Imitation is not always flattering
15th September 2021
In a recent decision, the EUIPO Board of Appeal had to decide on whether the mark “CRISTAL” is descriptive of medical goods. You may think it slightly odd that “CRISTAL” would be even remotely descriptive for such goods…and you may be right.
The cancellation applicant High Technology Products applied to cancel EUTM Reg. No. 014040885 “CRISTAL” (figurative) in respect of “Medical apparatus and instruments, except replacement vertebrae for use in the body, vertebral prostheses, vertebral fusion prosthetic implants and orthopaedic polymer implants; Physical therapy equipment; Medical clothing” in Class 10, on the grounds the mark is descriptive and non-distinctive.
The cancellation applicant argued that “CRISTAL” would be immediately perceived by professionals as describing the fact that the products in Class 10 contained high quality crystals which were key in performing the intended medical or therapeutic treatments on patients. Thus, according to the cancellation applicant, the term ‘CRISTAL’ described a quality or characteristic which was fundamental to those goods and it was an integral part of them. According to the cancellation applicant, the word directly informed public that it was the most important part of the medical and therapy apparatus. Furthermore, the cancellation applicant also pointed out that the term was also used to indicate a physical process known as ‘Crystallize/Crystallization’, which meant ‘to change into a solid form that is made up of crystals’. Therefore, the contested denomination ‘CRISTAL’ directly informed the relevant public as to ‘the process for crystallizing fat by freezing it’.
Nice try but the Board considered this argument to be a bit of a stretch. The Board held that for ‘medical apparatus and instruments, with the exception of replacement vertebrae for use in the body, vertebral prostheses, vertebral fusion prosthetic implants and orthopaedic polymer implants’ there is no sufficiently direct and specific relationship between the word ‘CRISTAL’ and these goods as they would not normally be made of glass or be transparent. Whilst the contested goods can include crystal (or cristal in Spanish) as a component, the word is not sufficiently specific so as to be considered by the relevant public to provide information about the components. Medical equipment made of crystal may exist but that is the case for laboratory material which is included in Class 9 and not in Class 10. The same reasoning applies in relation to the contested ‘physical therapy equipment’, as they would not normally be made of glass or be transparent. With respect to ‘medical clothing’, the Board held that since the word ‘CRISTAL’ refers to a glass or a small piece of a substance, it would at most be seen as a fanciful reference with no descriptive connotations.
The Board, rather sensibly, disagreed with the cancellation applicant’s arguments as regards the alleged descriptiveness of the word ‘CRISTAL’ for the goods in Class 10, namely that it describes the essential characteristics of medical apparatus and therapy equipment or medical clothing, as well as its purpose or that they contain high quality crystals which are key to perform the intended medical or therapeutic treatments in patients. The Board held that the word ‘CRISTAL’ is not a word that would be used in commerce or even in the promotion of the relevant goods to describe such characteristics. When encountering the word ‘CRISTAL’ on such goods, the relevant consumer would have no precise idea about any characteristic of the goods in question and would not consider that said word referred to a certain characteristic of the goods. Ultimately, the Board held that the mark ‘CRISTAL’ is distinctive and not descriptive of medical goods.
This is a practical decision. All too often, a mark can be refused registration or cancelled if there is even a slight connection to the goods. However, this decision confirms, refreshingly, that there has to be a sufficiently direct and specific relationship between the mark and the goods for it to be deemed descriptive.
If you require any further detail on this case, or any other trade mark enquiries, please reach out to any of our trade mark attorneys.
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