Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 23/11/2015

MERKENBUREAU KNIJFF & PARTNERS B.V.

P.O. Box 5054

NL-1380 GB Weesp

PAÍSES BAJOS

Application No:	14 281 208
Your reference:	DT/TM66746EU00
Trade mark:
Mark type:	Figurative mark
Applicant:	Merck Sharp & Dohme Corp., a New Jersey corporation One Merck Drive Whitehouse Station, New Jersey 08889 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 13/07/2015 pursuant to Article 7(1)(b) CTMR because it found that the trade mark applied for is devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 10/09/2015, which may be summarised as follows:

1. Although the mark applied for may not possess a high degree of distinctiveness, it is not correct to state that it has no distinctiveness at all, and a minimum degree of distinctiveness is sufficient to justify protecting a sign under Regulation No 40/94, as also confirmed in the Guidelines for Examination in the Office, Part B, Examination, page 14.

2. The Examiner failed to indicate clearly why the device mark applied for would not be distinctive in relation to the goods for which the registration is sought. The decisions given by the Examiner refer to judgments regarding trade marks which are not comparable to the trade mark at issue and, therefore, those decisions are irrelevant to the present case.

3. According to settled case-law, the distinctiveness of a mark within the meaning of Article 7(1)(b) CTMR means that the sign serves to identify the product and/or services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (judgment of 29/04/2001, joined cases C‑468/01 P to C‑472/01 P, ‘Three-dimensional tablets for washing machines or dishwashers’, paragraph 32; judgment of 21/10/2004, C‑64/02 P, ‘DAS PRINZIP DER BEQUEMLICHKEIT’, paragraph 42; judgment of 08/05/2008, C‑304/06 P, ‘EUROHYPO’, paragraph 66; and judgment of 21/01/2010, C‑398/08 P, ‘Vorsprung durch Technik’, paragraph 33) (OHIM Guidelines for Examination in the Office, Part B, Examination, page 14).

4. The contested figurative mark meets the criteria laid down by the Court of Justice, namely that the figurative representation of a trade mark must be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective (judgment of 12/12/2002, C‑273/00, ‘Sieckmann’, paragraphs 46 to 55).

5. The overall impression created by the figurative mark in question is more complex than that of a simple geometric shape (OHIM Guidelines for Examination in the Office, Part B, Examination, page 25). The device mark applied for is an arrangement of stylised stripes, whose different proportions and slanted position distinguish it from other stripe designs. Since the device mark is composed of these elements, which may be easily and instantly memorised by an attentive relevant public, it is capable of transmitting a trade mark message prima facie and will not be perceived as a decorative element.

6. A sign is not required to possess a normal or high degree of distinctiveness and even simple lines or drawings have been considered to be able to distinguish the goods of one manufacturer from those of its competitors (decision of 07/05/2008, R 703/2007-1, ‘Device of a seagull’, paragraph 14). According to settled case-law, such distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign (judgment of 29/04/2001, joined cases C‑468/01 P to C‑472/01 P, ‘Three-dimensional tablets for washing machines or dishwashers’, paragraph 33; judgment of 08/05/2008, C‑304/06 P, ‘EUROHYPO’, paragraph 67; judgment of 21/01/2010, C‑398/08 P, ‘Vorsprung durch Technik’, paragraph 34; and judgment of 14/062012, T‑293/10, Colour per se, judgment of 02/07/2012, C‑311/11 P, ‘Wir machen das Besondere einfach’, paragraph 23) (OHIM Guidelines for Examination in the Office, Part B, Examination, page 14).

7. The sign applied for is not an existing or known geometrical figure. It has no relation to the characteristics of the goods in Class 5 and especially not to diabetes. It is not a laudatory sign or a sign generally used in the presentation of these kinds of goods. The figurative mark is more complex than a simple geometric shape, and can therefore identify the goods as originating from the applicant.

8. The sign has been applied for in respect of the following goods in Class 5: pharmaceutical preparations for the treatment of diabetes. This type of product will only be sold on prescription by general practitioners, pharmacists and doctors, and the end users are patients. Therefore, the relevant public consist of professionals as well as well-informed end users, who have a higher degree of attention than the average consumer.

