Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 17/09/2020

KELTIE LLP

No. 1 London Bridge

London SE1 9BA

REINO UNIDO

Application No:	018238714
Your reference:	T54261EU/RAC/asm
Trade mark:	BiobankPro
Mark type:	Word mark
Applicant:	Ruro Incorporated 321 Ballenger Center Dr. Suite 102 Frederick Maryland 21703 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 20/05/2020 pursuant to Article 7(1)(c) and (b) and Article 7(2) EUTMR because it found that the trade mark applied for is not eligible for registration, for the reasons set out in the attached letter, which forms an integral part of this decision.

The applicant submitted its observations on 17/07/2020. The applicant´s arguments in the aforementioned letter may be summarised as follows:

1. A request for a limitation of the goods was filed and accepted by the Office on 16/09/2020 to ‘Computer software, computer software platforms, computer software systems, cloud computing software, cloud computer platforms; all the aforesaid for specimen collection, analysis, tracking and exchange of scientific sample and research data; downloadable computer software for specimen tracking, study, and workflow management’.

2. On the application of Article 7 (1) (c) EUTMR

1. Despite the dictionary meanings of ‘BIOBANK’ and ‘PRO’ as provided by the Office, the mark applied for is no more than suggestive of the goods. The mark is abstract and necessitates several mental steps to come up with the consumer’s perception as described by the Office;

2. The word ‘PRO’ has several different meanings and may be a noun, an adverb, a preposition or adjective. Some examples of the references to the use of ‘pro’ in the Collins dictionary are cited;

3. The sign applied for, ‘BiobankPro’ could have any number of meanings to consumers but none are objectionable;

4. A biobank, is commonly called a biorepository, or a tissue bank, is a collection of biospecimens and the word ‘Professional’ does not lend itself naturally to an association with the word ‘Biobank’ in the normal course of spoken English. Further, one normally talks about ‘biobank researchers’ rather than “biobank professionals” or a “professional biobank or repository”;

5. Even if a biobank can be described as ‘professional’, the element ‘Pro’ preceded by the element Biobank creates a sign that is nonsensical and does not reflect grammatical correctness;

6. The term ‘BiobankPro’ is not the usual way to refer to the goods or a character of the goods and is not part of the normal language or terminology used in relation to ‘computer software, computer software platforms, computer software systems, cloud computing software, cloud computer platforms; all the aforesaid for specimen collection, analysis, tracking and exchange of scientific sample and research data; downloadable computer software for specimen tracking, study, and workflow management’;

7. There is no reason why the average consumer would refer to the goods using the term ‘BiobankPro’, nor, for example, to search on the internet for computer software, platforms or systems under this term;

8. The fact that the words ‘Biobank’ and ‘Pro’ have particular dictionary meanings is not in itself sufficient to justify a rejection on descriptiveness grounds and it is well established through case law that where a mark applied for is allusive or evocative in some sense it is not rendered descriptive;

9. The sign ‘BiobankPro’ may be allusive but in its whole it is simply too vague to be associated directly with computer software, systems and platforms. It is cited the Board of Appeal’s decision of 9 July 2019 No R 2473/2018-4 in which it was held that ‘FISH PRO’ has no clear meaning and that to arrive to the conclusion that the mark is descriptive requires several mental steps which the relevant public is unlikely to perform;

10. The Office refers to results of an internet search claiming that the searches show that the term is commonly used. However, we can see no use of ‘BiobankPro’ within the references provided by the examiner. In fact, two of the references relate to trade mark use of the word BIOBANK.

3. On the application of Article 7(1)(b) EUTMR

11. The Applicant claims that the sign applied for is not descriptive and therefore, that the Article 7(1)(b) objection will be waived;

12. To support the said argument, Judgment T-34/00 Eurocool v OHIM, is cited, in particular paragraph 38: “the distinctiveness of a mark must be assessed, first, in relation to the goods or services for which registration has been requested and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services” (at paragraph 38);

13. Judgment T-79/00 Rewe-Zentral AG v OHIM is cited in which the applicant states the Court confirmed in paragraph 28 that “it is clear from the wording of Article 7(1)(b) of Regulation No 40/94 that a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in that article”;

