Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 11/07/2018

URQUHART-DYKES & LORD LLP

Altius House

1 North Fourth Street

Milton Keynes MK9 1NE

UNITED KINGDOM

Application No:	17 614 512
Your reference:	T555395EM/CLB
Trade mark:	TURBO GROW KIT
Mark type:	Word mark
Applicant:	Rapidgrow Industries Inc. 20203 113B Ave, Maple Ridge British Columbia V2X 0Z1 CANADÁ

The Office raised an objection on 10/01/2018 pursuant to Article 7(1)(b) and Article 7(2) EUTMR, because it found that the trade mark applied for was devoid of any distinctive character in relation to all the goods for which registration is sought, for the reasons set out in the attached notice of provisional refusal.

The applicant submitted its observations on 03/05/2018, which may be summarised as follows:

1. The mark applied for, — ‘TURBO GROW KIT’ —, contains the word ‘turbo’, which the examiner has interpreted wrongly on the basis of an informal definition from the Cambridge Dictionary, namely an adjective meaning ‘very big, powerful’. According to this dictionary, the adjective ‘turbo’ means ‘an engine or machine in which power is produced by a turbine’. In addition, according to the Collins English Dictionary ‘turbo’ is a noun meaning ‘a fan in the engine of a car or plane that improves its performance by using exhaust gases to blow fuel vapour into the engine’. In German, French and Spanish, ‘turbo’ means ‘having a turbine engine’, and in Italian it means ‘as a turbocharged engine’. It follows, that ‘turbo’ cannot be used as simply a synonym for ‘very big, powerful’, as suggested by the examiner.

2. The combination of words ‘turbo’, ‘grow’ and ‘kit’ is unusual and, therefore, distinctive because the words ‘grow’ and ‘kit’ have no clear connection or association with ‘an engine or machine in which power is produced by a turbine’.

3. The examiner highlights third-party use of the expression ‘Mini Turbo Growkits’. However, the use of the expression in this instance relates to mycelium which is used to grow mushrooms and not to the goods for which registration is sought. In addition, one single instance of use of an expression is not sufficient to support a claim that that expression is in common use and therefore non-distinctive.

Pursuant to Article 94 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.

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).

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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).

It is clear from the wording of Article 7(1)(b) EUTMR that a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in that provision (15/09/2005, T-320/03, Live richly, EU:T:2005:325, § 68).

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). In addition, 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). 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). 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).

The Office has re-considered the mark applied for, — ‘TURBO GROW KIT’ —, in accordance with the abovementioned case -law, and, after giving due consideration to all the applicant’s arguments, maintains that the mark is not capable of functioning as a badge of commercial origin for the goods to which the objection was raised. The Office reiterates that the mark would be perceived in the relevant market sector as merely a banal laudatory slogan highlighting that the goods sold under the applicant’s mark are effective kits or sets of preparations / nutrients / tools designed to make plants grow bigger and faster.

As regards the applicant’s first argument, it is unquestionable that the word ‘turbo’ has multiple meanings and that it has been used in English as an adjective and as a noun. However, it is also indisputable that ‘turbo’ means ‘very big, powerful’, as the applicant itself confirms. The fact, that this use is informal, does not render the mark applied for distinctive. It is well –established that a trade mark must be refused registration if at least one of its possible meanings, whether formal or informal, designates a characteristic of the goods or services concerned (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32). The Office considers that this principle, originally established by the Court of Justice in a case relating to descriptive marks, is equally applicable to marks that are non-distinctive per se, and not because of their descriptiveness.

Concerning the applicant’s second argument, the Office does not find the mark applied for to be anything other than an expression consisting of three ordinary English words, all of which are found in dictionaries, and juxtaposed in accordance with English grammar rules and syntax. In addition, the Office considers that the relevant consumer, when encountering the mark in relation to the goods for which registration is sought, would understand without any mental effort, that those goods are effective kits or sets of preparations / nutrients / tools designed to help plants to grow bigger and faster.

As regards the example of actual use of the expression ‘Turbo Growkits’ provided in the notice of provisional refusal, first, it should be emphasised that it was stated not that this expression was in a common use, but only that it had already been used in marketing plant growth kits.

Second, mushrooms, by definition, are a type of plants (information extracted from Macmillan Dictionary on 09/07/2018 at https://www.macmillandictionary.com/dictionary/american/mushroom_1#mushroom_4 ), and all the goods for which registration is sought relate to plants.

For all the reasons given above, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for European Union trade mark No 17 614 512, ‘TURBO GROW KIT’, is hereby refused for all the goods for which registration is sought.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing with the Office within two months of the date of notification of this decision. 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.

Mirjana PUSKARIC