Refusal of application for a European Union trade mark

Alicante, 22/12/2020

PATENTANWÄLTE BRESSEL UND PARTNER MBB

Park Kolonnaden

Potsdamer Platz 10

D-10785 Berlin

ALEMANIA

Application No:	018256317
Your reference:	M17.373EM
Trade mark:	PartialCAD
Mark type:	Word mark
Applicant:	exocad GmbH Julius-Reiber-Str. 37 D-64293 Darmstadt DE

The Office raised an objection on 29/6/2020pursuant 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 26/8/2020, which may be summarised as follows:

1. "Partial" may be perceived as an adjective with the meaning ‘relating to only a part ‘and that “CAD” is an acronym for 'computer aided design'. However, the term "PartialCAD" must be analyzed in the light of the appropriate lexical and grammatical rules (see Case T-222/02 HERON Robotunits v OHIM (ROBOTUNITS) [2003] ECR II-4995, paragraph 39, and Case T-173/03 Geddes v OHIM (NURSERYROOM) [2004] ECR II4165, paragraph 21).

2. According to the Merriam-Webster Dictionary, see https://www.merriamwebster.com/dictionary/partial , page 2, under the headline “Examples of partial in a Sentence”, the adjective “partial” always refers to the following noun. For example, “partial shade” means that the shade is partial and “partial breakthroughs” are not complete breakthroughs. The Office has cited www.collinsdictionary.com. The examples given therein confirm this grammatical interpretation.

3. "PartialCAD" means a computer aided design that is not complete. The customer, an expert in the field of CAD, would not perceive in the first instance “Part CAD” or “CAD of parts” when viewing or hearing the sign.

4. Consequently, the sign "PartialCAD" is more than the mere sum of its parts (see Joined Cases T-367/02 to T-369/02 Wieland-Werke v OHIM, SnTEM, SnPUR, SnMIX, [2005] ECR II47 paragraphs 31 and 32) and the sign is not descriptive for the goods and services listed in the application as filed.

5. The consumer perceives the sign as “incomplete CAD”. This, however, has no reasonable meaning regarding the goods and services as listed in the application. The consumer, who is an expert, knows that CAD must be complete to produce items. Consequently, the sign "PartialCAD" is fanciful and has distinctive character.

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).

As explained in the Office’s objection letter of 29/6/2020, the word combination PARTIAL and CAD in connection with the objected goods, which are computers, software, scanners, the meaning of the word is straightforward, namely that the computers, software, scanners are for making or designing parts of instruments, objects, etc. Therefore, the mark PARTIALCAD immediately describes the nature and purpose of the such goods.

In relation dental, orthodontic equipment, dentistry software, computers for dentistry,

software for dentistry, the goods and services are for designing parts of dental, orthodontic equipment; the software is specially designed for such purpose, and the computers serve the same function.

Finally, the advisory services, storage of data are services designed for such purpose, namely to design, produce with Computer Assisted Design part of the instruments, goods, applied for by the applicant.

The word combination is not striking, nor allows the rest of the users in the market to use such an expression whenever the user wants to design only part of complex apparatuses, instruments, etc, with Computer Assisted Design.

Partial means “one of the parts rather than the whole” (see Oxford English Dictionary at www.oed.com , search done on 22/12/2020):

A partial design, not the whole, but part of the design of a complex instrument, machine with Computer Assisted Design, is possible. Incomplete, in the sense, that only one part is designed with a CAD system, because it is more reliable, easy, or whatever for such parts. The expression makes sense, and immediately informs the consumer of the nature and purposes of the goods and services.

Thus, the meaning of the word combination PARTIALCAD, refers directly to main purpose, nature of the goods and services applied for.

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.

Claudio MARTINEZ MÖCKEL