Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 14/01/2020

SQUIRE PATTON BOGGS (UK) LLP

7 Devonshire Square

London EC2M 4YH

United Kingdom

Application No:	017953312
Your reference:	IWR.001-0054
Trade mark:	MD CODES
Mark type:	Word mark
Applicant:	MDMAIO INCORP EDUCACIONAL LTDA Avenida Ibirapuera, 2907, 12º Andar, Conjunto 1203, Sala C, Moema São Paulo – SP São Paulo 04029 200 Brazil

With the notification of 22/10/2018 (attached) the applicant was informed, that the sign applied for cannot be registered under Article 7(1)(b), (c) and 7(2) EUTMR.

With the above notice the applicant was given opportunity to submit observations in reply.

On 18/12/2018 the applicant submitted its observations which can be summarized as follows:

1. The mark ‘MD CODES’ is inherently distinctive.

2. The term ‘Doctor of Medicine Codes’ cannot be said to have any meaning in relation to the services for which protection is sought.

3. Applying the correct test and considering the mark as a whole, the term ‘MD ‘CODES does not form a ‘usual, meaningful’ expression in relation to the services concerned.

4. The mark ‘MD CODES’ is at most allusive.

5. The references from the internet on which the objections to the mark are based, are not relevant.

6. The Office has registered similar marks from the applicant.

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 having given the above arguments careful consideration, the Office maintains the grounds for refusal in respect of the contested services. The reasons are explained hereunder.

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.

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).

According to the case-law of the European courts, a word mark that is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services for the purposes of Article 7(1)(b) EUTMR (judgment of 12/06/2007, T-190/05, ‘Twist & Pour’, EU:T:2007:171, § 39).

The marks referred to in Article 7(1)(b) are, in particular, those which do not enable the relevant public to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned (27/02/2002, T-79/00, ‘LITE’, EU:T:2002:42).

As a preliminary point, it should be borne in mind that a trade mark is distinctive if it makes it possible to identify the product or the service for which registration is sought as originating from a given undertaking and therefore to distinguish the product or the service from those of other undertakings (e.g. 16/09/2004, C-329/02 P, ‘SAT.2’, EU:C:2004:532).

Article 7(1)(b) EUTMR is intended to preclude registration of trade marks which are devoid of distinctive character which alone renders them capable of fulfilling that essential function (‘SAT.2’). The finding that a sign is devoid of distinctiveness within the meaning of Article 7(1)(b) EUTMR is not conditioned by a finding that the term concerned is commonly used (12/02/2004, C-265/00, ‘Biomild’ EU:C:2004:87).

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 (‘SAT.2’).

A word mark which is descriptive of characteristics of the goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) EUTMR. A mark may be devoid of (any) distinctive character in relation to goods or services for reasons other than the fact that it may be descriptive (12/02/2004, C-363/99, ‘Postkantoor’, EU:C:2004:86).

It must be stressed that the distinctive character of the trade mark is determined on the basis of the fact that the mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question (consistent case-law on absolute grounds for refusal).

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

The absolute grounds for refusal of a lack of distinctive character and the characteristics of descriptive and usual indications each have their own scope of application and are neither mutually dependent nor mutually exclusive. Even though the existence of just one ground for refusal is enough, they can also be examined cumulatively. Each of the grounds of refusal has to be interpreted in the light of the underlying public interest. Interpreting the case-law by the Courts, it can be concluded that a sign must be refused registration under Article 7(1)(b) EUTMR if, on the basis of its most obvious meaning in relation to the goods or services in question, it is devoid of distinctive character.

In light of the foregoing, the underlying trade mark principles must be interpreted as meaning that, when refusing registration of a trade mark, the Office is required to state in its decision its conclusion for each of the individual goods and services specified in the application for registration, regardless of the manner in which that application was formulated.

The applicant submits that the mark should be accepted as it possesses the requisite level of distinctiveness. There is nothing to suggest that ‘MD CODES’ is descriptive or in common use for the services in question. In this respect, the articles cited by the Office in the previous notice are not relevant. At most, ‘MD CODES’ is allusive. In support of its argument that the application should be accepted, the applicant relies heavily on its previous EUTM registrations consisting of or including the words ‘MD CODES’. In further defense of the mark, the applicant relies largely on established trade mark principles and on the case-law (e.g. C-329/02 ‘SAT.2’, T-441/05, ‘I’, T-67/07, ‘FUN’).

