Refusal of application for a European Union trade mark

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

Alicante, 10/02/2017

BAKER & MCKENZIE LLP

100 New Bridge Street

London EC4V 6JA

REINO UNIDO

Application No:	15 746 423
Your reference:	TMU/DJMJ/5320319
Trade mark:	HAP MINERAL TECHNOLOGY
Mark type:	Figurative mark
Applicant:	Unilever N.V. Weena 455 NL-3013 AL Rotterdam PAÍSES BAJOS

The Office raised an objection on 24/08/2016 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 05/10/2016, which may be summarised as follows:

1. The fact that the applicant owns EUTM registration No 9 184 219 ‘HAP MINERAL’ should indicate that the trade mark applied for is registrable.

2. The sign applied for, in relation to the goods for which registration is sought, is capable of fulfilling the essential function of distinguishing the applicant’s goods from those of other undertakings.

3. The expression ‘HAP MINERAL TECHNOLOGY’ is not descriptive of the nature or intended purpose of the goods. When the words ‘HAP’, ‘MINERAL’ and ‘TECHNOLOGY’ are combined, they create a fanciful mark, rendering any meaning of the separate words irrelevant especially that of the word ‘HAP’.

4. The relevant public would not recognise the expression ‘HAP’ as an abbreviation for ‘hydroxyapatite’, as suggested by the Examiner. This is not a well-known abbreviation, even among the professional public. In this respect, the applicant submitted Annexes A-C. Annex A is the first five pages of the results of a Google search using the word ‘HAP’. Annex B is the results of a Google search using the expressions ‘HAP DENTAL’, ‘HAP DENTIST’, ‘HAP TREATMENT’ and ‘HAP PLAQUE’, from which it can be seen that the word ‘hydroxyapatite’ is not mentioned. Annex C is an extract from an online dictionary (www.dictionary.com ) for the word ‘HAP’ in which no reference is made to hydroxyapatite.

5. The consumer would not be ‘immediately informed’ about the nature and intended purpose of the goods for which registration is sought and the mark will be perceived as vaguely allusive. The sign applied for has a sufficient level of creativity and inventiveness to enable consumers to identify the origin of the goods for which registration is sought, and distinguish them from those of competitors.

6. The applicant does not agree with the examiner’s finding that, although the mark ‘contains certain figurative elements that confer upon it a degree of stylisation, these elements are so minimal in nature that they do not endow the trade mark applied for as a whole with any distinctive character’.

7. These features of the mark will not go unnoticed by the relevant public. The mark contains a figurative element at the top, which has fanciful line elements and is made up of three concentric lines in some places and only one in others. The words ‘HAP MINERAL’ are purple and the figurative element and the word ‘TECHNOLOGY’ are grey/silver. These features endow the mark with a degree of distinctive character. Furthermore, the three words are all in different sizes of fonts.

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.

The Office cannot agree with the applicant’s argument that, since the applicant is the owner of previous EUTM registration No 9 184 219 ‘HAP MINERAL’, the trade mark applied for is also registrable.

Even if EUIPO has previous accepted a similar mark of the applicant, 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).

In addition, the previous figurative mark, EUTM No 9 184 219 ‘HAP MINERAL’, despite the coinciding word elements ‘HAP MINERAL’, is not similar to the mark applied for and was registered seven years ago for goods in Class 3. Because the mark applied for is not identical to the mark cited, the Office refutes the argument of the applicant that the mark applied for is very similar to the mark cited.

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).

Descriptive character must be assessed with regard to the ordinary meaning of the word, or words, applied for have in common parlance for the public to whom the goods and/or services are directed (see 08/07/2004, T-289/02, Telepharmacy Solutions, EU:T:2004:227,§ 45). It is not necessary for the application of Article 7(1)(c) EUTMR that the word combination as a whole appears in dictionaries (see 12/01/2000, T-19/99, Companyline, EU:T:2000:4, § 26).

Furthermore, in order to refuse a trade mark under Article 7(1)(c) EUTMR, it is not necessary that the elements composing the trade mark actually be in use. It is sufficient, as the wording indicates that such signs and indications could be used for such purposes. A sign must, therefore, be refused registration under Article 7(1)(c) EUTMR if at least one of its possible meanings may designate a characteristic of the goods or services concerned (see 27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 32).

