Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 12/12/2018

URQUHART-DYKES & LORD LLP

Euston House

24 Eversholt Street

London NW1 1AD

REINO UNIDO

Application No:	017929211
Your reference:	T135213EM/AJC
Trade mark:	SMARTVALVE
Mark type:	Word mark
Applicant:	Surefire Medical, Inc 6272 W. 91st Avenue Westminster Colorado CO 80031 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 07/08/2018 pursuant to Article 7(1)(b), (c) and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character for a number of goods for which protection is sought, for the reasons set out in the attached letter.

The applicant submitted its observations on 10/09/2018, which may be summarised as follows.

1. Nothing provided by the Examiner proves that the term SMARTVALVE describes the goods covered by the Application. The applicant's goods are mechanical valves, which are not electronic or active in any way.

2. The mark SMARTVALVE does not appear in dictionary.

3. The Applicant is aware of no use of the mark by competitors, indeed there is no need for competitors to use SMARTWALVE.

4. To ascribe a descriptive meaning would involve a further mental step or leap too far on the part of the relevant public to associate the mark with the goods of interest to the Applicant.

5. The applicant provides a list of marks that include the word SMART combined with a non-distinctive additional word/expression. It is argued that the Office should follow the same practice.

It is also stated that the applicant would willingly amend the application if this would overcome the objection.

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.

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).

The Office will now assess, in order, the arguments from the applicant.

1. Nothing provided by the Examiner proves that the term SMARTVALVE describes the goods covered by the Application. The applicant's goods are mechanical valves, which are not electronic or active in any way.

While the applicant submits that none of the goods at issue do not have any of the said characteristics, it must be stated that the descriptiveness of the sign has to be assessed in relation to the goods or services for which registration is sought and by reference to the relevant public’s perception of it (26/02/2016, Hot Sox, EU:T:2016:102, § 20).

The descriptiveness of the sign at issue was detailed by the examiner on the objection letter as follows:

Therefore, the aforementioned relevant consumer would understand the sign as a descriptive expression of goods concerned, namely, that they would be valves capable of some sort of independent action.

It must be stated that examination of the eligibility for protection of a sign always relates to the goods specifically applied for. The consumer ‘is not sitting in a dark, empty room without any idea’, where he has to guess what goods are being offered for sale under the sign. Rather, the examination must be carried out on the basis of the goods and services specifically objected to

The goods and services to which this objection applies are:

Class 10

Medical devices; infusion catheters.

The relevant consumer at issue was defined by the Office as an English-speaking specialised consumer, namely a physician. To this consumer, which would be familiar to medical valves of different types and uses, the sign would be meaningful in the manner that was explained in the objection letter.

The Office notes that the Court of Justice has stated that under Article 3(1)(c) of the First Council Directive of 21 December 1998 to approximate laws of the Member States relating to trade marks, the wording of which is identical to Article 7(1)(c) EUTMR, the component authority must determine whether a trade mark for which registration is sought currently represents, in the mind of the relevant class of persons, a description of the characteristics of the goods or services concerned or whether it is reasonable to assume that that might be the case in the future (see 04/05/1999, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 30-31; 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 56).

In that sense, the Office considers that it is inconsequential if the goods at issue are not active or are mechanical. It suffices that the sign ‘SMARTVALVE’ will be understood by the aforementioned relevant consumer as a description of certain characteristics of certain medical devices, namely medical valves.

Finally, it has to be stated that (emphasis added by the examiner):

“It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever 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).

The concerned argument has to be dismissed.

2. The mark SMARTVALVE does not appear in dictionary.

To that respect, the Office states that since the trade mark at issue is made up of two expression combined in a single word (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).

In the same sense, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (30/11/2004, T‑173/03, Nurseryroom, EU:T:2004:347, § 21).

As provided in the objection letter, the Office has provided an analysis of the two terms that compose the sign SMARTVALVE. Case law indicates 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).

The Office has made clear in its previous letter that that is not the present case. The combination of the words SMART and VALVE forms an intelligible and grammatically correct expression. Moreover, the merging of these two words such as ‘SMART’ and ‘VALVE’ by simply removing the space that would normally separate them in written language or combining them in a grammatically correct expression does not necessarily give rise to an invented word that is fanciful or arbitrary. It has virtually no effect on the meaning transmitted by the merged or combined words when displayed in a written message, and no effect at all on the meaning as far as the pronunciation of these words is concerned.

The Office also points out that, for a trade mark to be refused registration under Article 7(1)(c) EUTMR (emphasis added by the examiner):

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).

Therefore, the presence or lack of presence of the expression SMARTVALVE in the dictionary is of no consequence to the matter at hand.

