Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 21/10/2017

HGF LIMITED

8th Floor,

140 London Wall

London EC2Y 5DN

REINO UNIDO

Application No:	016642001
Your reference:	T243112EP
Trade mark:	PURPLE
Mark type:	Word mark
Applicant:	Microgenics Corporation 46500 Kato Road Fremont California 94538 ESTADOS UNIDOS (DE AMÉRICA)

1. The Office raised an objection on 03/05/2017 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.

2. The applicant was allowed an extension for two months and submitted its observations on 04/09/2017; these may be summarised as follows:

• The name of a colour can be registrable where the goods applied for are of such nature that the colour name has no significance but instead is arbitrary and distinctive.

• Colour name marks should only be objected to where the colour reasonably can be perceived by the public as a description of one of its characteristics; where colour is a typical feature of the goods and relevant for consumer choice; or if the goods concerned are colorants such as paint, ink, dyes or cosmetics.

• On the basis of this, the applicant proposes to amend the specification to read as follows: Class 1: Antibodies and antigens for scientific purposes, other than for medical or veterinary use. Class 5: Antibodies; antigens; viral antigens.

• The nature of the above goods are such that PURPLE, has no relevance in relation to their nature or purpose. Therefore, the relevant public will not reasonably perceive PURPLE to be a description of a characteristic of antibodies and antigens. Further, colour is not a typical feature of antibodies and antigens and neither is it a feature which would be relevant for the consumer’s choice when purchasing antibodies and antigens. Consequently, the objections under Articles 7(1)(c) and (b) do not apply when considering their application to these narrowly defined proposed goods.

• Before formally restricting the specification, the applicant requests a further opportunity to correspond with the Examiner before the application is formally rejected.

3. 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.

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 Office cannot find anything distinctive about the mark PURPLE in relation to the applied for goods.

In the absence of any other distinctive element, such as a company name, a logo or an additional fanciful word, the mark will immediately be perceived as a colour indication.

The same applies to the proposed limitation of goods, antibodies and antigens in classes 1 and 5. Antibodies and antigens can be used as diagnostic preparations – goods which the Office initially found the mark being descriptive of.

It is true that the name of a colour can be registrable where e.g. the specific colour in question has no clear connection with the goods concerned, or where it is unlikely that the name of a colour would be perceived by the public as an indication of the colour of the goods.

In the case at hand, the Office finds it highly unlikely that the mark PURPLE would be perceived as anything else than a reference to e.g. the specific colour of the goods, or the colour the goods will emit when being used.

See some examples below that show that names of colours are used to describe a characteristic of the goods that are covered by the application:

StarBright™ Blue 700 Fluorescent Secondary Antibodies

http://www.bio-rad.com/en-es/product/starbright-blue-700-fluorescent-secondary-antibodies

Dimerization-Dependent Green and Yellow Fluorescent Proteins

http://pubs.acs.org/doi/abs/10.1021/sb300050j

Yellow fluorescent protein

https://en.wikipedia.org/wiki/Yellow_fluorescent_protein

Fluorescent Purple, 2.0-2.4 μm

https://www.cd-bioparticles.com/p/Absolute-Mag%E2%84%A2-Carboxyl-Magnetic-Particles-Fluorescent-Purple-2-0-2-4-%CE%BCm_20_193_211_339.html

Fluorescent Proteins and Antibodies

https://www.mobitec.com/cms/download/Handbooks/MBLFluorescentProteinBrochure.pdf

As can be seen in the examples above, names of colours, including PURPLE, are often used in the field of diagnostics, including in relation to antibodies, antigens and other biological substances. The word PURPLE has therefore indeed relevance in relation to the goods applied for and would prima facie be seen as describing a feature of the goods.

Also, 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).

Diagnostic preparations can come in e.g. liquid or powder form and they could have different colours where each colour may have a specific quality, purpose or use. The colour feature in question may be relevant for the consumer when purchasing antibodies and antigens or any other diagnostic preparation.

There is nothing arbitrary and distinctive about the mark applied for. It simply consists of the word PURPLE that obviously is referring to a specific colour feature of the goods. It is a term that should remain free for other traders in the field of diagnostics to use to refer to a colour characteristic of the goods.

According to the Office´s Guidelines, a sign consisting exclusively of the name of a colour must be objected to under Article 7(1)(c) EUTMR when the application claims any goods and services for which the colour can reasonably be perceived by the public as a description of one of its characteristics. See Part B, Examination, Section 4 Absolute Grounds For Refusal, Chapter 4, 2.9 Names of Colours.

In the case at hand the Office finds it reasonable to believe that the mark applied for will merely be perceived as a description of a characteristic of the goods, and not as a distinctive sign designating the commercial origin of the goods.

The Office cannot see how a further restriction of the goods could overcome the objection. The goods concerned are already very specific and narrow and it is believed that any diagnostic preparation could have a specific colour feature. The applicant´s request for a further opportunity to correspond with the Office is therefore denied as it would unnecessarily lengthen the examination procedure.

4. 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 016642001 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.

Cecilia ALIN