Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 28/03/2019

MITSCHERLICH, PATENT- UND RECHTSANWÄLTE, PARTMBB

Sonnenstraße 33

D-80331 München

ALEMANIA

Application No:	017952708
Your reference:	M32595/EU
Trade mark:	TurboCook
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 20/12/2018 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.

The applicant submitted its observations on 20/02/2019, which may be summarised as follows.

1. The alleged concept of “TurboCook” is a very vague one and at most indirectly suggests certain characteristics of the objected goods.

2. The Office assumes that the term “Turbo” would be seen as a general notion of speediness and rapidity.

3. The term “TurboCook” is a coined term that should not be artificially dissected into the elements “Turbo” and “Cook”. The term is fanciful and not listed in any dictionary.

4. A number of EUTM registrations exist containing the element “Turbo”.

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.

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 alleged concept of “TurboCook” is a very vague one and at most indirectly suggests certain characteristics of the objected goods.

2. The Office assumes that the term “Turbo” would be seen as a general notion of speediness and rapidity.

The objection raised against the sign “TurboCook” is for specific goods in Class 11, namely:

Gas ranges for household use; Electric kitchen ovens for household use; Apparatus or installations for cooking for household use.

It cannot be denied that the goods identified for objection are for the purposes of cooking.

The applicant is correct in stating that the strict definition of the word “Turbo” is the shortened form of the noun “turbocharger”. The Office asserts, however, that the term “Turbo” has moved beyond the strict dictionary definition to become an adjective synonymous with the concept of something done with extra energy or force to achieve rapid results. For example, the term is used to describe a desirable outcome when combined with other such words as “cook” or “freeze”:

(sourced from https://products.geappliances.com/appliance/gea-support-search-content?contentId=37412 on 28/03/2019)

(sourced from https://www.midlandappliance.com/en/catalog/product/507331-GE-FUF14SMRWW on 28/03/2019 )

(sourced from https://www.leaf.tv/articles/turbo-oven-instructions/ on 28/03/2019)

(sourced from https://www.amazon.com/TO-2000-Turbo-Convection-Oven-12Qt/dp/B000I5JNY6 on 28/03/2019).

On the basis of the foregoing, it will be clearly obvious to the consumer as to the nature of the goods in question when confronted by the mark, namely that they facilitate rapid cooking results. Therefore, notwithstanding the applicant’s arguments to the contrary, the Office asserts that the notion of “TurboCook” is more than simply vague or suggestive.

3. The term “TurboCook” is a coined term that should not be artificially dissected into the elements “Turbo” and “Cook”. The term is fanciful and not listed in any dictionary.

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).

For a trade mark to be refused registration under Article 7(1)(c) EUTMR,

it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32).

The Office asserts that examination of the sign “TurboCook” did not artificially dissect the mark into its constituent parts but as the whole impression conveyed by the sign. The fact that it may be a coined term and not listed in dictionaries does not detract from the descriptive message which would be clearly understood by the consumer.

4. A number of EUTM registrations exist containing the element “Turbo”.

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) and Article 7(2) EUTMR, the application for European Union trade mark No 017952708 is hereby rejected for the following goods:

Class 11 Gas ranges for household use; Electric kitchen ovens for household use; Apparatus or installations for cooking for household use.

The application may proceed for the remaining goods.

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.

Lance EGGLETON