Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 09/09/2020

Sellars Legal

Simon Peter Sellars

The Mount

2 Woodstock Link

Belfast BT6 8DD

United Kingdom

Application No:	18240719
Your reference:	DIA-00639
Trade mark:	PHARMA READINESS
Mark type:	Word mark
Applicant:	DIACEUTICS PLC 55-59 Adelaide Street Belfast BT2 8FE United Kingdom

The Office raised a total objection on 08/06/2020 pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is not eligible for registration, for the reasons set out in the attached letter, which forms an integral part of this decision.

The applicant submitted its observations on 27/07/2020 which can be summarized as follows:

1. The mark applied for is open to interpretation on the part of the audience: it makes them think, and it is therefore capable of acting as a badge of origin. Also, the interpretations given by the Office have no link with the goods and the combination is more than the sum of its parts, and has acquired its own meaning independent of its constituent elements.

2. There are several registered EU trade marks containing the word ‘ready’ or ‘readiness’.

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 for the reasons set forth below.

It is recalled that if a trade mark 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. In the present case, the sign contains two words whose dictionary meanings were provided in the Office’s objection letter. The applicant has not contested those definitions. It is recalled that a given term is objectionable under Article 7(1)(b) EUTMR on the ground that its semantic content indicates to the consumer a characteristic of the product or the service relating to its market value which comes from factual information (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198, § 31). The Office maintains that these provisions apply to the present sign which as a whole would merely inform consumers that the applicant is ready to provide solutions in the pharmaceutical sector, and also that it can ensure the goods in Class 5 are ready for the market. These are clearly promotional messages merely lauding the applicant’s goods and services, and the use of the word ‘pharma’ makes this message specifically relate to the pharmaceutical sector. Whether, as claimed by the applicant, there could be other interpretations is not relevant for the purpose of the present objection as it is sufficient to provide explanation and arguments as to the possibility of one non-distinctive aspect of the sign. In addition, while the applicant asserts that the combination of the words composing the sign “has acquired its own meaning independent of its constituent elements”, it has actually failed to provide an interpretation sufficiently removed from the concept of readiness in the pharmaceutical sector. The Office, therefore, maintains that neither ‘pharma’ nor ‘readiness’ nor their combination evokes an abstract concept. Rather, these terms present a clear and easily recognizable semantic content having a direct and obvious relation to the goods and services objected to. The target public will, thus, immediately perceive the sign as communicating a promotional statement without the need to make a cognitive leap. Overall, the connection between the relevant goods and the sign is not sufficiently indirect as required under Article 7(1)(b) EUTMR.

2.

With regard to the fact that signs containing the term ‘ready’ or ‘readiness’ were already registered, it must be recalled that, 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). Furthermore, it is clear from the case-law of the 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 his claim, on unlawful acts committed in favour of another (27/02/2002, T 106/00, Streamserve, EU:T:2002:43, § 67). In addition, each case must be examined on its own merits. It cannot be denied that the examiner’s decision on distinctiveness is inevitably tainted by a certain degree of subjectivity. However, the observance of the principle of equal treatment must be reconciled with the observance of the principle of legality (judgment of 08/07/2004, Case T-289/02, ‘TELEPHARMACY SOLUTIONS’, paragraph 59). The mere fact that in other cases a less restrictive approach may have prevailed does not amount to a violation of the principle of non-discrimination, or to a reason for invalidating a decision which per se appears to be reasonable and to conform to the EUTMR, as interpreted by EU judicature. The registrations cited cannot, therefore, alter the Office’s finding that the public would not perceive the present sign as an indication of the commercial origin of the goods and services in question, on grounds of lack of sufficiently distinctive character.

For all the above-mentioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 18 240 719 is hereby rejected in its entirety.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Ferenc GAZDA