Refusal of application for a European Union trade mark

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

Alicante, 05/12/2016

MARKS & CLERK LLP

Alpha Tower

Suffolk Street

Queensway

Birmingham B1 1TT

REINO UNIDO

Application No:	015142921
Your reference:	RLT/TB150362EMA
Trade mark:	EUROPEAN CHEMICAL SCIENCES
Mark type:	Word mark
Applicant:	EuCheMS Rue du Trone 62 B-1050 Brussels BÉLGICA

The Office raised an objection on 25/04/2016 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for, ‘EUROPEAN CHEMICAL SCIENCES’, is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

After an agreed extension of time, the applicant submitted its observations on 25/08/2016, which may be summarised as follows:

1. Under Article 7(1)(c) EUTMR, trade marks are only objectionable if they consist exclusively of signs and indications that may serve to indicate characteristics of the goods and services.

2. The meaningful expression provided has been reached on the basis of the mechanical combination of three separate dictionary definitions. No evidence that consumers would perceive the sign as descriptive in relation to the goods has been provided. In this regard, the applicant maintains that the services are aimed at a highly specialised consumer which is likely to be a member or follower of the work and activities of this society, namely chemists, and will therefore pay a higher level of attention.

3. The applicant cited judgment of 22/06/2005, T‑19/04 22, Paperlab, EU:T:2005:247, § 25, emphasising that for a sign to fall under Article 7(1)(c) EUTMR, the public has to perceive immediately and without further thought a description of the goods and services in question. In the applicant’s opinion, the Office applied dictionary definitions arbitrarily without reference to how the mark would be perceived by the public.

4. In respect of Article 7(1)(b) EUTMR, the applicant argues that, as stated by case law, a minimum degree of distinctive character is enough to render the article inapplicable and a sign does not need to have a specific level of creativity or imaginativeness in order to be suitable for registration. The sign applied for is more than the mere sum of its parts and, as a whole, has enough distinctive character to function as a trade mark.

5. The applicant is a reputed organisation in the field. The sign applied for has been prominently used by the applicant (on its website, materials, press releases, documents…) in conjunction with its mark EuCheMS. Annexes 1, 2 and 3 include information in this regard.

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.

1. 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).

The applicant argued that the Office applied dictionary definitions arbitrarily to the words that constitute the sign applied for; however, the Office completely disagrees. The sign applied for is a word mark consisting of the words ‘EUROPEAN CHEMICAL SCIENCES’. All of them are English words used in common parlance that comply with English grammar rules. There is nothing of arbitrary in the definitions provided. Even if, when the sign applied for is a composite word mark, what matters for examination purposes is the meaning, if any, associated with the sign considered as a whole and not the possible meanings of its individual elements considered separately (judgment of 08/06/2005, T-315/03, Rockbass, EU:T:2005:211, § 56), in the present case the sign consists of a word combination whose meaning is descriptive of characteristics of the goods and services for which registration is sought. There is not a perceptible difference between the meaning of the combination and the mere sum of its parts, the mark does not create an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the words of which it is composed, with the result that the mark is more than the sum of its parts (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

In the Office’s opinion, there is nothing unusual in the mark applied for in relation to the goods or services that creates such an impression. From the definitions provided, the relevant consumer will perceive the mark as meaning ‘the study and knowledge of chemistry in relation to Europe or which takes place in Europe/derives from Europe’.

In the present case the structure of the sign and its link with the goods and services make the meaning of the words instantly apparent. The examination must focus on the goods and services covered by the application, other possible meanings (if any) of the words ‘EUROPEAN CHEMICAL SCIENCES’ which are unrelated to the goods and services concerned are irrelevant. The sign will be perceived as a meaningful expression that serves to indicate that the goods are related to the diffusion of knowledge in chemistry, describing, at least, the subject matter of the goods and services in question. Merely bringing those elements together without introducing unusual variations, in particular as to syntax or meaning, cannot result in anything other than a descriptive sign.