8. The descriptiveness of the sign has to be assessed in relation to the goods or services for which registration is sought and by reference to the relevant public’s perception of it (02/04/2008, T‑181/07, Steadycontrol, EU:T:2008:362, § 38; 21/05/2008, T‑329/06, E, EU:T:2008:161, § 23).

The goods to which an objection has been raised and which are covered by the mark applied for, plaque disclosing tablets and preparations, are specialised goods and target both average consumers and a professional public. In view of the nature of the goods in question, the awareness of the relevant public will be high or higher than that of the average consumer who is reasonably well informed and reasonably observant and circumspect.

The applicant essentially argues that the relevant public would not recognise the word ‘HAP’ as an abbreviation for hydroxyapatite because it is not a well-known abbreviation, even among the professional public. Moreover, the Office does not agree with the applicant’s arguments that the sign applied for is capable of fulfilling the essential function of distinguishing applicant’s goods from those of others undertakings, that the words ‘HAP MINERAL TECHNOLOGY’ are not descriptive of the nature or intended purpose of the goods and that the combination of the words ‘HAP’, ‘MINERAL’ and ‘TECHNOLOGY’ creates a fanciful mark.

The mark applied for is figurative, the colours claimed are white, dark purple and grey, , and the mark is composed of the abbreviation ‘HAP’ and the two English words ‘MINERAL’ and ‘TECHNOLOGY’.

Since the trade mark applied for contains English words, the relevant public with reference to which the absolute ground for refusal must be examined is the English-speaking consumer in the Union (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 30).

9. In the notice of grounds for refusal the following meanings have been provided for the words in the mark:

HAP abbreviation for hydroxyapatite (information extracted from on 24/08/2016 at http://medical-dictionary.thefreedictionary.com/hap ).

hydroxyapatite ‘a whitish apatite mineral, calcium hydroxide phosphate, Ca5(OH)(PO4)3, that is the chief mineral component of bones and teeth and provides strength and rigidity to their structures’ or 'a principal ingredient in tooth enamel; a paste containing the compound has been used experimentally to seal small enamel cavities without drilling; a calcium and phosphorus supplement used to treat OSTEOPOROSIS, RICKETS, OSTEOMALACIA and to maintain body minerals during breast feeding' (information extracted on 24/08/2016 at http://medical-dictionary.thefreedictionary.com/hydroxyapatite ).

MINERAL ‘of or pertaining to minerals; consisting of a mineral or of minerals; as, a mineral substance’ (information extracted on 24/08/2016 at http://www.mondofacto.com/ ).

TECHNOLOGY ‘methods, systems, and devices which are the result of scientific knowledge being used for practical purposes’ (information extracted from Collins English Dictionary on 24/08/2016 at http://www.collinsdictionary.com/dictionary/english/technology ).

Based on the abovementioned dictionary definitions, the Office’s opinion is that the trade mark applied for will be understood by the relevant consumer as a meaningful expression, meaning hydroxyapatite or a paste/substance containing hydroxyapatite and obtained using scientific knowledge of minerals.

This definition in relation to the goods to which an objection has been raised in Class 5 (plaque disclosing tablets and preparations) will be perceived by the relevant consumer as a mere description of the products (tablets and preparations containing the mineral component of bones and teeth that provides strength and rigidity to their structure and has been obtained using scientific knowledge of minerals) and their function (disclosing plaque).

The relevant public will immediately perceive the sign as an easily understandable expression providing a clear meaning regarding the essential characteristics of the goods. It is not unusual and does not depart from the individual meanings of the words of which it is composed. On the contrary, it is a straightforward combination of three descriptive elements which do not create an impression sufficiently far removed from that produced by the mere combination of its constitutive elements which are descriptive (see 12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 43).

Therefore, the mark consists essentially of an expression that, notwithstanding certain stylised elements, conveys obvious and direct information regarding the nature and intended purpose of the goods in question.

The applicant does not agree with the examiner’s finding that, although the mark ‘contains certain figurative elements that confer upon it a degree of stylisation, these elements are so minimal in nature that they do not endow the trade mark applied for as a whole with any distinctive character’ and argues that the features of the mark will not go unnoticed by the relevant public (a figurative element at the top part with fanciful line elements and made up of three concentric lines in some places and only one in others, the words ‘HAP MINERAL’ in purple, the figurative element and the word ‘TECHNOLOGY’ in grey/silver and the different sizes of font).

