Refusal of application for a European Union trade mark

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

Alicante, 20/06/2017

MITSCHERLICH, PATENT- UND RECHTSANWÄLTE, PARTMBB

Sonnenstraße 33

D-80331 München

ALEMANIA

Application No:	016530602
Your reference:	M36253/EU
Trade mark:	Auto Dosing
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 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 26/05/2017, which may be summarised as follows:

1. The mark ‘Auto Dosing’ is a coin term that cannot be dissected or divided into the elements ‘Auto’ and ‘Dosing’ separately for the purposes of examination. The mark is an invented term which the relevant consumers would consider as fanciful and distinctive.

2. The mark is at the utmost a suggestive term that requires imagination, thought or perception for the consumer to reach the conclusion as to the exact nature of the objected goods. The alleged meaning remains very vague and unclear with respect to the objected goods.

3. The relevant consumers are evidently not familiar with a system that is based on an ‘Auto Dosing’ concept and they will not have any specific ideas about such a product.

4. A number of EUTM applications containing the element ‘Auto’ and an additional descriptive element have been accepted, a list of which is appended.

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.

General remarks on Article 7(1)(c) EUTMR

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).

Specific remarks concerning the observations of the applicant

1. The mark ‘Auto Dosing’ is a coin term that cannot be dissected or divided into the elements ‘Auto’ and ‘Dosing’ separately for the purposes of examination. The mark is an invented term which the relevant consumers would consider as fanciful and distinctive.

For a trade mark that consists of a neologism or a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) EUTMR, ‘it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so’ (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 31).

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts …

(12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

In the same sense, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (30/11/2004, T 173/03, Nurseryroom, EU:T:2004:347, § 21).

The applicant states that the mark ‘Auto Dosing’ is an invented term that would be considered fanciful by the consumer. The Office disagrees with this argument and asserts that the combination of words sends a message to the consumer about certain characteristics of the goods in question, those featuring an automated system of feeding specific measurements of detergents into the equipment.

2. The mark is at the utmost a suggestive term that requires imagination, thought or perception for the consumer to reach the conclusion as to the exact nature of the objected goods. The alleged meaning remains very vague and unclear with respect to the objected goods.

The Office disagrees with this argument and asserts that the mark conveys to the consumer a direct and unambiguous message concerning characteristics of the goods.

The term ‘Auto Dosing’ in relation to goods such as washing machines and dishwashers informs the consumer that these goods feature a self-dosing function that will automatically introduce a measured amount of detergent into the machine without the need of the user doing it. As evidenced below, the phrase is already in use in relation to such white goods:

(http://www.ukwhitegoods.co.uk/help/buying-advice/washing-machine/4247-is-auto-dosing-worth-paying-for sourced on 20/06/2017).

(http://www.laundryserv.co.uk/products/detergent-systems sourced on 20/06/2017).

It would not take much intellectual effort on the part of the consumer, who is reasonable well-informed, observant and circumspect, to understand that the words would signify special attributes of the goods rather than an indicator of trade origin.

3. The relevant consumers are evidently not familiar with a system that is based on an ‘Auto Dosing’ concept and they will not have any specific ideas about such a product.

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’ (05/04/2001, T‑87/00, Easybank, EU:T:2001:119, § 39).

The Office asserts that, as stated above, the relevant consumer would not perceive brand origin by the words in the mark but would see it as indicating particular characteristics of the goods in question.

4. A number of EUTM applications containing the element ‘Auto’ and an additional descriptive element have been accepted, a list of which is appended.

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, according to settled case‑law, ‘decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35).

‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

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 016530602 is hereby rejected for the following goods:

Class 07 Electric clothes washing machines; Automatic dishwashers.

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.

Lance EGGLETON