The reference base is the ordinary understanding of the relevant public of the word in question. In the present case, the Office will accept the applicant’s view that the goods and services are specialised, at least part of them; however, they do not target exclusively a professional public with a higher level of attention (chemists). Services such as educational services, provision of training and instruction or provision of training and educational services relating to pure or/and applied sciences are also aimed at average consumers, for example university students; the same occurs with certain goods such as books, magazines or journals which are not specifically restricted to professionals and are accessible by average consumers that may have a particular interest in science.

Nevertheless, in respect of that part of the public that may display a higher level of attention, it is settled case law that even if the awareness of part of the relevant public is high, given the relatively high technical level of the services, it is liable to be relatively low when it comes to purely descriptive indications, which well-informed consumers do not see as decisive. 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

(12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

2. 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’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26).

According to the case-law of the European courts, a word mark that is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services for the purposes of Article 7(1)(b) EUTMR (12/06/2007, T‑190/05, Twist & Pour, EU:T:2007:171, § 39).

The Office notes that the ‘absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual or striking’ (05/04/2001, T‑87/00, ‘Easybank’, EU:T:2001:119, § 39). However, it is not within the Office’s remit to assess either the creativity inherent in a trade mark or its imaginative or striking appearance. In this respect, the Office assessed the sign applied for in terms of its suitability to differentiate the goods and services for which registration is sought from those of other undertakings; despite the applicant’s statement about the minimum distinctive character of the word mark as a whole it is difficult to envisage the mark performing this function for the reasons stated in the previous section of this decision.

There is nothing in the sign applied for capable of diverting the attention of the relevant public from the descriptive message conveyed by the descriptive elements (28/06/2011, T‑487/09, ReValue, EU:T:2011:317, § 38 and 39).

3. As regards the applicant’s argument that the sign applied for has been prominently used, the Office will treat it as a claim of acquired distinctiveness through use according Article 7(3) EUTMR.

As a preliminary remark it is settled case law that the acquisition of distinctiveness through the extensive use of a sign must not be confused with the meaning of the phrase ‘has a reputation’ in a Member State in the European Union within the meaning of Article 9(1)(c) EUTMR, which is a condition that a registered mark must satisfy in order to enjoy protection extending to non-similar goods or services. That case does not involve the examination of whether a sign satisfies the conditions for registration as a European Union trade mark throughout the European Union. Rather, it involves preventing the use of a sign where an existing mark has a reputation either in a Member State or the European Union (21/04/2015, T‑359/12, Brown and beige chequerboard pattern, EU:T:2015:215, § 119); therefore, the applicant’s argument that it enjoys a wide reputation in the chemistry field is irrelevant for the purposes of demonstrate the acquisition of distinctiveness through use and must be set aside.

Even if the contested trade mark application is ab initio devoid of any distinctive character, it may indeed have become distinctive in relation to the services for which registration is applied for as a consequence of the use thereof, within the meaning of Article 7(3) EUTMR.

Article 7(3) EUTMR determines that ‘paragraph 1 (b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods and services for which registration is requested in consequence of the use which has been made of it.’

The acquisition of distinctive character as a consequence of the use of a mark requires that at least a significant proportion of the relevant section of the public identifies products or services as originating from a particular undertaking because of the mark (06/03/2007, T‑230/05, Golf USA, EU:T:2007:76, § 79 and the case-law cited).

That identification must be as a result of the use of the sign as a trade mark and thus as a result of the nature and effect of it, which makes it capable of distinguishing the goods or services concerned from those of other undertakings (27/10/2009, T‑137/08, Green/Yellow, EU:T:2009:417, § 25, with reference to 18/06/2002, C‑299/99, Remington, EU.C:2002:377, § 64; see also, 08/97/2011, R 1798/2010‑G, La qualité est la meilleure des recettes, § 34).

When that is the case, the sign has gained a new significance and its connotation, no longer purely descriptive or non-distinctive, justifies its registration as a trade mark (04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 47).

However, the circumstances in which the requirement of distinctiveness acquired through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as predetermined percentages (04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 51‑52).

