Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 30/04/2018

MAPA TRADEMARKS

Alameda San Mamés 43 bis, 3ª planta, dpto 1

E-48010 Bilbao (Bizkaia)

ESPAÑA

Application No:	017637216
Your reference:
Trade mark:	TURBO ULTRA
Mark type:	Word mark
Applicant:	Sulphur Mills Limited unity garments ltd, fletcher street, bolton BL3 6NE, U.K. , UNITED KINGDOM bolton Bolton BL3 6NE REINO UNIDO

The Office raised an objection on 04/01/2018 pursuant to Article 7(1)(b) and (c) 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 which is an integral part of this decision.

The applicant submitted its observations on 02/03/2018 which can be summarised as follows.

1. ‘TURBO ULTRA’ is not devoid of distinctive character because it is not descriptive of the goods in question.

2. ‘TURBO’ does not itself designate a quality or characteristic or property of the pesticides which the consumer is able to understand directly. ‘ULTRA’ merely reinforces and does not designate a quality, quantity or other characteristic that the consumer is able to directly understand.

3. The applicant refers to a similar case that was accepted by the General Court (9/10/2002, T-360/00, ULTRAPLUS) and concludes that for the same reasons the mark ‘TURBO ULTRA’ is not descriptive for the goods in Class 5.

4. The same mark ‘TURBO ULTRA’ was registered by the Office in 2003.

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

General remarks

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.

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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’ (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).

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).

Observations of the applicant

1. ‘TURBO ULTRA’ is not devoid of distinctive character because it is not descriptive of the goods in question.

The Office holds that the ‘TURBO ULTRA’ even if it were not a descriptive expression, is in any case non-distinctive.

The provisions of Article 7(1)(b) and 7(1)(c) EUTMR overlap to a large extent and a word mark that is descriptive of certain characteristics of the goods in question is on that account necessarily devoid of any distinctive character in relation to those goods and services (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 18 and 19). A mark may none the less be devoid of distinctive character in relation to goods also for reasons other than the fact that it may be descriptive.

As has been pointed out in the attached letter, the word ‘TURBO’ has come to be universally associated with positive notions such as performance, energy and efficiency. The General Court has confirmed that the term ‘TURBO’ is also used colloquially in English to refer in general to high performance, and that the term is generally laudatory (26/11/2015, T-50/14, TURBO DRILL, EU:T:2015:892, § 17 et seq.).

Therefore, ‘TURBO’ is non-distinctive in relation to goods where excellent performance is a sought-after feature as it is in the present case of pest control preparations and articles.

Terms merely denoting a particular positive or appealing quality or function of the
goods and services should be refused which is the case of ‘ULTRA’ denoting extreme (09/12/2002, R333/2002-1, ULTRAFLEX) as confirmed by its dictionary definition cited in the attached letter.

The sign ‘TURBO ULTRA’ is made up of two superlative, non-distinctive words which, when combined, will simply be seen as a laudatory expression referring to the goods. The combination of these two words leads to nothing more than the sum of their parts. The words do not possess any feature regarding the way in which they are combined that allows the mark to fulfil its essential function for the goods for which protection is sought. ‘TURBO ULTRA’ will not be given trade mark significance by the relevant public who is the average English-speaking consumer, but rather it will be seen as a laudatory reference to the goods in question.

2. ‘TURBO’ does not itself designate a quality or characteristic or property of the pesticides which the consumer is able to understand directly. ‘ULTRA’ merely reinforces and does not designate a quality, quantity or other characteristic that the consumer is able to directly understand.

As has been highlighted above ‘TURBO’ is used to denote performance and efficiency. In addition, it appears in the dictionary as meaning very powerful.

TURBO: very powerful (informal)

(information extracted from the Cambridge English dictionary on 27/04/2018 at https://dictionary.cambridge.org/dictionary/english/turbo )

Therefore, the Office maintains that the relevant consumer will immediately understand the term ‘TURBO’ as referring to the powerful way in which the goods perform, or their extreme high performance.

‘ULTRA’ means extreme or extremely. On its own it would be non-distinctive for the goods in question. Together with ‘TURBO’ it serves to emphasise how ‘extremely’ powerful they are. It simply reinforces even more the hyperbolic expression ‘TURBO’.

Even if such exaggeration were to be considered excessive in a descriptive sense for the trade mark to objectionable under 7(1)(c), which the Office denies, it still would be non-distinctive, if not due to its descriptive meaning, then due to the fact that such hyperbole is common in marketing and advertising. The relevant consumer is used to being faced with exaggerated claims and laudatory terms on goods and will not see them as an indicator of origin but simply as a reference to the excellence of the goods in question.

3. The applicant refers to a similar case that was accepted by the General Court (9/10/2002, T-360/00, ULTRAPLUS) and concludes that for the same reasons the mark ‘TURBO ULTRA’ is not descriptive for the goods in Class 5.

The 2002 decision that the applicant refers to a different mark and different goods and services.

The court held that word ‘ULTRA’ as such, is only capable of reinforcing the
designation of a quality or characteristic by another word. Likewise, the word
'plus' does not in itself designate a quality or characteristic of the plastic
ovenware concerned which the consumer is able to understand directly and which
could be reinforced by the word 'ultra'. However the case of ‘TURBO ULTRA’, although somewhat similar due to the laudatory nature of both word element that make up the mark, is not quite the same. ‘TURBO’ relates to performance, and it means ‘very powerful’ as confirmed by the above mentioned dictionary definition. This is a sought-after characteristic of pesticides from the point of view of the relevant consumer. ‘ULTRA’ reinforces this characteristic. Therefore the combination is a laudatory description of the goods in question and it will be immediately understood as such by the relevant consumer.

4. The same mark ‘TURBO ULTRA’ was registered by the Office in 2003.

As regards the applicant’s argument that a similar registration has 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).

It is clear from the arguments above and in the attached letter that the mark ‘TURBO ULTRA’ will be perceived by the relevant consumer, immediately and without further reflection, as a non-distinctive laudatory expression referring to the goods in question. It will not be given any trade mark significance and cannot serve to distinguish goods to which an objection has been raised.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 17 637 216 is hereby rejected.

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 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.

Lynn BURTCHAELL