Is Biosensors registerable as a trademark?

biosensor

Biosensors Europe SA filed an Israel trademark application 239559 for the word Biosensors on 31 July 2011. The mark was applied for in classes 5, 9, 10, 41, 42 and 44 for such diverse but related goods and services as medicinal preparations, medical software, stents and drug eluting stents, organizing education events such as conferences and seminars , science and technology services relating to medicine and pharmaceuticals and catheterization, balloon angioplasty and the like. On 2 July 2012, citing Sections 8a and 11(10) of the Trademark Ordinance 1972, the trademark department rejected the application as being a descriptive term for the goods and services provided that was totally lacking in distinctive features.

In an attempt to overcome the rejection, the Applicant submitted an amended and more focused list of goods and services within the original six classes, and noted that the mark had been allowed in Switzerland for the detailed list and in European Union, Germany and Malaysia for the more restricted list. The Applicant is a Swiss entity and requested allowance and registration under Section 16, based on the issued Swiss trade mark registration. Furthermore, Applicant argued that the generic word biosensor is understood to mean a biological sensor that combines a biological element with an electronic element and is used for non-invasive diagnostic purposes, whereas the restricted list of goods and services is for stents and vascular implants and as such, at best, the term biosensor can be understood as hinting at application and services, but not as being descriptive thereof.

The Examiner then did an about-turn and understood the term biosensor slightly differently from the definition submitted by the Applicant, as a sensor that uses a biological material to detect some environmental material or effect. Although the term was no longer being used descriptively, the rejection was maintained. Now on the grounds of being misleading and confusing to the public.

Applicant requested registration under section 16 on the basis of the Swiss mark, and offered to disclaim all rights to the word biosense when used in according to its dictionary definition.

The Trademark Department rejected registration under Sections 16(a)2 and Sections 16(a)3 of the Ordinance and the Applicant requested an oral hearing by the Registrar of Trademarks based on material in the file.

In her ruling, the Deputy Commissioner Ms Jaqueline Bracha noted that the examiner had rejected the mark as being used for goods and services in the classes requested, and, since it was not being used for biological sensors, was also misleading.

Quoting the ruling concerning TM 200350 “I’m lovin it” to McDonalds, the Registrar noted that the requirements for registerability under Section 16 were more lenient than under Section 8, and that only a smidgeon of distinctiveness was required, i.e. more than totally descriptive. This was described as meaning that the Section required the mark to be positively not distinctive in order to be rejected if allowed in the home country. The Deputy Commissioner maintained that biosensors meant biological sensors and although generally used externally were occasionally used internally. Stents, however, are not sensors, so the goods were different if related, hence applicant’s submission that at worse, the mark could be considered as hinting, but not as being descriptive. She went on to argue that the choice of term biosensor for something other than sensors was more or less arbitrary, or at least not obvious, and was like selecting the term Family for a magazine title.  Consequently, the term biosensor was not descriptive of the goods or services covered. Being non-descriptive, the registrar argued that it could not be wholly lacking in distinctiveness for the goods and services provided merely by being a term having a meaning in medical equipment, which is the field in which the applicant engages.

Since the meaning is not exclusively descriptive, the mark should not be rejected under Section 16(a) 3 of the Ordinance, which is parallel to Section 3(1)c of the UK Trade Marks Act 1994. The disclaimer of the dictionary definition was seen as superfluous since a trademark is necessary to protect a word being used for trade purposes, not for everyday use. As to the 16(a)6 rejection, the Deputy Commissioner cited Kerly and the Israel trademark classic by Seligsohn to argue that the issue was whether there was a reql likelihood of confusion or an attempt to deceive, and ruled that when used for stents, the fact that the company name is biosense does not imply that the product is a biological sensor.

Conclusion, with a minor amendment to the list of goods in class 5, the mark was allowed to be published for opposition purposes.

Ruling re Application No. 239559 for the word biosense by Ms Jaqueline Bracha, 27 February 2014.

COMMENT

The mark is rather similar to marks such as Biosense which is used by competitors for branding purposes. We suspect that after spending three years obtaining allowance, the applicant may find themselves fighting oppositions.

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