Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 23/05/2019

Cooley (UK) LLP

Dashwood 69 Old Broad Street

London London, City of EC2M 1QS

REINO UNIDO

Application No:	018007620
Your reference:	334422-20000/NB
Trade mark:
Mark type:	Figurative mark
Applicant:	Cadence Health, Inc. #900, 405 14th Street Oakland California 94612 ESTADOS UNIDOS (DE AMÉRICA)

1. The Office raised an objection on 25/01/2019 pursuant to Article 7(1)(b) EUTMR because it found that the trade mark applied for is devoid of any distinctive character, for the reasons set out in the attached letter.

2. The applicant submitted its observations on 25/03/2019, which may be summarised as follows:

• The applicant submits that the mark is evidently capable of performing a trade mark function and is inherently distinctive. It has at least the minimum degree of distinctive character required by established case law.

• The features of the mark create a unique and highly stylised design. The Examiner’s statement is entirely unsupported by factual corroboration or reasoning. The common shape of a pill blister pack is square or rectangular. Google searches conducted by the applicant show without exception square and rectangular blister packs (examples are included).

• The Applicant’s Mark is a figurative mark comprised of an outer triangular shape that contains two internal geometric patterns, namely a circular design of 7 hollow circles connected by a black line, and a triangular design of 21 hollow circles connected by a black line. The combination of these designs is unique and sufficient to cross the distinctiveness threshold.

• The relevant public possesses a high level of attention and would therefore perceive the mark as a trade mark and a distinctive sign. The Examiner must recognise the higher level of consumer attentiveness in this case.

• Similar figurative designs have been accepted by the Office (examples are given). In accordance with the principle of equal treatment the mark should be accepted.

• The USPTO has accepted an identical application.

• The applicant refers to the EUTMR and relevant case law to support its arguments.

3. Pursuant to Article 75 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).

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that 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, § 26).

The Office cannot find that the mark as whole possesses a sufficient degree of distinctive character or that it has the minimum degree of distinctive character required.

No evidence has been put forward by the applicant to show that the mark is capable of performing a trade mark function.

There is nothing unique about the mark applied for which merely consists of a depiction of blister pack of 28 contraceptive pills (presumably to be taken four weeks in a row and which is common for contraceptives). The Examiner did mention in the Notice of grounds for refusal that the triangular shape in question may be unusual since blister packs normally have a rectangular or even round shape, but that it still cannot function as an indication of the commercial origin of the goods.

The mark will merely be perceived as a variation of a normal blister pack available in the trade. The applicant has submitted numerous images of blister packs found on the internet as proof that a blister pack like the one in the application does not exist. However, the examination of the distinctiveness of the trade mark is not an examination of novelty, as in the right to a patent or registered design. So it is not sufficient to maintain that an internet search found no pictures of blister packs that are exactly the same as the sign applied for.

The mark does not contain any distinctive element that enables a consumer to suppose that it is anything other than a blister pack of contraceptives.

Blister packs for contraceptives can or could come in various shapes other than rectangular or square, such as octagonal or round:

https://99percentinvisible.org/episode/repackaging-the-pill/

https://myhealth.alberta.ca/Health/aftercareinformation/pages/conditions.aspx?hwid=ug5531

When the targeted consumers choose a medicine, they do not look at the shape of the illustration of a blister pack on the outside packaging of the medicine, but rather the description of that particular medicine, its ingredients, its dosage and its function. For this reason they will most probably simply ignore the details such as e.g. the triangular shape of the illustrated blister pack.

The “two internal geometric patterns, namely a circular design of 7 hollow circles connected by a black line, and a triangular design of 21 hollow circles connected by a black line” will not at all be perceived as geometric patterns but merely as where the pills are located; the outer triangular part being the 21 pills to be taken the first three weeks and the inner seven pills in a circle to be taken the last week. The last seven pills in 28-day packs of combination contraceptive pills do not have hormones in them; hence it is normal that they are separated from the other set of 21 pills containing hormones. These features will therefore only be seen as a practical feature of the goods.

It is disputable if the average female consumer of the pill possesses a high level of attention and would perceive the mark as a trade mark and a distinctive sign for the reasons stated above.

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, 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 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 examples given by the applicant are pure figurative marks and not depictions of any product such as a blister pack and they all have some distinctive features. The third example (EUTM No. 8697641) is not merely two circles but it appears like two eyes of an animal such as a frog.

The Office has refused e.g. EUTM application No. 013715222 for a figurative mark consisting of a depiction of a blister pack for pharmaceuticals:

The refusal was confirmed by the Boards of Appeal in Case R 1377/2015-5.

As regards the USPTO decisions referred to by the applicant, according to case-law:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

4. For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for European Union trade mark No 018007620 is hereby rejected for the following goods:

Class 5 Oral contraceptives.

The application may proceed for the services in class 44.

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.

Cecilia ALIN