The presence of figurative elements may give distinctive character to a sign consisting of descriptive and non-distinctive verbal elements so as to render it eligible for registration; however, as in the present case, when the verbal element is descriptive and devoid of distinctive character, the examination must assess in particular if the figurative element is:

‒ striking and/or surprising, and/or unexpected, and/or unusual, and/or arbitrary;

‒ capable of creating in the consumers’ minds an immediate and lasting memory of the sign by diverting their attention from the descriptive/non-distinctive message conveyed by the verbal element;

‒ of such a nature as to require an effort of interpretation by the relevant public to understand the meaning of the verbal element.

Although the words ‘HAP MINERAL’ are in a larger purple font and the word ‘TECHNOLOGY’ is in a smaller grey font, the Office takes the view that the descriptive words appear in a basic standard typeface. The arrangement must be of such a nature as to require a mental effort from the consumer to perceive the link existing between the verbal elements and the goods for which registration is sought.

The more legible and/or common a typeface is, the less distinctive it is. The same reasoning applies to handwritten typefaces. In other words, to add distinctive character to a sign, the typeface’s stylisation should require a mental effort from consumers to understand the meaning of the verbal element in relation to the goods and services for which registration is sought. This is clearly not the case here.

The figurative element at the top depicts a tooth, which reinforces the message conveyed by the verbal element. Consequently, the stylised tooth will not endow the trade mark applied for as a whole with any distinctive character.

10. As regards the annexes submitted by the applicant, it should be recalled that, in the notice of ground for refusal, the Office used a medical dictionary for the abbreviation ‘HAP’.

Moreover, it is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

Furthermore, signs that are commonly used in connection with the marketing of the goods and services concerned are devoid of distinctive character (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 20).

An internet search conducted by the Office on 10/02/2017 has revealed that the abbreviation ‘HAP’ is commonly used in the relevant market:

1. http://www.thefreedictionary.com/stomatology

12. 

2. https://books.google.es/books?id=oa8YpRsD1kkC&pg=PA268&lpg=PA268&dq=%22hap%22+dental+hydroxiapatit+dictionary&source=bl&ots=lc3b1ocDfd&sig=MRC3o-azf58bnYmU5-dAaAvMrFI&hl=ro&sa=X&ved=0ahUKEwirt5PuxOzRAhWr6oMKHegBA5wQ6AEIPTAF#v=onepage&q=%22hap%22%20dental%20hydroxiapatit%20dictionary&f=false

15. 

3. http://www.google.ch/patents/US20150132353

19. 

4. http://www.ias.ac.in/article/fulltext/boms/039/05/1273-1278

22. 

5. https://academic.oup.com/jmicro/article-abstract/41/3/141/1143769/Osteoclastic-Features-of-Multinucleated-Giant

25. 

6. http://www.jpediatrdent.org/article.asp?issn=2321-6646;year=2015;volume=3;issue=1;spage=1;epage=7;aulast=Roopa

27. 

7. http://www.jaypeedigital.com/SearchAdv/SearchResultAdv?SearchKeyword=SubCategory=%27Endodontics%27&ddlSortBy=Title&pageSize=10&AspxAutoDetectCookieSupport=1

30. 

As can be seen from the results of the Google searches, the relevant consumers, who are mainly dental specialists, will have no difficulty in understanding the meaning of the abbreviation ‘HAP’. It follows that the link between the expression formed by the combination of the abbreviation ‘HAP’ with the descriptive words ‘MINERAL TECHNOLOGY’ contained in the mark and the goods referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR. There is nothing striking, surprising, unexpected, unusual and/or arbitrary, capable of creating in the consumers’ minds an immediate and lasting memory of the sign by diverting their attention from the descriptive/non-distinctive message conveyed by the verbal element or that requires an effort of interpretation by the relevant public to understand the meaning of the word element.

Given that the mark has a clear descriptive meaning in relation to the goods 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.

In conclusion, although the mark applied for contains certain figurative elements that confer upon it a degree of stylisation, these elements are so minimal in nature that they do not endow the trade mark applied for as a whole with any distinctive character. Consequently, taken as a whole, and as shown above, the mark applied for is also 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) EUTMR and Article 7(2) EUTMR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for figurative European Union trade mark No 15 746 423 ‘HAP MINERAL TECHNOLOGY’ 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.

Roxana PISLARU