Refusal of application for a European Union trade mark

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

Alicante, 14/10/2016

INNOVATE LEGAL SERVICES LIMITED

107 Fleet Street

London EC4A 2AB

REINO UNIDO

Application No:	015558919
Your reference:	TM227
Trade mark:	CALCI-D
Mark type:	Word mark
Applicant:	Consilient Health Limited 5th Floor Beaux Lane House Mercer Street Lower Dublin 2 IRLANDA

The Office raised an objection on 06/07/2016 pursuant to Article 7(1)(b) and (c) and 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 his observations on 06/09/2016, which may be summarised as follows:

1. The trade mark does not contain generic words; therefore, each element has been examined separately in the mark, which is not the correct approach.

2. It is not possible to conclude that the trade mark contains recognised or generic abbreviations, as neither element, ‘CALCI-’ or ‘D’, is recognised as an abbreviation in English.

3. The mark contains novel, invented terms, and, in combination, these elements result in a mark that is fanciful enough to attain the minimum degree of distinctive character that is required for registration; ‘CALCI-D’, as such, does not convey a coherent message in English.

4. The mark alludes to the fact that it contains calcium in some form, and the inclusion of the letter ‘D’ could be a way of alphabetically indicating the fourth version of the product, within the range CALCI-A, CALCI-B, CALCI-C, CALCI-D, without necessarily referring to vitamin D.

5. The applicant could not access the word definitions in the relevant dictionary entries; therefore, he concludes that insufficient information was given to support the objection.

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 his comments.

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 which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question’ (see 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 a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought (see judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

It is irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of Article 7(1)(c) EUTMR does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (see judgment of 12/02/2004, C‑363/99, ‘Koninklijke KPN Nederland’, paragraph 102).

Given that the mark has a clear descriptive meaning in relation to the goods and services applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin. Accordingly, it also has to be rejected under Article 7(1)(b) EUTMR.

The Office now replies to the applicant’s comments.

1. The trade mark does not contain generic words; therefore, each element has been examined separately in the mark, which is not the correct approach.

The Office reiterates that the trade mark applied for, ‘CALCI-D’, was examined in its entirety and is considered descriptive and devoid of distinctive character. Taken as a whole, the word ‘CALCI-D’ immediately informs consumers (in the present case, both patients and health professionals) without further reflection that the goods for which registration is sought, namely pharmaceutical preparations; dietetic substances adapted for medical use; vitamin preparations; vitamin D preparations; calcium supplements, are preparations containing both calcium and vitamin D as ingredients.

The relevant consumer does not need to undertake any mental process to understand the message conveyed by the mark applied for, as the meaning, in relation to the goods, is clear and unambiguous.

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).

2. It is not possible to conclude that the trade mark contains recognised or generic abbreviations, as neither element, ‘CALCI-’ or ‘D’, is recognised as an abbreviation in English.

There is nothing new or unusual about the sign ‘CALCI-D’, which in fact merely represents a combination of elements that conveys obvious and direct information about the kind and intended purpose of the goods in question. As already stated in the objection letter dated 06/07/2016, the mark conveys a clearly descriptive message, since it would immediately inform consumers that the goods for which registration is sought are preparations containing calcium and vitamin D. Furthermore, the simple conjoining of the abbreviation ‘CALCI-’ (calcium) and the letter D (vitamin D), does not render the already descriptive sign distinctive.

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’ (judgment of 05/04/2001, T‑87/00, ‘EASYBANK’, paragraph 39).

As regards the applicant’s argument that third parties, and more particularly his competitors, do not need to use the sign at issue to designate the goods to which the application relates, it must be observed that the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) EUTMR, does not depend on there being a real, current or serious need to leave a sign or indication free (see judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 39).

Nevertheless, the sign in itself, without any further examination, is clearly descriptive, since ‘CALCI-D’ will immediately convey the fact that the goods for which registration is sought are preparations containing calcium and vitamin D. As mentioned in point 1) above, the simple conjoining of the abbreviation ‘CALCI-’, standing for ‘calcium’, with the letter D, standing for ‘vitamin D’, does not render a descriptive sign distinctive (judgment of 15/09/2005, C‑37/03P, ‘BioID’, paragraphs 72-74). The relevant public would still understand that the goods offered under this sign are temperature-tracking devices.

