Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 18/10/2019

JEFFREY PARKER AND COMPANY

The Grange

Hinderclay Suffolk IP22 1HX

REINO UNIDO

Application No:	018085718
Your reference:	TM8263
Trade mark:	MYOKARDIA
Mark type:	Word mark
Applicant:	MyoKardia, Inc. 333 Allerton Avenue South San Francisco California 94080 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 18/07/2019 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.

The applicant submitted its observations on 17/09/2019, which may be summarised as follows:

1. The EUIPO has not demonstrated that the mark is descriptive for the goods and services claimed. Moreover, there is no evidence of its current descriptive use nor are there sufficient grounds for assuming that such usage will exist in the future.

2. The EUIPO has not provided evidence that other companies could have an interest in the mark.

3. The mark has no clear meaning in respect of the goods and services concerned and is merely allusive for the relevant consumers (medical professionals), thus it will not be considered as a descriptive term.

4. The examiner erred in concluding that misspelling is neither striking nor unusual. On the contrary, it will allow the sign to be seen as an indication of commercial origin.

5. Since the mark is not descriptive, it cannot be considered as lacking any distinctive character.

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.

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).

‘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).

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

Article 7(1)(b) EUTMR is intended to preclude registration of trade marks which are devoid of distinctive character which alone renders them capable of fulfilling that essential function (16/09/2004, C-329/02 P, ‘SAT.2’, EU:C:2004:532). The finding that a sign is devoid of distinctiveness within the meaning of Article 7(1)(b) EUTMR is not conditioned by a finding that the term concerned is commonly used (12/02/2004, C-265/00, ‘Biomild’ EU:C:2004:87).

The absolute grounds for refusal of a lack of distinctive character and the characteristics of descriptive and usual indications each have their own scope of application and are neither mutually dependent nor mutually exclusive. Even though the existence of just one ground for refusal is enough, they can also be examined cumulatively. Interpreting the case-law by the Courts, it can be concluded that the sign must be refused registration under Article 7(1)(b) EUTMR if, on the basis of its most obvious meaning in relation to the goods or services in question, it is devoid of distinctive character.

Article 7(2) EUTMR states that paragraph 7(1) shall apply notwithstanding that the grounds of preventing registration obtain in only part of the European Union.

Firstly, in its objection letter the Office duly explained why the sign ‘MYOKARDIA’ is descriptive of the subject matter and the intended purpose of the goods and services applied for. The relevant public would perceive the sign as providing information that various pharmaceutical preparations and substances in Class 5 are tailored to treat or prevent cardiovascular diseases and disorders. As regards the services, the sign would simply inform the relevant public that various financial services in Class 36 are meant for providing funding and research grants in relation to treatment, diagnosis, prevention and awareness of cardiovascular diseases whereas various healthcare services in Class 44 are related to the provision of medical information, consultancy and advisory in the field of cardiovascular diseases and disorders. Therefore, there is a sufficiently direct and specific link between the sign applied for and the goods and services in question.

As regards the applicant’s argument that there is no evidence of current descriptive use nor are there sufficient grounds for assuming that such usage will exist in the future, it must be recalled that 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).

Secondly, as regards the applicant’s argument that there is no need to keep the sign at issue in public domain to designate the goods and services to which the application relates, it must be observed that the application of Article 7(1)(c) EUTMR does not depend on there being a real, current or serious need to leave a sign or indication free (27/02/2002, T 106/00, Streamserve, EU:T:2002:43, § 39).

Thirdly, the applicant states that the mark has no clear and direct meaning in respect of the goods and services concerned and is merely allusive.

As agreed by the Applicant, considering the nature of the goods and services concerned the relevant public consists of medical professionals. The Office deems that the relevant public in question will not perceive the sign ‘MYOKARDIA’ as an indication of commercial origin but as a descriptive term which refer to the characteristics of the goods and services concerned. It should be noted that it is precisely because of the professional knowledge possessed by this public that they will be able to perceive the descriptive message conveyed by the sign concerned (18/11/2015, T-558/14, TRILOBULAR, EU:T:2015:858, § 32).

The relevant public in question will not perceive the sign ‘MYOKARDIA’ as being somehow unusual or fanciful but clearly and directly descriptive of the characteristics of the goods and services concerned.

Fourth, the Office disagrees with the applicant’s claim that the misspelling will endow the sign with sufficient distinctiveness. The use of the letter ‘K’ instead of the letter ‘C’ is rather common and will not be perceived by the relevant public in question as being unusual or striking. Likewise, the fact that the word ‘MYOKARDIA’ is the plural form of the word ‘myocardium’, which refers to the layer of the heart wall, cannot add sufficient distinctiveness to the sign.

Finally, since the sign is descriptive of the goods and services concerned, it is, on that account necessarily devoid of any distinctive character in respect of those services for the purposes of Article 7(1)(b) EUTMR (12/06/2007, T-190/05, Twist & Pour, EU:T:2007:171, § 39).

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 18085718 is hereby rejected for all the goods and services 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.

Laima IVANAUSKIENE