Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 10/07/2020

BAKER & MCKENZIE LLP

100 New Bridge Street

London EC4V 6JA

REINO UNIDO

Application No:	018181709
Your reference:	TMU/FYB/6703053
Trade mark:	VIA CAPSULE
Mark type:	Word mark
Applicant:	Asymptote Limited Sovereign House, Chivers Way, Histon Cambridge Cambridgeshire CB24 9BZ REINO UNIDO

The Office raised an objection on 29/01/2020 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 27/03/2020, which may be summarised as follows:

1. The sign is not descriptive in relation to any of the goods and has more than a minimum degree of distinctiveness. According to established case-law (20/11/2002, T‑79/01 & T‑86/01, Kit Pro / Kit Super Pro, EU:T:2002:279; 23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32), the mere fact that each individual element of the sign has a dictionary-defined meaning, does not preclude the registration of the sign. Furthermore, a sign should not be refused registration merely because one definition of one of its components may convey a descriptive message (04/10/2001, C–517/99, Bravo, EU:C:2001:510).

2. The sign ‘VIA CAPSULE’, as a whole, cannot be found in any leading English dictionaries (as shown in Annexes 1 and 2). The sign creates a new term and the separate words ‘VIA’ and ‘CAPSULE’ are not ones which would normally be used in combination with each other, other than as part of a longer sentence.

3. The relevant public would not regard the conjunction of the words VIA and CAPSULE as an indicator that the product will be delivered ‘by means of capsule’. Indeed, ‘by means of capsule’ is a fairly ambiguous phrase, unless spoken/read together with an explanation that provides proper context. This combination is unusual, and not a term which the average consumer would understand as having any clear meaning, either in general or in connection with the goods.

4. The Office’s objection is unsupported by any factual proof and the internet search dated 28/01/2020 that shows that ‘the matter in question is already used in the relevant market’ was using the search term ‘container cryopreserved cellular products’, not ‘via capsule’.

5. The Office accepted, inter alia, the following previous registrations:

• IR No 1 368 433 ‘VIA FREEZE’;

• EUTM No 5 133 749 ‘VIA MEDICA’;

• EUTM No 9 323 205 ‘Guided Capsule’.

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)(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).

Under Article 7(1)(b) EUTMR, trade marks which are devoid of any distinctive character are not to be registered. According to established case-law, the signs referred to in that provision are signs 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, thus enabling the consumer who acquired the goods or services bearing the trade mark 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 (17/01/2013, T‑582/11 & T‑583/11, Premium XL / Premium L, EU:T:2013:24, § 13; 28/04/2015, T‑216/14, EXTRA, EU:T:2015:230, § 14).

Moreover, it is 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; 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

Objection

As the Office pointed out in the letter of objection of 29/01/2020, the relevant English-speaking consumer would understand the sign as meaning ‘by means of a capsule’.

The abovementioned meanings of the words composing the sign can be supported by the following dictionary references.

CAPSULE ‘A small case or container, especially a round or cylindrical one. A small soluble case of gelatin containing a dose of medicine, swallowed whole’ (information extracted from LEXICO on 28/01/2020 at https://www.lexico.com/definition/capsule .

VIA ‘Travelling through (a place) en route to a destination. By way of; through. By means of’ (information extracted from LEXICO on 28/01/2020 at https://www.lexico.com/definition/via ).

The relevant consumers would perceive the sign as providing information that the goods in question, such as a container which retains cryopreserved cellular products at cryogenic temperatures during transportation and temporary storage for laboratory use or medical purposes, in Classes 9 and 10, are containers that contain the cellular products in the form of capsules. Therefore, the sign describes the kind and intended purpose of the goods in question.

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods or services of one undertaking from those of other undertakings.

Relevant public

It is settled case-law that the distinctive character of a trade mark must be assessed by taking into account, first, the goods or services for which registration has been applied for and, second, the perception on the part of the relevant public, which consists of average consumers of the goods or services in question and who are sufficiently well informed and reasonably observant and circumspect (21/01/2010, C‑398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 34; 08/05/2008, C‑304/06 P, Eurohypo, EU:C:2008:261, § 67; 29/04/2004, C‑473/01 P & C‑474/01 P, Tabs (3D), EU:C:2004:260, § 33).

