CANCELLATION No C 40 608 (INVALIDITY) 

 

Generation Bio Co., 301 Binney Street, Suite 401, 02142 Cambridge, Massachusetts, United States of America (applicant), represented by Withers & Rogers LLP, 4 More London Riverside, SE1 2AU London, United Kingdom (professional representative)

 

a g a i n s t

 

Touchlight IP Limited, 40 Queen Anne Street, W1G 9EL London, United Kingdom  (EUTM proprietor), represented by Dennemeyer & Associates, 55, rue des Bruyères, 1274 Howald, Luxembourg (professional representative).

On 29/06/2021, the Cancellation Division takes the following

 

 

DECISION

 

 

1.	The application for a declaration of invalidity is upheld.

 

2.	European Union trade mark No 17 866 519 is declared invalid in its entirety.

 

3.	The EUTM proprietor bears the costs, fixed at EUR 1 080.

 

 

REASONS

 

On 15/01/2020, the applicant filed a request for  a declaration of invalidity against European Union trade mark No 17 866 519 ceDNA (word mark) (the EUTM), filed on 28/02/2018 and registered on 25/10/2018. The request is directed against all the goods covered by the EUTM, namely:

 

Class 1: Chemical preparations, enzymes and DNA for the preparation of nucleic acid for scientific research; chemicals for use in the preparation and creation of DNA extracts and cassettes for scientific and industrial purposes; enzymes for use in the preparation and creation of DNA extracts and cassettes for scientific and industrial purposes; DNA extracts and cassettes for scientific and research use; DNA extracts for use in agri-biotechnology and nanotechnology; nucleic acids comprising natural and unnatural nucleotides for use in nanotechnology applications including data storage, data retrieval and computing; nucleic acid analogues comprising synthetic backbones or a mixture of natural and synthetic backbones for use in nanotechnology applications including data storage, data retrieval and computing; composites of nucleic acids or nucleic acid analogues with organic and inorganic chemicals for use in nanotechnology applications including data storage, data retrieval and computing; nucleic acid analogues with organic and inorganic chemicals for laboratory use in labeling, imaging and sensing applications; nucleic acid analogues with organic and inorganic chemicals for laboratory use in smart materials; two-dimensional and three-dimensional nucleic acid analogues with organic and inorganic chemicals for laboratory use in creating nanostructures and scaffolds.

Class 5: Vaccines; DNA based vaccines; DNA extracts, namely, nucleic acid sequences and chemical reagents for medical use; therapeutic DNA, namely, nucleic acid sequences and chemical reagents for medical and veterinary purposes; nucleic acids comprising natural and unnatural nucleotides for medical and veterinary purposes; nucleic acid analogues comprising synthetic backbones or a mixture of natural and synthetic backbones for medical and veterinary purposes; composites of nucleic acids or nucleic acid analogues with organic and inorganic chemicals for medical and veterinary purposes; nucleic acid analogues with organic and inorganic chemicals for medical and veterinary purposes in labeling, imaging and sensing applications; nucleic acid analogues with organic and inorganic chemicals for medical and veterinary purposes in smart materials; two-dimensional and three-dimensional nucleic acid analogues with organic and inorganic chemicals for medical and veterinary purposes in creating nanostructures and scaffolds.

The applicant invoked Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b)(c) and (d) EUTMR.

 

SUMMARY OF THE PARTIES’ ARGUMENTS

The case for the applicant

 

The applicant argues that the contested sign was descriptive and non-distinctive in relation to the contested goods at the time of filing as it is an abbreviation that stands for ‘CLOSED-END DNA’. It also argues that this term or abbreviation is commonly used in trade to describe the goods.

