 GEHEN WIE AUF WOLKEN dated 17 October 2016

So it is daring to base the registration of “REGAIN CONTROL, SIRS AND SEPSIS” on this judgment which is unique in many ways.

The Office does not see any parallels between the two signs that may justify a comparison, neither linguistically, nor with regard to the goods and services.

4. The specification does not mention “beads”.

The beads are used as absorption material. The Examiner found this information on the Internet, while he was digging into the substance of these anti-inflammatory absorption materials. For the refusal it is of no consequence whether these materials contain beads or not. “Absorption materials containing beads” fall under the general notion of “absorption materials”.

5. The words are totally vague and may relate to an abstract status of a non-concretely mentioned person, of a non-specified body part.

The words refer to “the overall result a patient may gain from using the products” (see under 1. and 2.).

6. The sign was accepted in the USA.

The Office is not bound by decisions made by national trade mark authorities or even by its own decisions made in the past in similar or identical cases. Each case has to be judged on its own merits, taking into consideration the valid trade mark regulation and its interpretation by the Boards of Appeal of the Office and the Courts in Luxembourg:

“Finally, as to the applicant's arguments on national applications and earlier decisions of the Office, it must be borne in mind that it is settled case-law, first of all, that the Community trade mark system is autonomous and, secondly, that the legality of decisions of the Boards of Appeal is to be assessed purely by reference to Regulation No 40/94, and not the Office's practice in earlier decisions (see judgments in Cases T-122/99 Procter & Gamble v OHIM (soap bar shape) [2000] ECR II-265, paragraphs 60 and 61; T-32/00 Messe München v OHIM (electronica) [2000] ECR II-3829, paragraph 47; and T-106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II-723, paragraph 66). Accordingly, the Office is bound neither by national registrations nor by its own previous decisions. Furthermore, as the Office rightly argued, neither the reference to a national registration that postdates the examiner's refusal of the application for registration, nor the reference to registrations by the Office that are open to subsequent challenge before the bodies responsible for reviewing their legality, may be accepted as relevant.”

(Judgment of the General Court dated 5 December 2002 in the case T-130/01 REAL PEOPLE, REAL SOLUTIONS, par. 31)

• Conclusion:

• The expression “Regain control; SIRS and sepsis” is an understandable English slogan which tells the relevant medically trained consumer that the goods are absorption and adsorption materials that enable the doctor treating the patient with infectious diseases, like SIRS or sepsis, to regain control on the infection. The sign is therefore descriptive of the desired result of the goods.

• The sign is therefore descriptive of positive characteristics of the goods and is to be refused based on both article 7(1)(b) and (c) in respect of all goods.

• How to appeal this decision

Under Articles 66-68 of the European Union Trade Mark Regulation no. 2017/1001 you have a right to appeal against this decision. A notice of appeal must be filed in writing at the Office within two months from the date of receipt of this notification and within four months from the same date a written statement of the grounds of appeal must be filed.

The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720,00 has been paid.

Robert KLIJN BRINKEMA