Refusal of application for a European Union trade mark

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

Alicante, 24/02/2017

TBK

Postfach 20 19 18

D-80019 München

ALEMANIA

Application No:	015901002
Your reference:	GM78838
Trade mark:	DEEP GENOMICS
Mark type:	Word mark
Applicant:	Deep Genomics Incorporated 101 College Street, Suite 320, MaRS Centre, Heritage Building Toronto Ontario M5G1L7 CANADÁ

The Office raised an objection on 27/10/2016 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 27/12/2016, which may be summarised as follows:

1. The definition of the term “GENOMICS” provided by the Office is too broad. This term has a narrow meaning among the professional public, at which the trade mark is directed.

2. The expression “DEEP GENOMICS” should be determined not only in relation to each word taking separately, but also in relation to the combination which both words form. As such it is unlikely that the average English speaking consumer will understand this combination.

3. The professional public will perceive the word combination “DEEP GENOMICS” as tautology, since it is expected that the activities linked to genomic are indeed performed accurately or precisely.

4. The applicant gives example with the Canadian Intellectual Property Office where the same trade mark has been approved.

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.

Under Article 7(1)(c) CTMR, ‘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) CTMR 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).

The signs and indications referred to in Article 7(1)(c) CTMR 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).

In its submissions the applicant argues that the definition of the term “GENOMICS” given by the Office is too broad. The Office has noted the applicant´s submissions but would advise that it is not necessary that one of the possible meanings of the mark applied for would stand out from the others as being more probable. In order to fall under the ground for refusal of registration in Article 7(1)(c) CTMR, it is sufficient that at least one of the possible meanings of a word sign identifies a feature of the goods or services concerned (20/03/2002, T-356/00, Carcard, EU:T:2002:80, § 30).

The applicant states that among the professional public, which is the targeted public of the subject application, the term genomics is only directed at sequencing and mapping of the genomes. The Office has noted the applicant’s comments, but would refer the applicant to the following extract from the Oxford English Dictionary, which defines Genomics as the scientific study of genomes, which includes, but is not limited to, gene mapping and nucleotide sequencing. The applicant’s argument must therefore be dismissed.

http://www.oed.com/view/Entry/248862?redirectedFrom=genomics&

(Information extracted from Internet on 23/02/2017)

In relation to the applicant´s second argument that the expression “DEEP GENOMICS” must be considered as a whole, the Office agrees that since the subject mark is made up of several components (a compound mark), 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 (judgment of 19/09/2001, T-118/00, ‘Tablette carrée blanche, tachetée de vert, and vert pâle’, paragraph 59).

As to the applicant´s statement that this combination would not be understood by the average English speaking consumer and therefore the applied trade mark cannot be said to be usual or a possible designation of products or services related to genomics. It may be true that according to English common parlance, consumers could perhaps use another expression. However, it is reasonable to believe that consumers do not require a high degree of sophistication to make a sufficiently clear link between the mark and the goods and the services and perceive the descriptive message of the mark. No other interpretation is reasonably open to the relevant public in the context of the goods and services concerned. It should be observed that under Article 7(1)(c) CTMR, a mark must be refused registration where, as in this instance, the indications composing the mark may be used to designate the goods and services in question. It is thus not necessary that the signs and indications composing the mark are currently in use (12/01/2005, T-367/02 - T-369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 40 and the case-law therein cited).

Further in its submissions the applicant states that the word combination “DEEP GENOMICS” would be perceived by the targeted public as tautology, because the activities linked to genomes are expected to be carried out precisely and accurately.

This applicant´s statement reinforces the Office’s view that the word “DEEP” is a generic word which tends to exalt in an unspecified manner the nature, function, quality or one of the qualities of any product or service. It is commonly used in the scientific environment and it is not an element capable of identifying the commercial origin of products designated. Therefore no trader may claim an exclusive right to promote his goods by associating them with terms such “DEEP”.

Furthermore, the Office has on several occasions rejected trade mark applications on absolute grounds that contained the word ‘DEEP’ in addition to other non-distinctive or descriptive elements. See examination decisions refusing trade mark applications ‘20/10/2016, EUTM No 15 00 1043, deepVB, in Classes 9 and 42’; and also decisions of ‘20/10/2016, EUTM No 15 00 0995, deepNLU, in Classes 9 and 42 and of ‘28/05/2009, EUTM 75 13 468 DEEP SEARCH, in Classes 9, 35 and 42. ’

Finally, as correctly stated by the applicant in relation to the acceptance of the trade mark by the Canadian Intellectual Property Office, the Office is independent from examinations of other offices. 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.)

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 15 901 002 is hereby rejected for all the goods and 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.

Meglena BENOVA