Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 14/01/2020

Fuchs Patentanwälte Partnerschaft mbB

Westhafenplatz 1

D-60327 Frankfurt am Main

ALEMANIA

Application No:	018094304
Your reference:	MF1002M-EU
Trade mark:	MULTICLONE
Mark type:	Word mark
Applicant:	mAb-factory GmbH Gelsenkirchenstraße 5 D-38108 Braunschweig ALEMANIA

The Office raised an objection on 05/08/2019 pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for – MULTICLONE – is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter (#1).

The applicant submitted its observations on 19/09/2019, which may be summarised as follows:

1. The Office’s assessment of the sign MULTICLONE does not represent the perception of the relevant consumer who would read the term as one word and not engage in an analysis of its components.

2. The Office’s referral to the dictionary ‘Merriam-Webster’ does not take into account the specifics of the highly specialized market sector and of the relevant consumer, a professional in the fields of biosciences or medicine. The conclusion that the consumer would perceive the sign as providing information that the goods question can be used to produce multiple copies or consist of multiple copies (e. g. of antibodies or antigens) and the services in question are intended for the production or development of multiple copies (e. g. of antibodies) or for related research, is not correct since this terminology is not common in the relevant market: The amount of antibodies is not measured by the number of copies but rather by its weight or by the volume of the antibody solution together with its concentration or a recommended working dilution.

3. Because the sign is not descriptive it is distinctive.

After giving due consideration to the applicant’s arguments, the Office decided to extend the objection, for the reasons set out in the attached letter (#2). The applicant did not submit any further observations within an additional time limit of two months.

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.

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).

In the present case, the relevant English-speaking consumer – a professional in the fields of biosciences (e. g. biotechnology, immunology) or medicine would understand the sign applied for – MULTICLONE – as having the meaning ‘multiclone’ / ‘multiclone antibody’ and as providing information that

• the goods in question are (multiclone) antibodies or are used to produce (multiclone) antibodies, e. g. (multiclone) reagents or (multiclone) antigens;

• the services in question – technological, scientific, research, laboratory or development services – are intended for the production or the development of (multiclone) antibodies or related research.

The relevant consumer could also understand the sign as having the meaning ‘multiple copies of an original’ and as providing information that

• the goods in question can be used to produce or consist of multiple copies (e. g. of antibodies or antigens);

• the services in question are intended for the production or development of multiple copies (e. g. of antibodies) or for related research.

Therefore, the sign describes the kind and intended purpose of the goods and services in question.

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods or services of one undertaking from those of other undertakings.

Furthermore, the sign remains merely informative. It would be perceived as an expression generally used by companies engaged in the production of / research into (multiclone) antibodies / antigens. The relevant public will not perceive any particular indication of commercial origin in the sign.

Consequently, taken as a whole, the sign for which protection is sought is descriptive and devoid of any distinctive character, and is not capable of distinguishing the goods and services to which an objection has been raised within the meaning of Article 7(1)(b) and (c) and Article 7(2) EUTMR.

1. As regards the applicant’s first argument the Office maintains that the relevant consumer would perceive the term ‘MULTICLONE’ as a composition of the words ‘multi’ and ‘clone’.

Since the trade mark at issue is made up of two components, 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).

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).

In the present case the structure of the composite term does not diverge from English grammar rules but rather complies with them. There is no element of fancifulness that might require some effort, such as a linguistic analysis, on the part of professional consumers to enable them to understand its meaning in relation to the goods and services in question. Therefore the composite term ‘‘MULTICLONE’ does not give an impression sufficiently far removed from the mere combination of the descriptive meanings lent by the elements ‘multi’ and ‘clone’.

Furthermore, although it is composed of one verbal term, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words known to them (see 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

2. As regards the applicant’s second argument the Office maintains that the relevant consumer would understand the composition of the words ‘multi’ and ‘clone’ – ‘MULTICLONE’ – as providing information that the goods in question can be used to produce or consist of multiple copies (e. g. of antibodies or antigens) and the services in question are intended for the production or development of multiple copies (e. g. of antibodies) or for related research.

The words ’multi’ and ‘clone’ are common English terms; there is no indication that these terms are understood by professionals in the fields of biosciences or medicine as having a different meaning. A reputable English dictionary such as "Merriam-Webster" can therefore be consulted to define these terms (see 20/08/2018, T-36/18, Celeson/CELESIO, EU:T:2018:808, § 64, regarding highly specialised professionals in the medical field).

While it is true that the relevant consumer in the present case is a professional in a highly specialised market sector, it has to be kept in mind that

a higher than average attentiveness on part of the relevant public does not imply that a sign is less subject to any absolute grounds of refusal. In fact, it can be quite the contrary, since terms which are not (fully) understood by average consumers, can be grasped immediately by a public with higher than average level of awareness and attentiveness, in particular if the sign is composed of words which relate to the field in which the latter public is active.

(09/07/2015, TREK, R 2534/2014-1, § 17, referring to 11/10/2011, T 87/10, Pipeline, EU:T:2011:582, § 27 et seq.)

Professionals in a highly specialised market sector will perceive a particular sign related to their profession in the framework of their professional knowledge. In the present case, professionals in the fields of biosciences or medicine will – in connection with the goods and services in question (i. a. antibodies, antigens, reagents and related services as the production of antibodies) – immediately and without further thought grasp the abovementioned meaning of the term MULTICLONE, regardless of how the amount of antibodies (i. e. the amount of multiple copies) is measured. From the perspective of this professional public the sign therefore conveys relevant and unambiguous information describing characteristics of the goods and services in question.

In this respect it has to be highlighted that in order 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, emphasis added.)

3. As regards the applicant’s third argument the Office maintains that, given its descriptive meaning, the sign is incapable to distinguish the goods and services of one undertaking from those of other undertakings and therefore devoid of any distinctive character.

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 18 094 304 is hereby rejected for all the goods and services 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.

Thorsten Ickenroth