Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 27/01/2017

Grünecker Patent- und Rechtsanwälte PartG mbB

Leopoldstr. 4

D-80802 München

ALEMANIA

Application No:	015704018
Your reference:	EW34456MA039sli
Trade mark:	Stop&Go
Mark type:	Word mark
Applicant:	Arçelik Anonim Sirketi E5 Ankara Asfalti Uzeri, Tuzla Istanbul 34950 TURQUÍA

The Office raised an objection on 18/08/2016 because it was found that trade mark applied for is partially not eligible for the registration under Article 7(1) (b) and (c) and 7 (2) EUTMR, for the following reasons:

The trade mark you have applied for is partially not eligible for registration under Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR.

The mark applied for ‘Stop&Go’ consists of the words ‘stop’ and ‘go’ and is considered objectionable for:

Class 7 Machines, looms and industrial robots for working and shaping wood, metal, glass and plastic material and metals (including galvanizing machines and electroplating machines); Heavy machinery, robotic mechanisms for working and shaping wood, metal, glass and plastic material and metals; Lifting, conveying and transportation machines, robotic mechanisms with the same function (including lifts, escalators, cranes); Machines and robotic mechanisms used in the agriculture and viticulture and in processing cereals / fruits / vegetables / food; Engines, electrical engines, their parts and equipments other than for land vehicles (including parts, electric door openers-closers used in land vehicles and included in this class); Bearings, ball-bearings or roller bearings; Tire mounting and dismounting machines; Alternators, generators, generators of electricity, generators working with solar energy; Painting machines, automatic spray guns for paint, electric punching machines and punches for punching machines, electric glue guns, guns for compressed air or liquid spraying machines, electric hand drills, motor hand saw, jigsaw machines, spiral machines, compressed air pumps, compressors, vehicle washing installations, and robots with the same function as the above-mentioned machines and tools; Welding machines, electric arc welding apparatus, electric welding apparatus, electric arc cutting apparatus, electrodes for welding machines and robots with the same function as the above-mentioned; Printing machines; Packaging machines, filling-plugging and finishing machines, labeling machines, separators and robots and robotic mechanisms with the same function as the above-mentioned machines (including electrical apparatus for sealing plastics [packaging]); Textile milling, scotching, tentering or washing machines, sewing machines and industrial robots with the same function as the above-mentioned machines; Pumps other than parts of machines or engines (including fuel dispensing pumps and guns for these); Electrical appliances used in kitchen for chopping, grinding, crushing, whisking and milling; washing machines (laundry / dishwashing machines); electrical machines for cleaning floors and carpets, vacuum cleaners and their parts; Vending machines; Power supply apparatus [generators]; Laundry dryers, namely machines not drying with heating method; Waste management installations.

Class 8 Tools and appliances included in this class used for personal care in shaving, depilation, manicure, pedicure and beauty-care (including hair straighteners and hair curling implements, scissors); Hand-operated tools for repair of machines, appliances and vehicles, hand-operated tools for building, agriculture, gardening and forestry; Electric irons.

Class 9 Apparatus for recording, transmission or reproduction of sound or images (including apparatus and peripheral devices for data processing, telecommunication, reproduction, loudspeakers, and earphones); Magnetic and optical data carriers and software recorded in these; television and phone applications, downloadable electronic publications, recorded to magnetic and optical media; Electronic components used in machines and apparatus; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity (including cables used for electric and electronic purposes, batteries, accumulators, anodes and cathodes); Apparatus for warning and alarms [other than for vehicles], Radar apparatus, sonars, apparatus and devices providing night vision;

Class 11 Lighting apparatus and installations (lighting installations for vehicles, interior and exterior spaces); Devices for cooking, heating and vapor producing installations and apparatus (including electric ovens, microwave ovens, gas ovens, electric heating apparatus or heating apparatus for solid, liquid or gaseous fuels, electric tea and coffee makers and machines); Air conditioning devices; Cooling apparatus, namely refrigerators, milk coolers, water coolers, ice-boxes, ice machines and devices, freezers; Electric and gas operated apparatus, machines and devices used in cooling, drying and boiling (including electric and heating-operated laundry dryers, hair dryers and hand drying apparatus); Sanitary installations, sanitary ware; Water softening apparatus, water purifying apparatus, water purification installations; Bedwarmers and electric blankets not for medical purposes, heating cushions and pads not for medical purposes, electric or non-electric footwarmers, hot water bottles; Filters and filter-motor combinations for aquariums; Industrial type cooking, drying and cooling installations; Pasteurizers and sterilizers; Laundry dryers.

