Refusal of application for a European Union trade mark

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

Alicante, 14/06/2016

BARKER BRETTELL LLP

100 Hagley Road, Edgbaston

Birmingham B16 8QQ

REINO UNIDO

Application No:	014975403
Your reference:	CAW81687T.EM
Trade mark:	SOLID BIOSCIENCES
Mark type:	Word mark
Applicant:	Solid Biosciences, LLC 161 First Street, Suite 3A Cambridge Massachusetts 02142 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 18/02/2016 pursuant to Article 7(1)(b) and (c) EUTMR 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 18/04/2016, which may be summarised as follows:

1. After explaining the origin of the trademark, the applicant argues that the Office did not fully take into account that the services are directed at a professional public that would recognise the trade mark qualities of ‘SOLID BIOSCIENCES’ and have a higher level of attention.

2. The Office has not examined the mark as a whole in respect of the objected to services and therefor the Office has not noted that there’s no relation with the services or this relation is one step removed. The Office has put too much attention to the word ‘BIOSCIENCES’. The mark is not descriptive. . The element SOLID is considered unique, fanciful and unusual and supposed to render the mark distinctiveness.

The Office has assigned one potential/possible meaning to the words ‘SOLID BIOSCIENCES’ based on an archaic meaning referred to in Oxford English Dictionary. The other meanings of the word ‘SOLID’ and are not descriptive for the services applied for.

The mark is a registrable neologism. The element solid is not used in combination with research. The applicant submits a long list with results from the British National Corpus of a search for the word ‘solid’ combined with collocates. The combination with the word ‘research’ does not appear.

3. The mark has been registered in the USA.

4. Several EUTMs including the word elements ’SOLID’ and ’BIOSCIENCES’ have already been registered.

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.

If the objection is fully maintained: 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).

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] 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’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

Descriptiveness

For a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added.)

The Office agrees that the relevant consumer is the professional public but as this professional public deals on a daily basis with products of this field the level of attention will still be average.

As to the argument that the unusual combination with the word ‘SOLID’ gives the mark as a whole a degree of distinctiveness, the Office disagrees.

The Office has clearly demonstrated the descriptive meaning, making use of one of the most respected English dictionaries, for the words ‘SOLID BIOSCIENCES’ in its notification of 18/02/2016. To the argument that the meaning of ‘SOLID’ isn’t used anymore, it can be set aside as there hasn’t been provided any proof of this. The reference to the examples in the dictionary cannot be seen as such an evidence. Moreover other actual dictionaries offer the same definition, for example the Cambridge

Dictionaries Online, 14/06/2016 at http://dictionary.cambridge.org/dictionary/english/solid?a=british

The term is clear and used on the Internet

https://www.coursera.org/learn/quantitative-methods 14/06/2016

The mark will be interpreted by the relevant public as established, serious biological sciences. The relevant specialised public will know that biosciences, in all its possible branches, include research services. The mark conveys direct and obvious information regarding the kind and quality of rendering of the services.

The mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics. Merely bringing those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned. Therefore, a sign consisting of a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) CTMR, unless there is a perceptible difference between the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts (12.02.2004, C 265/00, ‘Biomild’, EU:C:2004:87, §§ 39, 43).

The relevant consumer perceives ‘SOLID BIOSCIENCES’ as the grammatically correct combination of the two words ‘solid’ and ‘biosciences’. The sign considered as a whole will be easily understood by the English-speaking public as describing the quality of the services applied for, namely that they are ‘established, serious biological sciences’.

The same applies in the case at hand. The mark taken as whole is not greater than the sum of its parts. The relevant consumer in this case can have no possible doubt as to the meaning of ‘SOLID BIOSCIENCES’. The way in which the two elements of the word are juxtaposed follow the rules of English grammar and usage. Taking the trade mark applied for as a whole, the meaning is no different from the combined concepts of the terms ‘SOLID’ and ‘BIOSCIENCES’. The overall meaning of the term is clear. In any case, the syntactical or grammatical correctness of the phrase is not the litmus test for its registrability. The case-law of the Court of Justice and Court of First Instance has evolved considerably since the BABY-DRY judgment (see decision of 02/08/2004, R 262/2003 2 – ‘ECONOMY PLUS’, paragraph 11). Rather, it is the ability of a sign to identify the commercial origin of the marked products that is of prime importance.

The explanation about the origin of the mark is interesting but does not change the descriptiveness of the words. Even if the mark origins from a translation from a Hebrew name, it remains descriptive.

As seen before, the combination of the elements ‘SOLID’ and ‘BIOSCIENCES’ is descriptive for the biomedical research services for which registration is sought, as it gives the relevant public only the information that the research is realized in a well-founded serious way.

Distinctiveness

Since the trade mark at issue is made up of several components, for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), ECLI:EU:T:2001:226, § 59).

The assessment of the distinctive character is to be based on the sign and the services as applied for. As the sign is descriptive, it is also devoid of any distinctive character within the meaning of Article 7(1)(b) CTMR (12.02.2004, C 265/00, ‘Biomild’, EU:C:2004:87, § 19; 12.02.2004, C 363/99, ‘Postkantoor’, EU:C:2004:86, § 86). English-speaking consumers will perceive the sign as a mere description of the kind and the quality of the services applied for and not as an indication of any commercial origin.

As regards the national decision referred to by the applicant, according to case-law:

The European Union 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 European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union 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. (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, 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 (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 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’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

The registrations mentioned cannot be seen as similar as they only include one of the elements ‘SOLID’ or ‘BIOSCIENCES’ while the other elements are different and the marks have to be seen as a whole. Moreover some refer to different goods and services and they are registered all more than 5 years ago. so that not only the jurisprudence but also the practice of the Office changed accordingly.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 014975403 is hereby rejected for all the services 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.

Carine CEELEN