Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 07/11/2019

Barker Brettell Sweden AB

Östermalmsgatan 87B

SE-114 59 Stockholm

SWEDEN

Application No:	018038806
Your reference:	CAW100084T.EM
Trade mark:	SCD
Mark type:	Word mark
Applicant:	Medidata Solutions, Inc. 350 Hudson Street, 9th Floor New York New York 10014 UNITED STATES OF AMERICA

The Office raised an objection on 26/04/2019 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, which forms an integral part of this decision. On 25/06/2019 the applicant requested an extension of the time limit to submit observations in reply and the Office granted an extension of the time limit to reply by a further two months.

With the above notice, the applicant was given opportunity to submit observations in reply. 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.

The applicant submitted its observations on 01/07/2019, which may be summarised as follows:

1. The sign SCD is not clearly and immediately descriptive of the services offered, as amended, since the acronym SCD may also refer to other meanings such as, for example, ‘sickle-cell disease’, ‘sequential compression device’, etc. Therefore, the relevant professional consumers will merely perceive it as a random group of letters capable of distinguishing the services of the applicant from those of its competitors.

Moreover, the applicant maintains that the Office has assessed the relevant professional consumer too widely. The applicant is a technology company offering highly specialised services, namely SAAS (‘software as a service’), software and cloud-based platforms, solutions and analytics providing control group data in the field of clinical trials. These are quite sophisticated and expensive services that will be purchased by people performing management and/or procurement roles in pharmaceutical, biotech, medical device and diagnostic companies, academic and government institutions, contract research organisations and other life science organisations, whilst the end users of the software services provided will be clinical trial professionals in those companies. Thus, the relevant specialist consumers will not expect the services to relate only to ‘sudden cardiac death’, nor will perceive the sign to be limited only to such a specific field.

2. In view of the above, the applicant requested an amendment of the specification to better reflect the services actually offered.

3. The sign applied for is not commonly used in the market sector of software products and platforms for clinical trials.

In order to waive the descriptiveness objection raised by the Office in its previous notice, the applicant requested an amendment of the specification of services in Class 42. Accordingly, the Office will first examine whether such restrictions comply with the requirements of Article 49 EUTMR.

In accordance with Article 49(1) EUTMR, the applicant may, in reply to an objection regarding absolute grounds, restrict the list of goods or services of the application. Such restriction must be made expressly and unconditionally (see, to that effect the EUTM Guidelines, Part B ‘Examination’, Section 3 ‘Classification’, 5 ‘Examination Procedure’, 5.3 ‘Amendment and restriction of a specification‘^[1]). Further, in order to be effective, the restriction must meet the requirements of classification under Rule 2 EUTMIR.

Since the requested restriction of the specification complies with the above requirements, it has been implemented and subsequently, the services for which registration is sought are as follows:

Class 42 Providing control data information in the field of medical clinical trials by means of providing temporary use of non-downloadable computer software; cloud computing featuring software for managing, gathering, organising and sharing control data in the field of medical clinical trials and for evaluating and measuring the performance and results of medical clinical trials; software as a service (SAAS) solutions featuring solutions featuring software for managing, gathering, organising and sharing control data in the field of medical clinical trials and for evaluating and measuring the performance and results of medical clinical trials.

With the proposed limitation of the specification of services, the objection on absolute grounds for refusal raised in our notification of 26/04/2019 cannot be waived.

Upon re-examination of the application and having given due consideration to the applicant’s arguments and its request for amendment of the specification, the Office has decided to maintain the grounds for refusal pursuant to Article 7(1)(b) and 7(1)(c) EUTMR, in respect of all the services claimed in Class 42, as amended.

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).

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.

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).

