Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 14/10/2019

DEHNS

St Bride’s House

10 Salisbury Square

London EC4Y 8JD

REINO UNIDO

Application No:	018022517
Your reference:	79.77.M114627
Trade mark:	STEALTH EDITION
Mark type:	Word mark
Applicant:	MAZOR Robotics, Ltd. 7 HaEshel Street, P.O. Box 3104 Qesaryya, South Park 3088900 ISRAEL

The Office raised an objection on 15/03/2019 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 15/07/2019, which may be summarised as follows.

• Robotic guidance systems are used in surgery for their predictability, precision and, in particular, the visibility they can offer. These three factors are incompatible with the term ‘stealth’. Besides, this term typically has a negative connotation. It serves to indicate that the goods were perhaps concealed or hidden, or that they might catch one unawares.

• Mounting platforms are a fundamental element of robotic guidance systems and, therefore, the mark is not descriptive of these goods. Surgical instruments, spinal implants and medical screws are all invasive instruments and cannot be described as stealthy. Furthermore, they will necessarily leave some evidence of the surgery.

• The nature of computer systems and software in Class 9 has nothing to do with surgery per se.

• ‘Stealth surgery’ is not a commonly used phrase in the medical profession and the single internet extract included in the notification is from a children’s hospital based in the United States, and so does not provide evidence of use of the term ‘stealth’ in this context for the relevant consumer in the European Union.

• The web extracts provided in the notification relate to the word ‘stealth’ only and not to ‘STEALTH EDITION’. The addition of the term ‘EDITION’ enhances the distinctiveness of the trade mark.

• Both web extracts relate to the applicant and are, therefore, not conclusive. Medtronic, Inc. (the first webpage) is the applicant’s parent company. The second webpage, Tallahassee Neurological Clinic, refers to the ‘Stealth Station’ product, which belongs to the applicant’s parent company.

• The relevant consumer is more attentive and, therefore, more likely to derive trade mark significance from the mark ‘STEALTH EDITION’.

• Other trade marks containing the word ‘STEALTH’ have been registered by the Office.

• With reference to the term ‘STEALTH’ the Court judgment of 16/09/2004, C‑329/02 P, SAT.2, EU:C:2004:532, demonstrates that the relevant public is accustomed to perceiving such signs as trade marks.

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 the objection was raised and following a classification deficiency notice, the list of the goods has been amended. However, the changes made do not affect the scope of objection.

The goods, in respect of which registration is sought, are the following:

Class 9 Computer systems for medical robots; operating software, image recognition software and software for processing images, graphics and text; robotic guidance system for surgical use comprising computer workstations containing central processing units (cpus), motherboards, specially-adapted mounting platforms, operating system software, medical imaging software, and medical image processors.

Class 10 Surgical robots for guiding surgical instruments; surgical instruments; complementary products for use with surgical guidance systems for surgical users to create a safe surgical environment for patients, surgeons, and staff during general spinal and brain surgery, namely, spinal implants comprised of artificial materials, metal medical screws, mounting platforms specially adapted for surgical instruments, and surgical instruments.

After giving due consideration to the applicant’s arguments, the Office has decided to waive the objection for the following goods:

Class 9 Operating software, image recognition software and software for processing images, graphics and text.

The objection is maintained for the remaining goods.

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 argued that robotic guidance systems have features that do not allow them to be described as stealthy. It is not obvious why the features mentioned by the applicant, namely predictability, precision and visibility, should exclude these goods from being described as stealthy. The applicant’s robotic guidance systems are intended for surgical use according to their specification. In connection with the goods in question, the word ‘stealth’ provides information that the surgery concerned is conducted in a more gentle way, as explained by the Office in the notification. Therefore, it describes a certain characteristic of the goods in question, even if this characteristic is not the most essential one, and the goods in question have other more essential characteristics. It is irrelevant whether the characteristics of the goods or services that 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 that 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 to freely 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).

The applicant does not contend the definition of the word ‘stealth’ provided by the Office. However, it alleges that it has a negative connotation and would serve to indicate that the goods in question are perhaps concealed or hidden, or that they might catch one unawares. No reference from an official source has been provided to support the meaning suggested by the applicant. Therefore, the definition of the word ‘stealth’ provided by the Office is not reasonably called into question.

