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

(Article 7 EUTMR)

Alicante, 21/08/2019

CLARKE, MODET Y CÍA. S.L.

Rambla de Méndez Núñez, Nº 21-23, 5º A-B

E-03002 Alicante

ESPAÑA

Application No:	017933318
Your reference:	MUE/18287/CDX/GM/MJ
Trade mark:	IonViev
Mark type:	Word mark
Applicant:	Kratos Analytical, Ltd. Trafford Wharf Road Wharfside, Manchester M17 1GP REINO UNIDO

The Office raised an objection on 08/04/2019 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. Attach L110

After an extension of two months, the applicant submitted its observations on 29/07/2019, which may be summarised as follows.

1. The mark is not descriptive, but distinctive.

2. The Office has previously registered marks containing the word element ‘view’.

3. The mark has acquired distinctiveness. This should be treated 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.

Descriptiveness and distinctiveness

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).

The applicant acknowledged the Office’s assessment of the relevant consumer, namely English-speaking professionals working in laboratories, but disagreed with the rest of the Office’s assessment.

The applicant argued that the mark is not descriptive, but at most allusive. The word combination ‘IONVIEW’ is unusual and there is no clear link to the goods for which protection is sought. ‘IONVIEW’ is not an expression that is used in common language to designate the kind, quality, intended purpose or any other characteristics of the goods.

The Office disagrees. As also noted by the applicant, ‘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).

While the mark ‘IONVIEW’ does not inform consumers about the kind of goods, for example that it is software, it does directly describe the intended purpose and function of the goods in question.

The applicant did not comment on the extracts from the article ‘Matrix-Assisted Laser Desorption/Ionization Imaging Mass Spectrometry’ ⁽⁾, provided by the Office, which refers to MALDI-imaging mass spectrometry (MALDI-IMS) as a technique for visualising the spatial distribution of biomolecules/ions. The applicant stated that it was part of the Euro-MALDI consortium, but did not prove provide information that the article referred to the applicant’s goods.

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).

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).

Contrary to the applicant’s arguments, the sign needs to be kept free for use by other undertakings, as the sign is descriptive for the goods in question.

The Office maintains that the relevant professional consumers would immediately and without further thought perceive ‘IONVIEW’ as describing the software’s function or intended purpose.

Professionals in the technological field tend to first perceive the descriptive character of the sign and then try to obtain technical information on the product (20/12/2011, R 1050/2011‑2, Link-seal, § 30).

When perceiving ‘IONVIEW’ in relation to software that may generate images like the example below, the relevant consumers will not consider the mark as an indication of commercial origin, but as describing the software’s function or intended purpose, namely to make it possible to see or inspect ions.

Extracted from Matrix-Assisted Laser Desorption/Ionization Imaging Mass Spectrometry, Nobuhiro Zaima; Takahiro Hayasaka, Naoko Goto-Inoue and Mitsutoshi Setou; December 2010, on 07/08/2019 at https://www.researchgate.net/publication/51166789_Matrix‑Assisted_Laser_DesorptionIonization_Imaging_Mass_Spectrometry.

The applicant argued that the fact that the combination ‘IONVIEW’ cannot be found in dictionaries confirms that the mark is distinctive.

The fact that the word combination does not exist in dictionaries does not make the mark distinctive.

As also highlighted by the applicant, since the trade mark at issue is made up of several components (a compound mark), to assess 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). It is the combination of the mark as a whole that the Office finds descriptive and non‑distinctive.

Contrary to the applicant’s argument, the mark as a whole does not need to serve in normal usage to describe the goods and services; it is sufficient that the relevant consumers would immediately perceive the mark’s descriptive message.

The applicant’s argument that the meaning attributed by the Office to the word combination ‘IONVIEW’, namely ‘look at or inspect ions’, does not accurately reflect the true function of the goods, as the latter do not operate exclusively for ions, indirectly confirms that the software does operate, among other purposes, for ions. The Office, therefore, maintains that there is a clear link between the software’s functions and the mark for which registration is sought.

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

Marks that are descriptive are also devoid of distinctive character (16/01/2013, T‑544/11, Steam Glide, EU:T:2013:20, § 49).

Contrary to the applicant’s assessment, the Office does not find that ‘IONVIEW’ holds the minimum degree of distinctive character required to function as a trade mark. The Office considers that the meaning of ‘IONVIEW’, in relation to the software for which protection is sought, is so evident that the relevant professional consumer would not attribute any trade mark significance to it.

Previous registrations

The applicant claimed that the mark ‘IONVIEW’ was a play on words, but did not further elaborate on why the combination of ‘ION’ and ‘VIEW’ would be perceived as such. Instead, the applicant referred to a long list of previously registered trade marks containing ‘view’, registered, inter alia, for Class 9. Based on this, the applicant concluded that marks consisting of two word elements, one being ‘view’ and the other being related to goods in Class 9, would be perceived by the relevant consumers as an indication of commercial origin.

The Office disagrees. First, the previously registered trade marks highlighted by the applicant were registered between 2002 and 2012. The goods in Class 9 are, in general, electronic goods, information technology and software — all fields known for rapid innovation. For previous registrations to be used as supporting arguments for registration in this class, reference should be at least to the most recent practice.

Second, some of the marks highlighted by the applicant were partly refused because they were descriptive for some of the goods and services and non-descriptive for others, or the objection was waived due to a limitation, such as EUTM No 11 019 064, ‘Clearview’ and EUTM No 9 963 273, ‘Easyview’.

Furthermore, in recent years the Office has rejected a long list of trade mark applications consisting of two words, one of which was ‘view’.

‘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).

The assessment of the applicant’s mark is therefore in accordance with current practice. The Office maintains that the mark is descriptive and devoid of distinctive character.

Further proceedings

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for EUTM No 17 933 318 is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b) and (c) in Ireland, Malta and the United Kingdom 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.

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.

The exhibits the applicant referred to in its response of 29/07/2019, were not attached to the response. When the proceedings are resumed, the applicant may want to submit this information.

Anja Pernille LIGUNA