9. The law of the European Union countries on packaging of pharmaceutical products (prescript) is strict concerning colours and/or devices. The legal provisions within Article 62 of Directive 2001/83/EC permit the use of images, pictograms and other graphics to aid comprehension of the information, but these exclude any element of a promotional nature. In relation thereto, health authorities have strict rules about the overall layout of packaging. Therefore, and in general, packaging of prescription medicines contains signs with a simple structure on a plain surface. The relevant public is not accustomed to (mere) decorative elements being displayed on pharmaceutical packaging, but rather is familiar with these relatively simple devices on pharmaceutical products and will therefore be able to recognise these signs as being indicators of origin.

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)(b) CTMR, ‘trade marks which are devoid of any distinctive character’ 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).

The marks referred to in Article 7(1)(b) CTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (judgment of 27/02/2002, T‑79/00, ‘LITE’, paragraph 26).

The Office partly agrees with the applicant’s argument that although the mark applied for may not possess a high degree of distinctiveness, it is not correct to state that it has no distinctiveness at all, and a minimum degree of distinctiveness is sufficient to justify protecting a sign under Regulation No 40/94, also confirmed in the Guidelines for Examination in the Office, Part B, Examination, page 14.

As the applicant correctly stated, it is clear from the wording of Article 7(1)(b) CTMR that a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in that article (judgment of 27/02/2002, T‑79/00, ‘Lite’, paragraph 28; and judgment of 15/09/2005, T‑320/03, ‘Live richly’, paragraph 68).

1. Assessment of the distinctiveness of a mark must be based on the overall impression conveyed by the mark, but nothing prevents the examination of each of the mark’s individual elements separately (judgment of 09/12/2010, T‑282/09, ‘Carré convexe vert’, paragraph 18).

2. The distinctive character of a trade mark must be assessed, first, by reference to the goods and/or services in respect of which registration has been sought and, second, on the basis of the perception of that sign by the relevant public (judgment of 05/03/2003, T‑194/01, ‘Soap device’, paragraph 40; judgment of 22/06/2006, C‑25/05 P, ‘Bonbonverpackung’, paragraph 25; and judgment of 08/05/2008, C‑304/06 P, ‘Eurohypo’, paragraph 67).

3. The goods to which the objection has been raised are specialised goods in Class 5, namely pharmaceutical preparations for the treatment of diabetes.

In the notice of grounds for refusal, the Office pointed out that the goods to which an objection has been raised and which are covered by the mark applied for are specialised goods and are aimed at both average consumers and a professional public. In view of the nature of the goods in question, the awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect. However, the applicant disputes the Office’s view, arguing that the sign has been applied for in respect of goods in Class 5 that will only be sold on prescription by general practitioners, pharmacists and doctors, while the end users are patients. Therefore, the relevant public consists of professionals as well as well-informed end users, who have a higher degree of attention than the average consumer.

The Office partly agrees with the applicant’s submission that the relevant public consists of professionals as well as well-informed end users, who have a higher degree of attention than the average consumer.

It must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (judgment of 12/07/2012, C‑311/11 P, ‘Smart Technologies’, paragraph 48).

Moreover, since the sign is a purely figurative mark without any word elements, the public throughout the European Union is to be considered when assessing the absolute ground for refusal under Article 7(1)(b) CTMR.

Further, with regard to the applicant’s argument that the law of the European Union countries on the packaging of pharmaceutical products (prescript) is strict concerning colours and/or devices and the legal provisions within Article 62 of Directive 2001/83/EC permit the use of images, pictograms and other graphics to aid comprehension of the information, but these exclude any element of a promotional nature and, therefore, and in general, packaging of prescription medicines contains signs with a simple structure on a plain surface, the Office points out that according to the provision of the same article, the package leaflet may include symbols or pictograms designed to clarify certain information mentioned in Articles 54 and 59(1) of the directive and other information compatible with the summary of the product characteristics. Furthermore, the provisions of Article 54 of Directive 2001/83/EC list the requirements of what should appear on the outer packaging of medicinal products or, where there is no outer packaging, on the immediate packaging, including the name of the medicinal product, a statement of the active substances expressed qualitatively and quantitatively per dosage unit, the pharmaceutical form, the contents by weight, etc.