The Office respectfully disagrees with the applicant’s submissions and arguments. The applicant wrongly claims the absence of a sufficient link between the sign and the services at issue. It is not relevant in this respect whether or not a sign is included in dictionaries and, further, it is established case-law that a word mark is refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned (‘Doublemint’). This is the case here. According to settled case-law, the applicant cannot rely on the publication or registration of other trade marks. It has become well-established case-law by now that earlier Office decisions cannot give rise to legitimate expectations (28/06/2017, T-479/16, ‘AROMASENSATIONS (fig.)’, EU:T:2017:441, § 41 and the case-law cited therein).

In the case at hand, in order for the sign to be registered it has to be capable of performing the essential function of a trade mark that is, enabling the consumer who acquired the services covered by the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative. The distinctiveness of a mark, including distinctiveness acquired through use, must be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods and services in question, who is reasonably well informed and reasonably observant and circumspect 22/06/1999, C-342/97, ‘Lloyd’, EU:C:1999:323).

The next step consists of considering the possible meanings of the sign and determining whether, from the point of view of the intended public, there is a sufficiently direct and specific association between the sign and the categories of goods or services in respect of which registration is sought (20/03/2002, T‑356/00, ‘Carcard’, EU:T:2002:80).The refusal of a trade mark as being descriptive is already justified if, for the public addressed, there is a sufficiently direct and specific relationship between the mark applied for and the goods or services claimed.

According to settled case-law, those signs and indications which may serve in normal usage from the point of view of the intended public to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought, are descriptive. In order for a trade mark to be refused registration under Article 7(1)(c) EUTMR, 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 the goods or services, 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 be refused registration under the provision of Article 7(1)(c) EUTMR if at least one of its possible meanings designates a characteristic of the goods or services concerned (‘Doublemint’).

Furthermore, it is a well-known fact that descriptive and non distinctive words are commonly used as trade marks, the users having the idea that a trade mark should tell what product it is or give information about a positive characteristic of that product. Still, this does not mean that the user can gain protection for such a designation, in any case not before having documented acquired distinctiveness. In that connection, trade marks whose semantic content will be perceived in the main by the relevant public as a means of conveying information rather than as an indication of the commercial origin of the goods or services are devoid of any distinctive character (e.g. 03/07/2003, T‑122/01, ‘Best Buy’, EU:T:2003:183).

As confirmed by the Court in, inter alia, 15/02/2007, C-239/05, ‘The Kitchen Company’, EU:C:2007:99), where the same ground of refusal is given for a category or group of goods or services, the competent authority may use only general reasoning for all of the goods and/or services concerned.

The services claimed are “medical and healthcare services; clinical trial services; medical analysis for the diagnosis and treatment of persons; medical treatment services provided by clinics; cosmetic clinic services; cosmetician services; cosmetic analysis; cosmetic treatment; advisory, consultancy and information services relating to the aforesaid” in Class 44. The relevant public therefore consists in any case of medical-, healthcare and cosmetic specialists.

With respect to the applicants criticisms regarding the internet citations provided by the Office, it cannot be denied that the abbreviation ‘MD’ is short for ‘medical doctor’, ‘doctor of medicine’, ‘medical department’ and thus has a relevant meaning. This not only follows from the internet references mentioned in the contested notice, but also from many other similar publicly accessible websites such as www.acronymfinder.com, www.abbreviations.com , or en.wikipedia.org, which makes it less necessary for the Office to provide more arguments. There exist many more and specialist sources, in and outside of the European Union, in which the term ‘MD’ is referred to in a non-trade mark manner. Accordingly, contrary to the claims of the applicant, the applied-for mark has a meaning sufficiently clear for the relevant specialist public.

The use of the term ‘MD’ in the context of the application conveys an informative message in the sense that the services claimed are of a nature for which professional medical assistance, e.g. a medical doctor, dermatologist, is needed, e.g. with regard to diagnosis and treatment, preparation and dispensing of medications.

Medical coding is the transformation of healthcare diagnosis, procedures, medical services, and equipment into universal medical alphanumeric codes. The diagnoses and procedure codes are taken from medical record documentation, such as transcription of physician's notes, laboratory and radiologic results, etc.