3. To ascribe a descriptive meaning would involve a further mental step or leap too far on the part of the relevant public to associate the mark with the goods of interest to the Applicant.

As to this argument, case law clearly indicates that:

As regards the applicant’s argument that third parties, and more particularly its competitors, do not need to use the sign at issue to designate the goods to which the application relates, it must be observed that … the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) [EUTMR], does not depend on there being a real, current or serious need to leave a sign or indication free.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 39).

Consequently, the concerned argument has to be dismissed.

4. SMARTVALVE is an entirely inventive word and consequently, de facto distinctive, and its use is metaphorical, imaginative and fanciful. To ascribe a descriptive meaning would involve a further mental step or leap too far on the part of the relevant public to associate the mark with the goods of interest to the Applicant.

The Office considers that the concerned argument is not well founded. While the applicant offers that the sign would require from the relevant consumer a mental step to associate the sign with the goods applied for, it has not been explained why this step would be required.

As indicated previously, the word coined by the applicant is made up of two common English words, and their combination does not result in more than a mere sum of its parts. There is no covert or alternative meaning that can be assigned to the mark, and its meaning remains straight and clear.

While the applicant may affirm that its use is metaphorical due to the fact the goods applied for do not have any of the characteristics raised by the Office it has been already shown by the Office that the relevant issue is that the sign in question is descriptive of medical devices, indicating that these goods would be sophisticated medical valves.

Therefore, the Office cannot find merit in this argument.

5. The applicant provides a list of marks that include the word SMART combined with a non-distinctive additional word/expression. It is argued that the Office should follow the same practice.

It is well established that the legality of a decision of the Board is to be measured solely against the Regulation, as interpreted by the EU courts, and not by the practice of the Office’s examiners in other decisions (see judgments of 10 March 2011, C-51/10 P, ‘1000’, paras 73 to 75 and of 16 July 2009, C-202/08 P and C-208/08 P, ‘RW feuille d’érable’, para. 57 and case-law cited therein).

Moreover, insofar as a certain inconsistency would have occurred with this or some other marks, a person who files an application for registration of a sign as a trade mark cannot rely, to his/her advantage and in order to secure an identical decision, on a possibly unlawful act committed with respect to other marks to the benefit of someone else (see judgment of 10 March 2011, C-51/10 P, ‘1000’, para. 76 and case-law cited therein).

Furthermore, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see judgment of 10 March 2011, C-51/10 P, 1000, para. 77 and case-law cited therein).

In that sense, the Office finds that the acceptance for registration of the trade marks listed by the applicant has no impact on the decision at hand. It does not disqualify the objection raised or indicates any fault in its reasoning.

Therefore, the Office cannot find merit in this argument.

As all the arguments from the applicant have been dismissed as incapable of overturning the objection raised, the Office must now consider the applicant’s suggestion for a restriction of the list of goods applied for. As indicated in the item 5.2 of section 1 of part B of the Guidelines For Examination Of European Union Trade Marks, declarations of restrictions follow the same rules as declarations of withdrawals. Item 5.1 of the same section, which regards withdrawals of EUTM applications, states that (emphasis provided by the examiner):

A declaration of withdrawal is void where it contains conditions or time limitations. For example, it must not require the Office to take a particular decision or, in opposition proceedings, require the other party to make a procedural declaration. Such a requirement is simply viewed as a suggestion for resolving the case; the Office informs the opponent accordingly and may invite the parties to come to an amicable settlement. Furthermore, a declaration does not become effective if it is made for some goods and/or services (partial withdrawal) on condition that the Office accepts the application for the remaining goods and/or services. Such a declaration is simply viewed as a suggestion to enable the Office to arrive at an acceptable list of goods and services.

Where an applicant responds to an official action by filing a restricted list of goods and services (partial withdrawal), the Office checks whether the applicant is declaring the unequivocal withdrawal of the remaining goods and services or whether the amended list of goods and services is a proposal or counterproposal by the applicant, subject to the Office’s agreement.

As the concerned amendment is worded as a conditional clause, it must be considered as void.

In closing, the Office maintains that the sign applied for, SMARTVALVE, will be regarded by the relevant English-speaking consumers, namely medical professionals, as descriptive of the goods for which protection is sought, in the sense that they would be valves capable of some sort of independent action.

Moreover, given that the trade mark applied for has a directly descriptive meaning in connection with the goods it covers, it lacks the necessary distinctiveness to act as a badge of origin for the goods concerned.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for EUTMA No 17 929 211 is hereby rejected for all the 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.

Christiano DOS SANTOS TIMBO