Consequently, the medicine’s packaging might contain relatively simple devices about pharmaceutical products (images, pictograms or other graphics to aid comprehension of the information), but the Office fails to see how the relevant consumer, without additional information, such as the name of the medicinal product or the manufacturer’s name, will be able to recognise these signs as being indicators of origin.

Therefore, the Office is not persuaded by the abovementioned argument of the applicant and points out that Article 62 of Directive 2001/83/EC about the packaging of pharmaceutical products does not prove that the sign applied for is distinctive prima facie or that the relevant consumer will be able to associate the sign applied for with the applicant’s goods.

The applicant submits that the Examiner failed to indicate clearly why the device mark applied for would not be distinctive in relation to the goods for which the registration is sought, and that the decisions mentioned by the Examiner refer to judgments regarding trade marks which are not comparable to the trade mark at issue and, therefore, those decisions are irrelevant to the present case.

The Office finds that the trade mark applied for is devoid of intrinsic distinctive character. It may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are, in particular, known by the consumers of those goods.

Since the applicant did not specify which cases are not comparable to the trade mark at issue or are irrelevant to the present matter, the Office cannot submit any observations.

The applicant correctly stated the criteria laid down by the Court of Justice, namely that the figurative representation of a trade mark must be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective (judgment of 12/12/2002, C‑273/00, ‘Sieckmann’, paragraphs 46 to 55). However, the Office cannot agree with the applicant that the contested figurative mark meets these requirements.

The graphic portrayal of the mark applied for depicts seven stripes of different sizes inclined towards the right.

It follows from the existing case-law that signs composed only of simple geometrical shapes lack the necessary degree of inherent distinctiveness (judgment of 13/04/2011, T‑159/10, ‘Parallélogramme’, paragraphs 28 and 30; judgment of 12/09/2007, T‑304/05, ‘Pentagon’, paragraph 33). Those simple geometrical shapes are, for example, lines, circles, rectangles or pentagons (judgment of 13/07/2011, T‑499/09, ‘Purpur’, paragraphs 25 and 28). The abovementioned case-law applies to the present case. The relevant public will perceive the sign as a simple combination of seven stripes of different sizes inclined towards the right and will not recognise it as an indicator of the commercial origin of the goods. It should be emphasised that consumers will focus solely on the label markings, such as a word mark or other distinctive figurative elements (judgment of 03/07/2003, T‑122/01, ‘Best Buy’, paragraph 33), and, therefore, the signs must be capable of distinguishing the goods for which registration is sought from those of competitors.

4. In view of the foregoing, the Office concludes that the overall impression conveyed by the mark applied for is that it functions as a purely decorative label and would not be perceived as an indicator of the commercial origin of the goods in question. There is no aspect of the sign applied for which may be easily and instantly remembered by the relevant public or would enable it to be perceived immediately as an indicator of the commercial origin of the goods and services in question.

The Office fails to see how the sign applied for (‘an arrangement of stylised stripes, whose different proportions and slanted position distinguish it from other stripe designs’) will be easily and instantly memorised by an attentive relevant public, will be capable of transmitting a trade mark message prima facie and will not be perceived as a decorative element.

With regard to the applicant’s arguments that the sign applied for is not an existing or known geometrical figure, that it has no relation to the characteristics of the goods in Class 5 and especially not to diabetes, that it is not a laudatory sign or a sign generally used in the presentation of this kind of goods and that it is more complex than a simple geometric shape, and can therefore identify the goods as originating from the applicant, the Office points out:

It is on the basis of acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (judgment of 05/03/2003, T‑194/01, ‘Tablette ovoïde’, paragraph 48).

The applicant failed to prove that the sign applied for would be perceived by the relevant consumer as indicating the origin of the goods for which registration is sought, either prima facie or by acquired distinctiveness through use.

For the abovementioned reasons, and pursuant to Article 7(1)(b) CTMR, the application for figurative Community trade mark No 14 281 208 is hereby rejected for all the goods for which registration is sought.

According to Article 59 CTMR, you have a right to appeal against 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.

Roxana PISLARU