Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 07/08/2019

TLIP LTD.

14 King Street

Leeds LS1 2HL

REINO UNIDO

Application No:	018041012
Your reference:	T10374EU01
Trade mark:	CARIOSITY
Mark type:	Word mark
Applicant:	D4D Technologies, LLC 650 International Parkway, Suite 150 Richardson Texas 75081 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 18/04/2019 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 submitted its observations on 18/06/2019, which may be summarised as follows.

1. ‘CARIOSITY’ is a play on the word ‘curiosity’.

2. The goods applied for do not specify decay but, rather, instruments used to prevent decay.

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).

Furthermore, ‘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).

It is not necessary that the signs and indications composing the mark that are referred to in Article 7(1)(c) EUTMR actually be in use at the time of the application for registration in a way that is descriptive of the 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 those signs and indications could be used for such purposes (e.g. 19/05/2010, T‑108/09, Memory, EU:T:2010:213, § 35).

A word mark that 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.

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 guaranteeing the identity of the origin of the marked product to the consumer or end user (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 conditional on a finding that the wording concerned is commonly used (12/02/2004, C‑265/00, Biomild, EU:C:2004:87).

Article 7(2) EUTMR states that Article 7(1) EUTMR applies notwithstanding that the grounds of non-registrability are obtained in only part of the European Union.

The Office responds to the applicant’s observations as follows.

1. According to the Oxford Dictionary cited by the Office in its Notice of 18/04/2019, the word ‘cariosity’ means ‘decay, especially of the teeth’. The Office considers the dictionary definition sufficient to conclude that the word would be understood in that sense by the relevant public. The applicant’s intention to create a play on the word ‘curiosity’ is immaterial because of the descriptive meaning of the word ‘cariosity’. In relation to the goods applied for, the relevant consumer will immediately make the link that these goods will be used to treat or prevent cariosity.

2. For a sign to be found descriptive, it does not need to describe only the kind of goods in question. A sign must be refused as descriptive if it has a meaning which is immediately perceived by the relevant public as providing information about the goods and services applied for. As the wording of Article 7(1)(c) indicates, this is the case where the sign provides information about ‘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’.

The Office maintains that the sign ‘CARIOSITY’ provides information about the intended purpose of the goods in question, namely that they will be used for patients with a tendency towards developing tooth decay. Whether the goods treat the decay or prevent it before it has occurred is immaterial as the sign will still provide information about (one of) the intended purpose(s) of these goods.

It should be borne in mind that, for the application of Article 7(1)(c) of Regulation No 40/94, it is sufficient for the sign to be descriptive of one of the possible intended purposes of the goods at issue, which the relevant public is liable to take into account when making a choice and which accordingly constitutes an essential characteristic thereof (ROBOTUNITS, § 44, and T‑311/02 Lissotschenko and Hentze v OHIM (LIMO) [2004] ECR II-0000, § 41).

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 18 041 012 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.

Stanislava MIKULOVA