3. The mark contains novel, invented terms, and, in combination, these elements result in a mark that is fanciful enough to attain the minimum degree of distinctive character that is required for registration; ‘CALCI-D’, as such, does not convey a coherent message in English.

There is nothing new or unusual about the sign ‘CALCI-D’, which in fact is merely a combination of elements that convey obvious and direct information about the kind and intended purpose of the goods in question. As already stated in the objection letter dated 30/05/2016, the mark conveys a clearly descriptive message, since it would immediately inform consumers that the goods for which registration is sought are medical devices that check, track and record body temperature. Furthermore, the simple conjoining of the abbreviations ‘CALCI-’, standing for ‘calcium’, and ‘D’, standing for ‘vitamin D’, does not render the already descriptive sign distinctive Such combinations are quite common in the market.

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’ (judgment of 05/04/2001, T‑87/00, ‘EASYBANK’, paragraph 39).

Nevertheless, the sign in itself, without any further examination, is clearly descriptive, since ‘CALCI-D’ will immediately convey that the goods for which registration is sought are preparations containing calcium and vitamin D. As mentioned in point 1) above, the mere conjoining of this misspelling with an abbreviation for temperature does not render a descriptive sign distinctive (judgment of 15/09/2005, C‑37/03P, ‘BioID’, paragraphs 72-74). The relevant public would still understand that the goods offered under this sign are temperature-tracking devices.

4. The mark alludes to the fact that it contains calcium in some form, and the inclusion of the letter ‘D’ could be a way of alphabetically indicating the fourth version of the product, within the range CALCI-A, CALCI-B, CALCI-C, CALCI-D, without necessarily referring to vitamin D.

The Office can partly concur with the applicant’s argument that the product might be named in this way; however, when the mark is applied to the same products, consumers would infer, without further reflection, that the goods for which registration sought are again pharmaceutical preparations, supplements and vitamins containing calcium and vitamin A, B, C or, in the present case, D.

As already pointed out in several instances, the relevant consumer does not need to undertake any mental process to understand the message conveyed by the mark applied for, as it is clear and unambiguous. Taken as a whole, the mark ‘CALCI-D’ immediately informs consumers (in the present case, patients and health professionals) without further reflection that the goods for which registration is sought are dietetic and pharmaceutical preparations and supplements containing calcium and vitamin D.

The combination of words making up the sign is not of such an unusual nature in relation to the goods at issue as to produce an impression that 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 mark ‘CALCI-D’ is no more than the sum of its parts (judgment of 13/12/2008, T‑346/07, ‘EASYCOVER’, paragraph 52).

5. The applicant could not access the word definitions in the relevant dictionary entries; therefore, he concludes that insufficient information was given to support the objection.

As defined by the Oxford English Dictionary online ‘CALCI-’ means ‘relating to calcium or its compounds’ (information extracted from https://en.oxforddictionaries.com/definition/calci- ) and, ‘D’ refers to vitamin D (information extracted from http://mondofacto.com/facts/dictionary?query=D&action=look+it+up ). Furthermore, as referred to above and in the objection letter, the combination of ‘CALCI-’ and ‘D’ would immediately bring to mind preparations containing this combination, and the relevant public would not fail to see the meaning when encountering these goods in the relevant market.

Therefore, the expression ‘CALCI-D’, taken as a whole, is a mark which consists exclusively of a sign which may serve, in trade, to designate the kind, composition and intended purpose of the goods concerned (Article 7(1)(c) EUTMR).

The Office has sufficiently justified its objections by examining the meaning of the mark, firstly in relation to the goods for which registration is sought and secondly in relation to the perception of the relevant public. Moreover, the Office listed many internet search results to prove how commonly this expression is used in the relevant market and that the relevant public would immediately perceive it as descriptive.

Accordingly, the sign applied for would not allow the relevant public to distinguish the commercial origin of the goods from those of other undertakings providing identical or similar ones and, for this reason, the sign is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR, the application for European Union trade mark No 15 558 919  is hereby rejected for all the goods claimed.

According to Article 59 EUTMR, you have a right to appeal this decision. According to Article 60 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 800 has been paid.

Gordana TRIPKOVIC