Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)

Alicante, 28/08/2019

Kilburn & Strode LLP

Laapersveld 75

1213 VB Hilversum

PAÍSES BAJOS

Application No:	017896912
Your reference:	T117943EM/IAS/ks
Trade mark:	MultiPoint MPP
Mark type:	Word mark
Applicant:	St. Jude Medical, LLC One St. Jude Medical Drive St. Paul Minnesota 55117 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 02/10/2018 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 25/01/2019, which may be summarised as follows.

1. The relevant consumer would not immediately and without further thought perceive the mark ‘MultiPoint MPP’ as describing characteristics of the goods for which protection is sought. The mark is ambiguous and indeterminate and cannot be deemed immediately descriptive. A high degree of conceptual analysis would be required to connect the mark to the goods in question. On seeing or hearing the sign, there is a mental step that has be taken by the consumer before they can perceive any meaning between the sign and the goods.

2. The mark in question is unusual, uncommon and has different or vague meanings.

3. The Office provided dictionary references for the three elements of the mark ‘MultiPoint MPP’ but there is no dictionary reference for the term ‘MultiPoint MPP’. The fact that a mark is made up of components that may allude to certain features of the goods for which protection is sought and that the combination of those components complies with linguistic rules is not sufficient to justify refusal of a mark.

4. An assessment of a trade mark’s eligibility must be based on the overall impression that the mark in question produces and not the possible meaning of its individual elements. The combination of verbal elements results in a new term that does not clearly convey a description of the goods for which protection is sought. The term ‘MultiPoint MPP’ is not a known expression in the English language and is not used in common parlance in the medical field or beyond. The fact that a part of the relevant public may understand the general meanings of the individual elements ‘MULTI’, ‘POINT’ and ‘MPP’ cannot lead to a finding of descriptiveness of the combined term ‘MultiPoint MPP’. When taken as a whole, the mark is inventive. Additional mental steps are required to connect the mark with the goods covered.

5. Even minimal distinctiveness will render a mark acceptable for registration. A mark does not need to have a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark in question (16/09/2004, C‑329/02 P, SAT.2, EU:C:2004:532). A sign does not have to display imaginativeness, create surprise or make a striking impression in order to possess the minimal level of distinctiveness required under Article 7(1)(b) (21/01/2010, C‑398/08 P, Vorsprung durch Technik, EU:C:2010:29).

6. The applicant requested the right to claim acquired distinctiveness as a subsidiary claim.

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.

General remarks on Article 7(1) (b) and (c) EUTMR and Article 7(2)

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 follows from the wording of the provision, that Article 7(1)(c) EUTMR is not limited to indications designating the type or kind of the goods or services. Article 7(1)(c) EUTMR also covers the intended purpose of the goods and services in the sense of how the goods are meant to be used.

Article 7(1)(c) EUTMR does not require that these characteristics be commercially essential for the product. In light of the public interest underlying the provision, any undertaking must be able to freely use such signs and indications to describe any characteristic of its own goods, irrespective of how significant the characteristic may be commercially (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

Descriptiveness must be assessed on the basis of the perception of the mark, as a whole, by the relevant public. It suffices that the relevant public perceives the semantic content of the mark as an informational message, which does not need scientific proof (04/12/2014, T‑494/13, Watt, EU:T:2014:1022, § 33). Article 7(1)(c) EUTMR includes indications that may constitute subjective statements or perceptions for consumers, as long as the semantic message still informs about a feature of the goods, including a positive and desirable feature.

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).

Pursuant to Article 7(1)(b) EUTMR, marks shall not be registered when they are devoid of any distinctive character. Distinctive character within the meaning of Article 7(1)(b) EUTMR means that the mark applied for must serve to identify the goods or services in as originating from a particular undertaking, and thus distinguishing the goods or services from those of other undertakings (21/10/2004, C‑64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 33; 07/10/2004, C‑136/02 P, Torches, EU:C:2004:592, § 29).

Although each of the grounds for refusal laid down in Article 7(1) EUTMR calls for a separate examination (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 59), there is a substantial overlap between subparagraphs (b) and (c) of Article 7(1) EUTMR (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 18; 10/03/2011, C‑51/10 P, 1000, EU:C:2011:139, § 47). Descriptive indications are generally devoid of distinctive character (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 19; 10/03/2011, C‑51/10 P, 1000, EU:C:2011:139, § 33; 14/06/2007, T‑207/06, Europig, EU:T:2007:179, § 47; 26/05/16, T‑331/15, The SNACK COMPANY, EU:T:2016:323, § 46). A sign may also lack any distinctive character for reasons other than those related to a purely informational meaning (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 19).

Article 7(1)(b) EUTMR must be examined with regard to the goods and services for which protection is sought, and also with regard to the perception of the relevant public, who is deemed to be reasonably observant and circumspect (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 34; 27/07/2018, T‑362/17, FEEL FREE, EU:T:2018:390, § 34; 19/06/2014, C‑217/13 & C‑218/13, Oberbank e.a., EU:C:2014:2012, § 39). However, as regards the link with the goods and services for which protection is sought, a sign will lack distinctiveness when its semantic content refers to characteristics or features of the goods or services for which protection is sought without necessarily giving precise information, but when the content refers customers to commercial aspects of the goods or services and incites them to buy or order the goods or services (30/06/2004, T‑281/02, Mehr für ihr Geld, EU:T:2004:198, § 31; 15/12/2009, T‑476/08, Best Buy, EU:T:2009:508, § 19).

Article 7(2) EUTMR states that paragraph 7(1) applies notwithstanding that the grounds of preventing registration obtain in only part of the European Union.

