Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 15/11/2019

Patentanwälte Isenbruck Bösl Hörschler PartG mbB

Prinzregentenstr. 68

81675 München

ALEMANIA

Application No:	018101412
Your reference:	A72559EM
Trade mark:	BIOSILK
Mark type:	Word mark
Applicant:	AmSilk GmbH Am Klopferspitz 19 82152 Planegg/Martinsried ALEMANIA

The Office raised an objection on 16/08/2019 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 16/10/2019, which may be summarised as follows:

• The combination of the words ‘BIO’ and ‘SILK’ is a neologism which is not routinely used by the English-speaking public and which is not a usual construction in English, but rather a new imaginative word creation. No direct and specific relation between the goods for which protection is sought and the term ‘BIOSILK’ can be observed.

• In the amended list of goods, all the goods are based on or contain recombinant proteins. Therefore, neither the term ‘bio’ nor the term ‘silk’ describes the products of the amended list of goods. Due to the fact that the goods are characterised as being based on, or containing recombinant proteins, they are not produced organically which is allegedly indicated by the term ‘bio’. Due to the recombinant proteins, the thread or fabric is also not made from fibre produced by silk worms but by a technical process.

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 goods for which protection is sought are the following:

Class 23 Yarns and threads, in particular embroidery thread and yarn, knitting yarns and threads, mixed spun threads and yarns, twisted threads and yarns, yarns of synthetic or mixed fibers; all of the aforesaid goods based on or containing recombinant proteins.

Class 24 Textiles and textile goods (not included in other classes), in particular woven fabrics, mesh-woven fabrics, narrow woven fabrics, knitted fabrics, mixed fiber fabrics, warp knit fabrics; fabrics for textile use; bed and table covers, in particular unfitted fabric table covers; bivouac sacks; all of the aforesaid goods based on or containing recombinant proteins.

Class 25 Clothing, in particular sportswear, sports clothing, swim wear; footwear, in particular sports footware, sports shoes; headgear, in particular sports headgear, sports caps and hats; all of the aforesaid goods based on or containing recombinant proteins.

The goods in question are directed at the public at large. The degree of attention is considered average.

The mark applied for is ‘BIOSILK’.

Article 7(1)(c) EUTMR – Descriptiveness

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 would understand the sign as having the following meaning: organic silk. The applicant does not dispute the meanings of the terms ‘BIO’ and ‘SILK’ provided by the Office in the previous notification. However, it alleges that the word combination ‘BIOSILK’ is an unusual and imaginative neologism. In this regard it needs to be held that

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 same sense, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (30/11/2004, T‑173/03, Nurseryroom, EU:T:2004:347, § 21).

As can be seen from the case-law cited above, a neologism is assumed to be descriptive, unless there is a perceptible difference between the neologism and the mere sum of its parts. In this case, the word combination ‘BIOSILK’ has no other conceptual meaning other than the mere sum of the meanings of the words ‘BIO’ and ‘SILK’. There is nothing extraordinary or unusual in that expression beyond the meanings of the words of which it is composed. It also complies with English grammar rules so that the English-speaking consumer will readily recognise the meanings of the words ‘BIO’ and ‘SILK’ and nothing more. The fact that the terms ‘BIO’ and ‘SILK’ are written together is irrelevant (12/02/2004, C‑265/00, BiomildEU:C:2004:87). The Court found that a juxtaposition of words contained in a mark is not unusual, in any means distinctive, or ungrammatical (09/06/2010, T‑315/09, Safeload, EU:T:2010:227, § 24).

Contrary to the applicant’s allegations, the limitation of the goods does not eliminate the descriptiveness of the sign of these goods. The Office found that the relevant consumers would perceive the sign as providing information that the goods in question are made of or contain silk which has been produced in an organic way. Despite the deletion of the words ‘in particular’, according to the specifications of the goods for which protection is sought, they are based on or contain recombinant proteins. The word ‘contain’ implies that they are not exclusively made of recombinant proteins, so that the goods in question may also contain other materials such as organic silk. This is also in line with the Office’s finding that, according to the consumer’s perception of the sign, the goods in question contain organic silk. It has also to be pointed out that the word ‘organic’ relates to silk and not to the goods themselves. Hence, it is not arbitrary to assume that yarns and threads, textiles and textile goods and clothing may contain both recombinant proteins and organic silk. This is not excluded by the specifications of these goods. Therefore, the sign describes the kind and quality of the goods in question.

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 18 101 412 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.

Ivo TSENKOV