 

In reply to the proprietor’s arguments, the applicant insists that the sign is descriptive and non-distinctive and commonly used in trade to describe ‘closed-end DNA’. It contests the proprietor’s arguments and details why each of its annexes is relevant. It points to the proprietor’s webpage which indicates that its sole technology is dbDNA whose main characteristic is ‘closed-ended DNA’. It denies that closed or open ended DNA can be characterized as ‘crimped’, ‘crimpled’ or ‘crinkled’ and there is no patent publication or other evidence of same. It claims that ‘CE’ has been commonly used as a scientific abbreviation for ‘closed-ended’ or ‘close-ended’ since 2013 and is still being currently used as such worldwide. It points to evidence it submitted to back up this point which is dated prior to the filing of the EUTM. The applicant claims that the term ‘CELID DNA’ has evolved into the term ‘CEDNA’ and the key common terminology used is the word ‘closed-ended’ which is consistently abbreviated as ‘CE’ and used by different groups of scientists. The term ‘ceDNA’ has been used not only by the applicant but also by third parties independent of the applicant. Therefore, it requests that the EUTM be invalidated in its entirety.

In support of its observations the applicant has submitted the following evidence:

Submitted on 15/01/2020:

 Annexure 1: Articles from third party website ResearchGate which describes "cedna" as a type of chemical, gene, enzyme, or DNA for various scientific, industrial and medical uses.

 Annexure 2: Articles from third party website What-When-How.com which describes "cedna" as a type of chemical, gene, enzyme, or DNA for various scientific, industrial and medical uses.

 Annexure 3: Copy of a third party's (University of Massachusetts) patent application publication, published 08/09/2017, with an inventor named Robert Kotin, which refers to closed-ended DNA as "ceDNA" throughout the document.

 Annexure 4: Article dated 04/01/2018 from Business Club WY discussing the launch of the Applicant's business utilising Dr. Kotin's discoveries from the patent application in Annexure 3.

 Annexure 5:Copy of an article dated 04/01/2018 from Endpoint News about Dr. Kotin and the formation of Generation Bio, the Applicant, and its use of closed-ended DNA (ceDNA) for gene transfers.

 Annexure 6: Copy of an article on PharmacyChoice, dated 04/01/2018 about the formation of the Applicant and its platform to develop gene therapies delivered by closed-ended DNA (ceDNA).

 Annexure 7: Copy of an article from Insights.bio regarding Cell & Gene Therapy which discusses the Applicant and its use of closed-ended DNA (ceDNA).

 Annexure 8: Copies of the Applicant's website dated 11/12/2018 which was cited by the Examining Attorney during the prosecution of the registered proprietor, Touchlight IP Limited US Trade Mark No. 88093870, illustrating the Applicant's prior use of the term "ceDNA" in a descriptive manner.

 Annexure 9: Extract from Pharmafile.com referring to the Applicant and use of "ceDNA" and published on 28/02/2018.

 Annexure 10: Extract from Genetic Engineering & Biotechnology News 27/02/2018, reference to "ceDNA" and the Applicant. Extract from Biospace.com: 27/02/2018, reference to Dr. Kotin and use of "ceDNA".

 Annexure 11: Extract from, Xconomy.com: 04/01/2018, reference to the paper published by Dr. Kotin in 2013 and his use of closed-ended DNA or "ceDNA" for gene therapy.

Submitted on 15/10/2020:

 Annexure 12: Copy of the paper published by Dr Kotin in August 2013 on www.plosone.org which is stated to be “freely available online”.

 Annexure 13: Printout from the proprietor’s website www.touchlight.com/technology.

 Annexure 14: An article published online in 2020 ‘Chen et al.,’ entitled “AAVS1 site-specific integration of CAR gene into human primary T cells using a Linear Close-ended AAV-based DNA vector”.

 Annexure 15: A printout from celidbiotech.com/about-us with a copyright from 2017 which states “CELiD Biotechnologies Inc. (CBI), is dedicated to the production and development of CELiD vector DNA (ceDNA) and adeno-associated virus (AAV) to treat metabolic liver disease and hemophilia. CBI holds licensing rights to this technology from the National Institutes of Health.”

 Annexure 16: An extract which was published in 2016 and states “Structural analyses revealed the vector as covalently close-ended, linear duplex molecules, which was termed ‘CELiD’ DNA” and the term ‘CE’ stands for ‘close-ended’ as described therein. The applicant states that the authors have no relationship to the applicant.