The average consumer’s level of attention is likely to vary according to the category of goods or services in question (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 42; 07/10/2010, T‑244/09, Acsensa, EU:T:2010:430, § 18).

Having regard to the nature and purpose of the goods and services against which an objection has been raised, the relevant public is composed of specialists, particularly those with knowledge and expertise in science, medicine or biology, whose level of attention will be high.

The words of the sign applied for are words that can be found in English, meaning that account must be taken of the point of view of English-speaking consumers, or even consumers who are not English speakers but who have sufficient knowledge of English (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 76). The relevant public is at least the public in Ireland, Malta and the United Kingdom.

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).

In addition, in view of the nature of the goods in question, even if the awareness of part of the relevant public is high, it is liable to be relatively low when it comes to purely informational and descriptive indications, which well-informed consumers do not see as decisive.

Furthermore, according to Article 7(2) EUTMR, a trade mark must not be registered even if the grounds of non-registrability are met only in part of the European Union. Therefore, an objection pertaining to the English-speaking public of the European Union is deemed sufficient to reject a trade mark application.

Article 7(1)(b) and (c) EUTMR

The mark applied for is the expression ‘VIA CAPSULE’.

The applicant does not dispute that ‘VIA CAPSULE’ are ordinary words, as pointed out by the Office, yet claims that the sign as a whole cannot be found in any leading English dictionaries. It further argues that the separate words ‘VIA’ and ‘CAPSULE’ are not ones which would normally be used in combination with each other and, consequently, the sign is not used for the goods in question. However, the sign consists of standard words that can be individually found in general dictionaries and make perfect sense for the goods in question, especially when combined. It is standard convention that dictionary entries list single words, and that not all possible expressions are inserted. However, that does not mean that the relevant public, particularly the specialist public with specific knowledge of science, medicine or biology, would not understand the expression as a whole. Furthermore, the evidence provided by the Office in the letter of objection also shows that the sign is not a new term, but is an expression made of known, ordinary words. The Office is of the opinion that the sign will be understood by the relevant specialist public as giving information about the kind of goods by means of which cryopreserved cellular products at cryogenic temperatures during transportation and temporary storage for laboratory use (or for medical purposes) are delivered, (i.e. via capsule).

‘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).

The applicant correctly states that the internet search dated 28/01/2020 shows the search term ‘container cryopreserved cellular products’, and not ‘via capsule’. However, the internet search proves that the goods in question can, inter alia, be delivered by means of a capsule, that is to say, via capsule, and that ‘the matter in question is already used (in other words objectively exists) in the relevant market’. Therefore, the sign designates a reference to one of the essential characteristics of the goods in question.

The examination of applications for registration must not be minimal, but must be stringent and full to prevent trade marks from being improperly registered and to make sure that, for reasons of legal certainty and sound administration, trade marks whose use could be successfully challenged before the courts are not registered (06/05/2003, C‑104/01, Libertel, EU:C:2003:244, § 59).

For a finding of no distinctive character, it is sufficient that the semantic content of the word mark indicates to the consumer a characteristic of the goods and services relating to their market value which, while not specific, comes from promotional or advertising information that the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods and services (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198, § 31).

As confirmed by the Court, a word mark that is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 86; 14/06/2007, T‑207/06, Europig, EU:T:2007:179, § 47).

It does not matter whether the sign at issue can have several meanings or whether its meaning is less obvious (or unambiguous), as neither would suffice to make it distinctive. A sign is distinctive only when it can be immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods, and so enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T‑118/00, Tabs (3D), EU:T:2001:226, § 59).

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts …

(12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

In view of the abovementioned established principle of trade mark law, and contrary to the applicant’s argument, the Office must affirm that the sign in question is not a new term, but rather the mere sum of its parts.

The expression, in relation to the goods for which protection is sought, would be perceived by the relevant public as referring to specific characteristics (kind and intended purpose) of the goods. Therefore, the sign describes the kind and intended purpose of the goods in question.

The link between the sign and the goods against which an objection has been raised is sufficiently direct and specific. The sign’s meaning would not be perceived as vague, as it directly and clearly refers to the goods in question.

The expression ‘VIA CAPSULE’ contains a meaningful, simple, straightforward, short English expression that is not able to distinguish the goods in question from the same goods delivered by others.

