Refusal of application for a European Union trade mark

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

Alicante, 14/06/2016

PONS PATENTES Y MARCAS INTERNACIONAL, S.L.

Glorieta de Rubén Darío, 4

E-28010 Madrid

ESPAÑA

Application No:	015098502
Your reference:	8395
Trade mark:	PRESERVE
Mark type:	Figurative mark
Applicant:	Specialty Surgical Instrumentation, Inc. 3034 Owen Drive Antioch, Tennessee 37013 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 23/02/2016 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 letter sent on 23/02/2016.

The applicant submitted its observations on 22/04/2016 which may be summarised as follows:

1. The trade mark applied for is distinctive as a whole and the word is an unusual sufficiently distinctive term for the products for which protection is sought.

2. The trade mark has been used and registered in other European countries.

3. The word Preserve is not commonly used for the goods in question, lubricants for medical instruments.

4. The applicant defines “lubricant” as having the purpose of reducing friction and not to “preserve” and asserts that the relationship between the term and the goods is not sufficiently direct and specific, but rather merely suggestive.

5. The applicant presents 15 EUTMs and 2 UK registrations that contain the word PRESERVE.

6. The applicant refers to two judgments of the court of first instance, VITALITE and EASYBANK and concludes that PRESERVE is also suggestive and does not evoke directly or immediately the kind of products in question.

7. The unusual combination of term and figurative element create an impression which in relation to the goods is sufficiently far removed from that produced by the mere combination of meanings lent by the elements. The applicant refers to three judgements, POSTKANTOOR, DOUBLEMINT and BABY-DRY.

8. The applicant concludes that for all these reasons the mark has a minimum distinctive character.

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 on Article 7(1)(c) EUTMR

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 (judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 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.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 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’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

Observations of the Applicant

1. The trade mark applied for is distinctive as a whole and the word is an unusual sufficiently distinctive term for the products for which protection is sought.

The Office maintains its view that the trade mark applied for lacks a minimum distinctive character due to the descriptive nature of the word element PRESERVE coupled with the figurative element (the drop over the letter v) which serves to reinforce the concept of lubricant. The target public will immediately understand that the goods are lubricants to preserve or protect the medical instruments for which they are intended to be used.

2. The trade mark used and registered in other European countries (reference is made to 2 UK registrations).

As regards the national decisions referred to by the applicant, none of which are for goods in class 4, 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.

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

3. The word PRESERVE is not commonly used for the goods in question, lubricants for medical instruments.

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.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 32.)

4. The applicant defines “lubricant” as having the purpose of reducing friction and not to “preserve” and asserts that the relationship between the term and the goods is not sufficiently direct and specific, but rather merely suggestive.

However, if a lubricant for medical instrument reduces friction, then it serves to prevent the medical instrument from rubbing against surfaces in mutual contact, thereby serving to protect or preserve the medical instrument in good condition. Therefore, contrary to what the applicant asserts, there is a direct and specific relationship between the term PRESERVE and the goods, lubricants for medical instruments. The consumer will understand that the lubricant will serve to protect and/or preserve the medical instrument in its original state, or in good condition.

Therefore it must be concluded that the sign is descriptive of the intended purpose of goods, lubricants in this case, that serve to preserve and/or protect by reducing or preventing friction.

5. The applicant presents 15 registered EU trade marks, none of which include class 4, that contain the word PRESERVE.

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 (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).

In any case, most of the signs presented are multi element marks in which the distinctive character may derive from other elements other than the word PRESERVE.

6. The applicant refers to two judgments of the court of first instance, VITALITE and EASYBANK and concludes that PRESERVE is also suggestive and does not evoke directly or immediately the kind of products in question.

The Office argues that neither VITALITE nor EASYBANK are similar cases, because, as has been established in point 4, PRESERVE is a descriptive term for the goods in question and is not merely suggestive or evocative. PRESERVE does, in fact, directly and immediately inform the consumers of one of the characteristics of the products in class 4, i.e. to protect and to preserve.

7. The unusual combination of term and figurative element create an impression which in relation to the goods is sufficiently far removed from that produced by the mere combination of meanings lent by the elements. The applicant refers to three judgements, POSTKANTOOR, DOUBLEMINT and BABY-DRY.

The Office argues that, on the contrary, the combination of a descriptive word, PRESERVE, and a banal graphic representation, a not out-of-the-ordinary black and white typeface with a drop over the letter “v” that reinforces the lubricant concept, does not add up to anything more than the sum of these elements. The sign is descriptive of a lubricant that preserves, nothing more. There is not a perceptible difference between the individual elements and the sum of the parts and the applicant has not given any concrete argument to further such a theory referring only to compound word cases that are not in fact analogous to the present case.

8. No other trade mark Includes the term “PRESERVE” for class 4.

As regards the applicant’s argument that no other competitors make use of the same combination, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question … The lack of prior use cannot automatically indicate such a perception.’ (judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 88).

9. The applicant concludes that for all these reasons the mark has a minimum distinctive character.

The Office must conclude that given the above reasoning the mark PRESERVE, despite the figurative elements that present a certain degree of stylization, does not contain that minimum distinctive character necessary for registration. The Office maintains that the word element is purely descriptive for one of the characteristics of the goods, that is to protect and preserve, and the figurative elements do nothing to distract the consumers attention from the descriptive meaning of the word element. The typeface that reads PRESERVE is not out of the ordinary and the drop, as mentioned, serves to reinforce the idea that the products in question are lubricants that serve to preserve the goods with which they are intended to be used.

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 XX XXX XXX 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.

Lynn BURTCHAELL