Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)]

Alicante, 10/09/2018

PLOUGMANN VINGTOFT A/S

Rued Langgaards Vej 8

DK-2300 Copenhagen S

DINAMARCA

Application No:	17 634 213
Your reference:	T51387EU01
Trade mark:	AQUAZYM .
Mark type:	Word mark
Applicant:	Novozymes A/S Krogshoejvej 36 DK-2880 Bagsvaerd DINAMARCA

The Office raised an objection on 10/01/2018 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 12/03/2018, which may be summarised as follows.

1. Descriptiveness

The applicant disagrees with the Office´s assessment that the trademark AQUAZYM is descriptive. ‘Amylase’ is a noun for a particular enzyme, however, “AQUAZYM Ultra” and “AQUAZYM Ultra1200L” are the trade names/trademarks or products of the applicant.

2. Distinctive character

The dictionary/ online chemical guide Guidechem:

see following link https://wap.guidechem.com/dict/dic-15899.html

cited in the Office´s notice of grounds for refusal of 10/01/2018 was wrong when including ‘AQUAZYM’ in its listings as it is a trademark and always has been a trademark belonging to the applicant. The word AQUAZYM was created by the applicant in the beginning of the 1950’s, and it does not have a particular meaning. The applicant should not suffer the loss of rights due to a mistake made by the publisher of a dictionary.

Moreover, the word cannot be found in any standard chemical dictionary, f. ex. the Oxford Dictionary of Chemistry, the Chemistry-Dictionary.com, A to Z Chemistry Dictionary and ChemiCool.

3. Similar marks¹ registered by the Office for the goods ‘enzymes’

EUTM no. Representation

• 9 698 325 BIOZYME

• 14 680 409 DURAMYL

• 111 450 ECOSTONE

• 7 459 977 FRUCTAMYL

• 13 694 708 FUNGAMYL

• 5 932 934 G-ZYME

• 3 273 059 GRINDAMYL

• 9 524 919 GLUCOZYME

• 868 299 NATALASE

• 6 378 426 OPTIMAX

• 829 192 PURASTAR

• 14 392 948 ROHALASE

• 12 763 249 TERMAMYL

4. Use of the sign in the market

According to the link Concise Dictionary of Biomedicine and Molecular Biology , cited in the Office´s notice of grounds for refusal, ‘aquazym’ is a trade name for α-amalyse and thus not a generic term but a name with a commercial origin.

The link with reference to the website of KPC-Horizon, ‘Aquazym 240’

http://kpc-horizon.com/paper-chemicals/other-products/aquazym-240/

is not an obvious generic use, as the mark is found under the heading “products” where it is natural to write the trade names and not the generic names.

5. Claim of acquired distinctiveness through use under art. 7(3) EUTMR

In case the Office maintains its objection and in case the applicant acknowledges the Office´s position, the mark has acquired considerable distinctiveness due to continued and long term use in accordance with Article 7(3) EUTMR.

On 17/04/2018, the Office sent a communication to the applicant, taking note of the claim under art. 7(3) EUTMR included in the observations of 19/03/2018. At the same time, the Office requested a clarification of the claim under art. 7(3) EUTMR whether being a principal or a secondary claim.

On 04/05/2018, the applicant informed the Office that the claim under art. 7(3) EUTMR is supposed to be a subsidiary claim.

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.

1. Descriptiveness

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).

Office´s comments

The Office finds that the term ‘AQUAZYM’ is used generically on the market/ on internet, based on the evidence in the notice of grounds for refusal of 10/01/2018 with the results of the internet searches on the term ‘aquazym’ and on its synonym ‘amylase’. An additional search on the term ‘aquazym’ as of today 10/09/2018 yields another results that the term is used generically, firstly being used as a common synonym for ‘α-amylase’, see following excerpt from a ‘Safety Data Sheet’ on ‘alpha-Amylase’:

https://www.gbiosciences.com/image/pdfs/msds/BTNM-0010_msds.pdf

Moreover, the following result shows that ‘aquazym’ is used as an ingredient in the cleaning/desinfection process - involving enzymes - of contact lenses, see following excerpt:

http://www.premiere.com.pe/eoptics/soluciones-multiproposito/36-solucion-multiproposito-multi3-plus-con-aquazym.html

As to the applicant´s argument that the word cannot be found in any standard chemical dictionary, f. ex. the Oxford Dictionary of Chemistry, the Chemistry-Dictionary.com, A to Z Chemistry Dictionary and ChemiCool, 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).

2. Distinctive character

General remarks

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Moreover, 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).

Office´s comments

For the reasons mentioned above in the section regarding descriptiveness that the sign has been found used generically in the market with a descriptive meaning, the Office maintains its position that that the sign at issue is also devoid of any distinctive character and therefore objectionable under art. 7(1)(b) EUTMR as it is incapable of performing the essential function of a trade mark which is to distinguish the good of one undertaking from those of its competitors.

3. Similar marks² registered by the Office for the goods ‘enzymes’

EUTM no. Representation

• 9 698 325 BIOZYME

• 14 680 409 DURAMYL

• 111 450 ECOSTONE

• 7 459 977 FRUCTAMYL

• 13 694 708 FUNGAMYL

• 5 932 934 G-ZYME

• 3 273 059 GRINDAMYL

• 9 524 919 GLUCOZYME

• 868 299 NATALASE

• 6 378 426 OPTIMAX

• 829 192 PURASTAR

• 14 392 948 ROHALASE

• 12 763 249 TERMAMYL

Office´s comments

The Office would like to point out that according to settled case-law, ‘decisions concerning registration of a sign as a European Union trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T-36/01, Glass pattern, EU:T:2002:245, § 35).

In addition it is clear that the market, the perception of the consumers and, moreover, the practice of the Office could have changed during that period. The Court of Justice is also aware of this market and practice evolution and have stated that observance of the principle of equal treatment must be

reconciled with observance of the principle of legality according to which no

person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 67).

4. Use of the sign in the market

Office´s remarks

The Office is of the opinion that the sign at issue, ‘AQUAZYM’ is used generically to some extent on the market. However, at the same time the Office acknowledges the applicant´s arguments that there is some evidence, too, of the sign being used as a trade mark. Therefore, it will be for the applicant to prove that the mark has acquired distinctive character through use based on art. 7(3) EUTMR.

5. Claim of acquired distinctiveness through use under art. 7(3) EUTMR

Applicant´s remarks

In case the Office maintains its objection and in case the applicant acknowledges the Office´s position, the mark has acquired considerable distinctiveness due to continued and long term use in accordance with Article 7(3) EUTMR.

Office´s comments

As re-iterated below, the Office informs you that once this decision has become final, the proceedings will be resumed for the examination of the applicant´s subsidiary claim based upon art. 7(3) EUTMR and art. 2(2) EUTMIR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for EUTM No 17 634 213 is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR in the relevant English-speaking territory for all the goods claimed, namely:

Class 1 Desizing preparations for use in the textile industry; chemical products for use in rendering soluble starch in sized fabric and for degrading the aforesaid starch.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Finn PEDERSEN