The case for the EUTM proprietor

The EUTM proprietor argues that the contested goods are specialized and the relevant consumer is the specialist professional in the scientific field. It contests the applicant’s arguments and the evidence submitted and goes through each Annexure to attempt to refute them. It claims that the articles either do not mention ‘ceDNA’, or refer to ‘LLC DNA’, ‘closed-ended linear duplex DNA for viral gene transfer’ or they are dated a few days or weeks prior to the filing of the EUTM or after the relevant time period. It argues that its US trade mark application 88 938 870, referred to by the applicant, was subsequently accepted by the US examiner and published for opposition purposes. The proprietor contests that there was an article referring to paper published by Dr Kotin in 2013 and notes that it was not submitted.

It denies that the evidence is sufficient to show that the EUTM is descriptive, lacks distinctiveness or is customary in trade. The only evidence referring to ‘ceDNA’ merely shows use of this term by the applicant days or weeks prior to the filing of the EUTM. The proprietor invented the trade mark “ceDNA” and chose the acronym to denote their novel DNA constructs which are distinct from their proprietary ‘closed ended’ dbDNA. These new DNA molecules are the subject of patent applications and contain discreet areas of distinct single stranded folding which confer desired properties and do not contain the characteristic protelomerase binding sequences present in dbDNA. The DNA folding may be described as ‘crimped’, ‘crimpled’ or ‘crinkled’ hence it seemed logical for the proprietor to call these molecules ‘ceDNA’. In fact, the Proprietor’s ceDNA molecules may be open ended or closed.

It further points out that if an acronym cannot be clearly understood or if there are so many possible meanings and the acronym is not directly referring to any of them then the mark is registrable and the mere fact that an abbreviation is derived from a descriptive term is not sufficient (13/06/2014, T-352/12, Flexi, EU:T:2014:519). It argues that the acronym must not only be the composition of a term which is descriptive but that the relevant specialist in the specific field of the goods must be able to identify the goods by their characteristics rather that it being an acronym being used by a sole trader to designate their goods. It denies that ‘CE’ is readily understood by the consumer as meaning ‘closed-end’ and argues that the only use shown in this regard is by the applicant itself. There is no evidence that other traders would, without further reflection, understand this term as having said meaning. It provides an extract from Acronymfinder.com showing 222 definitions, none of them being for ‘closed-end’. It submits that ‘ceDNA’ has no recognised meaning for any of the contested goods, that it is at best vague and allusive in relation to the characteristics of the goods, and requires mental effort to reach a conclusion that the mark is even suggestive. The link between the goods and the sign is too vague and indeterminate to confer a descriptive character. Moreover, it claims that other traders have no need to use the term ‘ceDNA’ to describe their own products since other scientific terms are readily available, so the EUTM does not harm the public interest. Therefore, it denies that the sign is descriptive. Furthermore, it claims that the sign will be perceived as a bade of origin which designates the proprietor and thus it is not non-distinctive either. Lastly it argues that the applicant has only shown its own use of ‘ceDNA’ and not that of other traders and as such has failed to show that it has become the customary term used in trade. Therefore, it requests that the application for invalidity be rejected in its entirety.

In its rejoinder the EUTM proprietor contests the applicant’s arguments and evidence. It claims that the extract from the website Research Gate refers to ‘linear prophage DNA with closed ends’ and ‘closed end DNA topology’ but does not refer to ‘ceDNA’ so it cannot prove that the acronym is descriptive. It repeats and expands its previous arguments. It denies that the applicant has shown evidence that specialist consumers in the sector would understand the term ‘ceDNA’ as referring to ‘closed-ended DNA’. It repeats that much of the evidence is dated just before or the day of the filing of the EUTM and some thereafter. In relation to the paper dated 2013 submitted by the applicant it notes that it refers to the acronym ‘CELiDDNA’ or ‘closed-ended linear duplex molecules’ and does not refer to the contested sign. It states that it has not published the fact that its technology is either closed or open ended DNA that can be characterised as “crimped”, “crimpled” or “crinkled” is wholly irrelevant to the present proceedings. The proprietor points out that the applicant’s evidence in Annexures 14-16 either refer to ‘CELiD’ and does not show the contested mark or they are undated and even if it contains a copyright 2017 the page could have been updated. It denies that the evidence has shown that ‘CE’ alone or in ‘ceDNA’ is widely known to stand for ‘closed end’ by different groups of scientists or used by other traders. Therefore, it insists that the application for invalidity must be rejected.

