Refusal of application for a European Union trade mark

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

Alicante, 11/04/2017

MITSCHERLICH, PATENT- UND RECHTSANWÄLTE, PARTMBB

Sonnenstraße 33

D-80331 München

ALEMANIA

Application No:	016125718
Your reference:	M36044/EU
Trade mark:	Sync Wash
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 15/12/2016 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 15/02/2017, which may be summarised as follows:

1. The EU trade mark application ‘Sync Wash’ is distinctive as it possesses minimum level of distinctive character necessary for registration. To support its findings, the applicant referred to the judgment of 21/01/2010, C-398/08 P, ‘Vorsprung durch Technik’.

2. It is unclear which specific characteristics are described by the sign at issue, as the meaning found by the Office is very vague.

3. The term ‘Sync Wash’ is at most indirectly suggestive of certain characteristics of the objected goods.

4. ‘Sync Wash’ it is a fanciful term that cannot be artificially dissected.

5. ‘Sync Wash’ is distinctive because it is not listed in any dictionary.

6. The term ‘Sync Wash’ is not purely descriptive with respect to the relevant goods.

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.

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.

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59).

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR

pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (12/02/2004, C 363/99, Postkantoor, EU:C:2004:86, § 102).

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

The Office will now respond to the applicant’s comments.

The applicant referred to the judgment of 21/01/2010, C-398/08 P, ‘Vorsprung durch Technik’, claiming that application ‘Sync Wash’ is distinctive as it possesses minimum level of distinctive character necessary for registration, as it does not indicate characteristics of the goods at issue. However, this judgment stated that Article 7(1)(b) EUTMR does not apply if a measure of interpretation is required on the part of the public to understand the slogan, it is easy to remember and it exhibits a certain originality.

The applicant seems to have misunderstood the premises and application of the abovementioned decision, as it regarded whether or not a laudatory meaning of a mark, in itself, can exclude a mark from registration. Considering the clear and undisputed meaning of the mark, describing characteristics of the goods applied for, the cited decision is clearly not applicable or even analogous to the mark applied for.

Paragraph 47 of the judgment reads as follows:

‘As regards the General Court’s finding in paragraph 41 of the judgment under appeal that the mark Vorsprung durch Technik can have a number of meanings, or constitute a play on words or be perceived as imaginative, surprising and unexpected and, in that way, be easily remembered, it should be noted that, although the existence of such characteristics is not a necessary condition for establishing that an advertising slogan has distinctive character, as is apparent from paragraph 39 of the present judgment, the fact remains that, as a rule, the presence of those characteristics is likely to endow that mark with distinctive character.’

The mark applied for, ‘Sync Wash’, could not be further from the findings of this judgment. There is nothing imaginative or surprising about the mark applied for, nor does it exhibit certain originality. The term ‘Sync Wash’, as a whole, has a very clear message; no interpretation is needed to understand that the goods applied for are related with synchronisation of the washing process.

Furthermore, it was held that the slogan ‘Vorsprung durch Technik’ was distinctive in relation to a wide range of goods and services not only but also due to its distinctiveness acquired through long-standing use as a slogan for promoting the sale of cars (see judgment of 21/01/2010, C-398/08 P, ‘Vorsprung durch Technik’, paragraph 59; and decision of 08/07/2011, R 1798/2010-G – ‘La qualité est la meilleure des recettes’, paragraphs 28 and 29). Thus, the applicant’s reference to the judgment of 21/01/2010, C-398/08 P, ‘Vorsprung durch Technik’, does not change the outcome in the case in question and, in fact, serves to confirm the finding.

The applicant alleged that it is unclear which specific characteristics of the goods are described by the sign at issue. Additionally, it claimed that the Office does not provide any specific meaning, since it is unclear what the meaning found by the Office means with respect to the objected goods. However, the Office is of the opinion that it sufficiently justified its objections by providing dictionary references and by examining the meaning of the expression, first, by reference to the goods in respect of which registration is sought, and, second, by reference to the perception of the relevant public.

