Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)

Alicante, 11/10/2019

BIRD & BIRD LLP

12 New Fetter Lane

London London, City of EC4A 1JP

REINO UNIDO

Application No:	018027705
Your reference:	CONVA.0260/AMVP/JUJR
Trade mark:	GENTLECATH GLIDE
Mark type:	Word mark
Applicant:	ConvaTec Inc. CenterPointe II, 1160 Route 22 East, Bridgewater New Jersey New Jersey 08807 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 04/04/2019 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 requested an extension on time limit on 31/05/2019 and on 09/08/2019 submitted its observations, which may be summarised as follows:

1. The expression GENTLECATH GLIDE is not used in the relevant market and is highly unusual.

2. The meaning of the element CATH will not be understood by the general public.

3. Even if the separate elements of the mark are understood, their combination would maintain the mark as being sufficiently distinctive.

4. Although the mark might be seen as allusive, it can serve as an indicator of commercial origin, in particular because of its rhythm resulting from the same first letter ‘G’ in both of its words.

5. The goods of the mark are principally targeted at professionals and would be bought after careful examination. Therefore, they will see the mark as an indicator of commercial origin.

6. Since the mark is not descriptive, it cannot be considered as lacking any distinctive character.

7. Identical marks have been accepted for registration in the UK and US, i.e. the countries that have English as their official language. Moreover, the Office has also accepted a number of similar 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 giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

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).

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).

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65

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 (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 conditioned by a finding that the term concerned is commonly used (12/02/2004, C-265/00, ‘Biomild’ EU:C:2004:87).

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. Interpreting the case-law by the Courts, it can be concluded that the 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.

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.

In the present case, Applicant argues that the expression GENTLECATH GLIDE is not used in the relevant market and is highly unusual. The Office notes that ‘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 cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

Secondly, the mark in question consists of two verbal elements written in a standard typeface. The first element GENTLECATH will be immediately perceived by the English-speaking part of the relevant public concerned as a combination of two words GENTLE and CATH. Therefore, the Office disagrees that the word CATH will not be understood by the general public. As provided in the provisional refusal letter, the word GENTLE will be understood as referring to something soft, not harsh and the word CATH will be understood as an abbreviation standing for catheter. The relevant public, which consists namely of professional in the field of medicine, would be able to dissect the words ‘gentle’ and ‘cath’ and understand the sign as having the following meaning: a catheter, which is easily endured by the patient because it glides smoothly and gently. Taken together these words provide directly descriptive information of the goods concerned, namely that they are catheters that can be easily introduced in a patient’s body without causing pain or major discomfort.

The second word GLIDE, as provided in the provisional refusal letter, refers to a smooth easy movement in connection with the goods concerned. It was noted that the sign will be understood as indicating the way catheters and their accessories glide (smoothly and gently). Thus it will show the way catheters are introduced into the human body. The following Internet searches¹ confirm statement made in the provisional refusal letter and show that the word ‘glide’ is used in respect of catheters:

Having regard to the above, the mark GENTLECATH GLIDE will be perceived by the relevant public as a promotional laudatory slogan and also as a combination of the descriptive terms that refer to the nature and method of use of the goods concerned.

Thirdly, Applicant states that combination of the separate elements of the mark would render it distinctiveness. However, as agreed by the Applicant, considering the nature of the goods concerned the relevant public consists of the professionals in the health care sector. Moreover, the Applicant also rightly argues that this public will have a high degree of attentiveness.

Therefore, the Office deems that the relevant public in question will not perceive the mark GENTLECATH GLIDE as an indication of commercial origin but as a mere combination of descriptive terms which refer to the characteristics of the goods concerned. It should be noted that it is precisely because of the professional knowledge possessed by this public that they will be able to dissect the descriptive elements in the mark and understand their meaning (18/11/2015, T-558/14, TRILOBULAR, EU:T:2015:858, § 32).

According to the established case-law, a trade mark consisting of a neologism or a 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… (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

However, in the present case, the combination of the descriptive word elements is not unusual or fanciful and does not create an impression which is sufficiently far removed from the mere sum of its parts.

Fourth, in contrast with what is argued by the Applicant the presence of the first letter ‘G’ in both of the verbal elements of the mark does not create an unusual rhythm, in particular because of different length of those two words. Thus, the relevant public in question, which is composed of the professionals in the healthcare sector, will not see the mark as an indicator of commercial origin for the goods concerned.

Finally, although identical marks were accepted for registration in the countries where English is an official language, 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).

Likewise, even if 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).

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 18027705 is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b), (c) EUTMR in UK, Malta, Ireland and those EU countries where English language is generally understood in relation to 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.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Laima IVANAUSKIENE