In support of its arguments the EUMR proprietor submitted the following evidence:

 Exhibit A: An extract from Acronymfinder.com showing 222 definitions, none of them being for ‘closed-end’.

 

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

 

According to Article 59(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services. 

 

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non‑registrability obtain in only part of the Union. 

 

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the European Union trade mark, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings. 

 

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources. 

 

Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C-332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

 

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 which underlies 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).

 

DESCRIPTIVENESS – ARTICLE 7(1)(c) EUTMR 

 

Article 7(1)(c) EUTMR prohibits the registration of ‘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’.

 

By prohibiting the registration as EU 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 for which registration is sought may be freely used by all. That provision 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).

 

According to settled case-law, the signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage, from a consumer’s point of view, to designate, either directly or by reference to one of their essential characteristics, goods and services such as those for which registration of a mark is sought (22/06/2005, T‑19/04, Paperlab, EU:T:2005:247, § 24).

 

According to case-law, for a sign to be caught by the prohibition set out in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific relationship between the sign and the goods and/or services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and/or services in question or one of their characteristics (22/06/2005, T‑19/04, Paperlab, EU:T:2005:247, § 25). Moreover, in order to be caught by Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark actually be in use at the time of the application for registration in a way that is descriptive but it is sufficient 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. It is sufficient that at least one of the possible meanings of a word sign designates a characteristic of the goods concerned (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32).

 

The existence of the abovementioned relationship must be assessed, first, in relation to the goods or services for which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 29).

The relevant goods at issue in the present case are the following:

Class 1: Chemical preparations, enzymes and DNA for the preparation of nucleic acid for scientific research; chemicals for use in the preparation and creation of DNA extracts and cassettes for scientific and industrial purposes; enzymes for use in the preparation and creation of DNA extracts and cassettes for scientific and industrial purposes; DNA extracts and cassettes for scientific and research use; DNA extracts for use in agri-biotechnology and nanotechnology; nucleic acids comprising natural and unnatural nucleotides for use in nanotechnology applications including data storage, data retrieval and computing; nucleic acid analogues comprising synthetic backbones or a mixture of natural and synthetic backbones for use in nanotechnology applications including data storage, data retrieval and computing; composites of nucleic acids or nucleic acid analogues with organic and inorganic chemicals for use in nanotechnology applications including data storage, data retrieval and computing; nucleic acid analogues with organic and inorganic chemicals for laboratory use in labeling, imaging and sensing applications; nucleic acid analogues with organic and inorganic chemicals for laboratory use in smart materials; two-dimensional and three-dimensional nucleic acid analogues with organic and inorganic chemicals for laboratory use in creating nanostructures and scaffolds.

Class 5: Vaccines; DNA based vaccines; DNA extracts, namely, nucleic acid sequences and chemical reagents for medical use; therapeutic DNA, namely, nucleic acid sequences and chemical reagents for medical and veterinary purposes; nucleic acids comprising natural and unnatural nucleotides for medical and veterinary purposes; nucleic acid analogues comprising synthetic backbones or a mixture of natural and synthetic backbones for medical and veterinary purposes; composites of nucleic acids or nucleic acid analogues with organic and inorganic chemicals for medical and veterinary purposes; nucleic acid analogues with organic and inorganic chemicals for medical and veterinary purposes in labeling, imaging and sensing applications; nucleic acid analogues with organic and inorganic chemicals for medical and veterinary purposes in smart materials; two-dimensional and three-dimensional nucleic acid analogues with organic and inorganic chemicals for medical and veterinary purposes in creating nanostructures and scaffolds.

The targeted public of the goods at issue is composed of the specialist public in the scientific, research, pharmaceutical and medical fields, although some of the goods in Class 5 such as vaccines could also be directed at the average consumer who receives a prescription for such goods to buy to later bring to their medical provider to administer. The attentiveness of these consumers will be high, particularly when the effects of chemicals and raw materials for research and industry, pharmaceutical preparations and vaccines can have serious consequences for the health of the end user, or in relation to the goods in Class 1, they would have an indirect impact on health and a direct impact on the quality and essential characteristics of the end products or on the results of the research.

