of the Fourth Board of Appeal
of 12 January 2017
In Case R 1338/2016-4
European Society of Anaesthesiology
Rue des Comédiens 24
Applicant / Appellant
represented by Balder IP Law S.L., Paseo de la Castellana, 93, E-28046 Madrid, Spain
APPEAL relating to European Union trade mark application No 14 788 161
THE FOURTH BOARD OF APPEAL
composed of D. Schennen (Chairman and Rapporteur), E. Fink (Member) and L. Marijnissen (Member)
Registrar: H. Dijkema
gives the following
Summary of the facts
- On 12.11.2015, the appellant sought to register the word mark
EDAIC EUROPEAN DIPLOMA ANAESTHESIOLOGY AND INTENSIVE CARE
as a European Union trade mark for the following goods and services:
Class 16 ‒ Printed matter, books, booklets, brochures, pamphlets, manuals, guides, tests, test booklets, test answer sheets, test-scoring sheets, newsletters and reports, certificates, all in the field of anesthesiology.
Class ‒ Promotion of the interests of anesthesiologists; updating and maintaining databases of anesthesiologists; retail services in relation to downloadable electronic publications and education materials in the field of anesthesiology; commercial lobbying services of interests of anesthesiologists; arranging of commercial and business contacts in the field of anesthesiology; services to assist in establishing a network of business contacts in the field of anesthesiology; administrative management of an associative network of interests of anesthesiologists; providing business information directory services in the field of anesthesiology via a global computer network.
Class 41 ‒ Educational services, conducting courses and workshops, courses and trainings provided on-line, all in the field of anesthesiology; providing electronically and non-electronically delivered information services about educational programs in the field of anesthesiology; administering and scoring tests in the field of anesthesiology; providing test registration services and test score reporting services in the field of anesthesiology; distribution of informational materials concerning tests in the field of anesthesiology; test administrations in the field of anesthesiology; publication in both electronic and paper format of instruction, training, teaching, examination materials, examination papers and syllabuses in the field of anesthesiology; provision of examination, testing and assessment services in the field of anesthesiology; distant learning programs in the field of anesthesiology; examination or assessment of candidates in the field of anesthesiology; instruction and teaching services in the field of anesthesiology; consultancy and information services relating to arranging and conducting of courses and exams in the field of anesthesiology; organization of competitions and awards of the interests of anaesthesiologists; organization seminars in the field of anesthesiology; issuing educational certificates and qualifications in the field of anesthesiology; organization of distribution of standardized tests and test answer sheets in the field of anesthesiology.
- The examiner issued an objection on absolute grounds, Article 7 (1) (b) and (c) EUTMR. The applicant replied and maintained that the mark is inherently distinctive and, eventualiter, relied on acquired distinctiveness, Article 7 (3) EUTMR. It filed 8 documents in support.
- On 8.6.2016, the examiner took a decision to refuse the application in its entirety because it did not comply with Article 7 (1) (b) and (c) EUTMR, whilst dismissing the claim to acquired distinctiveness. The examiner explained the meaning of the English dictionary words ‘EUROPEAN’, ‘DIPLOMA’, ‘ANAESTHESIOLOGY’ ‘INTENSIVE’, ‘CARE’ and ‘AND’ and reasoned that the combination of these six words created a meaningful expression, namely ‘a document conferring a qualification in the fields of anaesthesiology and intensive care which is valid throughout Europe’. This expression was considered to be descriptive for the goods and services, which all related to qualification and certification in the field of anaesthesiology and intensive care. The expression did not deviate from English grammar rules, and any deviation (without specifying which one) was negligible. As concerns ‘EDAIC’, the examiner acknowledged that there was no such thing as an official list of acronyms. The letters ‘EDIAC’ preceded a descriptive term and consisted of the first letters of each of its words, both were thus intended to clarify each other. It would be read immediately in relation to the words followed by it.
