Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 26/02/2016

BIRD & BIRD LLP

15 Fetter Lane

London EC4A 1JP

REINO UNIDO

Application No:	014830616
Your reference:	EXCIN.0005/RAIH
Trade mark:	GATHER
Mark type:	Word mark
Applicant:	Exco InTouch Ltd Unit 6, Wheatcroft Business Park, Landmere Lane Nottingham NG12 4DG REINO UNIDO

The Office raised an objection on 08/12/2015 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 04/02/2016 which may be summarised as follows:

7(1)(b)

1. a) The applicant maintains that the mark possesses the minimum level of distinctiveness required in accordance with established case-law from the point of view of the targeted health professional with a high level of attention. The words “Apple”, “orange” and “elephant” are registered in the telecommunications sector as they have no meaning in relation to the goods. This is analogous to the present mark taken in relation to the medical industry, or apps that facilitate patient-doctor communication. Numerous mental steps are required to discern the intended purpose of the software or devices concerned. The term is not used in the medical or telecommunications sector even for data or information collection. It is a badge of origin in respect of the goods and services the subject of the amended specification.

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.

For a trade mark to possess a distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94, it must serve to identify the product 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. In that regard, it is apparent from settled case-law that that distinctive character must be assessed, first, by reference to the products or services in respect of which registration has been applied for and, second, by reference to the perception of the relevant public (judgment of 08/05/2008, C‑306/06 P, ‘Eurohypo v OHIM’, paragraphs 66 to 67).

The relevant consumer, whether average or professional, will understand the word “GATHER” as a meaningful expression in relation to these goods and services which compile or facilitate the compilation of health information for the purpose of assistance. It is clear from the objective dictionary definition supplied that the word is of general application, and is entirely apposite in relation to these goods and services, regardless of the level of attention of the target consumer. The mark informs the professional consumer of the (or one of the) purpose(s) of the goods and services, and will be unable to function as a badge of origin. No cognitive leaps will be required.

As previously stated:

In the present case, the objectionable goods and services covered by the mark applied for are healthcare software, devices, information and telecommunication services together with services which facilitate the provision of collated information for both everyday consumption/mass consumption and specialised use and are aimed at both average consumers and a professional public. In view of the nature of the goods and services in question, the awareness of the relevant public will be high in respect of the professional and otherwise that of the average consumer who is reasonably well-informed and reasonably observant and circumspect.

Taken as a whole, the mark applied for consists of a non-distinctive term which the relevant public would fail to perceive immediately as an indication of the commercial origin of the goods or services. The mark would be perceived as information on the goods or services namely that they are used to facilitate the collation or gathering of information related to healthcare. Therefore, the mark in and of itself without any other qualifier, figurative or otherwise, would not enable the relevant consumer to distinguish the goods and services of the applicant from competing goods and services within the market.

The amendments to the specification make no difference to the objection in respect of the goods and services within, which may still be homogenously grouped as healthcare software, devices, information and telecommunication services together with services which facilitate the provision of collated information.

The office agrees that “apple”, “orange” and “elephant” are distinctive in respect of goods and services in the telecommunication sector, but does not accept that these examples are analogous here.

Therefore, the trade mark applied for is devoid of any distinctive character and is not capable of distinguishing the goods for which registration is sought within the meaning of Article 7(1)(b) CTMR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) 7(2) CTMR, the application for Community trade mark No 14 830 616 is hereby rejected.

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.

Keeva DOHERTY