Therefore, the Office maintains that the sign ‘Sync Wash’ is made up of an entirely understandable combination of common English words (as all elements of the mark can be found in the dictionary), which leads to the meaningful expression that, in relation to the goods concerned, imparts an immediate and obvious message about the intended purpose and the functions/modes of the goods in question. The conjunction of the words ‘Sync’ and ‘Wash’ simply produces a sign that is merely the sum of its parts. Contrary to the applicant’s statement, it will not be perceived as fanciful by the relevant public, but rather as a grammatically correct and meaningful expression informing consumers about characteristics of the goods, namely that they are a wide range of goods in Class 7 such as washing machines, vacuum cleaners and dishwashers that have a washing function, that can be synchronised for example with other functions or with other devices.

Moreover, taking into account market realities and current level of technical development, it is not uncommon to find on the relevant market washing machines, vacuum cleaners and dishwashers that can be synchronised with other devices. This is because in the era of “smart houses” and “internet of things” the functioning of the household devices can be programmed and they can be connected with each other, depending on the consumer’s needs.

The applicant argued that the term ‘Sync Wash’ is not included in the dictionaries; however, English dictionaries do not generally provide definitions of combined terms, but rather of single words and common expressions and proverbs. One cannot expect to find every possible combination of words resulting in a grammatically correct expression in the dictionary. Thus, it is not necessary for the office to prove that the word or expression is the subject of a dictionary entry in order to refuse a sign. This is particularly the case for composite terms, as dictionaries do not include entries of all possible combinations of words. What matters is the ordinary and plain meaning of the expression, properly explained above.

As there are no additional elements which might contribute to the distinctive character of the term ‘Sync Wash’, such as elements of fancifulness, a play on words, a subliminal message and so on, and because it has a clear and descriptive meaning in relation to the goods applied for, the Office maintains that the trade mark applied for does not have any distinctive character. The ‘absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual or striking’ (judgment of 05/04/2001, T‑87/00, ‘EASYBANK’, paragraph 39). However, in the case at issue, the applicant has failed to prove that the sign has a minimum degree of distinctive character or that the consumer would easily recognise the commercial origin of the goods in question.

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 16 125 718 ‘Sync Wash’ is hereby rejected for the following goods:

Class 7 Electric clothes washing machines; Automatic dishwashers; Electric vacuum cleaners; 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; Electric vacuum cleaners for bedding.

The application may proceed for the remaining namely for:

Class 7 Clothes management machines for deodorizing, ironing and sterilizing clothes for household purpose; Electric Rotary blowers; Compressed air pumps; Rotary compressors; Compressors for refrigerators; Spin driers (not heated); Electric mixers for household purposes; Electric food processors.

Class 11 Air conditioners; Hot air apparatus, namely, hot-air space heating apparatus; Humidifiers; Electric Dehumidifier for household use; Electric ranges; Water purifiers for household purposes; Water ionizers for household purposes; Water ionizers; Membrane apparatus in the nature of filters for purifying water; Solar thermal collectors [heating]; Air purifiers; Heating apparatus; Ventilation [air-conditioning] apparatus for heating; Light Emitting Diode lighting; Gas ranges; Electric kitchen ovens; Apparatus or installations for cooking; Electric refrigerators; Electric clothes dryers; Ventilation apparatus; Clothes management machines for drying clothes (electric) for household purpose; Electric clothing management machines having the functions of deodorizing, sterilizing and steaming garments for household purposes; Electric clothes drying machines with sterilization, deodorization and crease-resistant treatment functions for household purposes; Precision filters for water treating; Water desalination plants; Purification installations for sewage; Purification installations for wastewater reclamation and reusing system; Wastewater purifying and treatment apparatus; Filters for wastewater; Water purifiers for industry; Street lamps;

Incandescent lamps; Fluorescent lamps; Automobile lights; Ventilators for automobiles; Heaters for automobiles; Electric wine cellar for household purposes.

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.

Monika Karolina SZALUCHO