Refusal of application for a European Union trade mark

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

Alicante, 12/09/2017

D YOUNG & CO LLP

120 Holborn

London EC1N 2DY

REINO UNIDO

Application No:	016703522
Your reference:	T309424HJC
Trade mark:	CONTRAPEST
Mark type:	Word mark
Applicant:	SenesTech, Inc. Suite 1 3140 N. Caden Ct. Flagstaff Nevada 86004 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 29/05/2017 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.

The applicant submitted its observations on 20/07/2017, which may be summarised as follows:

1. The consumer of the relevant goods are highly specialised professionals, the goods will not be available to the general public.

2. The Office has misinterpreted the word ‘CONTRA’, this is the name of a Nigerian [sic] guerrilla group active in the 1970s and 1980s, the meaning put forward by the Office, by contrast, has no commonly known meaning in English – this meaning is only perceived when written ‘CONTRA-’. The word ‘CONTRA’ would not normally be used in relation to pest control, and, the combination ‘CONTRAPEST’, does not exist in the English language. The Office has broken down the mark and applied an artificially interpretation, the relevant consumer, however, would not do this. The mark is therefore not descriptive and sufficiently distinctive.

3. The mark ‘CONTRAPEST’ has been accepted for registration by the United States trademark Office (USPTO), for identical goods in Class 5 and for goods in Class 10.

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).

1.

As regards the relevant consumer, it must be held that the fact that the relevant public is a specialist one 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).

2.

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59).

The Office acknowledges that there existed a guerrilla group in Nicaragua called Contra, however, the fact remains that the word also has the meaning put forward in the attached L110 letter. It is highly likely that the relevant English speaking consumer, in the European Union, is more familiar with the meaning of an English word than a Central-America guerrilla group active over 30 years ago. In particular, when considering that the distinctive character of a trade mark always must be assessed in relation to the goods or services in respect of which registration of the sign is sought (27/11/2003, T-348/02, Quick, EU:T:2003:318, § 29). The mark in question has clear and understandable meaning in relation to the goods in question, as explained below and in the attached L110 objection letter.

As regards the dictionary definition used, when a word has a hyphen at the end, like ‘contra-’, it means that this is prefix that can be combined with other words. In the case of ‘contra-’ it means ‘against or opposite’ of the word following it, the examples from the quoted Cambridge Dictionary was ‘to contradict (= say the opposite) contraception (= something that is used to prevent pregnancy)’. The combination ‘CONTAPEST’ will be perceived as constructed in the same way, with the meaning ‘to prevent pest’. Therefore, it is highly likely that sign will be immediately and easily understood by the relevant English speaking consumer, in particular, when encountered on pest control goods.

Furthermore, 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).

Consequently, the Office maintains that, taken as a whole, the expression ‘CONTRAPEST’ immediately informs consumers without further reflection that the goods applied for, sterilization drugs for mammals, not including humans, are used to prevent pests (for example rats and mice) from increasing in numbers, by sterilizing them. Therefore, the mark conveys obvious and direct information regarding the intended purpose of the goods in question. It follows that the link between the words ‘CONTRAPEST’ 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.

As the Office maintains that the mark is descriptive; 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.

3.

As regards the national decisions referred to by the applicant, 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 … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union 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).

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 16 703 522 is hereby rejected for all the goods.

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