Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 19/12/2019

HOGAN LOVELLS

Avenida Maisonnave 22

E-03003 Alicante

ESPAÑA

Application No:	018033118
Your reference:	ALI-T-731718
Trade mark:	Long Life Pad
Mark type:	Figurative mark
Applicant:	Omron Healthcare Co., Ltd 53, Kunotsubo, Terado-cho, Muko-shi, Kyoto 617-0002 JAPÓN

The Office raised an objection on 07/05/2019 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 10/09/2019, which may be summarised as follows.

1. The applicant does not contest the fact that ‘LONG LIFE PAD’ may have a meaning for the relevant English-speaking public; however, these verbal elements do not provide direct information about the characteristics of the goods for which protection is sought. The objection of the Office is not supported by relevant evidence.

2. Even the goods concerned equipped with a plaster that has extensive durability would not be sufficient to justify the objection for the medical apparatus and instruments and the other goods in Class 10, as durability is not their typical characteristic.

3. The sign possesses the minimum level of distinctiveness since the stylisation of the verbal elements is distinctive. The applicant also challenges that the use of a dot technique in the depiction of the verbal elements and the square frame would resemble the adhesive material used normally for medical plasters as there is no evidence in the objection letter for such a statement and it represents only a vague or indirect reference to the goods’ characteristics. The figurative element consisting of a bottle-like shape is fanciful and does not provide any information about the kind and characteristics of the goods in question. The internet search results mentioned by the Office target the market in Africa and therefore are insufficient to prove that the figurative element is commonly used in the European Union (EU) internal market.

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.

General remarks

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).

Pursuant to Article 7(1)(b) EUTMR, trade marks that are devoid of any distinctive character may not be registered. According to established case-law, the signs referred to in that provision are signs that are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired the goods or services bearing the trade mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (17/01/2013, T‑582/11 & T‑583/11, Premium XL / Premium L, EU:T:2013:24, § 13; 28/04/2015, T‑216/14, EXTRA, EU:T:2015:230, § 14).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs (3D), EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

Relevant public

It is settled case-law that the distinctive character of a trade mark must be assessed by taking into account first, the goods or services in respect of which registration has been applied for and, second, the perception on the part of the relevant public, which consists of average consumers of the goods or services in question, who are sufficiently well informed and reasonably observant and circumspect (21/01/2010, C‑398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 34; 08/05/2008, C‑304/06 P, Eurohypo, EU:C:2008:261, § 67; 29/04/2004, C‑473/01 P & C‑474/01 P, Tabs (3D), EU:C:2004:260, § 33).

The average consumer’s level of attention is likely to vary according to the category of goods or services (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 2; 07/10/2010, T‑244/09, Acsensa, EU:T:2010:430, § 18).

The goods to which an objection has been raised are:

Class 10 Medical apparatus and instruments; massage apparatus; esthetic massage apparatus; galvanic therapeutic appliances; low frequency electric therapy apparatus; transcutaneous electrical nerve stimulators; parts and fittings of the aforementioned.

Having regard to the nature and purpose of the goods to which an objection has been raised, the relevant public is composed of the general public and specialists, particularly those with medical knowledge and expertise, whose level of attention may vary from average to high, depending on the specialised nature of the goods.

The verbal elements of the sign applied for are English words, meaning that account must be taken of the point of view of English-speaking consumers, or even consumers who are not English speakers but who have sufficient knowledge of English (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 76).

It is considered that the public with reference to whom the absolute grounds of refusal must be assessed consists at least of the public in Ireland, Malta and the United Kingdom.

The fact that the relevant public is partly a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

In addition, in view of the nature of the goods in question, even if the awareness of part of the relevant public is high, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 24).

Further, it should be recalled that pursuant to Article 7(2) EUTMR a trade mark will not be registered even if the grounds of non-registrability are met only in part of the European Union. Therefore, an obstacle pertaining to the English-speaking public of the European Union is deemed to be sufficient in order to reject a trade mark application.

