CANCELLATION No 12679 C (INVALIDITY)

 

BSB Rechtsanwälte – Patentanwälte, Almut Bühling, Attorney at Law, Hohenzollernstrasse 93, 80796 München, Germany (applicant), represented by Almut Bühling, Attorney at Law, BSB Rechtsanwälte – Patentanwälte, Hohenzollernstrasse 93, 80796 München, Germany (professional representative)

 

a g a i n s t

 

Innovet Italia, S.r.l., Via Einaudi, 13, 35030 Saccolongo (PD), Italy (EUTM proprietor), represented by Notarbartolo & Gervasi S.P.A., Galleria Europa 3, 35137 Padova, Italy, (professional representative).

 

 

On 10/02/2017, the Cancellation Division takes the following

 

 

DECISION

1.        The application for a declaration of invalidity is upheld.

 

2.        European Union trade mark No 12 208 922 is declared invalid in its entirety.

 

3.        The EUTM proprietor bears the costs, fixed at EUR 1 150.

 

 

REASONS

 

The applicant filed an application for a declaration of invalidity against European Union trade mark No 12 208 922 ‘PEA-um’ (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

 

Class 1:        Ingredients for use in the preparations of cosmetics.

 

Class 3:        Skincare cosmetics.

 

Class 5:        Compounds for use in the preparation of pharmaceutical and veterinary preparations; Compounds in the form of medicated and nutritional additives for use in the preparation of dietetic food and supplements adapted for human and veterinary use; Pharmaceutical and veterinary preparations.

 

Class 31:        Animal feed preparations; Foodstuffs and fodder for animals.

 

The applicant invoked Article 52(1)(a) EUTMR in conjunction with Article 7(1)(b) and (c) EUTMR.

 

 

SUMMARY OF THE PARTIES’ ARGUMENTS

 

The applicant argues that ‘PEA’ and ‘um’ is nothing more than an acronym or a combination of abbreviations of the descriptive terms ‘ultra-micronized palmitoylethanolamide’ and the contested mark will immediately be perceived by the relevant audience (inter alia, pharmacists, veterinary surgeons and scientists in the field). It adds that ‘ultramicronized’ means that a compound has a certain fine particle size and ‘palmitoylethanolamide’ is used as an active ingredient in (veterinary) pharmaceuticals and food supplements.

 

In support of its observations, the applicant filed the following evidence:

 

• Exhibit A-1: Extract from WIPO which shows a Patent Application filed by EPITECH GROUP S.R.L in 2009 and published in 2011. The field of the invention relates to a composition for pharmaceutical or veterinary use comprising palmitoylethanolamide. The description of the invention states that the pharmaceutical composition of the invention contains palmitoylethanolamide (PEA) in the ultra-micronized form. It also refers to ultra-micronized PEA (PEA UM).

 

• Exhibit A-2: Copy of a Clinical Study ‘Short-Term Efficacy of Ultramicronized Palmitoylethanolamide in Peripheral Neuropathic Pain’ published in Hindawi on 20/05/2014. The study literally states that ‘this study evaluates the efficacy of palmitoylethanolamide ultramicronized (PEA-um) as an add-on treatment in patients with diabetic or traumatic neuropathic pain (NP)’.

 

• Exhibit A-3: Copy of a ‘Study Micronized/Ultramicronized Palmitoylethanolamide Displays Superior Oral Efficacy Compared to Non-Micronized Palmitoylethanolamide in a Rat Model of Inflammatory Pain’ published in Journal of Neuroinflammation on 28/08/2014. The study literally relates to ultra-micronized acid amide palmitoylethanolamide (PEA-um).

 

• Exhibit A-4: Extract from the European Patent Office as regards the Patent Application published on 23/09/2015. One of the points of the invention states: ‘an object of the present invention is a pharmaceutical composition comprising Palmitoylethanolamide (PEA) in ultra-micronized form (PEA-um)’.

 

• Exhibit A-5: Copy of a Study ‘Palmitoylethanolamide, a Special Food for Medical Purposes, in the Treatment of Chronic Pain: A Pooled Data Meta-analysis’ published in Pain Physician Journal in February 2016. A reference to ultra-micronised (PEA um) is included.

 

• Exhibit A-6: Extract from the United States Patent Application published on 18/02/2016. One of the points of the invention states: ‘the object of the present invention is therefore a pharmaceutical composition for oral and/or parenteral use comprising Palmitoylethanolamide (PEA)… in an ultra-micronized form (PEA-um)’.

 

• Exhibit A-7: An undated extract in Italian which shows PEA ultra-micronizzata.

 

• Exhibit A-8: An extract in Italian from Vetjournal (2003) which shows PEA-um. According to the applicant, it refers to ultra-micronized PEA.

 

• Exhibit A-9: An undated article showing ‘UM’ as ultra-microsize.

 

• Exhibit A-10: Extract from resultsvshop.com dated 28/02/2016 which shows UM as an abbreviation of Ultra-micronized.

