Refusal of application for a European Union trade mark

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

Alicante, 10/03/2017

MITSCHERLICH, PATENT- UND RECHTSANWÄLTE, PARTMBB

Sonnenstraße 33

D-80331 München

ALEMANIA

Application No:	015977606
Your reference:	M35959/EU
Trade mark:	Mini Washer
Mark type:	Word mark
Applicant:	LG ELECTRONICS INC. 128, Yeoui-daero, Yeongdeungpo-gu Seoul 150-721 REPÚBLICA DE COREA (LA)

The Office raised an objection on 14/11/2016 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 21/12/2016, which may be summarised as follows:

1. With reference to case-law, the applicant argues that the alleged concept of the words ‘Mini Washer’ with respect to the goods in question – and also in general – is very vague and does not clearly describe any of the characteristics of the relevant goods. The English-speaking public could, at most, perceive the mark as indirectly suggestive of certain characteristics of the goods; however, more information would be required for the relevant public to reach a conclusion regarding the exact nature of the goods. Moreover, the sign ‘Mini Washer’ is a coined term that does not appear in dictionaries and cannot be artificially dissected.

Pursuant to Article 75 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

The mark applied for consists of the words ‘Mini Washer’ and definitions of these words were provided in the Notice of grounds for refusal of application for a European Union trade mark. Accordingly, the Office established that the relevant consumer will understand the words as a meaningful expression that means ‘a small device that washes something’.

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).

The Office maintains that, taken as a whole, the words ‘Mini Washer’ immediately inform consumers, without further reflection, that the goods for which registration is sought, such as clothes washing machines, dishwashers, robots and vacuum cleaners (and their parts), are apparatus of a small size for washing clothing, dishes, floor, etc. Therefore, the mark conveys obvious and direct information regarding the kind of the goods in question.

The sign does not have any unusual or ambiguous character, in the light of English linguistic rules of syntax, grammar, phonetics and/or semantics, that would lead the relevant public, which is, as mentioned above, reasonably well informed and reasonably observant and circumspect, to make an association of a different kind. There are no mental steps required to deduce the meaning of the words ‘Mini Washer’.

Finally, although the sign applied for does not appear in dictionaries, this is not decisive when assessing the eligibility of the sign for registration. As mentioned above, the combination of the words ‘Mini’ and ‘Washer’ cannot be viewed as an unusual or ambiguous combination or as a lexical invention capable of giving the sign applied for a distinctive character (26/01/2006, R 0366/2005-4, PERSONAL PAGES, § 20).

It follows that the link between the words ‘Mini Washer’ 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.

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.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 15 977 606 is hereby rejected for the following goods:

Class 7 Electric clothes washing machines; Dishwashers; Vacuum cleaners; Electric clothes management machines for household purpose; Electric clothes managing apparatus for household purpose; Hose for electric vacuum cleaners; Bag for electric vacuum cleaners; Stick type vacuum cleaners; Robots; Robotic vacuum cleaners; Steam cleaners for household purposes; Hand-held vacuum cleaners; Vacuum cleaners for bedding.

The application may proceed for the remaining goods.

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.

Sandra KASPERIŪNAITĖ