For example, diagnosis codes are used as a tool to group and identify diseases, disorders, symptoms, adverse effects of drugs and chemicals, injuries and other reasons for patient encounters. If you go to the doctor with a skin problem, and present the doctor with symptoms like a rash or patches of discolored skin, these will be recorded, along with the procedures the doctor performs and the medicine the doctor prescribes. The need for keeping everything in a short and systematic way has given birth to the concept of medical coding. It refers to changing-over the healthcare diagnosis, medical services and equipment into combination of alphanumeric medical codes. Coding also allows for uniform documentation between medical facilities. Having uniform data allows for efficient research and analysis, which government and health agencies use to track health trends much more efficiently.

With regard to the applicant’s argument that the Office has already registered marks of the applicant containing the words ‘MD CODES’, according to settled case law, ‘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 true that the Office should attempt to be consistent. Previous decisions of the Office may therefore be invoked and, if a genuinely comparable precedent is cited, the Office must consider whether it should be followed. The Office must nonetheless decide in each case whether, on the basis of a correct interpretation of the legislation, the mark applied for is eligible for registration.

The Office concurs with the applicant that the registrations cited bear a prima facie similarity to the sign applied for by way of the words ‘MD CODES’. Whether the Office has already registered the terms ‘MD CODES’ does not help the applicant. Neither identical registrations nor registrations by the EUIPO in respect of similar trademarks constitute grounds for nevertheless allowing applications that are devoid of distinctive character (13/02/2008, C-212/07, ‘Hairtransfer’, § 44, EU:C:2008:83). Every trade mark undergoes its own examination procedure, the outcome of which is based on specific grounds. As the Office has no discretion to refuse or allow a trade mark application, the principle of legality of administration requires that, in all instances, the necessary decision be made if the legal requirements in respect thereof have been met, irrespective of whether different decisions should have been made in previous cases (27/02/2002, T-106/00, ‘Streamserve’, § 67, EU:T:2002:43).

Furthermore, 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. Insofar as a certain inconsistency might have occurred with a mark, 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. This is not different where it concerns the applicant itself (‘Streamserve’).

Accordingly, if in previous cases the Office has maybe incorrectly taken an overly generous approach, that error should not be compounded by following such an approach in a subsequent case. The present decision is consistent with the Office’s practice on absolute grounds and in conformity with the case law of the Courts. Fundamentally, within the scope of European harmonised trade mark law and even more so within the Office’s examination practice, attempts should be made to ensure that the same results are reached in comparable cases (12/02/2009, C-39/08, ‘Volkshandy’, EU:C:2009:91). Neither identical registrations nor registrations by the EUIPO in respect of similar trademarks constitute grounds for nevertheless allowing applications that are devoid of distinctive character (13/02/2008, C-212/07, ‘Hairtransfer’, § 44, EU:C:2008:83).

The mere fact that the applicant’s earlier registrations consist of the indication ‘MD CODES’ does not make them evidently similar with the sign at hand nor could it be concluded that the application mark would be distinctive and thus cannot support its registrability. The European trade marks with numbers 013643929 and 016340101 have been registered for goods and services in Classes 16, 41 and 42. The latter also incorporates a figurative element.

As for the other signs ‘MD CODES CLINIC’ and ‘MD CODES SIGNATURE’, they have little in common with the application mark and have been found to be distinctive in their own right.

It derives from all the foregoing that the applicant has not succeeded in convincing the Office that the sign ‘MD CODES’ will be perceived by the consumers as pointing to the commercial origin of the services at issue.

The applicant has not claimed that its mark has acquired distinctiveness through the use that has been made of it (Article 7(3) EUTMR).

For the reasons set out above, and in the previous notification, the word sign ‘MD CODES’ does not possess any actual distinctive character in relation to the services, pursuant to Article 7(1)(b) and (c) EUTMR in combination with Article 7(2) EUTMR, and is therefore unable to function as a trade mark in the market place, i.e. it fails to distinguish these services from those of other undertakings.

The absolute grounds for refusal under Article 7(1)(b) and (c) EUTMR precludes the registration of the sign as a trade mark at least in the English-speaking territories of the European Union (Article 7(2) EUTMR), i.e. the public in the United Kingdom, Ireland and Malta.

Since the sign lacks an inherent distinctive character, it is prima facie barred from registration and hereby refused pursuant to Article 7(1)(b), (c) and 7(2) EUTMR for the services claimed.

Under Article 67 EUTMR, you have a right to appeal against this decision. In accordance with 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 be filed only when the appeal fee of EUR 720 has been paid.

We apologize for the delay in this case.

Peter SCHYDLOWSKI