Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 07/12/2018

Meister Rechtsanwälte Partnerschaftsgesellschaft mbB

Unterer Anger 3

D-80331 München

ALEMANIA

Application No:	017932102
Your reference:	K23/2018
Trade mark:	KUKA
Mark type:	Word mark
Applicant:	KUKA Aktiengesellschaft Zugspitzstr. 140 D-86165 Augsburg ALEMANIA

The Office raised an objection on 10/08/2018 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, which forms an integral part of this decision.

The applicant submitted its observations on 10/10/2018, which may be summarised as follows:

It is correct, that,,küka" means cake, pastry or gateau in the Latvian language. Nevertheless, on the hypothetical assumption that the KUKA Trademark would be considered identical to the Latvian ,,küka" - which is not the case - there is no clear descriptive character of the KUKA Trademark with regard to the relevant goods. ln particular, there is no sufficiently direct and concrete indication which leads to a direct descriptive character without further reflection.

This is in particular true to the extent the Office refers to goods which, by their exact wording, do not correspond to ,,cake, pastry or gateau", for example, with respect to ,,bread baking machines" or ,,cooking utensils". ,,Bread" is not identical with ,,Cake"; "Cooking" is not identical with ,,Baking"; ,,baking" is somewhat closer to ,,cake", but there are many other products which are the results of baking like meatloafs, clay jugs etc. A ,,bread baking machine", for example, is intended precisely to bake ,,bread" and in no relationship to cake, whatsoever. Supposing that the meaning of the KUKA Trademark in Latvian would be ,,cake, pastry or gateau", it would not describe any of the characteristics of the goods, especially not the intended purpose of the goods.

The Office itself acknowledges that ,,KUKA" is a misspelling of the Latvian ,,küka". Particularly in languages such as Latvian, emphasis and accentuation are decisive. An emphasis will completely change the pronunciation and perception of a letter or even a whole term. This is the situation in the present case. The ,,ü" in the word ,,küka" effects the emphasis of the first syllable and therefore a long pronunciation of the ,,r.r". There is no term in the Latvian language, which reads ,,kuka" without the emphasis above the ,,u" and without emphasis on the ,,u". ,,Kuka" therefore has no meaning for the relevant public in Latvia at all and is therefore not descriptive with regard to the goods in question.

Since the mark does not have a clearly descriptive meaning, it can therefore not be inferred that the mark is devoid of any distinctive character. ,,Kuka" (without the emphasis above the ,,u") has no meaning in the Latvian language at all, which demonstrates the distinctive character of the KUKA Trademark.

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.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection for all the originally objected goods but bread baking machines as indeed these are machines meant to be used for baking bread and not cakes. For the rest of the goods the Office still believes, for the reasons set out below, that the sign lacks distinctiveness due to its descriptive character.

In general, 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).

As regards the applicant’s argument that the sign would , because of the misspelling, not be understood by the Latvian speaking consumer as meaning ‘cake’, the Office wished to state the following:

The Office disagrees with the claim that the emphasis/ accentuation on letter ‘u’ will completely change the perception of the term, especially in relation to the goods and services at hand, which all may be used in the course of preparation of a cake. It may be that the pronunciation of the expression changes due to the missing accentuation. However, the Office practice is that misspellings endow the sign with a sufficient degree of distinctive character when they are either striking, surprising, unusual, arbitrary and/or they are capable of changing the meaning of the word element or require some mental effort from the consumer in order to make an immediate and direct link with the term that they supposedly refer to.

In the present case, the misspelling of the expression is neither striking nor it is capable of changing the perception of the sign in relation to the objected goods.

