Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 28/10/2015

ELZABURU, S.L.P.

Miguel Angel, 21

E-28010 Madrid

ESPAÑA

Application No:	014021422
Your reference:	CE-20150148
Trade mark:	UNIVERSAL PATIENT LANGUAGE
Mark type:	Word mark
Applicant:	Bristol-Myers Squibb Company 345 Park Avenue New York, New York 10154-0037 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 17/06/2015 pursuant to Article 7(1)(b) and (c) and 7(2) CTMR 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 12/08/2015, which may be summarised as follows:

1. The trade mark UNIVERSAL PATIENT LANGUAGE should be assessed as a whole. The applicant further states that the words contained in the mark applied for, especially UNIVERSAL, are not descriptive to the goods and services applied for. The mark is obviously evocative but it is sufficiently distinctive and is not confined to describing the products/services it identifies.

2. Numerous Community trade marks consisting of expressions of a similar nature

have previously been granted.

3. The same mark has been granted in the United States, an English-speaking country.

Pursuant to Article 75 CTMR, 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) CTMR, ‘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) CTMR 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 (judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 25).

By prohibiting the registration as Community trade marks of the signs and indications to which it refers, Article 7(1)(c) CTMR 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.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 31.)

‘The signs and indications referred to in Article 7(1)(c) [CTMR] 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’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

In its submissions, the applicant argues that the mark applied for should be assessed as a whole. The Office agrees to this but notes that for marks that are made up of several components, for the purposes of assessing their distinctive character, this is not incompatible with an examination of each of the mark’s individual components in turn (judgment of 19/09/2001, T 118/00, ‘Tablette carrée blanche, tachetée de vert, and vert pâle’, paragraph 59). In this case, the Office has objected to the sign applied for not on the basis of the individual semantic meanings of its component parts, but rather on the sign viewed as a whole. Nevertheless, the semantic analysis of each of these parts, in coming to the conclusion that the whole is non-distinctive, is a perfectly legitimate exercise within the absolute grounds examination process. In the present case, the sign UNIVERSAL PATIENT LANGUAGE is a straightforward combination of three descriptive elements, which does not create an impression sufficiently far removed from that produced by the mere combination of the elements of which it is composed to amount to more than the sum of its parts. Some distinguishing feature must result from their being juxtapositioned in order for the sign to be capable of functioning as a trade mark that is, being able to distinguish the goods and services of one undertaking from those of another. The Office does not find that there exists any such addition.

As far as the applicant’s arguments relating to the alleged distinctive (that is non-descriptive) character of the individual elements of the mark, and in particular in relation to the word ‘UNIVERSAL’, is concerned, the Office reminds of that the assessment of descriptiveness of a mark may, as has been discussed in the previous paragraph, not be undertaken only in relation to the elements of a sign separately. In the present case, and as has been clarified in the objection attached to this letter, the Office finds that the message conveyed by the elements of the sign as a whole and, as will be discussed below, seen in the context of the goods and services applied for, provide a clearly descriptive meaning.

The Office agrees with the applicant that the mark has necessarily to be viewed in relation to the goods or services it covers. It is irrelevant to take into consideration what the relevant public might associate with the words UNIVERSAL PATIENT LANGUAGE when taken in isolation. The crux of the question is what the relevant public will think of when they see the sign UNIVERSAL PATIENT LANGUAGE in relation to the specific goods and services applied for by the applicant. As stated by the Office in its original objection, For the purposes of assessing descriptiveness, it must be determined whether the relevant public will make a sufficiently direct and specific association between the expression and the goods/services in respect of which registration is sought (Judgment of 20 July 2004, T-311/02, ‘LIMO’, paragraph 30). The Office believes that there is a sufficiently direct and specific association between the words UNIVERSAL PATIENT LANGUAGE and the goods and services applied for. UNIVERSAL PATIENT LANGUAGE is a unified method of electronic communication with medical patients all over the world through computer application software for mobile devices, software for recording and generating health and medical information and reports. Computer application software for mobile devices, namely, software for recording and generating health and medical information and reports using simple language and visual elements to make sure the information being communicated is understandable. The goods applied for are printed matter, namely, magazines, books, booklets, brochures, pamphlets, newsletters and catalogs in the field of pharmaceutical preparations for human use intended to make patients understand some of the issues impacting their own health written and shown in a basic universal patient language. The services applied for are educational services related to a patient support program conducted in the plain universal patient language which makes them understandable and helpful for patients. Thus the mark contains obvious and direct information on the kind of the goods and services in question.

As regards the applicant’s argument that a number of similar registrations consisting of expressions similar in nature such as for instance UNIVERSAL PERSONAL ELECTRONIC KEY or The Universal Language of Ideas have been accepted by OHIM, it is sufficient to point out that, according to settled case‑law, decisions concerning registration of a sign as a Community 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 Community trade mark must be assessed solely on the basis of that regulation, as interpreted by the Community judicature, and not on the basis of a previous practice of the Office (see judgment of 15/09/2005, C‑37/03 P, 'BioID', paragraph 47 and judgment of 09/10/2002, T-36/01, 'Glaverbel', paragraph 35).

It is clear from the case-law of the General Court 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 (see judgment of 27/02/2002, T-106/00, 'STREAMSERVE', paragraph 67).

Turning to the applicant´s final argumenta that UNIVERSAL PATIENT LANGUAGE has been registered in the United States some remarks must be made. Firstly, the argument can be rebutted on the same grounds as mentioned for the Community trade mark referred to. Secondly, for decisions from member states or third countries, it has been established through case-law that:

the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system. Consequently, the registrability of a sign as a Community mark must be assessed by reference only to the relevant Community rules. Accordingly, the Office and, if appropriate, the Community judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(See judgment of 27/02/2002, T 106/00, ‘STREAMSERVE’, paragraph 47.)

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 014021422 is hereby rejected for all the goods and services claimed.

According to Article 59 CTMR, you have a right to appeal this decision. According to Article 60 CTMR, notice of appeal must be filed in writing with the Office within two months of the date of notification of this decision. 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 800 has been paid.

Anna BAKALARZ