Refusal of application for a European Union trade mark

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

Alicante, 04/07/2017

NJORD Law Firm Advokatpartnerselskab

Pilestræde 58

DK-1112 Copenhagen K

DINAMARCA

Application No:	016130015
Your reference:	400740-002
Trade mark:	MONOLITHIC POWER SYSTEMS
Mark type:	Word mark
Applicant:	Monolithic Power Systems, Inc 79 Great Oaks Boulevard San Jose California 95119 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 13/01/2017 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.

After an extension of two months, the applicant submitted its observations on 15/05/2017, which may be summarised as follows:

1. The applicant limits the list of goods.

2. The mark is not descriptive, but distinctive for the remaining 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.

Limitation

The applicant has limits the list of goods to the following:

Class 7 Electronic controls for motors.

Class 9 Multiplexers; routers; transceivers; audio/visual receivers; signal converters; fluorescent lamp drivers; cold cathode fluorescent lamp drivers; light emitting diode drivers; white light emitting diode drivers; organic light emitting diode drivers; audio amplifiers; preamplifiers; telecommunication switches; computer network switches; computer switches; electric switches; electrical switches; optical transmitters; radio frequency transmitters; digital signal processors; electric sensors; optical sensors; electrical controllers.

Assessment

After giving due consideration to the applicant’s arguments, the Office has decided to waive the objection for the following goods, namely:

Class 7 Electronic controls for motors.

Class 9 Multiplexers; routers; transceivers; audio/visual receivers; signal converters; fluorescent lamp drivers; cold cathode fluorescent lamp drivers; light emitting diode drivers; white light emitting diode drivers; organic light emitting diode drivers; audio amplifiers; preamplifiers; telecommunication switches; computer network switches; computer switches; optical transmitters; radio frequency transmitters; digital signal processors; electric sensors; optical sensors; electrical controllers.

The objection is maintained for the remaining goods, namely:

Class 9 Electric switches; electrical switches.

Descriptiveness and distinctiveness

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.

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).

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’ (judgment of 27/02/2002, T 79/00, ‘LITE’, § 26).

The applicant argues that there is not a sufficiently direct and concrete link between the remaining goods and the mark ‘MONOLISTIC POWER SYSTEMS’.

The Office agrees with the applicant to a large extent, but maintains that the mark still is descriptive and non-distinctive for electric switches; electrical switches.

The relevant consumer would perceive the mark ‘MONOLISTIC POWER SYSTEMS’ as an information that the goods, for which registration is sought, are switches that are or contain a monolithic power supply.

Electric and electrical switches are part of a circuit and which function is to interrupting the current or diverting it from one conductor to another and, therefore, are directly related to the power supply.

See the following examples:

http://www.schneider-electric.com/en/product-range/631-harmony-xb6/

http://www.newark.com/schneider-electric/xb6ead221p/rotary-switch-1no-nc-1a-240vac/dp/77Y6120

(Internet search performed on 04/07/2017)

The Office, therefore, maintains that the relevant consumer not would perceive the mark as an indication of commercial origin for these goods.

Further proceedings

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 16 130 015 is hereby rejected for the following goods:

Class 9 Electric switches; electrical switches.

The application may proceed for the remaining goods, namely:

Class 7 Electronic controls for motors.

Class 9 Multiplexers; routers; transceivers; audio/visual receivers; signal converters; fluorescent lamp drivers; cold cathode fluorescent lamp drivers; light emitting diode drivers; white light emitting diode drivers; organic light emitting diode drivers; audio amplifiers; preamplifiers; telecommunication switches; computer network switches; computer switches; optical transmitters; radio frequency transmitters; digital signal processors; electric sensors; optical sensors; electrical controllers.

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.

Anja Pernille LIGUNA