Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 26/03/2019

Siemens Healthcare GmbH

Katja Lange

HC SI TC IP

PO Box 22 16 34

80506 Munich

ALEMANIA

Application No:	017980920
Your reference:	2018W25259EU
Trade mark:	FAST TRACK
Mark type:	Word mark
Applicant:	Fast Track Diagnostics Luxembourg S.a.r.l. 29 Rue Henri Koch 4354 Esch-sur-Alzette LUXEMBURGO

The Office raised an objection on 23/11/2018 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 16/01/2019, which may be summarised as follows:

1. The mark applied for, ‘FAST TRACK’, is not descriptive of the goods for which registration is sought and possesses a sufficiently distinctive character to serve as an indication of commercial origin.

The goods for which registration is sought target only highly specialised professionals, who will display a high degree of attention with respect to the goods.

2. If the Office’s interpretation of the meaning of the expression ‘FAST TRACK’ was correct, previous similarly-named trade marks applied for comparable goods would not have been registered.

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)(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 of registration 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).

Furthermore, ‘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).

As regards trade marks composed of more than one word, such as the sign applied for, descriptiveness must be determined not only in relation to each word taken separately but also in relation to the whole that they form (12/02/2004, C‑265/00, Biomild, EU:C:2004:87).

As a general rule, a mere combination of descriptive elements remains descriptive unless, because of the unusual nature of their combination, the word creates an overall impression that is sufficiently far removed from that produced by the combination of meanings of the elements of which it is composed, with the result that the word is more than the sum of its parts (12/02/2004, C‑265/00, Biomild, EU:C:2004:87).

It is not necessary that the signs and indications composing the mark that are referred to in Article 7(1)(c) EUTMR actually be in use at the time of the application for registration in a way that is descriptive of the 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 those signs and indications could be used for such purposes (e.g. 19/05/2010, T‑108/09, Memory, EU:T:2010:213, § 35).

A word mark that 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 regarding the same goods or services within the meaning of Article 7(1)(b) EUTMR.

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 guaranteeing the identity of the origin of the marked product to the consumer or end user (16/09/2004, C‑329/02 P, SAT.2, EU:C:2004:532). The finding that a sign is devoid of distinctiveness within the meaning of Article 7(1)(b) EUTMR is not conditional on a finding that the wording concerned is commonly used (12/02/2004, C‑265/00, Biomild, EU:C:2004:87).

Article 7(2) EUTMR states that Article 7(1) EUTMR applies notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

The Office responds to the applicant’s observations as follows.

In its submissions, the applicant argues that the mark applied for, ‘FAST TRACK’, is not descriptive of the goods for which registration is sought and possesses a sufficiently distinctive character to serve as an indication of commercial origin.

The Office has noted the applicant’s submissions. However, it must be advised that, when assessing a mark, the Office must consider it, not in its strictest grammatical sense, but rather how it would represent itself to the public at large, who will see it in relation to the goods and services for which registration is being sought and form an opinion of what it implies.

With regard to the applicant’s argument that there is no direct link between the contested goods and the mark applied for, it must be advised that

‘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).

In addition, 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 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, emphasis added).

As regards the applicant’s argument that the goods for which registration is sought target only highly specialised professionals, which in turn will display a high degree of attention with regard to the goods, the Office has noted the applicant’s comments.

However, the Office is not convinced by the argument relating to the relevant consumer (a professional public), and its level of attention regarding the contested goods. Their high level of attention alone does not signify that the consumer will recognise an indication of origin when confronted with such a clearly descriptive term, unless it is represented in a highly striking manner, which is not the case here. Consumers do not tend to carry out complex analyses of indications on goods or in relation to services they are confronted with and will perceive the expression ‘FAST TRACK’ only as a meaningful term conveying obvious and direct information about the nature and intended purpose of the goods in question (namely that they are, as in the Office’s initial notification of 23/11/2018, capable of producing or intended to provide more rapid results than usual; to accelerate the progress of, in this particular case, molecular in vitro diagnostic polymerase chain reaction (PCR) assays).

The fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

Moreover, according to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services, leads to the conclusion that the sign is devoid of distinctive character (19/09/2002, C‑104/00 P, Companyline, EU:C:2002:506, § 21). This is clearly applicable to the present case.

Furthermore, the sign applied for is simple, basic and so lacking in additional distinguishing features or graphic elements that it cannot carry out the ultimate function of the trade mark, even if the awareness of the relevant public is higher than average. Therefore, the sign will not be seen as a badge of origin and does not fulfil the role of a trade mark.

The Office asserts its opinion that the term ‘FAST TRACK’ consists exclusively of a meaningful expression easily understood by the relevant public. They will not perceive it as a trade mark but primarily as descriptive in nature, conveying obvious and direct information regarding the nature and intended purpose of the contested goods applied for, eclipsing any impression that the mark could indicate a trade origin.

The applicant also argues that if the Office’s interpretation of the meaning of the expression ‘FAST TRACK’ was correct, then previous similarly-named trade marks applied for comparable goods would not have been registered.

The Office has noted the applicant’s submissions. However, the abovementioned findings do not contradict the relevant case-law on which the applicant relies. The applicant cannot successfully rely on other registered EU trade marks for the same or similar goods and services. The circumstances that led to the acceptance of those marks cannot be subject to the objections of the present proceedings. Nor do they represent a valid argument to overcome the objection of lack of distinctiveness of the sign at issue. Every trade mark undergoes its own examination procedure, the outcome of which is based on specific grounds.

International registration No 1 334 228 applies to a different concept. Whilst it may have certain facets in common with the mark applied for, it has been found to be distinctive in its own right. It contains additional figurative elements that affect the overall impression created by the sign. Therefore, it is not comparable, for the purposes of examination, to the mark under consideration.

As regards EUTM registrations No 10 444 735, No 4 221 297 and No 1 775 882, all denominated ‘FAST TRACK’, the Office does not consider that it should follow these examples, for the reasons stated above. Furthermore, more favourable Office decisions in allegedly similar cases, cannot equate to an equal treatment that may lead to a registration of the trade mark in question. The mere fact that in other cases relating to other marks a less restrictive approach may have prevailed, does not amount to a violation of the principle of non-discrimination. Nor is it a reason for invalidating a decision which per se appears to be reasonable and to conform to the EUTMR, as interpreted by EU judicature. 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 (Streamserve; 02/05/2012, T‑435/11, UniversalPHOLED, EU:T:2012:210). Accordingly, if in previous cases the Office may have incorrectly taken an overly generous approach, that error should not be compounded by following such an approach in a subsequent case.

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; 09/10/2002, T‑36/01, Glass Pattern, EU:T:2002:245, § 35).

On the basis of acquired experience, the Office submits that the relevant consumers would perceive the trade mark applied for as a descriptive message and not as the trade mark of a particular manufacturer. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has either intrinsic distinctive character or distinctive character acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

Therefore, the applicant has not succeeded in convincing the Office that the sign applied for, ‘FAST TRACK’, will be perceived by consumers as indicating the commercial origin of the contested goods. It follows that the sign ‘FAST TRACK’ is not distinctive for the goods in question, pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, and is therefore unable to function as a trade mark in the marketplace, that is, it fails to distinguish the applicant’s goods from those of other undertakings. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its descriptive sense. The applicant has not claimed that the mark has acquired distinctiveness through the use that has been made of it (Article 7(3) EUTMR).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 17 980 920 is hereby rejected for all the goods claimed.

According to Article 67 EUTMR, you have 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.

Robert KLECUN