Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 06/11/2019

Weickmann & Weickmann Patent- und Rechtsanwälte PartmbB

Richard-Strauss-Str. 80

81679 München

ALEMANIA

Application No:	018047924
Your reference:	68275WEM/UHsbo
Trade mark:	CHEMOGUARD
Mark type:	Word mark
Applicant:	GRI-Alleset, Inc. 4142 Industry Way, Flowery Branch Georgia Georgia 30542 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 10/05/2019 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.

With the abovementioned notice the applicant was given the opportunity to submit observations in reply. The applicant submitted its observations on 09/09/2019, within the time limit of the first extension, which may be summarised as follows.

1. The term ‘chemo’, on its own, is not actually a word in English, but rather a prefix. The word ‘chemo’ is extracted from the word ‘chemical’ or ‘chemistry’. The term ‘chemo’ is a complex and ambiguous term.

2. The term ‘guard’ is typically perceived as a person whose job is to protect another person, place, or thing from danger or attack. Consequently, the term ‘guard’ could be possibly descriptive for safety, rescue, security and enforcement services, but not for the relevant goods in Classes 10 and 27.

3. The word mark applied for, ‘CHEMOGUARD’, has to be evaluated as a whole. The word ‘CHEMOGUARD’, on its own, is not an English word, but a new, fanciful and imaginative word. The combination of the elements ‘chemo’ and ‘guard’ is unusual and creative for the relevant goods.

4. Account should be taken of the fact that even a minimum degree of distinctive character is sufficient to render the absolute ground for refusal set out in Article 7(1)(b) EUTMR inapplicable.

5. The applicant refers to various EU trade marks previously accepted by the Office, namely:

• ‘CHEMO-AIDE’ (EUTM No 2 030 153)

• ‘CHEMO-AIDE’ (EUTM No 3 526 886)

• ‘CHEMO360’ (EUTM No 17 890 040)

• ‘Chemo Pharm’ (EUTM No 11 725 249)

• ‘CHEMOLOCK’ (EUTM No 11 417 541).

The Office takes note of the classification amendment regarding terms that lacked precision. However, the objection is maintained against all goods in Classes 10 and 27, including those terms further specified. The list of goods and services for which the objection is maintained, is identical to the list of goods and services confirmed by the Office on 21/06/2019 in its L161 letter, which forms in integral part of this decision.

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 on Article 7(1)(b) and (c) and Article 7(2) EUTMR

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 them, without any possibility of confusion, to distinguish the product or service from others that have another origin (23/05/1978, C‑102/77, Hoffmann-La Roche v Centrafarm, EU:C:1978:108; 18/06/2002, C‑299/99, Remington, EU:C:2002:377).

The marks referred to in Article 7(1)(c) EUTMR are trade marks that consist exclusively of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or rendering of the services, or other characteristics of the goods or services.

The refusal of a trade mark as being descriptive is already justified if, for the relevant public, there is a sufficiently direct and specific relationship between the word mark applied for and the goods or services for which protection is sought (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43).

Furthermore, in accordance with Article 7(1)(c) EUTMR, in order to reject a trade mark it is not necessary for the words to be used in their descriptive sense in trade. It is sufficient that they are 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 at issue, 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 for which protection is sought. A sign’s descriptiveness can only be assessed by reference to the goods or services in question, and by the way in which it is understood by a specific, intended public (20/03/2002, T‑356/00, Carcard, EU:T:2002:80).

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 their 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 dependent upon a finding that the term concerned is commonly used (12/02/2004, C‑265/00, Biomild, EU:C:2004:87).

The question that must be asked when applying Article 7(1)(b) EUTMR, is how the sign applied for will be perceived by typical consumers in relation to the goods and services in question. It must also be stressed that the distinctive character of the trade mark is determined on the basis of the fact that the mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301; 09/07/2008, T‑58/07, Substance for success, EU:T:2008:269).

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).

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. 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) must apply notwithstanding that the grounds preventing registration obtain in only part of the European Union.

As to the applicant’s arguments

The sign at issue is made up of two verbal elements. Even though these elements in the mark ‘CHEMOGUARD’ are conjoined, they are clearly recognisable and the mark would immediately be seen as the two words. As pointed out in the notice of grounds for refusal, the absence of a space between the two words composing the sign applied for does not amount to evidence of any creative aspect capable of distinguishing the applicant’s goods from those of other undertakings. Both definitions were extracted from the Collins Dictionary and constitute clear evidence of both meanings, which the applicant does not dispute.

However, the applicant claims that both terms might have several meanings. For instance, the word ‘chemo’ is extracted from the word ‘chemical’ or ‘chemistry’ and is used as a prefix for a multitude of words used in various disciplines, such as chemistry, neuroscience, mathematics, computer science or biology. In the public’s perception, a ‘guard’ is typically perceived as a person whose job is to protect another person, place, or thing from danger or attack.

The Office agrees that both terms might have several meanings. However, 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).