The distinctive character and descriptiveness of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 29).

The average consumer’s level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Furthermore, when assessing the distinctive character of a trade mark consisting of a combination of elements, the mark needs to be considered as a whole. However, that does not preclude prior examination of each of the trade mark’s individual features (09/07/2003, T‑234/01, Orange und Grau, EU:T:2003:202, § 32).

In the present case, the objectionable goods covered by the mark applied for are everyday consumption/mass consumption goods and are mainly aimed at average consumers. In view of the nature of the goods in question, the awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect. Moreover, since the mark ‘Stop&Go’ consists of English words, the relevant public with reference to which the absolute ground for refusal must be examined is the English-speaking consumer in the Union (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 30).

The trade mark consists of the words with the following meanings:

STOP&GO ‘stop and go’

STOP AND GO ‘characterized by or involving frequent stopping and restarting’ (Collins English Dictionary, on 18/08/2016 at http://www.collinsdictionary.com/dictionary/english/stop-and-go.)

The relevant consumer will understand the words as a meaningful expression: any device or technology which has the characteristics of stopping and restarting frequently.

1) Descriptiveness

For the purposes of assessing descriptiveness, it must be determined whether the relevant public will make a sufficiently direct and specific association between the expression and the goods/services for which registration is sought (20/07/2004, T‑311/02, Limo, EU:T:2004:245, § 30).

Taken as a whole, the words ‘Stop&Go’ immediately inform consumers without further reflection that the goods applied for in Class 7 such as machines, looms and industrial robots for working and shaping wood, metal and electric glue guns have the technology of functioning by stopping and restarting frequently during their operations. In relation to the electric irons applied for in Class 8 the words ‘Stop&Go’ inform consumers that these electric irons have also the function of stopping and restarting for instance in terms of steaming. Regarding the goods applied for in Class 9 such as magnetic and optical data carriers and software recorded in these or downloadable electronic publications, the words ‘Stop&Go’ informs consumers that software recorded in the magnetic and optical data carriers is about operating stop and go technology and the downloadable electronic publications contain essential information related to this electronic function. And finally considering the goods applied for in Class 11 such as devices for cooking or electric tea makers, the sign ‘Stop&Go’ informs consumers that these cooking devices or tea makers have the characteristics of operating by stopping and restarting repeatedly for example to be in line with certain cooking recipes or the brewing of various teas.

Therefore, the mark conveys obvious and direct information regarding the kind and intended purpose of the goods in question.

It follows that the link between the words ‘Stop&Go’ and the goods referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR.

2) Lack of distinctive character

According to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (19/09/2002, C‑104/00 P, Companyline, EU:C:2002:506, § 21). This is clearly applicable to the present case.

Given that the mark has a clear descriptive meaning in relation to the goods applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

Furthermore, signs that are commonly used in connection with the marketing of the goods and services concerned are devoid of distinctive character (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 20).

In the present case, an internet search has revealed that the words in question are commonly used in the market for the various goods in order to describe their functions:

(http://www.kks.ie/kitchen-hobs-hoods/kitchen-induction-hobs/aeg-maxisense-induction-hob-with-stop-and-go-HK854400FB)

(http://www.electrolux.com.au/LocalFiles/Australia_NewZealand_English/Brochures/EBRO_INSCook_Aug15_FINAL_LR.pdf)

(http://www.ebay.com/itm/Lavazza-Minu-Caffe-Latte-Coffee-Machine-Stop-Go-Handle-Auto-power-off-10080949-/252392739685?hash=item3ac3c79365:g:rzYAAOSwdWBXOt0G)

(http://www.metzner.com/en/products/rubber-plastics-processing/hoses-tube-processing/metzner-fly-knife-cutting-machines-hoses-tubes.html?tab=0-Overview)

(http://www.gebocermex.com/Equipment/Packing/RSC-cases-packing/Multi-function-Top-loading-Case-Packers)

Research conducted on 18/08/2016

Consequently, taken as a whole, the mark applied for – ‘Stop&Go’ – is devoid of any distinctive character and is not capable of distinguishing the goods for which registration is sought within the meaning of Article 7(1)(b) EUTMR and Article 7(2) EUTMR.