- As concerns Article 7 (3) EUTMR, she discussed the affidavits presented by the applicant and issued by Dr S.A. Hill MA PhD FRCA (sic), Dr Bazil Ateleanu MD, EDAIC, FRCA (sic) and Sir Peter Simpson KB, MD FRCA, FRCP, FRCS(Hon), DGAI(HON), NSA (Hon) (sic) concerning the examination system established by EDAIC and recognised by the European Union of Medical Specialists (UEMS) and the World Federation of Societies of Anaesthesiology (WFSA) (sic) as inconclusive, including the figure of 10 500 practitioners who took the applicant’s examinations, as it came from a non-independent source.
- The applicant filed a notice of appeal against the contested decision on 22.7.2016, followed by a statement of grounds on 10.10.2016. It is requested to annul the decision and allow the EUTM application to proceed, as a main claim because the mark as a whole should not be considered to be non-distinctive or descriptive under Article 7 (1) (b) or (c) EUTMR, and eventualiter, to allow the application on the basis of acquired distinctiveness, Article 7 (3) EUTMR.
- As a starting point the applicant disputed the reasoning that the word ‘DIPLOMA’ designated the services in issue, which were not simply limited to issuing such a title. What was more, the letters ‘EDAIC’ were completely arbitrary. They did not correspond to any known acronym or abbreviation, and could not be found on any list such as acronymfinder.com. They could stand for anything or nothing. It was incorrect to construe their descriptiveness from the words which follow. To the contrary a mark should be allowed when it contained an inherently distinctive element, notwithstanding the presence of other, in isolation descriptive, elements.
- As concerns Article 7 (3) EUTMR, the applicant filed 5 more documents showing the use of the sign and the endorsement of the diplomas offered by the applicant by official institutions and international corporations or societies in the medical/anaesthesiological field.
Article 7 (1) (c) EUTMR
- Article 7 (1) (c) EUTMR provides that signs shall not be registered as a European Union trade mark which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, 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.
- The applied-for sign is composed of seven word elements, six of which are dictionary words and which are preceded by an acronym composed of the first letters of each of those six words.
- For a word mark which consists of more than one word element, it must be established not only that each of the elements is descriptive on its own, but also that the mark as a whole is nothing more than a descriptive indication. When a word combination consists of the grammatically correct juxtaposition of two or more words, the test is whether each of its elements is descriptive and if this is the case, whether the combination is not more than the sum of its parts (12.2.2004, C363/99, ‘Postkantoor’, EU:C:2004:86, § 100). Merely bringing descriptive word elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned, regardless whether the word combination as such is also referenced in dictionaries or in descriptive use by third parties (12.2.2004, C-265/00, ‘Biomild’, EU:C:2004:87, § 39, 43).
- The applied-for goods and services concern the field of anaesthesiology. They do not mention the field of ‘intensive care’. The contested decision is silent on the relationship between these two medical fields or disciplines. It is not apparent to the Board that intensive care is a natural part of, or supplement or corollary to, anaesthesiology.
- It is obvious that the element of the applied-for mark ‘EUROPEAN’ on its own is descriptive for, arguably, each and every conceivable good or service, and in particular for the claimed ones, as it refers to the ‘European’ scope, origin or subject-matter of the respective activities.
- As concerns the element ‘DIPLOMA’, the statement of grounds rightly points out that the Class 35 services are not focusing on training courses leading to a diploma; they are not ‘education’ services (which are proper to Class 41). Only most of the Class 16 goods can relate to printed matter preparing students for a diploma. Moreover, the six words are not grammatically correct in that after the word ‘DIPLOMA’ a linking verbal element such as ‘for’ or ‘in the field of’ is missing. Maybe this is what the examiner meant when stating that any deviation from the rules of grammar was ‘negligible’.