As regards the missing link between the sign and the goods, and in particular as for the argument of the applicant that "Cooking" is not identical with ,,Baking"; ,,baking" is somewhat closer to ,,cake", but there are many other products which are the results of baking like meatloafs, clay jugs etc:

The goods concerned in class 7 are mixing machines and food processors which can very well be used in cake preparation, in particular when kneading the though. Similarly, all the utensils and apparatus in classes 11 and 21 (except for bread baking machines) are suitable for cake making. This is the case despite the fact that some of them are classified as cooking utensils or as cooking utensils/apparatus. On top of it, many of the cooking utensils are of universal use and can perfectly be used in baking, such as graters or griddles, pots or pins. Hence, the Office maintains that the link between the sign and the goods and services is sufficiently clear and does not require any mental effort by the consumer to understand the purpose of the goods in question, namely that they are suitable/used for making cakes.

Given that the mark has a clear descriptive meaning in relation to the goods applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

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 is hereby rejected in part, namely for the following goods:

Class 7 Mixing machines; food processors, electric.

Class 11 Cooking utensils, electric; microwave ovens [cooking apparatus]; microwave ovens for industrial purposes; cooking apparatus and installations; kitchen ranges [ovens]; ovens.

Class 21 Kitchen utensils; cooking utensils, non-electric; porcelain enamel plastic utensils, including basins, bowls, plates, pots and cups; ceramics for household purposes.

The application will proceed accordingly for the following goods:

Class 7 Washing machines [laundry]; spin driers [not heated]; wringing machines for laundry; dry washer; dishwashers; kitchen machines, electric; fruit and vegetable juice extractor; fruit presses, electric, for household purposes; household bean juice maker; juice grinder for food industrial purposes; compressors [machines]; compressed air machines; vacuum cleaners; garbage disposals; electric food grinders.

Class 9 Flashing lights [luminous signals]; electronic notice boards; traffic-light apparatus [signalling devices]; neon lights; optical lamp boxes; materials for electricity mains [wires, cables]; coils, electric; rheostats; fuse wire; converters, electric; switches, electric; plugs, sockets and other contacts [electric connections]; connections, electric; time switches, automatic; light dimmers [regulators], electric; transducer; battery chargers; power converter; remote controller for household purposes.

Class 11 Air conditioners; central air conditioners; refrigerators; freezers; refrigerating cabinets; heating display cabinets; refrigerating display cabinets; ice machines and apparatus; drinking water dispensers; water purifying apparatus and machines; air purifying apparatus and machines; dehumidifiers; humidifiers; electric fans; ceiling fans; ventilators; thermantidotes; electric hair drier; electric kettles; rice cookers; induction cookers (hobs); commercial induction cookers; pressure cookers [autoclaves], electric; autoclaves [electric pressure cookers]; bread baking machines; roasting apparatus; electric coffee kettles; electric steamer; electric saucepan; gas stoves; gas furnaces; fireplace; hot plate; extractor hoods for kitchen; exhaust fans for kitchen; tableware disinfection cabinets; sterilized cupboard; electric deep fryer; electric coffee machines; electric iron pans; solar cookers; rotisseries; disinfectant apparatus; water filtering apparatus; water heater for shower; bathroom warmer; showers; heating equipments; gas water heaters; electric water heaters; natural gas water heaters; solar water heaters; air source heat pump water heater; faucets for pipes; fountains; heating installations; parts of sanitary installations, namely, pipes; radiators [heating]; electric heaters; warmers; bed-warmers; electric laundry dryers; fabric steamers; lighting apparatus and installations; electric lamps; street lamps; stage lamps' and lanterns; projector lamps; automobile lamps; ceiling lights; pendant lamps; table lights; floor lamps; wall lamps; kitchen lamps; overhead light; chandeliers; safety lamps; searchlights; fluorescent tubes; floodlight; light-emitting diodes [LED] lighting apparatus.

Class 21 Stew-pans; frying pans; pot lids; cooking pots; non-electric slow cookers; pans of iron, non-electric; autoclaves [pressure cookers], non-electric; cups of paper or plastic; tea sets; liqueur sets; coffee grinders, hand-operated; coffeepots, non-electric; clearing utensils; containers for household or kitchen use; heatinsulated containers; toothbrushes, electric.

Under Article 67 EUTMR, you have a right to appeal against this decision. In accordance with 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 for 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.

Robert MULAC