If you have any observations, they should be submitted within two months from the notification of this communication. If you do not submit any observations, the application will be rejected in part, namely for:

Class 7 Machines, looms and industrial robots for working and shaping wood, metal, glass and plastic material and metals (including galvanizing machines and electroplating machines); Heavy machinery, robotic mechanisms for working and shaping wood, metal, glass and plastic material and metals; Lifting, conveying and transportation machines, robotic mechanisms with the same function (including lifts, escalators, cranes); Machines and robotic mechanisms used in the agriculture and viticulture and in processing cereals / fruits / vegetables / food; Engines, electrical engines, their parts and equipments other than for land vehicles (including parts, electric door openers-closers used in land vehicles and included in this class); Bearings, ball-bearings or roller bearings; Tire mounting and dismounting machines; Alternators, generators, generators of electricity, generators working with solar energy; Painting machines, automatic spray guns for paint, electric punching machines and punches for punching machines, electric glue guns, guns for compressed air or liquid spraying machines, electric hand drills, motor hand saw, jigsaw machines, spiral machines, compressed air pumps, compressors, vehicle washing installations, and robots with the same function as the above-mentioned machines and tools; Welding machines, electric arc welding apparatus, electric welding apparatus, electric arc cutting apparatus, electrodes for welding machines and robots with the same function as the above-mentioned; Printing machines; Packaging machines, filling-plugging and finishing machines, labeling machines, separators and robots and robotic mechanisms with the same function as the above-mentioned machines (including electrical apparatus for sealing plastics [packaging]); Textile milling, scotching, tentering or washing machines, sewing machines and industrial robots with the same function as the above-mentioned machines; Pumps other than parts of machines or engines (including fuel dispensing pumps and guns for these); Electrical appliances used in kitchen for chopping, grinding, crushing, whisking and milling; washing machines (laundry / dishwashing machines); electrical machines for cleaning floors and carpets, vacuum cleaners and their parts; Vending machines; Power supply apparatus [generators]; Laundry dryers, namely machines not drying with heating method; Waste management installations.

Class 8 Tools and appliances included in this class used for personal care in shaving, depilation, manicure, pedicure and beauty-care (including hair straighteners and hair curling implements, scissors); Hand-operated tools for repair of machines, appliances and vehicles, hand-operated tools for building, agriculture, gardening and forestry; Electric irons.

Class 9 Apparatus for recording, transmission or reproduction of sound or images (including apparatus and peripheral devices for data processing, telecommunication, reproduction, loudspeakers, and earphones); Magnetic and optical data carriers and software recorded in these; television and phone applications, downloadable electronic publications, recorded to magnetic and optical media; Electronic components used in machines and apparatus; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity (including cables used for electric and electronic purposes, batteries, accumulators, anodes and cathodes); Apparatus for warning and alarms [other than for vehicles], Radar apparatus, sonars, apparatus and devices providing night vision;

Class 11 Lighting apparatus and installations (lighting installations for vehicles, interior and exterior spaces); Devices for cooking, heating and vapor producing installations and apparatus (including electric ovens, microwave ovens, gas ovens, electric heating apparatus or heating apparatus for solid, liquid or gaseous fuels, electric tea and coffee makers and machines); Air conditioning devices; Cooling apparatus, namely refrigerators, milk coolers, water coolers, ice-boxes, ice machines and devices, freezers; Electric and gas operated apparatus, machines and devices used in cooling, drying and boiling (including electric and heating-operated laundry dryers, hair dryers and hand drying apparatus); Sanitary installations, sanitary ware; Water softening apparatus, water purifying apparatus, water purification installations; Bedwarmers and electric blankets not for medical purposes, heating cushions and pads not for medical purposes, electric or non-electric footwarmers, hot water bottles; Filters and filter-motor combinations for aquariums; Industrial type cooking, drying and cooling installations; Pasteurizers and sterilizers; Laundry dryers.

The application will be accepted for the remaining goods.

No observations were received by the Office within the time limit set.