- Looking at the last six word elements read together, it is moreover not explained by the examiner, and not apparent to the Board, that these words taken together would be used in the relevant field (except by the applicant, as is asserted in the context of Article 7 (3) EUTMR), and the Board cannot see that such a complex expression, taken as such and linking the concepts of anaesthesiology on one hand and intensive care on the other hand, are likely to be used as a descriptor by competitors in the future.
- It follows that already the combination of the six last word elements is a neologism coined by the applicant.
- It is certainly true that also neologisms are descriptive if they are not more than the sum of their parts (see par. 10 above).
- However, the applied-for mark also contains the five-letter combination ‘EDAIC’.
- The examiner did not even pretend that this acronym is used in trade or that the public knows its ‘meaning’, if any.
- If, from the perspective of the relevant public, a word combination ‘EUROPEAN DIPLOMA ANAESTHESIOLOGY AND INTENSIVE CARE’ does not exist, then a fortiori the relevant public cannot link such a, non-existent, word combination to an acronym. The argument that the acronym ‘EDAIC’ must refer to the words ‘EUROPEAN DIPLOMA ANAESTHESIOLOGY AND INTENSIVE CARE’ in the absence of any other meaningful explanation is logically flawed. Rather, the acronym could equally refer to any other word combination having these five letters as their first letters, or to nothing at all. There is practically no acronym of two or three letters which does not yield a whole bunch of different ‘hits’ in databases such as www.acronymfinder.com. In the present case the examiner even went one step further and assumed the descriptiveness of a five-letter acronym that does not appear in any database (or anywhere else).
- The reasoning of the examiner is limited to the stamen that the acronym on the one hand and the words it precedes ‘are intended to clarify each other’. This reasoning is to be discarded. Before all, the ‘intention’ of the applicant is not relevant either way. Next, ‘each other’ means both directions. Yet, the acronym cannot ‘clarify’ the meaning of the words which follow which are simple dictionary words. What could, arguably, be said is just that the words which follow could ‘clarify’ the meaning of the acronym. That is, once again, mistaken. There is no reason or need for such a ‘clarification’. The purpose of a sign is not to ‘clarify’ s.th.. Whilst in the examination of figurative marks sometimes a figurative element underlines the meaning of the word element (eg the German map and arrows representing long-distance bus connections between German cities and the expression ‘Mein Fernbus’, or a computer mouse underling the meaning of ‘connect’ as a connection to a computer or the Internet, see 10.1.2014, R 2216/2013-4, ‘MEINFERNBUS.DE’, § 18 and 2.6.2015, R 3176/2014-4 ‘PHARMACY CONNECT’, § 17-18), it must be observed that in the present case, as long as ‘EDAIC’ has no meaning or concept in itself, it cannot emphasize, explain, or underline the meaning enshrined in the subsequent six words.
- A contrary conclusion is not triggered by the judgment ‘NAI Der Natur-Aktien-Index’ (15.3.2012, C-91/11) either. As a preliminary point it must be noted that the representative of the applicant is right in observing that the standard is not whether an element is negligible (and unlike in a figurative mark, word elements cannot be negligible, at least not simply because they are ‘shorter’ than the rest) but the respective doctrine of the Court was not only developed for cases where the acronym appears at the end (as in the ‘Multi Market Fund’ case), but also where it appeared at the beginning. But the relevant public (which in the present case is predominantly a specialised public in the field of intensive medicine) cannot understand a letter combination which appears as an acronym in a particular, descriptive, meaning if it has never seen it before (once again, leaving aside any use exclusively by the applicant to designate the applicant’s services). Actually, nothing has been found by the examiner as to how the public actually perceives the meaning of the letter combination ‘EDAIC’.
