Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 17/06/2016

SC SOLACIUM PHARMA SRL

Str. Turturelelor nr. 11A, birou B16, Et. 2, Sector 3

Bucharest

RUMANIA

Application No:	014757819
Your reference:	SOL-5
Trade mark:
Mark type:	Figurative mark
Applicant:	SC SOLACIUM PHARMA SRL Str. Turturelelor nr. 11A, birou B16, Et. 2, Sector 3 Bucharest RUMANIA

The Office raised an objection on 03/02/2016 pursuant to Article 7(1)(b) and (c) 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 trade mark applied for consists of the following representation:

The applicant submitted its observations on 04/04/2016, which may be summarised as follows:

1. Article 7(1)(b) and 7(2) EUTMR are not applicable in the present case since the trade mark is distinctive.

   1. By removing the verbal element, namely UNO BIL, the Office has increased the risk of confusion artificially. The trade mark applied for must be analysed in its entirety with the word element attached.

   2. The stylization of the human upper torso is eye-catching and adds distinctiveness to the mark.

   3. A large number of trade marks exist containing a figurative element representing human body or organs of a body.

Pursuant to Article 75 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.

General remarks

The Office has not objected to the mark in the present case under 7(2) EUTMR but under Article 7(1)(b) and (c) EUTMR.

Under Article 7(1)(b) EUTMR, ‘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) 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).

The marks referred to in Article 7(1)(b) EUTMR 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’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

1. a. Verbal element of the figurative mark

As regards the applicant’s argument that the trade mark applied for must be analysed in its entirety with the verbal elements attached, the Office states that the trade mark application was filed with the mark representation above. The representation consists only of figurative elements and there are no verbal elements visible. If an applicant files a trade mark as ‘Figurative mark containing word elements’, those word elements must be visible in the mark representation, about which the applicant has been informed. Therefore, the examination concerns only the representation of the mark submitted in the application and it is not possible to take the claimed verbal elements into account since they are not included in the mark representation.

1.b. Distinctiveness provided by the figurative elements

The Office disagrees with the applicant’s argument regarding the necessary distinctiveness endowed by the figurative elements of the trade mark. According to settled case-law, distinctiveness of a trade mark within the meaning of Article 7(1)(b) EUTMR 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 (judgments of 29/04/2001, joined cases C-468/01 P to C-472/01 P, Tabs, EU:C:2004:259, § 32; 21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 42; and 08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 66; EU:C:2010:29, § 33).

Article 7(1)(b) makes it clear that a minimum degree of distinctive character suffices for the absolute ground for refusal set out in that article not to apply. However, in the present case the required minimum degree of distinctive character could not be established. The Office admits that registration of a sign as a trade mark is not subject to a finding of a specific degree of inventiveness or creativity on the part of the trade mark proprietor. However, it is also clear from the case law of the Court of Justice in relation to Article 7(1)(b) EUTMR that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings and, therefore, being able to fulfil the essential function of a trade mark. Due to the impression produced by the mark, the connection between the relevant goods and services and the mark is not sufficiently indirect to endow the mark with the minimum level of inherent distinctiveness required under Article 7(1) (b) EUTMR (see also judgment of the Court of 12 February 2004 in Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau (‘Postkantoor’) [2004] ECR I-1619, at paragraph 99, Decision by the Second Board of Appeal, of 29 July 2002, in Case R 335/1998-2 – Homeadvisor and Decision by the Second Board of Appeal, of 3 November 2003, in Case R 361/2003-2 – LITIGATION ADVISOR).

The figurative elements of the mark applied for are commonplace and ordinary and therefore not likely to create a lasting impression and distract the attention of the consumer. In the eyes of the relevant public, the mark will not be likely seen as a badge of trade origin distinguishing it from other competitors in the market, but simply as a human upper torso highlighting an organ which serves as an indication of the target where the goods are intended to have an effect on. The figurative elements of the mark use commonplace colours and immediately recognisable figures and are not enough to make the mark distinctive as a whole. Therefore, the relevant public would likely perceive the mark as only providing information about the goods concerned.

1.c. Similar trade marks in the market

The applicant has stated without any evidence that at the moment a large number of trade marks exist with the figurative element of a human body or organs of the body. The Office points out that the examination on each trade mark must be done on a case-by-case basis, taking into account the elements of the trade mark together with the goods and services applied for. As there are no examples provided of such cases where the applied sign would be comparable with an already registered trade mark, the Office states that 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 (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, paragraph 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’ (judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 67).

Furthermore, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see judgment of 10 March 2011, C-51/10 P, ‘1000’, para 77 and case law cited therein).

In the present case, it has become apparent that the application was caught by the grounds for refusal set out in Article 7(1)(b) and (c) EUTMR because of the specific goods in respect of which registration was sought and because of the way in which the sign would be perceived by the relevant consumer.

Under these circumstances, the applicant cannot reasonably rely on the Office’s possible previous decisions, for the purposes of casting doubt on the conclusion that the trade mark applied for is devoid of distinctive character and descriptive in accordance with Article 7(1)(b) and (c) EUTMR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR, the application for European Union trade mark No 14 757 819 is hereby rejected for all the goods claimed.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 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.

Sigrid DICKMANNS