Refusal of application for a European Union trade mark

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

Alicante, 11/07/2017

URQUHART-DYKES & LORD LLP

Arena Point, Merrion Way

Leeds LS2 8PA

REINO UNIDO

Application No:	016557911
Your reference:	T243022EM/GIP
Trade mark:	COOLASER
Mark type:	Word mark
Applicant:	Revere Clinics Limited 3 Century Court, Tolpits Lane Watford Herefordshire WD18 9RS REINO UNIDO

The Office raised an objection on 19/04/2017 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 12/06/2017, which may be summarised as follows:

1. With regard to descriptiveness, the applicant clarifies that the type of treatment subject to the mark ‘COOLASER’ is a commonly known ‘laser skin resurfacing’ or ‘LSR’; it is provided by physicians to patients on an individual basis and after a detailed examination of their needs. In that line, the applicant states that the treatments provided under the mark ‘COOLASER’ target average consumers, who will be very well informed, observant and circumspect before deciding to receive such laser treatment.

Moreover, an additional supporting document is submitted to provide more information on LSR treatment and its benefits for patients. This medical article describes two types of laser treatment that are available to patients. Accordingly, the applicant argues that its clients would be aware that these laser treatments are not provided at a low temperature due to the individual examinations that patients undergo before receiving treatment.

In view of the above, the applicant claims that the mark ‘COOLASER’ is not descriptive of the services specified in the application.

2. With regard to distinctiveness, the applicant makes the same arguments already put forward in relation to descriptiveness in its first observation above. That is, the applicant maintains that the mark ‘COOLASER’ does not contain any generic terms that could communicate information about the services for which registration is sought to the public. Therefore, the applicant affirms that the mark is capable of distinguishing the origin of the services specified in the application.

3. Finally, the applicant suggests changing the specification of the services for which registration is sought, namely by adding to ‘medical services’ and ‘beauty care services’ the clarification: ‘namely, laser skin resurfacing’. If this amendment is made, the applicant is certain that the nature of the services will be unambiguous and, therefore, the mark will conform to the requirements for registrability.

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 arguments, the Office has decided to maintain the objection.

1. 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).

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of Article 7(1)(c) EUTMR does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

In view of the above reasoning, the arguments that the laser treatments afforded by the applicant are not provided at a low temperature and that the applicant’s clients are well informed of this characteristic of the laser due to the extensive examination that patients must undergo prior to receiving the treatment are both irrelevant, as the mark ‘COOLASER’ is nonetheless descriptive of the services specified in the application for registration. The mark conveys obvious and direct information regarding the kind and intended purpose of the services in question, that is, medical and beauty care services. The way in which the applicant provides its services bearing the mark ‘COOLASER’ is immaterial in the assessment of the link between the mark and the services for which registration is sought.

2. It follows from the previous argument that the mark ‘COOLASER’ has a clear descriptive meaning in relation to the services for which registration is sought. The generic words that make up the mark inform the average consumer of the characteristics of the services and, in consequence, the mark lacks distinctive character (19/09/2002, C‑104/00 P, Companyline, EU:C:2002:506, § 21). Because of its descriptive character, the mark ‘COOLASER’ is unable to indicate the commercial origin of the services in question.

3. Finally, regarding the proposed amendment to and clarification of the specification of the services in the application, the Office cannot make the modification, as the applicant’s request is not unconditional and unambiguous.

Notwithstanding the above, regardless of whether the amendment can be accepted or not, it should be pointed out that the treatment ‘laser skin resurfacing’ can be carried out using alternative types of laser and different methods. Therefore, the objection originally raised by the Office would remain valid for the amended list of services.

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 16 557 911 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.

María Luisa ARANDA SALES