Article 7(1)(b) and (c) EUTMR

The mark applied for, , consists of the stylised verbal elements ‘Long Life Pad’ framed in a square and placed on a bottle-shaped pad/plaster.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011-4, BEST TONE (FIG. MARK) / BETSTONE, § 24; 13/12/2011, R 53/2010-5, JUMBO(FIG. MARK) / DEVICE OF AN ELEPHANT (FIG. MARK), § 59).

The Office notes that the applicant does not contest that the verbal elements have meaning for the English-speaking public.

The Office considers that the verbal elements as a whole, in relation to the goods in Class 10 for which protection is sought would be perceived by the relevant public as information indicating that the goods are equipped with a plaster that has extensive durability, for example it adheres to the skin of a patient for an especially long time.

All the words used in the sign applied for are ordinary words which can be found in general dictionaries and make perfect sense when considered together. Since, in general, consumers, faced with an expression, tend to see it in the way that suggests a concrete meaning or that resembles words known to them (12/11/2008, T‑281/07, Ecoblue, EU:T:2008:489).

As regards the applicant’s argument that the verbal elements do not provide direct information about the characteristics of the goods for which protection is sought, it has to be said that the goods in question, such as medical apparatus and instruments, and low frequency electric therapy apparatus have the desired positive effect on patients only when they can somehow make an impact on, measure or in general interact with the human body. One of the most essential features of these goods is that it is in contact with the body and in most cases the goods in question have to be attached directly onto the skin of patients as tightly as possible to allow a medical examination to take place without any interruption. Even if the goods are not always used in this way nowadays, it cannot be excluded for the future. It is also irrelevant if such a characteristic is only ancillary to the goods.

In this respect, see the following case-law: 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 registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32).

It is … irrelevant whether the characteristics of the goods or services which 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 which 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 freely to 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).

For a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark indicates to the consumer a characteristic of the goods and services relating to their market value which, whilst not specific, comes from promotional or advertising information that the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods and services (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198, § 31).

As confirmed by the Court, a word mark that is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 86; 14/06/2007, T‑207/06, Europig, EU:T:2007:179, § 47).

These well-established principles apply in this case as this sign has a meaning that designates a characteristic of the goods concerned. The mentioned link between the sign and the goods to which an objection has been raised is sufficiently direct and specific

It must be mentioned that it does not matter whether the sign at issue can have several meanings or its meaning is less obvious, as this would not suffice to make it distinctive. A sign is distinctive only when it can be perceived by the relevant public as an indication of the commercial origin of the applicant’s goods, and so enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

The sign is not of an unusual nature or syntactic structure. The sign does not constitute a play on words or introduce elements of conceptual intrigue or surprise so that it may be perceived as imaginative, surprising or unexpected. The sign has no particular originality or resonance and does not trigger in the minds of the relevant public a cognitive process nor requires an interpretative effort.

The expression ‘Long Life Pad’ present in the sign contains a meaningful, simple and straightforward short English expression. The meaning of sign would not be seen as vague and there is nothing fanciful about the sign applied for. In fact, when viewed in relation to the goods for which protection is sought, the relevant public will easily, and without further thought, perceive its meaning. No large amount of imagination is required to perceive the meaning of the mark applied for in relation to the goods. The sign is the direct result of the sum of its words (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 47).

It can be safely assumed that the meaning of the verbal elements contained in the sign will be obvious to the relevant public and will most certainly be recognised and understood in its common and ordinary meaning as described by the Office.

There is nothing about the expression ‘Long Life Pad’ present in the sign that might, beyond its obvious informational and laudatory promotional meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods for which protection is sought. The English-speaking public in the European Union will not see the mark as a badge of a particular trade origin for the goods at issue, but rather as a banal promotional message.

As regards the applicant’s argument that durability is not the typical characteristic of the goods in question, it has been explained above that the extended time of use and durability of the accessory or part of the goods in question is essential. Moreover, the extended time of use and durability of the adhesive of the goods that attaches it to the patient is of relevance for both patients and examining medical personnel.

As regards the applicant’s argument that the objection of the Office is not supported by relevant evidence, it has to be pointed out that the Office supported its objection by the relevant dictionary references and the applicant agrees with the meaning of the verbal elements. The Office also provided the examples of the relevant products in the internet search dated 03/04/2019. Therefore, such an argument is unfounded.

