Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 15/10/2019

GLP S.R.L.

Viale Europa Unita, 171

I-33100 Udine (UD)

ITALIA

Application No:	018015804
Your reference:	I5-5110
Trade mark:	FlashCharge
Mark type:	Word mark
Applicant:	VIVO MOBILE COMMUNICATION CO., LTD. 283#, BBK Road, Wusha, Chang'An DONGGUAN, Guangdong REPÚBLICA POPULAR DE CHINA

The Office raised a partial objection on 31/01/2019 pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it describes the intended purpose of some the goods for which protection is sought, and it is also devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 20/03/2019, which may be summarised as follows.

1. Some of the goods do not contain batteries, and, therefore, the alleged meaning provided by the Office would not apply to them, namely recorded computer software, downloadable software applications for mobile phones, downloadable computer programs, data cables, USB cables, headphones and cabinets for loudspeakers.

2. In respect to the previously cited items, examination has to be carried out in relation to each of the goods and services for which the registration is sought, and the decision of the competent authority refusing registration must state reasons in respect to each of those goods and services. However, the Office failed to substantiate its claims.

3. FLASHCHARGE does not describe the nature, characteristics, or intended purpose of smartphones, mobile phones, electric batteries, battery chargers, power banks, wireless chargers and wireless charging pads, USB chargers, charging appliances, rechargeable batteries, GPS navigation devices and wearable computers. It would require some interpretation by the relevant public to figure out what kind of products are distinguished by the sign;

After the applicant’s response, the Office decided to provide further clarifications to the issues at hand, issuing a second letter of partial objection on 06/06/2019, addressing the issues raised by the applicant and further detailing the reasoning provided in the first partial objection letter. The applicant was again invited to provide comments for the new arguments provided. The concerned letter is also attached.

As no further arguments were submitted by the applicant, the Office will issue its decision solely on the base of the response already filed.

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 waive the objection for the following goods: cabinets for loudspeakers.

As for the remaining goods, the Office maintains the objection.

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).

The Office will now assess, in order, the arguments from the applicant.

1. Some of the goods do not contain batteries, and, therefore, the alleged meaning provided by the Office would not apply to them, namely recorded computer software, downloadable software applications for mobile phones, downloadable computer programs, data cables, USB cables, headphones and cabinets for loudspeakers.

The Office already stated that it waives the objection in regards to cabinets for loudspeakers However, it cannot accept the concerned argument in regards to recorded computer software, downloadable software applications for mobile phones, downloadable computer programs, data cables, USB cables, headphones.

The applicant seems to suggest that if a device or an article does not have a battery, the use of the word ‘CHARGE’ in correlation to such item would not make any sense to the relevant consumer.

However, as has been provided in the letter of 06/06/2019, it must be stated first that headphones, in particular those with wireless and/or Bluetooth technology, use batteries in order to be able to function properly. A further example is provided by following extract (information extracted on 15/10/2019. from https://www.androidcentral.com/which-wireless-headphones-charge-usb-c):

“Wireless headphones are great, and once you find a pair that works for you, you'll never want to go back to the wired life ever again. The biggest difference with wireless headphones is that they need to be charged every now and then, and to make your life a whole lot easier, you'll want to pick up a pair that charge via USB-C (the same connector that's probably on your phone). Here are all of the best ones we were able to find!”.

Therefore, the argument made by the applicant cannot be applied to headphones, as they contain batteries.

As for the other goods listed, the Office upholds the professed reasoning that consumers will be able to understand that the software and cables associated with sign will question are integral components of the goods that contain batteries that can be rapidly charged.

In the present case, the objectionable goods covered by the mark are aimed at the average consumers. In the light of the nature of the goods in question, the awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect. It is submitted that these consumers will be aware of software applications designed to manage battery consumption and charging. Examples of those applications were provided in both objection letters. It is also submitted that the same consumer will be aware that goods such as smartphones and other battery-fuelled devices are charged by means of cables such as the ones objected, and that the quality of those cables can affect the speed of the charging process. To illustrate this fact, the Office has already provided an example on the letter of 06/06/2019.

Therefore, the Office concludes that the, while such goods do not contains batteries, they are sold and used in connection with batteries and goods that contain them, and are therefore, the sign at issue would be considered a descriptive and meaningful expression in the sense that was argued in both objection letters.

2. In respect to the previously cited items, examination has to be carried out in relation to each of the goods and services for which the registration is sought, and the decision of the competent authority refusing registration must state reasons in respect to each of those goods and services. However, the Office failed to substantiate its claims.

The Office respectfully disagrees with the applicant. It must be stated that the Office practice follows the standard set, for instance, on the judgment delivered by the Court of First Instance (Third Chamber) of 02/04/2009 for the mark ULTIMATE FIGHTING (02/04/2009, T-379/05, Ultimate fighting, EU: T: 2009:99 §22)

It follows that, where registration of a mark is sought in respect of various goods or services, the Board of Appeal must determine specifically that none of the grounds for refusal listed in Article 7(1) of Regulation No 40/94 applies to the mark in question, in relation to each of those goods or services claimed, and may reach different conclusions depending upon the goods or services in question (see, by way of analogy, Case C-363/99 Koninklijke KPN Nederland [2004] ECR I‑1619, paragraphs 33 and 73). Therefore, when refusing registration of a trade mark, the Board of Appeal is required to state in its decision its conclusion for each of the goods and services specified in the application for registration, regardless of the manner in which that application was formulated. However, where the same ground of refusal is given for a category or group of goods or services, the competent authority may limit itself to using general reasoning for all of the goods or services concerned (see, by way of analogy, Case C-239/05 BVBA Management, Training en Consultancy [2007] ECR I-1455, paragraph 38).

