Refusal of application for a European Union trade mark

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

Alicante, 09/06/2017

BIOSTATUS LIMITED

56A Chamwood Road

Shepshed, Leicestershire LE12 9NP

REINO UNIDO

Application No:	016436909
Your reference:	DeepEUTM
Trade mark:	Deep Red Anthraquinone
Mark type:	Word mark
Applicant:	BIOSTATUS LIMITED 56A Chamwood Road Shepshed, Leicestershire LE12 9NP REINO UNIDO

The Office raised an objection on 14/03/2017 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 14/03/2017, which may be summarised as follows:

1. The mark ‘Deep Red Anthraquinone’ is not descriptive in relation to the goods for which registration is sought, as argued by the Office. It is an invented name used as a trademark for the goods in question, namely the products known as ‘DRAQ5’, ‘DRAQ7’ and ‘DRAQfx’. The Office argues that the mark describes the colour of the goods, but the goods are actually blue, the mark ‘Deep Red Anthraquinone’ does not indicate this colour.

2. As the mark referees directly to the mentioned products, and not in the descriptive manner claimed by the Office, the mark is clearly also distinctive.

3. The cited internet result, from ‘Cayman Chemicals’, is from a distributor of the applicant, and is not used in a descriptive manner but in relation to the ‘DRAQ5’ product, this supports the above-mentioned arguments.

4. The applicant request further advice regarding the strategy chosen in relation to 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 its comments.

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).

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

In response to the applicant’s submissions, the Office states the following:

1.

The Office does not contest that ‘Deep Red Anthraquinone’ is an invented name or that it is intended to refer directly to the cited product names. However, the distinctive character and descriptiveness of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T-348/02, Quick, EU:T:2003:318, § 29). Therefore, the fact that the expression is invented and connected to other product names does not automatically mean that the mark is distinctive and not descriptive, as these facts does not necessarily correspond with the perception of the targeted public.

Not event constant use in the market endow a descriptive mark with sufficient distinctive character for it to be registered unless that use is sufficiently significant to ensure that the mark becomes well known by the relevant public, and, consequently, acquires distinctive character for the goods in question; in such a case, the applicant needs, first, to claim acquired distinctiveness within the meaning of Article 7(3) EUTMR and, second, to submit sufficient evidence to demonstrate that a significant proportion of the relevant public perceives the mark as identifying the relevant goods as originating from a specific undertaking. Therefore, the question of whether the mark is invented or refers to other products is irrelevant, because this does not necessarily mean that it has acquired distinctiveness, nor does it mean that the mark itself will not be perceived, by the relevant consumer, as non-descriptive and distinctive.

Consequently, the Office maintains that it is highly likely that the relevant professional English-speaking consumer will make a direct and specific association between the expression and the goods for which registration is sought, as all the words have generic understandable meanings in relation to the goods. And, taken as a whole, the expression ‘Deep Red Anthraquinone’ will be perceived without further reflection as information that the goods applied for are designed to emit a deep red colour of the crystalline anthraquinone. Therefore, the mark conveys obvious and direct information regarding the colour of the goods in question. It follows that the link between the words ‘Deep Red Anthraquinone’ 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.

In particular as, 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.)

2.

As explained above, the Office maintains that the mark is descriptive; therefore, it also maintains that the sign in question is not capable of distinguishing the goods for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) EUTMR. Only a minimum degree of distinctive character suffices for the absolute ground for refusal set out in that Article not to apply. However, in the present case, the required minimum degree of distinctive character could not be established. It is clear from the case-law of the Court of Justice in relation to Article 7(1)(b) EUTMR that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings and, therefore, being able to fulfil the essential function of a trade mark. From the impression produced by the mark, the connection between the relevant goods and the mark is not sufficiently indirect to endow the mark with the minimum degree of inherent distinctiveness required under Article 7(1)(b) EUTMR (see also 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 99). The Office considers, therefore, that it is highly unlikely that, without substantial use, the consumer would perceive the mark as a badge of origin distinguishing the goods for which registration is sought from those of other undertakings.

3.

The Offices acknowledges that the cited internet extract is from the applicants own line of products, and, that it therefore is not relevant as proof of descriptive use. However, this example does not affect the inherent descriptiveness as explained above. Furthermore, the other internet extract cited in the objection letter show descriptive use of the expression. Therefore, the Office maintains that it is highly likely that the relevant public will perceive the marks as a description of the goods, and not as a badge of commercial origin.

4.

As regards the applicant’s request for advice in relation to its strategy, the Office is a EU agency responsible for the registration of the European Union trade mark (EUTM) and the registered Community design (RCD), and is not allowed to provide the users with the legal advice, for example on how to overcome an objection raised during the examination of a trademark application.

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 16 436 909 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.

Lars Paalgard SOYLAND