 

• Exhibit A-11: Extract from www.imerystalc.com dated 28/02/2016 which shows Luzenac Pharma UM, UM referring to Ultra-micronized grind.

 

• Exhibit A-12: Extract from Wikipedia about Palmitoylethanolamide.

 

The EUTM proprietor argues that the applicant did not provide any evidence referring to the contested mark ‘PEA-um’ prior to the date of filing of the contested mark except for one document. Therefore, the documents submitted are not suitable to show that the contested trademark was devoid of any distinctive character or descriptive at the time of filing of the contested mark. The EUTM proprietor adds that the evidence is not convincing that the term ‘PEA-um’ has a specific meaning and that it is understood by a significant section of the relevant public as an abbreviation of ultra-micronized palmitoylethanolamide. Finally, the EUTM proprietor points out that the word ‘PEA’ means, among others, a small round green vegetable and not palmitoylethanolamide.

 

In reply, the applicant reiterates its previous arguments. It states that it has been clarified by the European Court that evidence of an actual descriptive use at the date of filing is not necessary in the context of Article 7(1)(c) EUTMR. According to case law, it is sufficient for invalidation that the trade mark is characteristic of the goods or services concerned in at least one of its possible meanings.

 

Finally, the EUTM proprietor reaffirms its previous arguments.

 

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 52(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

 

According to Article 52(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

 

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non-registrability obtain in only part of the Union.

 

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

 

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

 

Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C-332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

 

Descriptiveness – Article 7(1)(c) EUTMR

 

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. Thus Article 7(1)(c) EUTMR pursues the aim, which is in the common interest, of ensuring that signs or indications which describe the categories of goods or services in respect of which registration is applied for remain available. Hence, this provision does not permit such signs or indications to be reserved for use by one undertaking as a result of their registration as a trade mark (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 31).

 

The descriptive character of a trade mark must be assessed in relation to the goods or services in respect of which the trade mark is registered and in relation to the perception of the sign by the relevant public (20/03/2002, T-356/00, Carcard, EU:T:2002:80, § 25).

 

Article 7(1)(c) EUTMR does not apply to those terms which are only suggestive or allusive as regards certain characteristics of the goods. Sometimes this is also referred to as vague or indirect references to the goods (31/01/2001, T-135/99, Cine Action, EU:T:2001:30, § 29).

 

It should also be taken into account that the signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage from a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought. In accordance with the same case-law, for a sign to come under the prohibition set out in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific relationship between the sign and the goods/services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods/services in question, or one of their characteristics (see ‘PAPERLAB’, paragraph 25). Moreover, in order to be caught by Article 7(1)(c) EUTMR, it is sufficient that at least one of the possible meanings of a word sign designates a characteristic of the goods concerned (10/02/2010, T-344/07, Homezone, EU:T:2010:35, § 21).

 

In the present case, the contested goods are the following:

 

Class 1:        Ingredients for use in the preparations of cosmetics.

 

Class 3:        Skincare cosmetics.

 

Class 5:        Compounds for use in the preparation of pharmaceutical and veterinary preparations; Compounds in the form of medicated and nutritional additives for use in the preparation of dietetic food and supplements adapted for human and veterinary use; Pharmaceutical and veterinary preparations.

 

Class 31:        Animal feed preparations; Foodstuffs and fodder for animals.

 

The applicant has identified the relevant public as, inter alia, pharmacists, veterinary surgeons and scientists in the field who will immediately recognise this acronym ‘PEA-um’ as identifying the compound palmitoylethanolamide in a ultra-micronized form.

 

The contested goods ingredients for use in the preparations of cosmetics (chemical preparations) (Class 1) are chemical components intended for manufacturers of cosmetics. The skincare cosmetics (Class 3), which have active components, are addressed at manufacturers of those products as well as at the general public. The goods compounds for use in the preparation of pharmaceutical and veterinary preparations; Compounds in the form of medicated and nutritional additives for use in the preparation of dietetic food and supplements adapted for human and veterinary use; pharmaceutical and veterinary preparations (Class 5) are either composites or end products addressed at producers of animal and human products, as well as end users. The goods animal feed preparations; foodstuffs and fodder for animals (Class 31) are purchased by animal owners in general.

 

The purpose of use of goods in Class 1 is to serve as a component for final products whereas the purpose of goods in Class 3 is the improvement of the appearance of the skin. In the case of the goods in Classes 5 and 31, the purpose of use of the goods in Class 31 is to feed animals whereas of the goods in Class 5 is to enhance or preserve animals or human beings and food and they are also addressed at end consumers. In those cases, the intervention of a specialist (veterinary or doctors) is possible. In any case, it can be reasonably assumed that even non-professional purchasers of these goods will take accurate information when buying such products, particularly because of the consequences they may have on the health and well-being.

 

As follows from Article 7(2) EUTMR, the European Union trade mark shall be declared invalid if it is ineligible for protection with regard to just one Member State or the official language of just one Member State. A special feature of active ingredients is the preponderance of English as a language, especially with regard to the publication of scientific articles, in which new treatments, methods and medications are described. The Cancellation Division holds that words in English used for describing relevant ingredients can be expected to be understood by the relevant public throughout the European Union. This applies to a particularly high degree to an acronym which stems from and is used within a relatively narrow area of specialisation, such as an advanced active ingredient.

