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

(Article 7 EUTMR)]

Alicante, 26/09/2018

FIELDFISHER LLP

IP Protection Department

8th Floor

Riverbank House

2 Swan Lane

London EC4R 3TT

REINO UNIDO

Application No:	017912501
Your reference:	UK01-030563.00156/RZH
Trade mark:	GENES TO THERAPIES
Mark type:	Word mark
Applicant:	Alzheimer's Disease Research Foundation 34 Washington Street, Suite 200 Wellesley Hills Massachusetts 02481 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 02/07/2018 pursuant to Article 7(1)(b) and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 31/07/2018, which may be summarised as follows:

1. The sign applied for has an unusual syntactic structure that subverts the common English idiom of ‘from [x] to [y]’ by omitting the first preposition, ‘from’. The Office did not examine the sign as it is but added the prepositions ‘from’. 

2. The words ‘genes’ and ‘therapies’ do not fall within the same category. Therefore, the arrangement of the words composing the trade mark is unusual and creates elements of conceptual intrigue.

3. The consumer would have to go through the mental process of looking for a meaning, as it is not readily apparent from the sign as a whole. It requires an interpretative effort. Consequently, it cannot be established that the trade mark lacks distinctive character. The mark is merely allusive.

4. Registration of a sign is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness.

5. A number of similar signs, which have the same ‘[A] to [B]’ structure, have been accepted by the EUIPO.

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.

General remarks

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

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).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

Applicant’s arguments

1. The applicant argues that the sign has an unusual syntactic structure that subverts the common English idiom of ‘from [x] to [y]’ by omitting the first preposition, ‘from’.

However, the Office's guidelines clearly state that the use of unorthodox grammatical forms must be carefully assessed because advertising slogans are often written in a simplified form, in such a way as to make them more concise and snappier (inter alia, judgment of 24/01/2008, T-88/06, Safety 1st, EU:T:2008:15, § 40). This means that a lack of grammatical elements such as definite articles or pronouns (‘THE’, ‘IT’, etc.), conjunctions (‘OR’, ‘AND’, etc.) or prepositions (‘OF’, ‘FOR’, etc.) may not always be sufficient to make the slogan distinctive.

In the present case, the Office believes that the relevant public would not perceive the omission of the first preposition ‘from’ as distinctive. The grammatical structure of the rest of the expression is correct in English and does not give the sign a new meaning. The public would understand the sign as a whole without effort, even with the word ‘from’ missing.

It is recalled that, as already stated by the Boards of Appeal, often, promotional messages printed on products or their packaging are not written in ordinary, grammatically correct prose. Space is limited, so messages are necessarily elliptical. Short, punchy messages are in any case more likely to attract the attention of the consumer, who may not have the time or the inclination to read long texts. Hyperbole is prevalent; the consumer expects nothing less. Loose syntax is everywhere (22/06/2004, R 118/2003-2, WHITENING MULTI-ACTION, § 14, emphasis added).

In that regard, the Office examined the sign as a whole with reference to the perception of the consumers of the goods and services covered by the mark.

2. Contrary to the applicant’s arguments, the link between genes and therapies is obvious to the Office.

Genes, defined as ‘the part of a cell in a living thing which controls its physical characteristics, growth, and development’ (information extracted from Collins English Dictionary on 29/08/2018 at https://www.collinsdictionary.com/dictionary/english/gene_1), are at the root of genetic diseases and can have an influence on other diseases, but they are also the solution to certain illness, that is, ‘gene therapy’.

