Refusal of application for a European Union trade mark

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

Alicante, 21/08/2017

Grünecker Patent- und Rechtsanwälte PartG mbB

Leopoldstr. 4

D-80802 München

ALEMANIA

Application No:	016460818
Your reference:	EW35557HGOSsfe
Trade mark:	NEXTGEN BIOLOGICS
Mark type:	Word mark
Applicant:	ModernaTX, Inc. 320 Bent Street Cambridge Massachusetts 02141 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 16/03/2017 pursuant to Article 7(1)(b) and (c) EUTMR and 7(2) EUTMR because it found that this trade mark is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 15/05/2017, which may be summarised as follows:

1. The mark does not have any descriptive meaning in relation to the services. It is, at most, vague and suggestive.

2. The mark is a neologism.

3. ‘BIOLOGICS’ has a meaning that can be found in dictionaries, but ‘NEXTGEN’ does not.

4. ‘NEXTGEN’ is used as a trade mark or in company names (Google search, 10/05/2017). It is not an official acronym or abbreviation of ‘next-generation’.

5. The USPTO has accepted the mark applied for for registration (No 87 169 772) and only for the word ‘BIOLOGICS’ did a disclaimer have to be submitted.

6. The mark has the minimum degree of distinctive character.

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, for the reasons set out below.

Article 7(1)(c) EUTMR – general remarks

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).

In the present case, the trade mark applied for consists of the expression ‘NEXTGEN BIOLOGICS’, which means ‘the next stage or development of biological products used to induce immunity’. Although this expression is not found in dictionaries, its meaning can be easily understood or deduced by the relevant English-speaking part of the public, as it is composed of the words ‘NEXTGEN’, which is short for ‘next-generation’, and ‘BIOLOGICS’.

The first word is a shortened form of ‘next-generation’ (information extracted from Your Dictionary on 16/03/2017 at http://www.yourdictionary.com/next-gen ).

‘Next-generation’ means ‘adj. (a) of or relating to the next generation (of a family, lineage, etc.); (b) (of a product, process, technology, etc.) belonging to the next stage of development of its type’ (information extracted from Oxford English Dictionary on 16/03/2017 at www.oed.com).

The second word means ‘biological products such as vaccines and therapeutic sera, used to induce immunity to infectious diseases or harmful substances of biological origin’ (information extracted from Collins English Dictionary on 16/03/2017 at www.collinsdictionary.com).

The structure of the expression ‘NEXTGEN BIOLOGICS’ does not diverge from the rules of English grammar; rather, it complies with them. Therefore, the relevant consumer will perceive the mark not as unusual but as a meaningful expression.

The public interest underlying Article 7(1)(c) EUTMR is that no exclusive rights should be created in purely descriptive expressions that other traders might wish to use; it is also in the interest of the public that expressions that have a purely informational value should not be reserved for one single trader (such a mark may, of course, be registered if the applicant can show evidence of acquired distinctiveness).

Registration of a trade mark gives the holder of the mark a monopoly right over the signs or indications of which it is composed, so any signs or indications that are descriptive need to be left free for trade use. Those indications are, by definition, not capable of constituting trade marks.

The mark in question has a clear meaning for consumers, who will perceive it not as unusual but as a meaningful expression. The mark conveys the idea that all the services for which registration is sought, namely scientific research and development in the fields of pharmaceuticals, medicine, biologics, biotherapeutics, biosimilars and therapeutics, are services that offer better and improved biologics through scientific research and development. The mark describes quite unambiguously the characteristics of the services by giving consumers relevant information as regards their kind and quality.

The services for which registration is sought target the professional public. It is clear that the relevant consumers, in particular specialists but probably also a large part of the general public, will understand the combination of words in relation to the contested services as a meaningful expression referring to services that offer better and improved biologics through scientific research and development.

The mark applied for, ‘NEXTGEN BIOLOGICS’, thus clearly conveys obvious and direct information about the kind and the quality of the contested services. Although the combination as such may be novel, the words that make up the mark applied for will be understood by the relevant English-speaking public; the mark is not imaginative, metaphorical or unusual, as it is no more than the sum of its parts and consists exclusively of the simple and clear juxtaposition of two immediately identifiable words. The combination of the two words does not contain any additional element capable of giving it distinctive character. The relevant public will establish a direct and specific relationship between the trade mark and the services at issue.

Furthermore, it must be held that the fact that the relevant public is specialist cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

The Office considers it highly unlikely that, without substantial use, consumers would perceive the mark applied for as a badge of origin that distinguishes the applicant’s services from those of its competitors.