Moreover, a 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). This well-established principle applies in this case, as this sign has a meaning that designates a characteristic of the goods concerned.

The sign ‘VIA CAPSULE’ is not unusual. It does not constitute a play on words or introduce elements of conceptual intrigue or surprise so that it may be perceived as imaginative, surprising or unexpected. It has no particular originality or resonance, does not trigger a cognitive process in the minds of the relevant public and does not require an interpretative effort.

The meaning of the words composing the sign will be obvious to the relevant specialist public, and the expression ‘VIA CAPSULE’ will most certainly be recognised and understood in its common and ordinary meaning, as described by the Office.

There is nothing about the expression ‘VIA CAPSULE’ that might, beyond its obvious informational meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods for which protection is sought. The English-speaking public in the European Union will not see the mark ‘VIA CAPSULE’ as a badge of a particular trade origin for the goods at issue, but rather as a banal informational message.

It cannot be ruled out that other persons trading in the relevant goods will think of the common expression ‘VIA CAPSULE’ and want to use it in connection with similar goods. These persons would not be trying to take advantage of an established brand or reputation, but, rather, would want to use this standard expression because it forms part of common language. Therefore, such generic terms should be kept free for all traders.

According to case-law, Article 7(1)(c) EUTMR does not apply to those terms that are only suggestive or allusive as regards certain characteristics of the goods and/or services. Sometimes this is also referred to as vague or indirect references to the goods and/or services (31/01/2001, T‑135/99, Cine Action, EU:T:2001:30, § 29). However, ‘VIA CAPSULE’ is a clear (and not vague) and direct reference to the goods at issue.

Although signs with a low degree of distinctiveness under Article 7(1) EUTMR are eligible for registration, a distinction must be made between signs which possess only a low degree of distinctiveness and accordingly have a limited scope of protection and those which are devoid of any distinctive character. This is because distinctive character means that the trade mark applied for guarantees the identity of the origin of the marked product or service to the consumer or end user by enabling them, without any possibility of confusion, to distinguish the product or service from others that have another origin (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547).

Therefore, the mark applied for does not have a minimum degree of distinctiveness sufficient to render inapplicable the present ground for refusal (27/02/2002, T‑34/00, Eurocool, EU:T:2002:41, § 39).

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).

Where the Office finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of goods and services that are likely to be known by anyone and are in particular known by the consumers of those goods and services (22/06/2004, T‑185/02, Picaro, EU:T:2004:189, § 29). In such a case, the Office is not obliged to give examples of such practical experience (15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19).

Since the applicant claimed that the trade mark sought was distinctive, despite the Office’s analysis based on the abovementioned experience, it was for the applicant to provide specific and substantiated information to show that the trade mark sought had either intrinsic distinctive character or distinctive character acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48). However, the applicant did not submit any information regarding the distinctive character of the sign acquired through use.

On this basis, in relation to the goods to which an objection has been raised, the word mark applied for, ‘VIA CAPSULE’, has no features that might lead the relevant public to believe that it is an indication of commercial origin.

Previous registrations

The applicant argued that a number of similar registrations had been accepted by the Office. 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 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 their claim, on unlawful acts committed in favour of another (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

Furthermore, the marks cited by the applicant have different meanings from the sign in question. It should be noted that the Office has refused other marks containing the verbal elements ‘VIA’ or ‘CAPSULE’. For example, EUTMs No 4 107 371 ‘VIA TELECOM’; No 7 578 339 ‘VIAWEB’; No 5 847 579 ‘CLEVER CAPSULES’; and No 950 555 ‘MICRO CAPSULE’.

The previous registrations cited by the applicant were found to be distinctive in their own right. The mere fact that they contain the words ‘VIA’ or ‘CAPSULE’ cannot support the registrability of the mark in question.

Conclusion

For the reasons set out above and in the previous notification, the sign is descriptive and does not possess the necessary distinctive character for the goods and services in question within the meaning of Article 7(1)(b) and (c) and Article 7(2) EUTMR, and is therefore unable to function as a trade mark in the market place, that is, it fails to distinguish the goods and services in question from those of other undertakings.

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 18 181 709 is hereby rejected for all the goods 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.

Jiri JIRSA