14. Lastly, Judgement of the Court C-329/02 SAT.1 SatellitenFernsehen GmbH v OHIM is cited in which the CJE held that the term ‘SAT.2 is not unusual, and the mark does not reflect a particularly high degree of inventiveness, but that those facts are not sufficient to establish that such a word is devoid of distinctive character within the meaning of Article 7(1)(b) CTMR. A sign is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the mark’;

15. It states that there are no other reasons to allege that the sign lacks sufficient distinctive character to be registered as a trade mark and that there is no indication that the relevant public would perceive ‘BiobankPro’ as a mere laudatory message to highlight the quality of the goods and therefore the mark cannot be said to be devoid of any distinctive character in the sense of Article 7(1)(b) for any of the goods applied for;

16. Reference is made to a Board of Appeal decision (Appeal No Case R 1986/2017-4) dated 14 November 2017 relating to the mark ‘PROGREEN’ where the Applicant indicates that the “mere fact that the two components of a sign themselves have a conceptual meaning does not justify the conclusion that the consumer will readily recognise a descriptive meaning in their combination”;

17. In support of its arguments reference is made to the EUTM Registration No 18130948 for the mark ‘FREEZERPRO’ for ‘computer software for tracking samples and specimens’, which would have significant relevance because the mark shares the same structure as ‘BiobankPro’ and the goods are identical to some of the goods claimed in the application for ‘BiobankPro’;

18. Other registered marks by the Office are referred as examples in support of its arguments, namely: ‘UK BIOBANK’, EUTM 11176625, ‘STEMLIFE BIOBANK’, EUTM 18157279 ‘AI BIOBANK’ EUTM18130948, ‘FREEZERPRO’, EUTM 13723986 ‘ProFreeze’, EUTM 17893603 ‘FISH PRO’, EUTM 2939601 ‘PROVAN’, EUTM 10169076 ‘RAILPRO’, EUTM 884593 ‘PRODRIVE’, EUTM 15794167 ‘ProPilot’, EUTM WO0000001178706 ‘GREENPRO’ and EUTM 16230179 ‘PROGREEN’.

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 with regard to all the goods.

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).

Having into consideration the above-mentioned case-law, the Office will address the observations of the applicant as follows:

1. On the application of Article 7 (1)(c) EUTMR (arguments presented above under points 1-11)

1. The applicant claims that despite the dictionary meanings of ‘BIOBANK’ and ‘PRO’ provided by the Office, the mark applied for is only suggestive as it would require several mental steps in order to grasp its meaning. The Office cannot agree with this conclusion. As said in the Office´s decision, the relevant consumers would perceive the sign ‘BiobankPro’ as providing information that the goods applied for in Class 9 are used for storing and to process biological samples which then are used for research. In order to be able to collect, research and analyse biological samples, it is necessary to use the technical means, which are applied for in the present case namely, computer software or downloadable computer software for specimen tracking, study, and workflow management. The limitation of the goods requested by the Applicant to ‘Computer software, computer software platforms, computer software systems, cloud computing software, cloud computer platforms; all the aforesaid for specimen collection, analysis, tracking and exchange of scientific sample and research data; downloadable computer software for specimen tracking, study, and workflow management’ does not overcome the objection as the reasoning provided in the Office´s decision is still applicable.

In this regard, it must be noted that a biobank is a type of bio repository, as was provided in the Applicant´s observations in response (under point 4 above) and in the Office´s decision dictionary entry, which defines it as ‘any large store of human biological samples for research into the genetic and environmental causes of disease’. With regard to the argument that the element of the mark ‘PRO’ may have different meanings than the one given by the Office, it cannot be accepted due to the fact that 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.)

2. The applicant further states that ‘a biobank, is commonly called a biorepository, or a tissue bank, is a collection of biospecimens’ and that ‘one normally talks about ‘biobank researchers’ rather than “biobank professionals” or a “professional biobank or repository”’ as well as that the fact that the words ‘Biobank’ and ‘Pro’ have particular dictionary meanings is not in itself sufficient to justify a rejection on descriptiveness grounds. With regard to this argument it should be noted that 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). In the present case, it is possible to find that each component of the mark is descriptive of the kind and intended purpose of the goods as can be found above.