The applicant argued that the word ‘NEXTGEN’ cannot be found in dictionaries. A search conducted on 03/08/2017 found the word in different dictionaries referring to ‘next-generation’; therefore, this argument has to be dismissed. It is defined as:

• ‘next generation’ (information extracted from Urban Dictionary at http://www.urbandictionary.com/define.php?term=Next%20gen );

• ‘next-generation’ (information extracted from PC Encyclopedia at https://www.pcmag.com/encyclopedia/term/57573/next-gen );

• ‘next generation’ (information extracted from Lingo2word at http://www.lingo2word.com/lingodetail.php?WrdID=377967 ).

Article 7(1)(b) EUTMR – general remarks

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).

It is settled case-law that ‘[a] sign’s distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign’ (09/10/2002, T‑360/00, UltraPlus, EU:T:2002:244, § 43).

Assessment of the distinctive character of the mark

A mark’s distinctiveness can be assessed only, first, in relation to the goods or services for which registration is sought and, second, in relation to the perception of the relevant part of the public.

As set out in the notice of absolute grounds for refusal, the sign at issue, ‘NEXTGEN BIOLOGICS’, is devoid of any distinctive character, as consumers will fail to perceive it as an indication of trade origin and instead will understand that the purpose of the services is to develop the next generation of biologics to induce immunity.

The mark is composed of the verbal elements ‘NEXTGEN BIOLOGICS’, written in standard letters. The services to which an objection has been raised and for which registration is sought are specialised services that target the professional public. In view of the nature of the services in question, the degree of attention of the relevant public will be high.

A mark that, as in the present case, would simply be seen as a descriptive expression cannot guarantee the identity of the origin of the services under the mark to consumers or end users by enabling them, without any potential for confusion, to distinguish those services from others that have a different origin. Therefore, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the services, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 20).

The English-speaking part of the public and other consumers in the EU who understand English will see the mark not as a badge of the trade origin of the services at issue but, rather, as a descriptive expression with a clear meaning.

There is nothing in the mark that might, beyond its obvious, direct and descriptive meaning, enable the relevant public to memorise it easily and instantly as a distinctive mark for the services concerned. The relevant public cannot, in the absence of prior knowledge, perceive it in any way other than in its descriptive sense. The mark applied for does not constitute a play on words and is not imaginative, surprising or unexpected. It is merely an ordinary indication of a descriptive meaning and, when it is applied to a variety of services, the relevant consumer will immediately be given an indication of the characteristics of such services (i.e. their kind and quality).

The applicant argues that the mark is an invented expression.

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which 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 word is more than the sum of its parts …

(12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32.)

Furthermore, it is true that a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in Article 7(1)(b) EUTMR. However, it is also true that the mark applied for is a word mark composed of two verbal elements in a standard typeface with no distinctive character. The trade mark does not have any additional distinctive elements, such as a figurative element or a distinctive verbal element, that would allow the mark to distinguish the services for which registration is sought from those of competitors.

The English-speaking part of the public and other consumers in the EU who understand English will see the mark not as a badge of the trade origin of the goods at issue but, rather, as a descriptive expression with a clear meaning.

The Office agrees with the applicant that trade marks that are merely suggestive or that require further interpretation must not be refused registration. However, the sign ‘NEXTGEN BIOLOGICS’ cannot be perceived as anything other than an indication of the characteristics of the services in question. The message expressed by the sign applied for is clear, direct and immediately obvious to the relevant public. It is not vague in any way, it does not lend itself to different interpretations and it is not imprecise or akin to an ‘evocative’ sign. The expression is not sufficiently unusual to require a significant measure of interpretation, thought or analysis by the relevant consumer.

As regards the USPTO decision referred to by the applicant (No 87 169 772), 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 (12/02/2009, C‑39/08 and C‑43/08, Volks.Handy, EU:C:2009:91, § 17-19; 13/02/2008, C‑212/07 P, Hairtransfer, EU:C:2008:83, § 44; 05/12/2000, T‑32/00, Electronica, EU:T:2000:283, § 47). Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant European Union rules. Accordingly, the Office is 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 (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43 § 47).

In the present case, the decision cited originates not from a national office in a Member State but from outside the European Union, in a jurisdiction with different conditions for the registration of trade marks.

The applicant’s argument that the mark applied for is not commonly used in relation to the services in question other than in a trade mark sense, as a search using Google reveals, must be dismissed, since such a search cannot constitute a reliable indicator of the relevant public’s perception of the mark applied for. The applicant did not submit any other evidence to corroborate its statement.

Finally, the applicant did not claim that its mark had acquired distinctive character through genuine use. Since the mark applied for will be perceived by the relevant public as purely descriptive, it will not be able to fulfil the primary function of a trade mark, which is to distinguish the applicant’s services from those of competitors, and it will not be recognised by the public as an indication of the commercial origin of the services. Therefore, it is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 19; 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 86).

Conclusion

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 16 460 818 is hereby rejected for all the 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.

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