 

The dates on which the European trade mark was filed and registered must be taken into account. The General Court has held that whether a trade mark should be registered or should be declared invalid must be assessed on the basis of the situation at the date of its application, not of its registration (judgment of 03/06/2009, T-189/07, Flugbörse, EU:T:2009:172; confirmed by order of 23/04/2010, C-332/09 P, Flugbörse, EU:C:2010:225).

 

Generally speaking, any developments or events after the date of application or priority date will not be taken into consideration. However, such facts subsequent to the date of application can nevertheless be taken into account where and to the extent that they allow conclusions to be drawn regarding the situation at the date of application of the EUTMR.

 

According to the EUTM proprietor, the applicant did not provide any evidence referring to the contested mark ‘PEA-um’ prior to the date of filing of the contested mark except for one document. In the present case, the majority of the evidence is dated after the filing date of the contested mark and only the extract from WIPO referring to the Patent Application published in 2011 predates the filing date. However, these remaining documents are clinical and research studies in the medical/veterinary field. Bearing in mind the specialised sector, it is likely that the preparations of the studies and the investigations and tests of the active components were carried out before they were published. In addition, the specialised public is normally aware of new components and additives as well as their acronyms while they are in the testing and research phase. In any case, the Cancellation Division notes that, although it is true that the evidence must in principle relate to the relevant time, territory and goods, evidence that does not relate to them should not be automatically discarded, since it might still furnish some relevant indications. Therefore, the Cancellation Division will take into account the documents submitted by the applicant since they allow to draw conclusions regarding the situation at the date of application of the EUTMR and the EUTM proprietor´s argument is dismissed.

 

The contested mark is composed of ‘PEA-um’. The goods for which the EUTM has been registered in essence consist of chemical ingredients, cosmetics for the skin, medical and veterinary compounds and products and animal food.

 

The contested mark consists of the acronym ‘PEA-um’. The evidence submitted by the applicant clearly shows that for at least the specialised public in the relevant field, the acronym ‘PEA-um’ refers to ‘ultra-micronized palmitoylethanolamide’. This describes precisely the active component and its form (ultra-micronized) as outlined in the scientific articles submitted by the applicant. The use of the acronym is enough to conclude that ‘PEA-um’ is understood by the relevant public as referring to a specific compound (palmitoylethanolamide) with a certain fine particle size (ultra-micronized) and that it identifies the quality or intended purpose of the products.

 

Since, as explained above, this meaning also existed at the time of filing of the contested EUTM, it follows that it directly informed the relevant consumer of actual (or potential) characteristics of the goods. For some goods (chemicals in Class 1 and compounds and end products in Class 5), the contested mark describes the product itself. For the remaining goods in Classes 3 and 31 respectively, it informs about one of the main ingredients of those goods.

 

It must, therefore, be concluded that the term, as a whole, has a relationship with the goods in question that is sufficiently direct and specific to enable the consumer immediately to perceive, without further thought, a description of the characteristics of these goods (12/06/2007, T-339/05, Lokthread, EU:T:2007:172, § 29).

 

As regards the EUTM proprietor’s argument that similar registrations containing the word ‘PEA’ have been accepted by the EUIPO, according to settled case law, ‘decisions concerning registration of a sign as a European 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 trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the European 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).

 

The Office strives to be consistent and always has regard for previous registrations; however, each examination must be taken on its own merits and must dynamically reflect changes in linguistic norms and commercial realities and the jurisprudence which reflects them. The examination of absolute grounds for refusal must be full and stringent (06/05/2003, C-104/01, Libertel, EU:C:2003:244, § 59), and may not just consist of the mere repetition of supposedly comparable decisions. Moreover, the fact that different marks contain elements of the present mark which were registered for does not suffice to overcome the present objection as they contain different verbal elements which render the marks distinctive. Therefore, the EUTM proprietor´s argument is dismissed.

 

The EUTM proprietor argues that the meaning of PEA is a small round green vegetable besides further meanings, none of them referred to palmitoylethanolamide. A sign must 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, emphasis added.). Therefore, the EUTM proprietor´s argument is dismissed.

 

Non-distinctiveness – Article 7(1)(b) EUTMR

Considering that the EUTM has been found to be registered contrary to Article 7(1)(c) EUTMR, it is not necessary to examine Article 7(1)(b) EUTMR.

 

Conclusion

 

In the light of the above, the Cancellation Division concludes that the application is totally successful and the European Union trade mark should be declared invalid for all the contested goods.

 

 

COSTS

 

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

 

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

 

According to Rule 94(3) and (6) EUTMIR and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

 

The Cancellation Division

 

 

Michaela SIMANDLOVA

Carmen SÁNCHEZ PALOMARES

José Antonio GARRIDO OTAOLA

 

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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.

 

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.