Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 11/05/2020

V. BEZOLD & PARTNER

Akademiestr. 7

D-80799 München

ALEMANIA

Application No:	018192317
Your reference:	22906/EG_PH/al
Trade mark:	cellenCHIP
Mark type:	Word mark
Applicant:	Cellenion SASU Pépinière Laënnec, 60 Avenue Rockefeller F-69008 Lyon FRANCIA

1. The Office raised an objection on 26/02/2020 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.

2. The applicant submitted its observations on 23/04/2020, which may be summarised as follows.

• According to the Office, the term “cell chip” is often used for chips used in relation to cells and cell cultures. However, the Office was not able to present a single case where the term “cells chip” rather than “cell chip” was used. The reason for this is that it would be highly unusual to use the plural form of “cells” when describing the scientific methods mentioned in the articles cited by the Office.

• Therefore, a Dutch‐speaking consumer will, based on the fact that usually “chip” is paired with “cell” rather than “cells”, perceive the “cellen” part of the word not as the Dutch plural for “cells” but as an abbreviation of the applicant’s firm “Cellenion”.

• The arguments introduced by the Office clearly do not apply for e.g. incubators; petri dishes or laboratory instruments in class 9 or tools for medical diagnostics or diagnostic imaging apparatus for medical use in class 10.

3. 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.

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).

While it is true, as the applicant argues, that the correct term is “cell chip”, that is, the word “cell” is in the singular, the fact that the word in the mark is in the plural form does not render the mark disitnctive.

The relevant consumers are professionals in the fields of genetics, biotechnology and medicine who are very knowledgeable in their fields. They are fully aware of the existence of cell chips and their different uses. When they view the mark ‘cellenCHIP’, that is, “cells chip”, they would not give the plural form any trade mark significance, they would at most see it as a misspelling, deliberate or not.

In any case, the syntactical or grammatical correctness of the phrase is not the litmus test for its registrability. Rather, it is the ability of a sign to identify the commercial source of the marked products that is of prime importance (decision of 30/07/2007, R 567/2007-2, -‘RESULTS PLUS’, § 15).

See also the decision of 25/02/2013, R 1685/2012-4, CASHFLOWS ACCOUNT, § 4, where the Board of Appeal held that:

…Even if cashflow in the plural form does not exist, the first term of the application would be easily understood in its single form. Thus, the link between the meaning of the mark and the goods and services in question is sufficiently close to conclude to descriptiveness. On this account the mark is also non-distinctive.

The applicant argues that the relevant public will perceive the “cellen” part of the word not as the Dutch plural for “cells” but as an abbreviation of the applicant’s firm “Cellenion”.

The Office finds this unlikely. Cell chips are existing and well-known products to the relevant consumers, and they would take the mark at face value, and would not speculate further about its possible meanings or derivations.

The applicant is of the opinion that the objetion does not apply to “incubators; petri dishes or laboratory instruments” in class 9 and tools for medical diagnostics or diagnostic imaging apparatus for medical use in class 10.

Cell chips have a wide area of applcation, and while some of the goods applied for traditionally were not chips or used on chips, they are now for instance integrated in cell chips, and cell chips perform functions which other medical and laboratory apparatus and devices used to do.

As shown in the Notice of grounds for refusal petri dishes may be on chips:

https://www.pnas.org/content/104/46/18217

The micro-Petri dish, a million-well growth chip for the culture and high-throughput

screening of microorganisms

https://freevideolectures.com/course/3342/biomicroelectromechanical-systems/19

Petri dish on a chip technology (Integrated trapping, culture, growth, lysis and analysis of pathogenic bacteria),

See also the following web site:

https://yonsei.pure.elsevier.com/en/publications/digital-petri-dish-for-on-chip-cell-monitoring

We report a digital Petri dish platform for on-chip cell monitoring. We demonstrate the ability to image confluent cell cultures with 6 mm × 4 mm filed-of-view and ~0.7 μm resolution by using the proposed platform.

The gooods ”laboratory instruments” is a wide term which includes all kinds of instruments including high tech devices such as cell chips:

https://ieeexplore.ieee.org/document/

A lab-on-a-chip for cell detection and manipulation

Cell chips may also be used in medical diagnostics:

http://www.omnics.it/home/loc-for-medical-diagnostics-cell-chips/

LOC for medical diagnostics – cell chips

Cell-chips have become a research hotspot in biosensors and bioelectronics because of their numerous advantages: reduced costs, increased sensitivity, rapid response, ultrahigh throughput, real-time measurements. Their development enabled significant advances in cell studies permitting high-throughput culturing and analysis of cells under different conditions. In this frame, based on Omnics EIS platform, cell chips were optimized for real-time monitoring of cellular processes such as attachment, micromotion, migration, proliferatin and apoptosis. New research directions include application to sperm cell analysis, the detection of circulating tumour cells in liquid biopsy approach, drug screening and the development of organ on chip.

Cell chips may be used for imaging purposes:

https://pubs.rsc.org/en/Content/ArticleLanding/2009/LC/B904778F#!divAbstract

A cell chip for sequential imaging of individual non-adherent live cells reveals transients and oscillations†

https://www.micronit.com/products/flow-cells.html

…The superior flatness of the flow cell chips, offered in our web store, allows perfect optical imaging. The thin bottom of this type of flow cell makes it suitable for confocal microscopy. Flow cells can be made out of different materials, e.g. fused silica glass which is also transparent in ultraviolet light.

While it is true that cell chips are not imaging apparatus as such, they may, as shown here above, be used for imaging purposes. The may also be used in connection with all kinds of imaging apparatus, including medical imaging apparatus. The link beween cell chips and “imaging apparatus for medical use” is therefore clear and direct.

Therefore, the Office cannot find other than that the mark is descriptive and devoid of any distinctive character in relation to the goods and services at issue.

4. 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 18 192 317 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.

Anne-Lee KRISTENSEN