Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 25/07/2019

HANNA MOORE + CURLEY

Barry Moore

Garryard House 25/26 Earlsfort Terrace

Dublin 2 Dublin D02 PX51

IRLANDA

Application No:	018021920
Your reference:	M10-185-65TEU
Trade mark:	ProteinID
Mark type:	Word mark
Applicant:	MICROSAIC SYSTEMS PLC Unit 2, GMS House Boundary Road Woking, Surrey GU21 5BX REINO UNIDO

The Office raised an objection on 18/03/2019 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.

The Applicant submitted its observations on 18/04/2019, which may be summarised as follows:

• The term “ProteinID” is not used in scientific or even ordinary language. The consumers in question would notice that there is no space between Protein and ID, and furthermore would know that no such term exists in the relevant field. The expression is grammatically incorrect. The relevant consumer would consider it an invented term that would stimulate curiosity.

• Finally the Applicant uses the mark in a trade mark sense to identify the machine and technique that underpins the product offering – see Annex 1 to this letter. Also, it has been recognized as a trade mark within the scientific community. For evidence of this see Annex 2, which includes a listing as “a top innovation in 2018” by online journal The Analytical Scientist and Annex 3, which shows “Google search” results pointing directly to the product.

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 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 Applicant points out that the term “ProteinID” is not used in scientific or even ordinary language, that the consumers in question would notice that there is no space between Protein and ID, and that furthermore would know that no such term exists in the relevant field: the expression is grammatically incorrect and the relevant consumer would consider it an invented term that would stimulate curiosity.

As regards this argument, the Office points out that 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 for registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

A trade mark consisting of a neologism or an invented 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.

The registration of a Trade mark does not depend on its place and its meanings in the dictionary. The expression as such is meaningful and grammatically correct. The relevant public will understand it without the need to make a cognitive leap.

In this case, the Office did not apply any stricter criteria and did not consider this mark lacking distinctive character because it is descriptive, but because it is considered to be perceived by the relevant public as a mere description according to which the contested goods are spectrometric instruments for the purpose of identifying proteins. ID would be understood as identification.

Finally the Applicant claims that he is using the mark in a trade mark sense to identify the machine and technique that underpins the product offering (see Annex 1 + Annex 2 + Annex 3).

As regards this argument, the Office underlines that it appreciates the distinctiveness of a sign only through the representation of it, the goods and services claimed, and the perception of the relevant public.

After giving due consideration to the annexes provided, the Office does not see that a significant fraction of the average English-speaking consumers of the UK, Ireland and Malta (English speaking countries where English is the official language) recognizes the expression "ProteinID" as a brand capable of distinguishing the products of the holder from others existing on the market.

The ‘absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual or striking’ (05/04/2001, T‑87/00, Easybank, EU:T:2001:119, § 39).

The sign applied for is simple, basic and so lacking in additional distinguishing features or striking figurative elements that it cannot carry out the ultimate function of the trade mark. There is absolutely no evidence to suggest that the relevant public will perceive the overall sign as an indication of commercial origin.

A mark must be recognised as having distinctiveness if, apart from its promotional function, it may be perceived immediately as an indication of the commercial origin of the goods and services in question.

In the case at hand, the relevant consumers would perceive the sign as providing information about the kind and intended purpose of the goods in question and nothing else.

Consequently the expression cannot be regarded as appropriate for the purpose of identifying the commercial origin of the goods which it designates, and therefore, of performing the essential function of a trade mark. It will simply and solely be perceived as a description/indication of what the goods are intended to do.

Bearing in mind the above considerations, the Office finds that, considered as a whole, the mark applied for, which is dominated by its word elements, is not more distinctive as regards the goods in question that the sum of the elements of which it is composed.

The Office does not see in the contested sign an immediate strength and distinctiveness in order to be caught as an independent sign related to a concrete business source.

Therefore, the objection under 7.1.b and 7.1.c EUTMR cannot be removed.

On this basis, the application should not proceed to registration.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR, the application for EUTM No. 18021920 ProteinID 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.

Magali VOISIN