The above considerations are equally applicable to the applicant’s mounting platforms, surgical instruments, spinal implants and medical screws. All these instruments are intended to be used in connection with surgery and the fact that they are, by nature, invasive does not exclude the possibility for them to be more gentle and causing less harm to the patient. It is also irrelevant whether this characteristic is the most essential of the goods in question. Therefore, the word ‘stealth’ is descriptive of a characteristic of these goods.

The applicant claimed that the nature of computer systems and software in Class 9 has nothing to do with surgery per se. While operating software, image recognition software and software for processing images, graphics and text is rather a broad category, and does not directly relate to the medical field and, therefore, there is no sufficiently direct and specific link between these goods and the sign applied for (which is also why the Office waives its objection insofar as these goods are concerned), computer systems for medical robots relate according to their specification to the medical field. Therefore, the relevant consumer is likely to believe that these goods can be used in connection with ‘stealth surgery’ and will not see any indication of commercial origin in the sign applied for, but rather a reference to a characteristic of the goods in question.

As regards the applicant’s argument that ‘stealth surgery’ is not a commonly used phrase in the medical profession, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question … The lack of prior use, or respectively a rare use, cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

Moreover, the Office has shown use of the word ‘stealth’ in connection with surgery. Although the example given concerns a hospital in the United States, it is conclusive for the perception of the English-speaking specialist public of the word ‘stealth’ in the European Union. Medicine is a cross-border field where experience and knowledge are shared among specialists all over the world. It is not confined to the borders of a certain country. Therefore, the use of the term ‘stealth’ in connection with surgery in the United States is also indicative for the use of this term among the English-speaking specialists in the European Union.

As regards the applicant’s claim that the Office has not provided evidence of use of the term ‘stealth’ for the relevant consumers in the European Union, the Office is not obliged to give examples of such practical experience; it is up to the party concerned to submit evidence to refute it (inter alia, 20/03/2013, T‑277/12, Caffè Kimbo, EU:T:2013:146, § 46; 11/07/2013, T‑208/12, Rote Schnürsenkelenden, EU:T:2013:376, § 24; 21/02/2013, T‑427/11, Bioderma, EU:T:2013:92, § 19-22; 08/02/2013, T‑33/12, Medigym, EU:T:2013:71, § 20, 25; 07/12/2012, T‑42/09, Quadratum, EU:T:2012:658, § 73 and 19/09/2012, T‑231/11, Stoffmuster, EU:T:2012:436, § 51).

The word ‘EDITION’ does not endow the trade mark with distinctiveness contrary to the applicant’s allegation. It only designates that the goods in question are a ‘version’ that has a stealth function. Therefore, neither the word ‘EDITION’ on its own, nor the word combination ‘STEALTH EDITION’, is capable of distinguishing the applicant’s goods from those of its competitors.

As regards the applicant’s argument that both web extracts relate to the applicant itself and are therefore not conclusive, the Office agrees that the screenshot provided from the webpage Medtronic.com shows use of StealthStation as a trade mark and, insofar as this is owned by the applicant, it is not conclusive of proving a general use of the word ‘stealth’ in connection with surgery. However, in the article copied from the Tallahasse Neurological Clinic, the word ‘stealth’ is used as a generic term to describe a technology used in surgery. There is also no indication of a registered trade mark.

The higher degree of attention of the public concerned does not endow the sign with distinctiveness and does not impose on the public a greater ability to see a badge of trade origin in signs consisting of purely descriptive elements as the one at issue, contrary to the applicant’s argument.

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).

Furthermore, the trade marks shown by the applicant contain additional words not present in the sign applied for, so there is no factual coincidence between the trade marks referred to by the applicant and the one in the present case.

As regards the Court judgment referred to by the applicant, neither the trade marks nor the areas of activity of the proceedings invoked and the present case show any commonalities. Therefore, the findings of the Court are not applicable.

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 18 022 517 is hereby rejected for the following goods:

Class 9 Computer systems for medical robots; robotic guidance system for surgical use comprising computer workstations containing central processing units (cpus), motherboards, specially-adapted mounting platforms, operating system software, medical imaging software, and medical image processors.

Class 10 Surgical robots for guiding surgical instruments; surgical instruments; complementary products for use with surgical guidance systems for surgical users to create a safe surgical environment for patients, surgeons, and staff during general spinal and brain surgery, namely, spinal implants comprised of artificial materials, metal medical screws, mounting platforms specially adapted for surgical instruments, and surgical instruments.

The application may proceed for the following goods:

Class 9 Operating software, image recognition software and software for processing images, graphics and text.

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.

Ivo TSENKOV