As examples, and merely to illustrate what has just been said, here are some articles on genes found on the internet on 30/08/2018:

(29/08/2018 - https://www.alzheimers.org.uk/about-dementia/risk-factors-and-prevention/alzheimers-disease-and-genes)

(https://www.independent.co.uk/life-style/health-and-families/health-news/alzheimers-disease-genes-risk-discover-scientists-dna-cardiff-university-a7845511.html)

(https://www.medicinenet.com/genetic_disease/article.htm#what_are_the_types_of_genetic_inheritance)

(https://www.telegraph.co.uk/science/2018/04/09/alzheimers-gene-neutralised-human-brain-cells-first-time/)

The word ‘therapies’ is the plural of the word ‘therapy’, defined as ‘a particular treatment of someone with a particular illness’ (information extracted from Collins English Dictionary on 29/08/2018 at https://www.collinsdictionary.com/dictionary/english/therapy).

As a result, a therapy may concern a genetic disorder or may be a gene therapy, a therapy that uses genes to heal.

In both cases, researchers or medical professionals who are looking for a treatment for an illness need to study the full range of the subject by beginning with the gene at the root of this disease or one that can make it possible to fight the disease. The therapies are the end of the journey of this research.

Consequently, the connections between the words ‘genes’ and ‘therapies’ are obvious.

It is the opinion of the Office that their association in the expression ‘genes to therapies’ does not create any element of conceptual intrigue.

On the contrary, their link is so clear that it reinforces the Office's position that the absence of the word ‘from’ will not be perceived as distinctive by the relevant consumer.

3. Furthermore, the fact that the sign at issue can be perceived as surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s services from those of a different commercial origin (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

For the reasons cited above, in the present case, the Office does not believe that the sign will be immediately perceived by the relevant public as an indication of commercial origin.

The fact that the word ‘from’ is missing is not enough to give the sign as a whole a distinctive character and there are no elements of conceptual intrigue, with the link between genes and therapies being clear.

As shown above in examples found on the internet, the field of the services, Alzheimer’s and related diseases, is directly concerned with genes and therapies, as some research tends to demonstrate that genes are involved in the disease or could be used in its treatment.

Therefore, the sign as a whole does not require an effort from the consumer to be understood in relation to the scientific research and development, the research in the field of Alzheimer’s and related diseases an the providing medical and scientific research information in the field of Alzheimer’s and related diseases.

As seen above, the expression ‘genes to therapies’ conveys a meaningful message that will immediately be perceived by the relevant consumers.

The Office disagrees that the expression at issue is vague and indirect in relation to the goods and services for which registration is sought, since its message is clear and direct, as already described in this decision. The mark applied for is rejected not merely because it is a promotional slogan, but rather because it is a banal slogan, with a clear and unambiguous laudatory meaning (12/07/2012, C 311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 32-35).

The sign would be perceived by the relevant public as simply a customer service statement, which merely serves to highlight positive aspects of the services in question, namely that they cover a broad range of topics from genes to therapies.

It will not be perceived by the relevant public as an indication of the commercial origin of the goods and services concerned.

4. It is agreed that, as the applicant submits, the distinctive character of a sign is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of its proprietor. It is sufficient that a trade mark enables the public to identify the origin of the protected goods or services and to distinguish these from other goods or services (16/09/2004, C 329/02 P, SAT/2, EU:C:2004:532, § 41).

It is clear, from the above analysis and explanations, that in the present case the sign under analysis does not, prima facie, give the relevant consumers the impression that it is an indicator of origin.

5. As regards the applicant’s argument that a great number of similar registrations have been accepted by the EUIPO, 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).

‘It is clear from the case-law of the Court of Justice 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).

Moreover, the majority of the quoted examples are composed of words that do not have any meaning together or in relation to the goods or services for which registration was sought, or they are only allusive, or the link between the parts of the idiom is less clear than in the present case.

Most of the examples have only the preposition ‘to’ in common with the sign applied for and include completely different words before and after this common element.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for EUTM No 17 912 501 is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b), (c), in the United kingdom, Ireland and Malta for the following goods and services:

Class 42 Scientific research and development; research in the field of Alzheimer's and related diseases; providing medical and scientific research information in the field of Alzheimer's and related diseases.

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.

Brice LAUGIER