Refusal of application for a European Union trade mark

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

Alicante, 28/04/2017

FIELDFISHER LLP

IP Protection Department

8th Floor

Riverbank House

2 Swan Lane

London EC4R 3TT

REINO UNIDO

Application No:	015959612
Your reference:	13261.00118/CK3
Trade mark:	RCP
Mark type:	Word mark
Applicant:	The Royal College of Physicians of London 11 St. Andrews Place London NW1 4LE REINO UNIDO

The Office raised an objection on 11/11/2016, 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.

After an extension of two months, the applicant submitted its observations on 13/03/2017, which may be summarised as follows:

1. The mark is not descriptive.

2. The mark is distinctive.

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.

The applicant has had a chance to reply to all the issues raised by the Office; as no new arguments have been raised, the request to submit further evidence has not been granted.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Descriptiveness

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 argues that ‘RCP’ is a commonly used abbreviation for the Royal College of Physicians, that is, the applicant, and that it is widely used in England and internationally. Furthermore, it does not refer to any characteristic of the goods and services for which registration is sought.

The applicant refers to the judgment of 29/03/2012, T‑242/11, 3D eXam, EU:T:2012:179, § 26, wherein the General Court held that certain English terms in the medical field will be understood by the relevant professional public throughout the European Union, and argues that, as English is the language generally used for medical terms, the English abbreviation for cardiopulmonary resuscitation, ‘CPR’, will be recognised by the professional public, rather than the abbreviation in Italian, Portuguese and Spanish, ‘RCP’. According to the applicant, the term ‘RCP’ is, therefore, not descriptive for the goods and services for which registration is sought.

Firstly, the Office does not agree with the applicant that the relevant public consists only of specialists in the medical field. Informational material and the provision of information and educational services can also target average consumers who are interested in first aid and this could include cardiopulmonary resuscitation. Furthermore, the list of services includes advising the government and the public on healthcare issues (emphasis added), which are not composed of specialists in the medical field.

Secondly, the judgment concludes that certain English terms in the medical field will be understood by the relevant public, from which the applicant concludes that English is the language generally used for medical terms. Contrary to the applicant’s assumptions, the words ‘certain’ or ‘generally’ (the applicant’s wording) cannot be interpreted as referring to all medical terms. Therefore, this argument does not support the claim that the mark ‘RCP’ is not descriptive for the goods and services in question in the languages on which the objection is based.

In addition, 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.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added.)

Furthermore, the applicant argues that the term ‘RCP’ denotes the applicant’s undertaking, as the website Acronym Finder gives a rating of 5 stars to ‘Royal College of Physicians’, that is, the applicant.

It is logical that Portuguese, Italian or Spanish acronyms do not appear in a website for English acronyms. The definitions¹ and examples provided in the objection letter show that the abbreviation is widely used in Italy, Portugal and Spain. In these countries, the mark will inform the relevant public that the goods and services for which registration is sought concern or relate to cardiopulmonary resuscitation.

Therefore, the Office maintains that the mark is descriptive for the goods and services for which registration is sought.

Distinctiveness

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

The marks referred to in Article 7(1)(b) EUTMR 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). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

The Office does not agree with the applicant that 09/07/2003, T‑234/01, Orange und Grau, EU:T:2003:202, § 32, cited by the Office, is not applicable in the present case. The abbreviation ‘RCP’ corresponds to the verbal elements ‘cardiopulmonary resuscitation’; therefore, although the Office has considered the mark as a combination of elements, it has assessed the mark as a whole.

With reference to 13/06/2007,T‑441/05, IVG Immobilien AG, EU:T:2007:178, the applicant argues that the mark ‘RCP’ is distinctive, as the minimum degree of distinctiveness required under Article 7(1)(b) EUTMR is reached and, therefore, the relevant public would perceive the mark as an indication of the commercial origin of the goods and services.

As the mark is clearly descriptive for the goods and services for which registration is sought, the relevant public would see the mark as information on the kind and subject matter of the goods and services and not as an indication of trade origin.

The fact that the applicant appears in the top results from an internet search and that an internet search for ‘RCP’ reveals links to ‘reanimación cardionpulmonar’ in a Spanish browser but not for the equivalent in an Italian or Portuguese browser does not prove that the relevant public would perceive the mark as an indication of commercial origin. The top results from internet searches are based on search engine optimisation, not the relevant public’s perception of the mark.

The Office maintains that the mark is both descriptive and non-distinctive in Italian, Portuguese and Spanish; therefore, Article 7(2) EUTMR still applies.

For the abovementioned reasons, the Office maintains its objection.

Further proceedings

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 15 959 612 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.

Anja Pernille LIGUNA

Annex I

Definitions of RCP

Definition in Spanish:

https://medlineplus.gov/spanish/ency/article/000010.htm

Definition in Portuguese (a new website reference is provided, as the link in the objection letter is no longer active):

http://www.planosaude.pt/cursos-aha.html

Definition in Italian:

http://www.farmacoecura.it/automedicazione/rianimazione-cardiopolmonare-ed-arresto-cardiaco/#steps_1