Refusal of application for a European Union trade mark

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

Alicante, 04/09/2017

WYNNE-JONES, LAINE & JAMES LLP

Essex Place 22 Rodney Road

Cheltenham,

Gloucestershire GL50 1JJ

REINO UNIDO

Application No:	016481822
Your reference:	GJ/ASH/TM7467EU00
Trade mark:	TRACE-ABILITY
Mark type:	Word mark
Applicant:	Trace-Ability, Inc. Bristol Parkway, Suite 200 Culver City California 90230 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 22/03/2017 pursuant to Article 7(1)(b) and (c) 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 22/05/2017, which may be summarised as follows:

1. As the degree of awareness shown by the relevant public is high, they will pay greater attention to detail when purchasing the goods for which registration is sought, and will closely scrutinise the ‘TRACE-ABILITY’ mark and other marks in the same market. The result is that it will be much easier for the relevant public to distinguish the applicant’s goods from those of other undertakings on the basis of the ‘TRACE-ABILITY’ mark alone.

2. The goods are kits, instruments and systems for use in multiparametric chemical analysis. Therefore, they are used for analysis, which is defined in the Collins Dictionary as ‘the scientific process of examining something in order to find out what it consists of’. With the definition of analysis in mind, it is clear that the purpose of the goods for which registration is sought is to aid the scientific process of examining a chemical to determine what it consists of. This differs from the meaning of the word ‘TRACEABILITY’ that the Office provided.

3. The mark is a play on words. Splitting the single word with a defined meaning, in this case not a directly applicable one, into two words gives prominence to the relevant word, ‘TRACE’. This gives a clearly distinctive character to the mark as a whole.

4. The same mark has been accepted for registration by the UKIPO.

5. The trade mark has the necessary minimum degree of distinctive character in respect of the goods in question.

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 ‘TRACE-ABILITY’, which means ‘the power of discovering how something was made or developed’. Although this expression in its written form cannot be found in dictionaries, its meaning is identical with the word ‘traceability’, which means ‘the ability to discover information about where and how a product was made’ (information extracted from Cambridge Dictionary on 22/03/2017 at http://dictionary.cambridge.org/dictionary/english/traceability ). The relevant consumer will perceive the mark ‘TRACE-ABILITY’ 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 goods for which registration is sought, namely analysis systems, instruments, and kits for use in association with multiparametric chemical analysis, are goods that are able to trace chemicals. The mark describes, in a quite unambiguous way, the characteristics of the goods, by giving consumers relevant information as regards their kind.

The goods for which registration is sought target the professional public. It is clear that the relevant consumers will perceive, in relation to the contested goods, the expression ‘TRACE-ABILITY’ as a meaningful expression referring to the fact that the goods make it possible to discover how a chemical was made or developed.

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 mark applied for, ‘TRACE-ABILITY’, thus clearly conveys obvious and direct information about the kind of the contested goods. 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 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 goods at issue.

The fact that the words of the sign ‘TRACE-ABILITY’ are separated by a hyphen does not mean that consumers will not associate this expression with the word ‘TRACEABILITY’, as they will be read and pronounced in the same way and the relevant public knows that both expressions have the same meaning.

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

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, ‘TRACE-ABILITY’, 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 goods are able to trace chemicals.

The mark is composed of the verbal elements ‘TRACE-ABILITY’, written in standard characters. The goods to which an objection has been raised and for which registration is sought, namely analysis systems, instruments, and kits for use in association with multiparametric chemical analysis], are specialised goods targeting mainly professional consumers. In view of the nature of the goods 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 goods under the mark to consumers or end users by enabling them, without any potential for confusion, to distinguish those goods 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 goods, 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 goods 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 goods 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 goods, the relevant consumer will immediately be given an indication of the characteristics of such goods (i.e. their kind).

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. It is also true that the mark applied for is a word mark – composed of two verbal elements in a normal 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 its goods to be distinguished from those of competitors.

The applicant argues that the mark has been registered by the UK IP Office

As regards the national decision referred to by the applicant, it must be borne in mind that, as is clear from the 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 (05/12/2000, T‑32/00, Electronica, EU:T:2000:283, § 47).

Consequently, the registrability of a sign as a European mark must be assessed by reference only to the relevant Community rules. Accordingly, the Office and, if appropriate, the European 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 (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

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 and non-distinctive, it will not be able to fulfil the primary function of a trade mark, which is to distinguish the applicant’s goods from those of competitors, and it will not be recognised by the public as an indication of the commercial origin of the goods. 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 16 481 822 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.

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