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

(Article 7 EUTMR)

Alicante, 13/08/2019

POTTER CLARKSON LLP

The Belgrave Centre

Talbot Street

Nottingham NG1 5GG

UNITED KINGDOM

Application No:	018028108
Your reference:	MED3J/T84235EM
Trade mark:	MEDICHECKS
Mark type:	Word mark
Applicant:	Medichecks.com Limited MediCity, Thane Road Nottingham NG90 6BH UNITED KINGDOM

The Office raised an objection on 03/04/2019 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.

With the above notice the applicant was given opportunity to submit observations in reply.

The applicant submitted its observations on 03/06/2019, which may be summarised as follows.

1. ‘MEDI’ will not be perceived as an abbreviation for ‘medical’ as it has the meaning of ‘middle’. The applicant submits extracts from Collins online English dictionary and a freely accessible medical dictionary (Appendix 1).

2. The mark applied for is a neologism.

3. The Office registered analogous marks. The applicant encloses details of these registrations (Appendix 2).

4. The mark ‘MEDICHECKS’ has been accepted by the UK Intellectual Property Office.

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. The reasons are as follows.

The essential function of a trade mark is to guarantee the identity of the origin of the marked product to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (23/05/1978, C-102/77, ‘Hoffmann-La Roche’, EU:C:1978:108; 18/06/2002, C-299/99, ‘Philips/Remington’, EU:C:2002:377).

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.

The refusal of a trade mark as being descriptive is already justified if, for the public addressed, there is a sufficiently direct and specific relationship between the word mark applied for and the goods or services claimed (27.02.2002, T‑106/00, ‘Streamserve’, EU:T:2002:43). Further, in accordance with Article 7(1)(c) EUTMR, in order to reject a trade mark, it is not necessary whether or not the words are used in their descriptive sense in trade. It is sufficient if it is capable of being used as such.

For the purpose of Article 7(1)(c) EUTMR, it is necessary to consider, on the basis of a given meaning of the sign in question, whether, from the point of view of the intended public, there is a sufficiently direct and specific association between the sign and the categories of goods in respect of which registration is sought (20/03/2002, T-356/00, ‘Carcard’, EU:T:2002:80). A sign’s descriptiveness can only be assessed by reference to the goods or services concerned and to the way in which it is understood by a specific intended public (quoted judgment).

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).

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).

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) are, in particular, those which 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).

A word mark which 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 with regard to the same goods or services within the meaning of Article 7(1)(b) EUTMR. A mark may be devoid of (any) distinctive character in relation to goods or services for reasons other than the fact that it may be descriptive (12/02/2004, C-363/99, ‘Postkantoor’, EU:C:2004:86).

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, and as stated in the notification of the objection, the sign ‘MEDICHECKS’ will be understood as ‘medical examination/check-ups’. The applicant argues however that there is no dictionary reference as the prefix ‘medi-‘is an abbreviation of the word ‘medical’. Therefore, the relevant public would not understand the sign as the Office assumes. However, it must be noted that the fact that a term cannot be found in dictionaries does not automatically make it eligible for registration. The absence of a dictionary entry does not reduce the descriptiveness of an expression (12/01/2000, T-19/99, ‘Companyline’, EU:T:2000:4, § 26; 26/10/2000, T-345/99, ‘TRUSTEDLINK’, EU:T:2000:246, § 37). Further, the fact that ‘medi’ can also have other meanings that are not related to the medical field is irrelevant.

The fact that the acronym ‘medi’ stands for ‘medical’ finds support in the judgment ‘Medi’ of the General Court (12/07/2012, T-470/09, EU:T:2012:369, § 22) which stated that “medi” on its own was providing information to the relevant public about the medical or therapeutic purpose of the goods or of their general reference to the medical field¹. Thus, ‘MEDICHECKS’ will be understood by the relevant public as ‘medical examination/check-ups’ which would clearly be seen as a description of the kind and intended purpose of the services applied for.

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). This is not the case with ‘MEDICHECKS’ as it is merely the sum of its parts.

The applicant points out that the abbreviation ‘medi’ for ‘medical’ does not belong to the common parlance. The Office is of the opinion that the abbreviation ‘medi’ leaves little to the imagination with reference to the services “hospital services; medical clinic services; medical services; health screening services; mobile health screening services; diagnostic testing; diagnostic blood testing; nursing services; nursing care services; convalescent home services; medical health and fitness assessment services; pathology services” in Class 44. Certainly, it is unlikely that the potential consumer, while encountering the mark ‘MEDICHECKS’, would believe that the abbreviation ‘medi’ relates to ‘middle’.

Therefore, the Office concludes that there is nothing neither complex nor fanciful about the meaning of the words ‘medi’ and ‘checks’ together, and when used in relation to the services having a medical purpose or belonging to the medical field, it clearly results in a description of the kind and intended purpose of the services provided. Therefore, the applicant cannot successfully argue that the word ‘MEDICHECKS’ is a distinctive neologism.

As regards the acceptance of the word ‘MEDICHECKS’ by the UK Intellectual Property Office (UKIPO) and for identical services, according to the 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 (‘Streamserve’, § 47).

It follows that it is the trade mark law of the UK which determines whether the sign was validly acquired and what scope of protection it has.

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).

Moreover, ‘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’ (‘Streamserve’, § 67).

The applicant submitted several examples of marks registered with the word ‘medi’. It must be noted that the trade marks cited by the applicant differ from the present mark in the additional element ‘checks’, which when used in conjunction with the element ‘medi’ forms a sign which is clearly descriptive. Thus, the relevant public will not necessarily perceive those signs the same way as the applicant’s sign as they will not necessarily convey the same descriptive message (e.g. trade marks ‘Medimate’, ‘MediPlus’, ‘Medimi’, ‘Medituner’ registered for the same services in Class 44).

Consequently, the relevant consumer when confronted with the sign ‘MEDICHECKS’ in conjunction with the applied for services, i.e. hospital services; medical services; health screening services etc., will not see the sign as an indication of trade origin, but rather as a description of the kind and intended purpose of those services.

It derives from all the foregoing that the applicant has not succeeded in convincing the Office that the denomination ‘MEDICHECKS’ will be perceived by the consumers as pointing to the commercial origin of the services at issue.

From the above considerations and for the reasons set out above, and in the previous notification, the sign ‘MEDICHECKS’ does not possess any actual distinctive character for the contested services in Class 44, pursuant to Article 7(1)(b) and (c) EUTMR in combination with Article 7(2) EUTMR, and is therefore unable to function as a trade mark in the market place, i.e. it fails to distinguish these services from those of other undertakings. The relevant public cannot, in the absence of prior knowledge, perceive it any other way than described above.

The absolute grounds for refusal under Article 7(1)(b) and (c) precludes the registration of the sign as a trade mark at least in the English-speaking territories of the European Union (Article 7(2) EUTMR), i.e. the public in the United Kingdom, Ireland and Malta.

The Office first decides on inherent distinctiveness as the applicant made a subsidiary claim that the sign has acquired distinctive character through use within the meaning of Article 7(3) EUTMR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for EUTM No 18 028 108 is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b), (c) for all the services 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.

Peter SCHYDLOWSKI