Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 29/06/2020

BECK GREENER LLP

Fulwood House 12 Fulwood Place

London WC1V 6HR

REINO UNIDO

Application No:	018121724
Your reference:	CRB/T83274EM
Trade mark:	PRECISION SURGERY
Mark type:	Word mark
Applicant:	ALUME BIOSCIENCES, INC. 3210 Merryfield Row San Diego California 92121 UNITED STATES (OF AMERICA

The Office raised an objection on 24/10/2019 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.

On 23/12/2019, the applicant requested an extension of the time limit, which was granted by the Office.

On 03/01/2020, the final version of the list of goods and services was confirmed by the Office. The Office has taken the changes and the final version of the list of goods and services into account. The amendment made has no impact on this decision.

The applicant submitted its observations on 29/01/2020, which may be summarised as follows.

1. The Office did not define the relevant public. The relevant public are surgeons – a very specialised and limited public.

2. The applicant indicates ‘… that amongst professional surgeons there are recognised types of surgery.’ and provides ‘… an extract from the Royal College of Surgeons indicating that surgery is normally typified in 3 separate categories, namely:

1. How long it takes;

2. Whether it is planned or not planned; and

3. The type of surgical procedure.’

The applicant provides examples for the points above. In view of this, the applicant claims that ‘… PRECISION SURGERY does not fall to be considered as a type or genre of surgery among professional surgeons because it does not indicate a type of surgery or a surgical procedure.’ It will only be understood as stated by the Office by the general public, who is not relevant for the services contained in the application. The mark would not be considered as non-distinctive, but intriguing and memorable, by the relevant, specialised public.

3. The applicant makes reference to the Office’s practice concerning names of banks, newspapers, magazines and airports. ‘The provision of online information falls to be considered in the same light as the publication of a magazine because it is merely an online version of the traditional newspapers and magazines.’ To support this view, the applicant quotes the guidelines of the United Kingdom Intellectual Property Office. The applicant indicates that they are based on a decision by the fourth Board of Appeal (03/12/2001, R 772/2000‑4, THE ADULT CHANNEL). ‘It was held to be registerable in international Classes 16, 38 and 41 despite the admission by the Board of Appeal that the combination of the words were very weak in terms of distinctiveness principally because the mark was seeking registration in the field of publications and broadcasting which we submit is substantially the same or similar to the dissemination of information on the Internet and that consequently the same approach should be taken in this instance’.

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)(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).

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).

Regarding the applicant’s arguments

With regard to the first argument, the ‘relevant public’ referred to in the Office’s notice of 24/10/2019 includes both the public at large and the professional consumer.

Defining the relevant public and expressly indicating that it is formed of the general public and/or professionals is relevant only to the extent that their perceptions of the expression would be different (e.g. if the sign has a meaning only for, or a different meaning for, professionals). The sign in question would be perceived in the same way by the average consumers and by specialists.

Even if part of the targeted public consists of English-speaking professionals, another part consists of average English-speaking consumers, who are well-informed and reasonably observant, have a higher level of attention. The Office considers that the relevant public will not see any specific indication of commercial origin in the indication in question.

In addition, in view of the nature of some of the services in question, 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).

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).

Concerning the applicant’s second argument, the meaning of the expression ‘PRECISION SURGERY’ is clear to the English-speaking relevant public, which will immediately, and without any difficulty, establish a direct and specific link between the trade mark and the services for which registration is sought.

The objection has been raised against the sign because it lacks distinctiveness and not because it is descriptive of the relevant services. The Office does not consider that the expression describes a recognised type of surgery.

As indicated by the Office in its letter of 24/10/2019 (quoted below), the mark will be perceived as non-distinctive:

The distinctive character of a trade mark is assessed in relation to the goods or services for which protection is sought and the perception of the relevant public. In the present case, the relevant English-speaking consumer would understand the sign as having the following meaning: medical treatment of surgery characterized by or having a high degree of exactness.

…

In the present case, the relevant public will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed, which merely serves to highlight positive aspects of the services in question: providing information and online information on the development of new technologies for nerve illumination, providing information and online information regarding research and technology to improve the prognosis or reduction of nerve damage caused by surgery, providing information regarding research and technology relating to nerve labelling, tagging and targeting, providing information and online information regarding research and technology for use in nerve ablation procedures, namely that they are all related to / about precision surgery treatments, which is mainly related/applicable to nerves.

The applicant’s statement that services under the sign ‘PRECISION SURGERY’ are only for specialists, does not affect the decision. The Office considers that the high level of attention is not in itself an indication that the consumer will immediately recognise the mark as an indication of origin. Consumers do not tend to carry out an analytical or comprehensive assessment of the signs on the services for which registration is sought and, therefore, they will perceive the term ‘PRECISION SURGERY’ as a merely promotional expression, indicating that all the services relate to / are about precision surgical treatments, which is mainly related/applicable to nerves.

Therefore, there is nothing intriguing and/or memorable in the expression to be considered distinctive enough for the services in question.

In relation to the final argument, the reference made by the applicant to the Office’s practice concerning names of banks, newspapers, magazines and airports relates to descriptive signs, but the Office objected to the sign based only on its lack of distinctiveness in relation to the relevant services.

Furthermore, the guidelines of the United Kingdom Intellectual Property Office (even though, according to the applicant, they are based on the cited decision of the Boards of Appeal), cannot be taken into account as they refer to a national regime, and not that of the European Union. Despite striving for harmonisation at a European level, each office has its own practice.

The cited Boards of Appeal decision makes reference to a different combination of words and was for goods and services dissimilar to those of this case.

The Office disagrees with the applicant that publication services and broadcasting are substantially the same as, or similar to, the dissemination of information in a particular field. Provision of information is always classified in accordance with what it refers to (that is why all the services in the present case are proper to Class 42) and is not the same as publication or broadcasting. Therefore, it is irrelevant how it is provided (e.g. by electronic means).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 18 121 724 is hereby rejected for all the services claimed, namely:

Class 42 Providing information and online information on the development of new technologies for nerve illumination; providing information and online information regarding research and technology to improve the prognosis or reduction of nerve damage caused by surgery; providing information regarding research and technology relating to nerve labeling, tagging and targeting; providing information and online information regarding research and technology for use in nerve ablation procedures.

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.

Monika TOMCZYNSKA