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T‑118/00, Tabs (3D), EU:T:2001:226, § 59).

The combination of the verbal elements ‘CHEMO’ and ‘GUARD’ does not lead to the sign ‘CHEMOGUARD’, when considered as a whole, representing more than the sum of its parts. It must also be borne in mind that the consumer does not perceive the mark in a void, but rather in relation to the goods to which it is applied. As such, the context of the goods provides a significant interpretative aid as to how consumers will perceive the contested mark. In relation to the contested goods (for instance surgical procedure face masks, surgical footwear, surgical cover gowns) the contested sign immediately conveys the message that the goods are engineered to provide users with protection from the potential hazard associated with handling chemotherapy agents/drugs.

Further, the Office states that descriptiveness of a sign must be assessed on the basis of the perception of a mark as a whole by the relevant public. Therefore, the fact that the combination of the two words ‘CHEMO’ and ‘GUARD’ might not be the usual way to refer to the goods for which protection is sought, is not relevant to the intrinsic character of the sign. Absolute grounds for refusal of a trade mark are examined based on a perception of the relevant consumers of the goods for which protection is sought, who are reasonably well informed, reasonably observant and circumspect and will understand the sign as indicating that the goods are engineered to provide users with protection from the potential hazard associated with handling chemotherapy agents/drugs.

A trade mark consisting of a word composed of several elements, each of which is descriptive of the characteristics of the goods for which registration is sought, is itself descriptive of those characteristics, unless there is a perceptible difference between the word and the mere sum of its parts. This assumes that as a result of the unusual nature of the combination of elements in relation to the goods concerned, the word creates an impression that is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed resulting in the word being more than the sum of its parts.

The sign in the present proceeding clearly does not meet the abovementioned requirements. Coupling together the verbal elements ‘CHEMO’ and ‘GUARD’, without any significant graphic or semantic modification, does not imbue them with any additional characteristic so as to render the sign, taken as a whole, capable of distinguishing the goods of the applicant from those of other undertakings (26/10/2000, T‑345/99, Trustedlink, EU:T:2000:246, § 37).

With regard to the applicant’s claim, referencing the case-law, that the mark enjoys a minimum degree of distinctive character, the Office points out that the fact that a sign is, in general, capable of constituting a trade mark within the meaning of Article 4 EUTMR does not mean that this sign necessarily has distinctive character for the purpose of Article 7(1)(b) EUTMR, in relation to a specific product or service (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs (3D), § 32).

The sign is not an original play on words and contains no imaginative, surprising or unexpected element so as to confer on it, in the minds of the relevant public, a distinctive character. Contrary to the applicant’s claims, the sign does not possess any originality or resonance requiring at least some interpretation by the relevant public, and the sign would simply be seen as a descriptive term, as explained above. It cannot guarantee the identity of the origin of the goods at issue to the consumers or end users by enabling them, without any possibility of confusion, to distinguish these goods from others that have a different origin.

Overall, the sign at issue does not have any characteristic element or features likely to confer a minimum degree of distinctive character to the sign that could enable the consumer to perceive it as an indication of commercial origin. Accordingly, the sign applied for is devoid of elements that could enable the relevant average consumer easily and immediately to memorise it as a trade mark for the goods for which protection is sought (21/01/2010, C‑398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 44‑45, 56-59). The applicant’s sign has no distinctiveness, even to a minimal degree, since it is endowed with no function to indicate commercial origin in relation to those goods (19/09/2002, C‑104/00 P, Companyline, EU:C:2002:506, § 20).

Finally, the applicant refers to a variety of comparable trade marks all incorporating the element ‘CHEMO’ in combination with other verbal elements. However, the applicant cannot successfully rely on other registered EU trade marks. Every trade mark is assessed on its own merits and the final assessment is based on specific grounds in every particular case. The circumstances which led to the acceptance of other marks cannot be a subject of the objections in the present proceedings, nor does it represent a valid argument in order to overcome the objection of lack of distinctiveness of the sign at issue. Although, when making an assessment, consistent appraisals should be sought as far as possible, this cannot lead to trade marks that are considered ineligible for registration being registered solely because other marks that include one of their elements have been registered. The mere fact that a trade mark contains the word ‘CHEMO’ does not make it similar to the sign applied for nor does it lead to the conclusion that the mark applied for would be distinctive. The overall impression created by each of these marks is not similar to that created by the sign ‘CHEMOGUARD’.

Moreover, 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; 09/10/2002, T‑36/01, Glass Pattern, EU:T:2002:245, § 35).

It follows that the applicant has not succeeded in convincing the Office that the sign ‘CHEMOGUARD’ will be perceived by consumers as indicating the commercial origin of the goods in question. The Office maintains that the relevant public cannot perceive the mark other than as a description of the kind and intended purpose of the goods in question as described in the notification of provisional total refusal of protection on 10/05/2019.

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 18 047 924 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.

Michaela POLJOVKOVA