Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 04/05/2018

CH KILGER Anwaltspartnerschaft mbB

Fasanenstr. 29

D-10719 Berlin

ALEMANIA

Application No:	017440711
Your reference:	B219-0016TMEU1
Trade mark:	Smart Microbes
Mark type:	Word mark
Applicant:	Biomillenia 10, rue Vauquelin F-75005 Paris FRANCIA

The Office raised an objection on 10/11/2017 pursuant to Article 7(1)(b) and (c) 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 14/12/2017, which may be summarised as follows.

1. The consumers are highly specialised in their field

2. The mark is a clear contradiction

Pursuant to Article 94 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 consumers are highly specialised in their field

The applicant holds that the relevant consumers in the case at hand are very specialised consumers. This is something the Office concurs with, in fact in its letter the Office has made it amply clear that relevant consumers in the case at hand are experts in the field of biology and chemistry. Having said that, this does not mean that the specialised public will not understand the underlying meaning of the mark which is very clear – a microorganism which is intelligent.

Even if the awareness of part of the relevant public is high, given the relatively high technical level and cost of the services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 24). By analogy, this is also relevant for the goods at hand.

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).

The mark is a clear contradiction

The applicant holds that the mark in question is a clear contradiction in terms. The applicant holds that a microbe cannot be smart, and that it is virtually impossible to develop a smart microbe. The Office, however has its qualms on the applicant’s submissions. From the research carried out on 09/11/2017 and is included in the letter sent by the Office on 10/11/2017, it is fairly obvious that in biomedicine that bacteria can have predicative intelligence, and hence can be labelled as ‘smart’. Therefore, contrary to the claims of the applicant, the mark is not a contradiction in terms, nor is it something which is impossible to achieve, but it is clearly something which is being developed and as the documentation suggests, the results are rather positive.

In this day and age, the word ‘SMART’ has become synonyms with anything which can be done in a much better way, by the aid of science and technology. Hence, terms such as smart phones, smart meters, smart TVs, smart plants and also smart microbes. As rightly pointed out by the applicant, the goods in question only target specialised consumers, however this does not mean that the specialised consumers will not understand the meaning of the mark.

The Office believes that the mark is clear and unequivocal, and that the public will understand the meaning of such a mark because it will provide information regarding the kind, quality and intended purpose of the goods in question. Therefore the mark in question cannot function as a trade mark. There is nothing distinctive about the mark, the mark is descriptive of the goods it covers, and it is also non-distinctive.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 17 440 711 is hereby rejected for all the goods claimed.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 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.

Alistair BUGEJA