The applicant’s arguments

The sign at issue is made up of three verbal elements. Even though the words ‘MultiPoint’ in the mark ‘MultiPoint MPP’ are conjoined, they are clearly recognisable, and the mark would immediately be seen as two words and the abbreviation ‘MPP’. In addition, the effect of a missing space is actually neutralised by the capitalisation of the letter ‘P’, which enhances the perception of the sign as the combination of two meaningful words (07/06/2005, T‑316/03, MunichFinancialServices, EU:T:2005:201, § 37). Merely bringing a number of words together with or without a space or internal capitalisation is not sufficient to convey an overall impression that goes beyond the sum of the parts, and does not constitute an unusual variation as to syntax or meaning (09/02/2010, T‑113/09, SupplementPack, EU:T:2010:34, § 35, 36; 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 98; 12/01/2000, T‑19/99, Companyline, EU:T:2000:4, § 26).

The definitions of each element of the sign provided in the notice of grounds for refusal were extracted from the Collins Dictionary and supported by the internet search and constitute clear evidence of the word’s meaning. Accordingly, it was established, and remains so, that the relevant consumer will understand the sign as meaning ‘involving more locations/place, multi point pacing’.

According to settled case-law, however, even in the case of a neologism whose use as a whole by third parties has not yet been proven, merely bringing two descriptive terms together does not prevent them remaining essentially descriptive unless, because of the unusual nature of the combination of the terms concerned, an overall impression is created that 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 overall term is more than the sum of its parts (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 37-39, 43; 15/05/2014, T‑366/12, YoghurT‑Gums (fig.), EU:T:2014:256, § 16).

Regarding the argument that there is no definition of ‘MultiPoint MPP’ in dictionaries, the notion of descriptiveness is based on the ordinary understanding of the word in question by the relevant public. This can be corroborated by dictionary entries, examples of the use of the term in a descriptive manner found on internet websites, or it may clearly follow from the ordinary understanding of the term.

It is not necessary for the Office to prove that the word is the subject of a dictionary entry in order to refuse a sign. In particular, for composite terms, dictionaries do not mention all possible combinations. The important matter is the ordinary, simple meaning. In addition, terms used as specialised terminology to designate the respective relevant characteristics of the goods and services are considered descriptive. In these cases, it is not required to demonstrate that the meaning of the term is immediately apparent to the relevant consumers. It suffices that the term is meant to be used, or could be understood by part of the relevant public, as a description or characteristic of the goods or services for which protection is sought (17/09/2008, T‑226/07, Pranahaus, EU:T:2008:381, § 36; 18/11/2015, T‑558/14, TRILOBULAR, EU:T:2015:858, § 50).

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

Contrary to the applicant’s view, the meaning of the mark is easy to grasp in connection with the goods for which protection is sought and does not require any additional mental steps. When seeing the meaningful sign ‘MultiPoint MPP’ used on medical device, namely, lead electrode reconfiguration feature sold as an integral component of a cardiac stimulation device, the relevant medical professional, namely cardiologist, will directly and without further thought perceive the clear and unequivocal message that the goods for which protection is sought are a specific component of a device that can deliver pulses to two or more points in one chamber of the heart, which is known as multi point pacing (MPP). As mentioned in the notice for grounds for refusal, the combination of the term ‘MultiPoint’ and ‘MPP’ each of which is descriptive of characteristics of the goods themselves, remains descriptive of those characteristics. Therefore, the link between the content of the contested mark ‘MultiPoint MPP’ and the goods in question is sufficiently concrete and direct to prove that the sign enables the relevant public to identify the goods’ characteristics and type.

All the components of the sign, taken individually or in combination with each other, are not memorable for the average consumer. The overall impression of the sign does not have any characteristic element or eye-catching features likely to confer a minimum degree of distinctive character to the sign, therefore, the consumer cannot perceive it as an indication of commercial origin.

Accordingly, the sign applied for is devoid of elements that could enable the relevant average consumer easily and immediately to memorise it as a trade mark for the goods for which protection is sought (21/01/2010, C‑398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 44-45, 56-59). The applicant’s sign has no distinctiveness, even to a minimal degree, since it is endowed with no attributes indicating commercial origin in relation to the goods (19/09/2002, C‑104/00 P, Companyline, EU:C:2002:506, § 20).

The applicant has further argued that registration of a sign as a trade mark is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark. The Office can only agree with this argument. However, a mark that, as in the present case, does not possess any originality or resonance requiring at least some interpretation by the relevant public, and that would simply be seen as a descriptive term, cannot guarantee the identity of the origin of the goods at issue to the consumers or end users by enabling them, without any possibility of confusion, to distinguish these goods from others that have a different origin. The simple combination of three easily recognisable elements is not capable of creating an overall impression that is sufficiently far removed from that produced by the combination of meanings lent by the elements of which it is composed, with the result that the meaning of the overall term created is more than the sum of its parts (15/05/2014, T‑366/12, YoghurT‑Gums (fig.), EU:T:2014:256, § 16; 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 96, 104; 12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 37, 43).

As such, the sign is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods, 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 (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 20).

Therefore, the applicant has not succeeded in convincing the Office that the sign ‘MultiPoint MPP’ will be perceived by consumers as indicating the commercial origin of the goods in question. The Office maintains that relevant medical professionals cannot perceive the mark other than in its descriptive sense, that is that the goods for which protection is sought are a specific component of a device for the treatment of the heart, (i.e. delivering pulses to two or more points in one chamber of the heart) known as multi point pacing (MPP).

The Office takes note of the subsidiary claim of acquired distinctiveness. The procedure will be initiated once the examination of the inherent registrability of the sign is finalised.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for EUTM No 17 896 912 is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b) and (c), at least in the English-speaking territories of the European Union (Article 7(2) EUTMR), that is, the public in Ireland, Malta and the United Kingdom, for all goods claimed.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Michaela POLJOVKOVA