Therefore and due to the reasons set out above, and pursuant to Article 7(1)(b) and (c), and 7(2) EUTMR, the application for the European Union Trade Mark 15 704 018 is hereby rejected for the following goods:

Class 7 Machines, looms and industrial robots for working and shaping wood, metal, glass and plastic material and metals (including galvanizing machines and electroplating machines); Heavy machinery, robotic mechanisms for working and shaping wood, metal, glass and plastic material and metals; Lifting, conveying and transportation machines, robotic mechanisms with the same function (including lifts, escalators, cranes); Machines and robotic mechanisms used in the agriculture and viticulture and in processing cereals / fruits / vegetables / food; Engines, electrical engines, their parts and equipments other than for land vehicles (including parts, electric door openers-closers used in land vehicles and included in this class); Bearings, ball-bearings or roller bearings; Tire mounting and dismounting machines; Alternators, generators, generators of electricity, generators working with solar energy; Painting machines, automatic spray guns for paint, electric punching machines and punches for punching machines, electric glue guns, guns for compressed air or liquid spraying machines, electric hand drills, motor hand saw, jigsaw machines, spiral machines, compressed air pumps, compressors, vehicle washing installations, and robots with the same function as the above-mentioned machines and tools; Welding machines, electric arc welding apparatus, electric welding apparatus, electric arc cutting apparatus, electrodes for welding machines and robots with the same function as the above-mentioned; Printing machines; Packaging machines, filling-plugging and finishing machines, labeling machines, separators and robots and robotic mechanisms with the same function as the above-mentioned machines (including electrical apparatus for sealing plastics [packaging]); Textile milling, scotching, tentering or washing machines, sewing machines and industrial robots with the same function as the above-mentioned machines; Pumps other than parts of machines or engines (including fuel dispensing pumps and guns for these); Electrical appliances used in kitchen for chopping, grinding, crushing, whisking and milling; washing machines (laundry / dishwashing machines); electrical machines for cleaning floors and carpets, vacuum cleaners and their parts; Vending machines; Power supply apparatus [generators]; Laundry dryers, namely machines not drying with heating method; Waste management installations.

Class 8 Tools and appliances included in this class used for personal care in shaving, depilation, manicure, pedicure and beauty-care (including hair straighteners and hair curling implements, scissors); Hand-operated tools for repair of machines, appliances and vehicles, hand-operated tools for building, agriculture, gardening and forestry; Electric irons.

Class 9 Apparatus for recording, transmission or reproduction of sound or images (including apparatus and peripheral devices for data processing, telecommunication, reproduction, loudspeakers, and earphones); Magnetic and optical data carriers and software recorded in these; television and phone applications, downloadable electronic publications, recorded to magnetic and optical media; Electronic components used in machines and apparatus; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity (including cables used for electric and electronic purposes, batteries, accumulators, anodes and cathodes); Apparatus for warning and alarms [other than for vehicles], Radar apparatus, sonars, apparatus and devices providing night vision;

Class 11 Lighting apparatus and installations (lighting installations for vehicles, interior and exterior spaces); Devices for cooking, heating and vapor producing installations and apparatus (including electric ovens, microwave ovens, gas ovens, electric heating apparatus or heating apparatus for solid, liquid or gaseous fuels, electric tea and coffee makers and machines); Air conditioning devices; Cooling apparatus, namely refrigerators, milk coolers, water coolers, ice-boxes, ice machines and devices, freezers; Electric and gas operated apparatus, machines and devices used in cooling, drying and boiling (including electric and heating-operated laundry dryers, hair dryers and hand drying apparatus); Sanitary installations, sanitary ware; Water softening apparatus, water purifying apparatus, water purification installations; Bedwarmers and electric blankets not for medical purposes, heating cushions and pads not for medical purposes, electric or non-electric footwarmers, hot water bottles; Filters and filter-motor combinations for aquariums; Industrial type cooking, drying and cooling installations; Pasteurizers and sterilizers; Laundry dryers.

The application is accepted for the remaining goods, namely;

Class 8 Forks, spoons, knives and non-electric cutlery for cutting, chopping, peeling purposes, including those of precious metals; Cutting and jabbing/stabbing arms; Non-electric irons.

Class 9 Measuring apparatus and instruments, indicators including those for scientific research in laboratories other than for medical use; Magnetic/optical cards; Antennas, satellite dishes, amplifiers and their parts; Ticket dispensers, automated teller machines; Counters measuring amount of consumption in unit time and time clocks; Protective suits and life saving apparatus and equipment (including ear plugs for divers); Glasses, sunglasses, contact lenses and their boxes, covers, parts and accessories; Electric bells; Signaling devices and apparatus used in traffic; Fire extinguishing apparatus including fire engines (including fire hoses and fire hose nozzles); Magnets, decorative magnets.

According to Article 59 EUTMR, you have 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.

Kubilay ÖZDEMIR