TNP held to lack distinctiveness for medical goods

European Union
In KCI Licensing Inc v Huntleigh Technology Ltd (December 21 2009), the Cancellation Division of the Office for Harmonization in the Internal Market has held that the trademark TNP was invalid on the grounds that it lacked distinctiveness at the time of registration.
 
On March 29 2007 UK company Huntleigh Technology Ltd filed an application for the registration of the word mark TNP as a Community trademark for “medical and surgical dressings” in Class 5 of the Nice Classification and “medical, surgical and veterinary apparatus for wound treatment; pumps for wound drainage and accessories for collecting wound exudates; parts and fittings for the aforesaid goods” in Class 10.
 
The mark was registered on February 28 2008. On October 27 2008 US company KCI Licensing Inc filed a request for a declaration of invalidity of the mark before the Cancellation Division. The request was based on the lack of distinctiveness of the mark.
 
According to KCI, TNP was an acronym for 'topical negative pressure', which was commonly used at the time of registration of the mark for describing a "specific therapy used in the management of acute, traumatic, infected and chronic full-thickness wounds". A witness statement, together with several exhibits (articles, guidelines, internet search results and even product information originating from Huntleigh) were submitted in support of KCI's claim.
 
The Cancellation Division found that the evidence clearly showed that the acronym TNP meant 'topical negative pressure' at the time of registration of the mark. The TNP therapy consists in "the application of a negative pressure across a wound through a porous dressing so as to facilitate and accelerate the healing of the wound". According to the Cancellation Division, this wording described precisely the technical and medical features of the dressings and apparatus which, used in conjunction, constituted necessary means for carrying out the wound treatment outlined in the scientific articles submitted. As the acronym TNP was understood by the relevant public as a reference to a specific wound treatment method, the mark was thus exclusively descriptive of the intended purpose of the goods at issue.  
 
Therefore, the Cancellation Division concluded that the TNP mark would be perceived by the relevant consumer, without any additional mental effort, as an indication of the type of products necessary to carry out a specific wound treatment method.
 
The two-step approach applied by the Cancellation Division in this decision is interesting. The Cancellation Division first determined whether there was an immediate link between the acronym TNP and 'topical negative pressure'. It then went on to decide whether that phrase had an immediate meaning in the mind of the relevant public.
 
Unless Huntleigh is successful in a potential appeal, medical/pharmaceutical companies may now consider including the acronym TNP (among other elements) into trademarks for goods in Classes 5 or 10.
 
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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