Further, the case-law establishes that ‘for a sign to fall within the scope of the prohibition in that provision, it must convey a sufficiently direct and concrete link to the goods or services in question to enable the public concerned immediately, and without further thought, to perceive a description of the goods and services in question or of one of their characteristics’ (08/10/2018, R 117/2018-4, ‘SMARTBALL’, §12, and case-law cited therein: 27/02/2002, T-106/00, ‘Streamserve’, EU:T:2002:43, § 40; 05/02/2004, C-150/02 P, ‘Streamserve’, EU:C:2004:75; 22/06/2005, T-19/04, ‘Paperlab’, EU:T:2005:247, § 25).

The descriptive character of a mark must be assessed, first, in relation to the goods or services for which the registration of the sign has been applied for and, second, in relation to the understanding of the mark by the relevant public which is made up of consumers of those goods and services (14/06/2007, T-207/06, ‘Europig’, EU:T:2007:179, § 30, and 10/09/2015, T-321/14, STREET, EU:T:2015:619, § 13).

Pursuant to Article 7(1)(b) EUTMR trade marks which are devoid of any distinctive character are not to be registered (25/09/2015, T-591/14, PerfectRoast, EU:T:2015:700, § 37, and 07/10/2015, T-642/14, EQUIPMENT FOR LIFE, EU:T:2015:753, § 12). According to consistent case-law, the marks referred to in Article 7(1)(b) EUTMR are those which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services in question, thus enabling the consumer who acquired them to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (17/09/2015, T-550/14, COMPETITION, EU:T:2015:640, § 12, and 22/10/2015, T-431/14, CHOICE, EU:T:2015:793, § 13).

In accordance with the case-law, the distinctive character of a mark must be assessed, first, by reference to the goods or services in respect of which registration or protection of the mark has been applied for and, secondly, by reference to the perception of the relevant public (30/09/2015, T-385/14, ULTIMATE, EU:T:2015:736, § 12, and 08/10/2015, T-336/14, NOURISHING PERSONAL HEALTH, EU:T:2015:770, § 30).

Article 7(2) EUTMR provides that Article 7(1) EUTMR shall apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union. Since ‘SCD’ is an acronym in English, the relevant public with reference to whom the absolute ground for refusal must be examined is the English-speaking part of the European Union. It is considered that, in the present case, the public by reference to whom the absolute grounds of refusal must be assessed, consists not only of the public in the Member States in which English is an official language, i.e. Ireland, Malta and the United Kingdom, but also the public in the EU territories where English is largely understood, such as the Netherlands, Sweden, Denmark and Finland (26/11/2008, T-435/07, New Look, EU:T:2008:534, § 23), especially as regards the professional public as is the present case (09/11/2017, R 1884/2017-5, ‘RADIALSEAL’, §15).

Addressing in turn the Applicant’s arguments numbered as above, the Office states as follows:

It is undisputed by the applicant that the relevant public of the sign will be the professional one. Be it widely or narrowly defined, the awareness of such a professional public will be high. The fact that the consumer is attentive does not necessarily mean that the ‘descriptiveness threshold’ of the sign must be higher to a certain extent in order to fall under the grounds for refusal set out in Article 7(1)(c) EUTMR (see by analogy, 12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48). Likewise, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist. Indeed, in this case, the relevant specialist public, whether the employee performing a management or procurement role, or that designing and/or conducting clinical trials will readily understand the mark applied for as being descriptive and lacking distinctiveness for the following reasons.

The finding that a mark has distinctive character within the meaning of Article 7(1)(b) EUTMR is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark. It suffices that the trade mark should enable the relevant public to identify the origin of the goods or services it covers and to distinguish them from those of other undertakings (06/11/2014, T-53/13, Line which slants and curves, EU:T:2014:932, §69, and 03/12/2015, T-327/14, Répresentation d’un damier rouge et blanc, EU:T:2015:929, § 60).