As regards the applicant’s argument that the use of a dot technique in the sign would not resemble the adhesive material used normally for medical plasters as there is no evidence in the objection letter for such a statement and it represents only vague or indirect references to the goods’ characteristics, it has to be highlighted that the Office has only commented on something that can be observed on first sight of the sign by the relevant public. The way in which medical plasters are visually depicted (with the use of a dot technique) is a general fact that the Office only expresses in its decision. Such reference is not vague, but sufficiently direct in regard to the goods in question.

Regarding the use of a dot technique in the stylisation of the verbal elements and the square frame where standard typefaces incorporate elements of graphic design as part of the lettering, those elements need to have sufficient impact on the mark as a whole to render it distinctive. When these elements are sufficient to distract the attention of the consumer from the descriptive meaning of the verbal elements or likely to create a lasting impression of the mark, the mark is registrable. However, in the sign in question the stylisation of the verbal elements only adds to the descriptive and non-distinctive nature of the sign.

Similarly, the fact that the verbal elements are arranged vertically, upside down or on one or more lines is not sufficient to endow the sign with the minimum degree of distinctive character that is necessary for registration.

Descriptive or non-distinctive verbal elements combined with simple geometric shapes such as points, lines, line segments, circles, triangles, squares, rectangles, parallelograms, pentagons, hexagons, trapezia and ellipses are unlikely to be acceptable, in particular when the abovementioned shapes are used as a frame or border.

Even though the Office cited websites that are located in Africa, both mentioned products are also listed on the global shopping portals that either deliver to the EU or are located in the EU:

https://www.amazon.com/Naipo-Electronic-Stimulator-Electrotherapy-Intensity/dp/B07FNGK18N

https://es.aliexpress.com/item/33016560552.html?src=google&src=google&albch=shopping&acnt=494-037-6276&isdl=y&slnk=&plac=&mtctp=&albbt=Google_7_shopping&aff_platform=google&aff_short_key=UneMJZVf&&albagn=888888&albcp=2047572441&albag=80829465588&trgt=743612850714&crea=es33016560552&netw=u&device=c&gclid=EAIaIQobChMIjJucm8-o5gIVU4jVCh0WmAchEAQYAyABEgJfu_D_BwE&gclsrc=aw.ds

https://www.amazon.de/dp/B07L4DMHSV/ref=sr_1_93?hvadid=167134900282&hvdev=c&hvlocphy=1005402&hvnetw=g&hvpos=1t1&hvqmt=b&hvrand=12715785277251233428&hvtargid=kwd-296105529819&keywords=elektrodenpads&qid=1575896356&sr=8-93

The Office can also list other examples of goods that are a bottle-like shape and are available in the EU:

https://www.amazon.co.uk/ROOVJOY-Stimulator-Combination-Intensity-Rechargeable/dp/B07MCHDW4D/ref=sr_1_4_sspa?keywords=Naipo+Electronic+Pulse+Massager+Tens+Unit&qid=1575896020&sr=8-4-spons&psc=1&spLa=ZW5jcnlwdGVkUXVhbGlmaWVyPUE4TUJXM0FDU1lEVTkmZW5jcnlwdGVkSWQ9QTAwMTQ0OTNZUDYxOTM5NDZJUTEmZW5jcnlwdGVkQWRJZD1BMDI5MTA5NzNMRllUNEROUVpYSEgmd2lkZ2V0TmFtZT1zcF9hdGYmYWN0aW9uPWNsaWNrUmVkaXJlY3QmZG9Ob3RMb2dDbGljaz10cnVl

https://www.amazon.de/dp/B0769H7Z61/ref=sr_1_29?dchild=1&hvadid=167134900282&hvdev=c&hvlocphy=1005402&hvnetw=g&hvpos=1t1&hvqmt=b&hvrand=12715785277251233428&hvtargid=kwd-296105529819&keywords=elektrodenpads&qid=1575896325&sr=8-29