The sign at issue is the word mark ‘ceDNA’. The applicant argues that this is the abbreviation for ‘closed-end (or closed-ended) DNA’. In this respect it has submitted extracts from its own webpage and its own patent application, as well as from other sources, to demonstrate this meaning. It claims that it is a known abbreviation by scientists. The proprietor denies this and argues that the extracts provided by the applicant either do not refer to the contested sign or refer to a different sign, are undated, dated just prior to the filing of the EUTM or thereafter and thus it denies that the applicant has shown that the term ‘ceDNA’ is widely known or descriptive. Moreover, it states that out of the 222 entries for ‘CE’ in Acronymfinder.com, none of those meanings refers to ‘closed-end/closed-ended’.

The proprietor argues that the evidence submitted by the applicant refers to countries outside of the EU and particularly the United States of America so it cannot show use in the EU. However, when examining descriptiveness, it must not only be assessed whether a mark was at the time of filing, in the eyes of interested circles, a description of the characteristics of the goods or services concerned, but also whether it is reasonable to consider this would be the case in the future (12/02/2004, C 363/99, Postkantoor, EU:C:2004:86, § 56 and 21/01/2009, T-307/07 'Airshower', EU:T:2009:13, §32). This is particularly true in relation to the specialist customers (17/09/2008, T-226/07 'Pranahaus', EU:T:2008:381, §29).

Moreover, terms used as specialised terminology to designate the respective relevant characteristics of the goods and services are to be considered descriptive. In these cases it is not required to demonstrate that the meaning of the term is immediately apparent to the relevant consumers to which the goods and services are addressed. It suffices that the term is meant to be used, or could be understood by part of the relevant public, as a description of the goods or services for which protection is sought, or a characteristic of the goods and services (17/09/2008, T-226/07, Pranahaus, EU:T:2008:381, § 36; 18/11/2015, T-558/14, TRILOBULAR, EU:T:2015:858, § 50).

The Court has held that certain English terms in the medical field (29/03/2012, T-242/11, 3D eXam, EU:T:2012:179, § 26) and technical fields (09/03/2012, T-172/10, Base-seal, EU:T:2012:119, § 54) will be understood by the relevant professionals throughout the European Union, as English is the commonly used professional language in these areas.

As such, the fact that the applicant’s evidence was published outside of the EU, particularly in the United States, does not immediately exclude this evidence. The scientific, medical and pharmaceutical industries are rather global in scale and the research necessary to bring forth vaccines and pharmaceuticals is not particularly restricted to geographical locations. It is not beyond the realms of reality that if a scientific term is known in the US as a descriptive term then it would also be understood by scientists and those in research, pharmaceuticals or the medical industry in the EU. As such, this evidence will now be examined to determine whether the term has been shown to be descriptive in relation to the contested goods.

Looking at the evidence submitted the applicant has shown in Annexure 12 that in 2013 Mr Kotin (from the applicant) published a paper on www.plosone.org which stated, inter alia, “We have termed these closed-ended, linear duplex molecules ‘CELiD’ DNA” and coined this term. The applicant argues that this shows that ‘CE’ was understood as ‘closed-end/closed-ended’ since 2013 which was prior to the filing of the EUTM on 28/02/2018. This article was referenced in another article included in Annexure 11 from xconomy.com dated 04/01/2018.

Annexures 1 and 2 refer to ‘DNA with closed ends’ and ‘closed end DNA’. Annexure 1 would appear to have been published in the Journal of Molecular Medicine in November 2002 but the internet article seems to be dated in November 2019. Annexure 2 has a publication date of November 2018 also. Annexure 3 is the US patent application of the University of Massachusetts, the inventor is Mr Kotin. It was filed on 03/03/2017 and published on 08/09/2017 under the title ‘Closed-ended linear duplex DNA for non-viral gene transfer’. In the summary at the end of page 1 and beginning of page 2 of this document it states:

“The disclosure relates, in some aspects, to the discovery that replication of nucleic acids encoding a heterologous nucleic acid insert flanked by certain types of asymmetric termini (e.g. asymmetric interrupted self-complementary sequences) results in covalent linkage of the asymmetric termini (e.g., asymmetric interrupted self-complementary sequences) and leads to the production of a novel conformation of closed-ended linear duplex DNA (ceDNA)”.