Geographically, according to case-law, a mark can be registered by virtue of Article 7(3) EUTMR only if evidence is provided that it has acquired, through the use which has been made of it, distinctive character in the part of the European Union in which it did not, ab initio, have such a character.

It is thus in all the Member States of the European Union in which the mark applied for did not, ab initio, have distinctive character that it must have become distinctive through use in order to be registrable under Article 7(3) EUTMR (12/09/2007, T‑141/06, Texture of glass surface, EU:T:2007:273, § 38).

As indicated, pursuant to Article 7(2) EUTMR, the grounds for refusal shall apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union. The part of the European Union referred to in Article 7(2) EUTMR may be comprised of a single Member State (22/06/2006, C‑25/05 P, Bonbonverpackung, EU:C:2006:422, § 83). In the present case, since the relevant public is made up of English-speaking consumers, evidence of acquired distinctiveness had to be filed for, at least, Ireland, Malta, and the United Kingdom.

For Article 7(3) EUTMR to apply, a trade mark must have become distinctive through use before the application was filed (12/12/2002, T‑247/01, Ecopy, EU:T:2002:319, § 36; 11/06/2009, C‑542/07 P, Pure Digital, EU:C:2009:362, § 42, 52). The filing date of the contested sign was made on 24/02/2016, for which the mark must have become distinctive through use before that date.

In determining whether a mark has acquired distinctive character following the use made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the goods and services concerned as originating from a particular undertaking, and thus to distinguish those goods or services from goods or services of other undertakings. In that regard, it is necessary to take into consideration, inter alia, the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; statements from chambers of commerce and industry or other professional associations and opinion polls (21/03/2015, T‑359/12, Brown and beige chequerboard pattern, EU:T:2015:215, § 89‑90 and the case law cited).

The burden of proof lies with the applicant who invokes that the sign has acquired distinctiveness.

The applicant filed as Annex 1 an extract of its website in English dated 25/08/2016 where the words ‘EUROPEAN CHEMICAL SCIENCES’ can be perceived several times under the applicant’s name and logo and an extract from Wikipedia.org in English dated also 25/08/2016. Annex 2 contains extracts of the applicant’s website in English regarding its members and observers, dated 25/08/2016, where the sign applied for appears on top together with the applicant’s name and logo (see previous image). Annex 3 contains 5 examples of use of the sign applied for together with the applicant’s name and logo (as previously seen) and 4 of them also include the name of a ‘division’ or ‘network’, for example ‘division of chemical education’; all of them undated. It also contains 3 documents in English where the sign applied for appears on the header together with the applicant’s name and logo, one is dated 07/07/2016 and located in Brussels, and the other two are undated. Finally, Annex 3 also contains applicant’s website extracts in English dated 25/08/2016 and a picture of the cover of a year book dated 2015, all of them showing the same structure of the sign applied for plus the applicant’s name and logo.

Taking into account all the evidence submitted, the acquisition of distinctiveness through use has not been proved. The part of the evidence that is dated shows a date after the filing date. The evidence does not relate to the territories where the sign was found to be descriptive, the only location mentioned is Brussels which would be of no relevance to proof the acquisition of distinctiveness in the present case. In any event, even if the evidence taken as a whole were to show use of the word mark applied for, this does not lead to the conclusion that the relevant public recognised the sign ‘EUROPEAN CHEMICAL SCIENCES’ as a designation of origin for the goods and services claimed before its application date. It would merely mean that the sign has been mentioned in this context and that part of the public has been exposed to it together with the applicant’s name and logo, but it does not constitute proof that the relevant public perceives the sign as an indication of origin.

The Office therefore considers that the material submitted is insufficient for the purposes of Article 7(3) EUTMR and the applicant’s argument regarding its reputation and extensive use of the sign is set aside.

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 15 142 921, ‘EUROPEAN CHEMICAL SCIENCES’ is hereby rejected for all the goods and services for which registration is sought.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60(1) EUTMR, 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 720 has been paid.

Octavio MONGE GONZALVO