Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 07/06/2019

URQUHART-DYKES & LORD LLP

Arena Point Merrion Way

Leeds Leeds LS2 8PA

REINO UNIDO

Application No:	018017100
Your reference:	T813190EM/SXK
Trade mark:	Chargeturbo
Mark type:	Word mark
Applicant:	Realme Chongqing Mobile Telecommunications Corp., Ltd. No.2 Building, No.24 Nichang Boulevard, Huixing Block, Yubei District Chongqing REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 04/02/2019 pursuant to Article 7(1)(b), (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. Attach L110.

With the above notice the applicant was given opportunity to submit observations in reply.

The applicant submitted its observations on 03/04/2019, which may be summarised as follows.

1. Due to the fact that the words are not in usual order and there is no hyphen between two words, the application is sufficient enough to be distinguished from the wording “turbo-charge” which might have a descriptive meaning for some mechanical goods. In this regard, a noticeable and remarkable impression which creates the necessary level of distinctiveness to function as a trademark arises from unusual and unexpected nature of the word combination “chargeturbo”, also means that word combination is not descriptive.

2. In many dictionary definitions as well as “Merriam-Webster online dictionary”, the word “turbo” has a meaning as “driving of a turbine or in connection with an engine”. Therefore, it is unusual to use the wording “charge turbo” in connection with goods in Class 9 in question.

3. The Office must explain how the meaning of “Turbo-charge” is understood in relation to items such as cell phone straps, smart glasses, interactive touch screen terminals etc., or otherwise review the list again and remove the objection from the necessary items refused under the first examination report.

4. The Office mentions Article 7(2) in the objection letter, indicating that the refusal may pertain in only part of the EU. In the event that any part of the objection is maintained after reconsideration, the Office is asked to specify the individual jurisdictions in respect of which the objection is maintained.

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.

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 marks referred to in Article 7(1)(b) are, in particular, those which 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).

Article 7(1)(b) EUTMR is intended to preclude registration of trade marks which are devoid of distinctive character which alone renders them capable of fulfilling that essential function (16/09/2004, C-329/02 P, ‘SAT.2’, EU:C:2004:532). The finding that a sign is devoid of distinctiveness within the meaning of Article 7(1)(b) EUTMR is not conditioned by a finding that the term concerned is commonly used (12/02/2004, C-265/00, ‘Biomild’ EU:C:2004:87).

The absolute grounds for refusal of a lack of distinctive character and the characteristics of descriptive and usual indications each have their own scope of application and are neither mutually dependent nor mutually exclusive. Even though the existence of just one ground for refusal is enough, they can also be examined cumulatively. Interpreting the case-law by the Courts, it can be concluded that the sign must be refused registration under Article 7(1)(b) EUTMR if, on the basis of its most obvious meaning in relation to the goods or services in question, it is devoid of distinctive character.

Article 7(2) EUTMR states that paragraph 7(1) shall apply notwithstanding that the grounds of preventing registration obtain in only part of the European Union.

With regard to the applicant’s arguments:

1. 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).

In the present case, the relevant consumer would immediately perceive the trademark “Chargeturbo” as the combination of the “charge” and “turbo” even if they are in the reversed order. Accordingly, it is not enough to reverse a descriptive combination of words or remove the hyphen between two words in order to create a different impression and distinguishe it from the descriptive combination since the meaning is immediately understood by the relevant public when applied to goods in question. With the reversed order and conjoining, the relevant consumers would perceive the application “chargeturbo” with the meaning as “store or transfer electricity quickly or extra powerful like turbo-charger.

In view of its meaning, the Office finds that the expression ‘Chargeturbo’ does not have the capacity to function as a trade mark with regard to the contested goods. Although the grammatical structure is different in that the word order is reversed, all these goods can be connected with ‘turbo charged’, in terms of their nature, intended purpose and/or intended purpose.

In this regard, it is true that English rules for word compositions usually require that the adjective precede the noun so that the correct expression ought to be ‘turbocharge’. However, the fact that the order of the words has been inverted does not make the sign distinctive, in the Office’s opinion; the public will instinctively identify the two words in the mark and put them mentally back into the correct sequence that produces the meaning of ‘turbo charge(r)’.

2. A sign might be descriptive and non-distinctive if at least one of its possible meanings designates characteristics of goods or services in concerned. The word “turbo” might have several meanings in different dictionaries but it also provides a meaning which is “equip (an engine or vehicle) with a turbocharger; maker more powerful, fast or exciting”.

3. With “storing or transferring electricity quickly or extra powerful” meaning of the sign, it describes the nature and intended purpose of the goods in question. Therefore, the goods in question, e.g. cell phone straps, smart glasses, interactive touch screen terminals etc. might be charged with a “turbo-charger”.

4. By virtue of Article 7(2) EUTMR, the grounds of non-registrability set out in Article 7(1) EUTMR do not have to exist throughout the EU; it is sufficient if they ‘obtain in only part of the Community’.

In the present case, since the sign for which protection is sought consists of English verbal elements ‘charge’ and ‘turbo’ the relevant public with reference to which the absolute ground for refusal must be examined is the English-speaking public, which includes the public in the Member States in which English is the official language, i.e. Ireland, Malta and the United Kingdom (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

It derives from all the foregoing that the applicant has not succeeded in convincing the Office that the denomination ‘Chargeturbo’ will be perceived by the consumers as pointing to the commercial origin of the goods at issue.

From the above considerations and for the reasons set out above, and in the previous notification, the sign ‘Chargeturbo’ does not possess any actual distinctive character for the contested goods in Class 9, pursuant to Article 7(1)(b) and (c) EUTMR in combination with Article 7(2) EUTMR, and is therefore unable to function as a trade mark in the market place, i.e. it fails to distinguish these goods from those of other undertakings. The relevant public cannot, in the absence of prior knowledge, perceive it any other way than described above.

The absolute grounds for refusal under Article 7(1)(b) and (c) precludes the registration of the sign ‘Chargeturbo’ as a trade mark at least in the English-speaking territories of the European Union (Article 7(2) EUTMR), i.e. the public in the United Kingdom, Ireland and Malta.

For the abovementioned reasons, and pursuant to Article 7(1)(b), (c) and Article 7(2) EUTMR, the application for EUTM No 018 017 100 is hereby rejected for the following goods:

Class 9 Connectors [electricity]; Electric plugs; Electrical adapters; Tablet computers; Computer peripheral devices; computer programs, downloadable; Downloadable software applications for mobile phones; Smartwatches; Smartglasses; Interactive touch screen terminals; Humanoid robots with artificial intelligence; Biometric scanners; Facsimile machines; Navigational instruments; Wearable activity trackers; Smartphones; Covers for smartphones; Cell phone straps; Portable media players; Headphones; Teaching apparatus; Camcorders; Virtual reality headsets; Security surveillance robots; Cameras [photography]; Selfie sticks [hand-held monopods]; USB cables; Chips [integrated circuits]; Batteries, electric; Chargers for electric batteries; Power banks; Biochips.

The application may proceed for the following remaining goods:

Class 9 Keyboards for smartphones; Cabinets for loudspeakers; Touch screens; Measuring apparatus.

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.

Emre GULLU