- In the judgment of the Court of Justice (15.3.2012, C-91/11, ‘NAI Der Natur-Aktien-Index’, EU:C:2012:147) it was held that the letters “represent (obs: which is not the same as ‘mean’) the initial letters of the word combinations to which they are attached. Thus, the word combination and the letter sequence, in each case, are intended to clarify each other and to draw attention to the fact that they are linked. Each letter sequence is therefore designed to support the relevant public’s perception of the word combination, by simplifying its use (obs: at least in the present case, there is no such use of the ‘abbreviated’ term) and by making it easier to remember” (obs: which is what a trade mark is made for) (§ 32) and that such a letter sequence, “although not descriptive when considered in isolation, may be descriptive when combined, within the mark at issue, with a principal expression, which itself is descriptive as such, of which it is perceived to be an abbreviation” (§ 38). The Board maintains that an element of a mark which would be registrable on its own is not ‘infected’ by other descriptive elements, but the opposite is correct: it suffices for registrability if one of the elements is distinctive. The line of reasoning that a part of the mark can render the other part descriptive is at odds with other judgments of the Court of Justice, where it was ruled that the terms to which Article 7 (1) (c) EUTMR refers are those which are used ‘as a normal way of referring to the goods or of representing their essential characteristics in common parlance’ (20.9.2001, C-383/99, ‘Baby-dry’, EU:C:2001:461, § 42) and that ‘characteristics’ in terms of Article 7 (1) (c) EUMTR are ‘merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought, in such a way that it is reasonable to believe that the sign in issue will actually be recognised by the relevant class of persons as a description of one of those characteristics’ (10.3.2011, C-51/10, ‘1000’, EU:C:2011:139, § 50). Such a perception by consumers (or other relevant members of the public) can only be the result of a use of the abbreviation in trade and never be the result of the mere filing of a trade mark application with an Office. Whilst it is correct to say that the examination of absolute grounds for refusal requires a prognosis to be made on the perception of the sign in issue in the mind of the relevant public (17.1.2006, T398/04, ‘Red-white tablet with blue core’, EU:T:2006:19, § 41, 42), such perception will have to be the one based on the facts and experiences that precede the date of filing of the trade mark application and not on the basis of ‘information’ contained in the trade mark application itself (see 22.4.2015, R 1871/2014-4, ‘CF COMMODITY FLOW’; 14.11.2013, R 698/2013-4, ‘CC CLEVER CLIP’, 18.12.2015, ‘ANALYTICS APO’; 14.10.2016, R 739/2016-4, ‘IFS INSTITUT FÜR STÄDTEBAU, WOHNUNGSWIRTSCHAFT UND BAUSPARWESEN’, § 9).
- The quotation in par. 4 above serves as an extremely didactic and intentional comment for showing that in the field in which the applicant operates a plethora of acronyms are used and they will be instantly recognised as a distinctive indication, notwithstanding that all those abbreviations or acronyms are likely to be derived from descriptive words and notwithstanding whether the relevant public is also confronted (in the sign, or just as a result of any use in trade) with the full expression those letters or acronyms represent. We leave aside that their mention on a business card in conjunction with a name does not amount to trade mark use, but what is relevant in this context is whether the public will perceive the letter sequence as a descriptor. In fact, those letters ‘stand’ for a term or expression but do not ‘mean’ that term or expression in the sense of Article 7 (1) (c) EUTMR.
- The representative of the applicant recasts these principles and the Board recalls the position taken in previous like cases.
Article 7 (1) (b) EUTMR
- As the element ‘EDAIC’ is distinctive on its own and as the examiner gave no other reasons for lack of distinctiveness which would be independent from the reasoning discussed above, the ground for refusal under Article 7 (1) (b) EUTMR equally does not apply.
Article 7 (3) EUTMR
- The EUTM application is not caught by any grounds for refusal under Article 7 (1) EUTMR so reliance on Article 7 (3) EUTMR is not needed.
- The contested decision is annulled and the EUTM application shall be allowed for publication on the basis of inherent distinctiveness.
On those grounds,
- Annuls the contested decision;
- Allows the EUTM application for publication pursuant to Article 39 EUTMR.
12/01/2017 – R 1338/2016-4 –
EDAIC EUROPEAN DIPLOMA ANAESTHESIOLOGY AND INTENSIVE CARE