This is the first mention of the contested sign as registered within the evidence of the applicant and it is dated nearly two years prior to the filing of the EUTM and in a descriptive sense of being an acronym for a descriptive term in the scientific field. Annexure 4 is dated 04/01/2018 and entitled “Atlas Venture Launches Generation Bio” and it mentions “Dr Kotin discovered a novel modality for non-viral gene transfer, known as closed-ended DNA, or ceDNA”. This was published just over a month before the filing of the EUTM. Annexure 5, although undated and Annexure 6 which is dated 04/01/2018 refer to the same topic and also mentions ‘close-ended DNA (ceDNA)’. These publications are from sources independent of the applicant. Annexure 7 seems to be a document from 2018 although the exact date is unclear and references ceDNA in regards to cell and gene therapy. Annexure 8 is an extract from the applicant’s website with a date of extraction from November 2018 and which refers to ceDNA Technology and also mentions “…a novel method for non-viral gene transfer, known as closed-ended DNA or ceDNA”. In Annexure 9 there is an article published on the independent website www.pharmafile.com/news on 28/02/2018 the day the EUTM was filed, it refers to the Atlas as reported in the above articles and contains a quote which states, inter alia, “The round will also support the development of approaches to deliver ceDNA to other tissues such as the eye, the central nervous system and the lungs”. In Annexure 10 there is an extract from an article published on www.genengnews.com from 27/02/2018, the day before the filing of the EUTM, which repeatedly mentions ‘ceDNA’ and mentions, inter alia, that Dr Kotin identified ‘a novel modality for nonviral gene transfer, known as closed-ended DNA (ceDNA)’, the second article is from www.biospace.com and also dated on 27/02/2018 and which also refers to ceDNA in a descriptive fashion. Finally, the article in Annexure 11 which is an article published on xconomy.com on 04/01/2018 it refers to Dr Kotins paper from 2013 which outlined “the use of a type of genetic material-closed ended DNA, or ceDNA-for gene therapy. This eukaryotic DNA is packaged inside a lipid nanoparticle – essentially a fat bubble, a commonly used drug delivery tool – that is then injected into the body. The LNP dissolves once in the cytoplasm of a cell, and the ceDNA, on its own, heads to the nucleus to produce proteins”.

In its evidence submitted on 15/10/2020 the applicant includes an extract from the proprietor’s webpage to show that its sole technology is dbDNA whose main characteristic is ‘closed ended DNA’. It also shows how different companies and publications used ‘CE’ to indicate ‘closed end’.

Some of the evidence is dated prior to filing, one from 2013 and others from 2016 to just before and on the day of the filing of the EUTM, while others are from a few months to a year thereafter. However, as mentioned above, not all of the evidence has to be dated prior to the filing of the EUTM as evidence dated afterwards but which can indicate the meaning at the time of filing can also be taken into consideration, as can evidence that shows its use outside of the EU. The use of the type of technologies as covered by the EUTM is definitely an area which is under development and the scientific field all over the world will be following such developments. As such, the discovery of these type of closed-end DNA or ceDNA goods would be known by the scientific community in the EU, or a large part thereof also at the time of filing. The relevant goods in Classes 1 and 5 are the base compounds and chemicals and pharmaceutical preparations which contain these closed-end DNA or as abbreviated ceDNA. As such, the relevant consumer of these goods being specialists in the scientific, research, medical or pharmaceutical industries would be aware of the descriptive meaning of ceDNA in relation to these goods and would be able to clearly and without further reflection understand the type of goods involved, namely, that they are closed-ended DNA goods.

The proprietor has argued that out of the 222 entries for CE in Acronymfinder.com none of these refer to ‘closed end or closed ended’. It further argues that the mere fact that an abbreviation is derived from a descriptive term is not sufficient (13/06/2014, T-352/12, Flexi, EU:T:2014:519). If a clear, and not only hypothetical, descriptive function of the acronym cannot be ascertained or if there are so many possible meanings that the acronym is not directly referring to any of them, the mark is registrable.