The Office holds that the link between all batteries and goods that contains them, the cables that are used to charge those batteries and the software that is used to manage battery consumption and charge falls under the practice abovementioned, and therefore, would not need an item-for-item description of their relation to the mark in question.

3. FLASHCHARGE does not describe the nature, characteristics, or intended purpose of smartphones, mobile phones, electric batteries, battery chargers, power banks, wireless chargers and wireless charging pads, USB chargers, charging appliances, rechargeable batteries, GPS navigation devices and wearable computers. It would require some interpretation by the relevant public to figure out what kind of products are distinguished by the sign.

The Office respectfully disagrees with the concerned argument. Firstly, it must be stated that the sign in question consists of a combination of two words. While its distinctive character must be assessed as a whole, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59). Also, case law states that:

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).

As stated in the objection letter, the combination of the elements “FLASH” and “CHARGE” will be perceived in the mind of the relevant consumer as a characteristic of the goods offered, namely that they would be rapid-charging batteries, devices that contain these batteries or enable batteries to be chargers faster than other available options.

It must be stated that examination of the eligibility for protection of a sign always relates to the goods and services specifically applied for. The consumer ‘is not sitting in a dark, empty room without any idea’, where he has to guess what goods and services are being offered for sale under the sign. Rather, the examination must be carried out on the basis of the goods and services specifically objected to.

The relevant consumer at issue is most likely aware of current technologies applied to everyday goods and, in particular, aware of the existence of rapidly charging batteries, and of goods that contain them, as it is a desired feature for these goods.

Consequently, the Office maintains that the sign “FLASHCHARGE”, when associated with goods such as the ones objected, will consider the sign as a meaningful expression that informs the abovementioned consumer that the items in question are rapid-charging batteries, devices that contain these batteries or enable batteries to be chargers faster than other available options.

It has to be stated that is not necessary that the signs and indications composing the mark that are referred to in Article 7(1)(c) EUTMR actually be in use at the time of the application for registration in a way that is descriptive of the goods or services in respect of 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 (17/09/2008, T-226/07, Pranahaus, EU:T:2008:381, § 36 confirmed in 09/12/2009, C-494/08 P, Pranahaus, EU:C:2009:759, § 52 and the case-law cited therein).

Consequently, the concerning argument is dismissed.

In conclusion, the Office states that, despite the arguments provided by the applicant, it has been found that the sign ‘FLASHCHARGE’ is merely a descriptive expression, one that conveys, in a direct and straightforward manner, its meaning to the relevant consumer: that the goods in question are rapid-charging batteries, devices that contain these batteries or enable batteries to be chargers faster than other available options. Moreover, the combination of the words “FLASH” and “CHARGE” does 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. The resulting expression complies with English grammar rules, and its meaning is readily evident to the relevant consumer. Moreover, simply removing the space that would normally separate the combining words in written language does not necessarily give rise to an invented word that is fanciful or arbitrary. It has virtually no effect on the meaning transmitted by the merged or combined words when displayed in a written message, and no effect at all on the meaning as far as the pronunciation of these words is concerned. The fact that the two words are merged into one would not be perceptible to a listener to a message or advertisement broadcast on the radio, for instance.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for EUTMA No 18 015 804 is hereby rejected for the following goods:

Class 09

Smartphones; Mobile phones; Computer software, recorded; Downloadable software applications for mobile phones; Computer programs, downloadable; Data cables; USB cables; Power adapters; Batteries, electric; Battery chargers; Power banks; Wireless chargers; Wireless charging pads for smartphones; USB chargers; Battery chargers for mobile phones; Charging appliances for rechargeable equipment; Rechargeable batteries; Headphones; GPS navigation device; Wearable computers.

The application will proceed for accordingly for the remaining goods and services, namely:

Class 09	Cabinets for loudspeakers.
Class 37	Electric appliance installation and repair; Installation, maintenance and repair of computer hardware; Office machines and equipment installation, maintenance and repair; Rebuilding machines that have been worn or partially destroyed; Interference suppression in electrical apparatus; Photographic apparatus repair; Clock and watch repair; Telephone installation and repair; Installation of electronic and digital connection to a call centre; Vehicle battery charging; Installation services of mobile phones; Repair and maintenance of mobile phones.
Class 38	Cellular telephone communication; Message sending; Providing internet chatrooms; Providing instant messaging services; Communications by computer terminals; Computer aided transmission of messages and images; Providing online forums; Transmission of digital files; Chatroom services for social networking; Streaming of data; Providing access to databases; Electronic data transmission; Electronic data interchange [EDI] services; Digital network telecommunications services; Providing telecommunications connections to a global computer network

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.

Christiano DOS SANTOS TIMBO