https://www.amazon.de/dp/B07YWQ1HLH/ref=sr_1_49_sspa?hvadid=167134900282&hvdev=c&hvlocphy=1005402&hvnetw=g&hvpos=1t1&hvqmt=b&hvrand=12715785277251233428&hvtargid=kwd-296105529819&keywords=elektrodenpads&qid=1575896356&sr=8-49-spons&psc=1&spLa=ZW5jcnlwdGVkUXVhbGlmaWVyPUEzOVpPODRVTFFFVlU1JmVuY3J5cHRlZElkPUEwMjU5OTg0M1JEMFZXTDFQVDQ4TiZlbmNyeXB0ZWRBZElkPUEwMDg2NDkxWFNCTUozNkszQ1hFJndpZGdldE5hbWU9c3BfYXRmX25leHQmYWN0aW9uPWNsaWNrUmVkaXJlY3QmZG9Ob3RMb2dDbGljaz10cnVl

A figurative element is considered to be descriptive and/or devoid of distinctive character whenever it is a true-to-life portrayal of the goods (see Common Communication on the Common Practice of Distinctiveness — Figurative Marks containing descriptive / non-distinctive words, 02/10/2015, pages 4-5).

The Office can safely conclude that the bottle-like shape is not fanciful, but rather a common form for electrode adhesive pads, that is, a connecting point of the goods in question to the bodies of patients, and therefore it should not be exclusive for only one market operator in the relevant field.

In general, a combination of figurative and verbal elements that if considered individually are devoid of distinctive character does not give rise to a distinctive mark.

Nevertheless, a combination of such elements when considered as a whole could be perceived as a badge of origin due to the presentation and composition of the sign. This will be the case when the combination results in an overall impression that is sufficiently different from the descriptive and non-distinctive message conveyed by the verbal elements.

The figurative elements do not endow the sign with any distinctive character. In the case of a combination of descriptive elements and non-distinctive visual or typographical elements, the sign is not registrable where the latter are so minimal in nature that, in the overall assessment, they are unnoticeable in relation to the dominant, descriptive verbal elements of the trade mark (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 70 - 74).

Considering all abovementioned and the mark as a whole, the stylisation and the figurative elements only reinforce the descriptive and non-distinctive nature of the verbal elements and do not give an impression that is sufficiently different from the message conveyed by the verbal elements. Therefore, the sign is not distinctive.

Although it is acknowledged that even signs with a low degree of distinctive character pursuant to Article 7(1) EUTMR are eligible for registration, a distinction must be made between signs that possess only a low degree of distinctive character and accordingly have a limited scope of protection and those that are devoid of any distinctive character. This is because distinctive character means that the trade mark applied for guarantees the identity of the origin of the protected product or service to the consumer or end-user by enabling them, without any possibility of confusion, to distinguish the product or service from others that have another origin (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547).

Therefore, contrary to the applicant’s assertion, the mark applied for does not have a minimum degree of distinctive character sufficient to render inapplicable the present ground for refusal (27/02/2002, T‑34/00, Eurocool, EU:T:2002:41, § 39).

Where the Office finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of goods and services that are likely to be known by anyone and are in particular known by the consumers of those goods and services (22/06/2004, T‑185/02, Picaro, EU:T:2004:189, § 29). In such a case, the Office is not obliged to give examples of such practical experience (15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19).

Since the applicant claimed that the trade mark sought was distinctive, despite the Office’s analysis based on the abovementioned experience, it was for the applicant to provide specific and substantiated information to show that the trade mark sought had either an intrinsic distinctive character or a distinctive character acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

On the basis of that practical experience, the Office considers that, in relation to the goods to which an objection has been raised, the figurative mark has no features that might lead the relevant public to believe that it is an indication of commercial origin.

Considered as a whole the sign applied for, due to its descriptive and non-distinctive nature, would not allow the relevant public to distinguish the commercial origin of these goods from those of other undertakings providing identical or similar goods and, for this reason, the sign is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR.

Conclusion

For the reasons set out above and in the previous notification, the sign is descriptive and does not possess the necessary distinctive character for the goods indicated, 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, that is, it fails to distinguish the goods in question from those of other undertakings.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, this application for European Union trade mark is hereby rejected for all the goods claimed.

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.

Jiri JIRSA