The definition and the translations provided by the Office were not disputed by the applicant and are therefore endorsed. Given the above, the relevant consumer will understand the term ‘SCD’ as a meaningful expression. The applicant accepts the abovementioned meaning. Notwithstanding this, the applicant points out that ‘numerous alternative meanings’ exist for ‘SCD’, of which it provides two examples, ‘sequential compression device’ and ‘sickle-cell disease’. However, while it may be true that the mark applied for can have other meanings, a word sign must be refused registration under Article 7(1)(c) EUTMR 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), which is clearly the case here. The relevant public will perceive the sign ‘SCD’ as describing the meaningful expression ‘sudden cardiac death’, and several internet websites were provided by the Office notice to substantiate this.

The applicant expressly recognises that the software services provided all relate to clinical trial data. It is therefore not unreasonable to presume that the specialist public, who work within the medical, pharmaceutical, biotech, medical device and diagnostic companies, academic and government institutions, contract research organisations and other life science organisations, will directly and immediately perceive the sign ‘SCD’ as possibly relating to ‘sudden cardiac death’. The applicant itself recognises that the services it provides are very expensive and that ‘a significant level of time and thought would go into their purchase’. Therefore, it is not unreasonable to assume that the purchase and use of those services will involve, either directly or by way of consultation, the specialist end user who will need to work with and interpret the clinical trial group data. Such a purchase will surely have input and feedback from specialists within the market sectors mentioned by the applicant itself. The term ‘SCD’ is a common acronym being broadly used in medical and healthcare sectors, and any doctor, nurse, chemist, biologist, researcher and clinical trial, healthcare and/or life science specialist will clearly and immediately understand it. In all those fields, an obvious and direct meaning of the mark applied for may, indeed, be that the services so designated relate to clinical trial data which concern ‘sudden cardiac death’, at least potentially. Hence, the sign describes the subject matter of the services claimed, as amended.

In this respect, the Board notes that the applicant has not submitted any arguments which could change the finding as to why these services could not relate to ‘sudden cardiac death’. Therefore, in the mind of the relevant public, the acronym ‘SCD’ will not function as an indication of the origin of the goods and services but will merely serve as providing information that the software services offered relate to the subject matter of clinical trial data on sudden cardiac death (05/03/2018, R 1406/2017-1, ‘RCP’, § 27).

In order to overcome the objection of the Office to the sign, the applicant requested an amendment to the specification. As explained above, the amendment has been implemented because it is compliant with the EUTMR requirements. Nevertheless, and also as explained above, the software provided by the applicant still refers to clinical trial group data. Such data may potentially relate to the subject matter of sudden cardiac death, and the specialist public as defined above will immediately and directly draw a link between the sign, the acronym ‘SCD’, and the software services being offered by the applicant. It is irrelevant whether the acronym could have other meanings, as the case-law has established that ‘any possible meaning’ suffices for a finding of descriptiveness pursuant to Article 7(1)(c) EUTMR.

Furthermore, the case-law has also established that ‘It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102). Thus, the fact that the clinical trial data could potentially refer to the health condition of sudden cardiac death is enough for a finding of descriptiveness in the sign.

3.

Finally, with regard to the applicant’s argument that the sign is not commonly used in the market sector of software products and platforms for clinical trials, well established case-law states that in order to refuse registration of a trade mark 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).

Furthermore, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

It derives from all the foregoing that the applicant has not succeeded in convincing the Office that the sign ‘SCD’ will be perceived by the consumers as pointing to the commercial origin of the services in question. As extensively argued above, the Office maintains that the sign ‘SCD’ is descriptive pursuant to Article 7(1)(c) EUTMR and, consequently, it also lacks any distinctive character in accordance with Article 7(1)(b) EUTMR.

In conclusion, the absolute ground for refusal under Article 7(1)(b) and (c) EUTMR precludes the registration of the sign ‘SCD’ as a trade mark in the English-speaking territories of the European Union (Article 7(2) EUTMR), consisting, in the present case, not only of Ireland, the United Kingdom and Malta, but also the EU territories where English is largely understood, such as the Netherlands, Sweden, Denmark and Finland.

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 18 038 806 is hereby rejected for all the services claimed, as amended.

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.

María Mónica TARAZONA RUÁ