However, in the present case the applicant has shown that in medical journals, patent applications and different publications in the field the term ‘closed-end DNA’ or the acronym itself ‘ceDNA’ has been used in a descriptive manner. The meaning of such is even clearly when contemplated in relation to the relevant contested goods which are related to chemicals, compounds and pharmaceuticals all containing closed end DNA or ceDNA and the fact that the relevant consumer is a specialist. Therefore, the fact that the Acronymfinder.com does not contain ‘CE’ as an entry cannot deny the fact that in publications, patents and medical journals the term is being used in a descriptive manner and as such the relevant consumer would be able to understand this meaning in relation to the goods. As such the proprietor’s argument in this regard must be set aside.

The proprietor took issue with some of the evidence that it referred to ‘LLC DNA’ (closed-ended linear duplex DNA for viral gene transfer), ‘CELiDDNA’ (closed-ended linear duplex molecule DNA) or ‘CELiD’ and not ‘ceDNA’ itself. However, even in these instances it is clear that ‘ce’ is referring to ‘closed-ended’ or ‘closed-end’ and ‘D’ or ‘DNA’ refers to ‘DNA’. Moreover, there are publications dated just before the filing of the EUTM and thereafter which use ‘ceDNA’ as registered as a descriptive term. The applicant argues that the only evidence filed prior to the filing of the EUTM was from the applicant itself. Indeed the inventor who is related to the applicant seems to have discovered this closed ended DNA but it used the term ceDNA in a descriptive fashion to describe the closed ended DNA and not as a trade mark to distinguish its goods in the market. Furthermore, this discovery and the term ceDNA and its description were used in patents, medical journals and different publications, both from the applicant and published by third parties. Therefore, the related specialist in this area would be aware of the developments in this area, not only in the US but in the EU also. Although the contested goods are relatively new forms of technology used in the treatment of disease the publications show that both prior to and after the filing of the EUTM the term ceDNA was being used in a descriptive fashion. Furthermore the proprietor argued that the ‘ce’ in its mark was used as its product is ‘crimped’, ‘crimpled’ or ‘crinkled’ although it did not submit any evidence to back up this assertion and as such this argument must be rejected. Even if this point had been proven it would still not take away from the fact that the relevant consumer would also understand the descriptive meaning of ‘closed-end DNA’ and as such it would still be descriptive. Therefore, the term ‘ceDNA’ was descriptive at the time of filing and also thereafter for the specialist public in relation to all of the contested goods and the application is fully upheld as based on the ground of Article 59(1)(a) EUTMR in conjunction with Article 7(1)(c) EUTMR.

NON-DISTINCTIVENESS – ARTICLE 7(1)(b) EUTMR

 

According to case-law, the signs referred to in Article 7(1)(b) EUTMR are signs which are regarded as being incapable of performing the essential function of an individual trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26).

 

The distinctive character of a trade mark must be assessed, first, in relation to the goods or services for which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 29).

 

The applicant’s arguments regarding the lack of distinctiveness of the contested mark are the same as those mentioned above and they are based on the assumption that the sign is descriptive. However, as seen above, it cannot be concluded that the contested sign is descriptive for the abovementioned goods. Therefore, no lack of distinctiveness of the contested mark can be affirmed on account of its alleged descriptiveness as regards those goods. The applicant has not provided any other arguments or evidence for the lack of distinctiveness of the contested mark.

 

Consequently, the application must also be rejected insofar as it is based on Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b) EUTMR.

 

 

Conclusion

 

The contested mark was descriptive pursuant to Article 7(1)(c) EUTMR and non-distinctive pursuant to Article 7(1)(b) EUTMR in relation to all the contested goods at the time of its filing. The EUTM proprietor did not demonstrate that it had acquired distinctive character either before its filing date or before the filing date of the application for invalidity.

 

In light of the above, the application is totally successful and the contested mark must be declared invalid for all the contested goods.

 

As the application is entirely successful on the grounds of Article 59(1)(a) EUTMR in conjunction with Articles 7(1)(b) and (c) EUTMR, it is not necessary to examine the remaining grounds on which the application is based.

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

 

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

 

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

 

 

The Cancellation Division

 

Zuzanna STOJKOWICZ

Nicole CLARKE

Richard BIANCHI

 

According to Article 67 EUTMR, any party adversely affected by this decision has 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.