Indeed, 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). For this reason, the terms ‘biobank’ and ‘pro’ are no more than the sum of its parts, which does not render the sign applied for distinctive in relation to the goods claimed.

2. According to the Applicant, the term ‘BiobankPro’ is not the usual way to refer to the goods or a characteristic of the goods and is not part of the normal language or terminology used in relation to the goods applied for. The Office cannot accept this claim as the sign describes in a clear and direct manner the intended purpose of the goods claimed which is to store a biobank, namely through computer software for the specimen collection, analysis, tracking and exchange of scientific sample and research data. As regards the applicant’s argument that no other competitors make use of the same combination, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88). Having into consideration all the aforesaid, this argument cannot be accepted.

2. The applicant argues that the sign ‘BiobankPro’ in its whole is simply too vague to be associated directly with computer software, systems and platforms. In order to support this argument, the Applicant cites the Board of Appeal’s decision of 9 July 2019 No R 2473/2018-4 ‘FISH PRO’. It should be noted that the mentioned trade mark is not analogous to the present trade mark application. In fact, the sign and the goods applied for are not the same for which no conclusion can be drawn from the said decision. Moreover, it should be noted that 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 and must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, as will be further addressed below. Furthermore, with regard to the term ‘PRO’ preceded by a descriptive term, the Court has found that ‘it merely indicates that the goods are done and provided by professionals and/or in a professional way. It is a purely laudatory term that merely denotes a positive or appealing quality of the goods applied for, which in the present case, is only added to descriptive terms’ (see judgment of the Court of 25/04/2013, T-145/12, ECO PRO, EU:T:2013:220, p. 29-32).

2. Lastly, it is argued that the internet searches provided by the Office either do not show it is commonly used in the market or show trade mark use. The Office cannot accept this argument as the internet searches provided in the Office´s decision show how the expression biobank is described as being used as a repository for biomedical research purposes as well as a biological resource. Moreover, one of the searches (under extract c)) provides the term ‘biobanking’ which shows that the term ‘biobank’ is used in a non-distinctive manner in the relevant market.

2. On the application of Article 7(1)(b) EUTMR (arguments presented above under points 12-18)

2. The Applicant argues that since the sign applied for cannot be considered descriptive the objection under 7(1)(b) EUTMR should also be waived. It claims that there are no other reasons to allege that the sign lacks distinctive character and that there is no indication that the relevant public would perceive ‘BiobankPro’ as a mere laudatory message in the sense of Article 7(1)(b). In support of this claim, it cites the case-law provided above as well as decision of the Board´s of Appeal (R 1986/2017-4) dated 14 November 2017 relating to the mark ‘PROGREEN’ where the Applicant indicates that the “mere fact that the two components of a sign themselves have a conceptual meaning does not justify the conclusion that the consumer will readily recognise a descriptive meaning in their combination”.

However, such conclusion is not applicable to the present case. The Office has provided above that 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.

2. With regard to the reference made to the EUTM Registration No 18130948 for the mark ‘FREEZERPRO’ for ‘computer software for tracking samples and specimens’, it is not an analogous sign to the one applied for.

2. Lastly, as regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO namely, EUTM 6953848 ‘UK BIOBANK’, EUTM 11176625 ‘STEMLIFE BIOBANK’, EUTM 18157279 ‘AI BIOBANK’ EUTM18130948 ‘FREEZERPRO’, EUTM 13723986 ‘ProFreeze’, EUTM 17893603 ‘FISH PRO’, EUTM 2939601 ‘PROVAN’, EUTM 10169076 ‘RAILPRO’, EUTM 884593 ‘PRODRIVE’, EUTM 15794167 ‘ProPilot’, EUTM WO0000001178706 ‘GREENPRO’ and EUTM 16230179 ‘PROGREEN’, 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; and 09/10/2002, T‑36/01, Glass Pattern, EU:T:2002:245, § 35).

‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

For the abovementioned reasons, and pursuant to Article 7(1)(c) and (b) EUTMR and Article 7(2) EUTMR, the application for EUTMA No 018 238 714 is hereby rejected for the all the goods.

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.

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