Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 11/11/2019

MITSCHERLICH, PATENT- UND RECHTSANWÄLTE, PARTMBB

Sonnenstraße 33

80331 München

ALEMANIA

Application No:	018092220
Your reference:	M37142/EU
Trade mark:	ezDispenser
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 07/08/2019 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 30/08/2019, which may be summarised as follows.

1. The relevant consumer will not dissect the sign in two.

2. The word ‘ez’ will not be perceived as an abbreviation for ‘easy’. The word ‘easy’ does not contain ‘z’ and the letters ‘ez’ are spelt as i:zed and not i:zi.

3. The reference to ‘ez’ comes from the Acronym Finder, which lacks certainty because its content may be edited at any time by any visitor, it does not contain the date when the information was gathered, it is an US-American website with no reference to the European Union and it contains no indication in which context the abbreviation can be used.

4. The Office did not prove that the goods really incorporate any dispenser (e.g. food processors dispensing batter straight into the pan). Neither did the Office demonstrate how significant, from the perception of the relevant public, the impact on the essential characteristics of the goods for which protection is sought the dispenser may have. The goods in question can incorporate all kinds of parts. The Office’s reasoning as regards some goods, for example robots (machines), apparatus or installations for cooking is vague and illustrates that the sign cannot be immediately understood without further mental effort.

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).

As regards trade marks composed of more than one word, such as the sign applied for, descriptiveness must be determined not only in relation to each word taken separately but also in relation to the whole that they form (12/02/2004, C‑265/00, Biomild, EU:C:2004:87).

As a general rule, a mere combination of descriptive elements remains descriptive unless, because of the unusual nature of the combination, the word creates an overall impression that is sufficiently far removed from that produced by the combination of meanings of the elements of which it is composed, with the result that the word is more than the sum of its parts (12/02/2004, C‑265/00, Biomild, EU:C:2004:87).

It 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, 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 those signs and indications could be used for such purposes (19/05/2010, T‑108/09, Memory, EU:T:2010:213, § 35).

A word mark that is descriptive of characteristics of the goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) EUTMR.

Article 7(1)(b) EUTMR is intended to preclude registration of trade marks that are devoid of distinctive character that alone renders them capable of guaranteeing the identity of the origin of the marked product to the consumer or end user (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 conditional on a finding that the wording concerned is commonly used (12/02/2004, C‑265/00, Biomild, EU:C:2004:87).

Article 7(2) EUTMR states that Article 7(1) EUTMR applies notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

The Office responds to the applicant’s observations as follows.

1. Since the trade mark at issue is made up of two components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, 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).

Moreover, the fact that the word ‘Dispenser’ starts with an upper-case letter makes it perfectly clear that the sign is composed of two words, ‘ez’ and ‘Dispenser’. The word ‘ez’ qualifies the word ‘Dispenser’.

The Office maintains that the sign ‘ezDispenser’ will be understood by the relevant English-speaking consumer as ‘easy dispenser’, a dispenser that is easy to use.

2. The term ‘EZ’ is widely used on the internet as abbreviation for ‘easy’ and anyone familiar with the English language will immediately understand its meaning.

The Office draws attention to the Boards of Appeal decision (28/03/2011, R 1759/2010‑2, EZ CLEAN, § 16):

… The abbreviation ‘Ez’ is a commonly used short form to indicate ‘easy’. The letter ‘Z’ is pronounced as ‘ZED’ in the United Kingdom and as ‘ZEE’ in American English. Thus, the term ‘EZ’ is, in the United States, the phonetic equivalent of the word ‘easy’ (‘E-ZEE’) and has found its way, via text messaging, e-mails and advertisements into the language as an informal shortened form of ‘easy’. It is universally understood as such in North America and the United Kingdom (see decision of 31 August 2009, R 1490/2008‑4, ‘EzEntry’, paras. 13 to 14).

3. In relation to the disputed authority of the Acronym Finder, the General Court nuanced its position in more recent case-law and deemed that the reliability of the information taken from online sources such as the Acronym Finder cannot be called into question by the mere fact that users have the possibility of adding new entries (13/07/2017, T‑650/16, QD, EU:T:2017:489, § 22).

A simple search on the internet shows numerous examples of the use of the term ‘EZ’ in different fields. In many cases the term is incorporated into what appears to be a trade mark, though whether these trade marks are registered is unclear and unverified. In any event, the term ‘EZ’ is being used descriptively to indicate the word ‘easy’ (31/08/2009, R 1490/2008‑4, EzEntry, § 18).

3. As regards the applicant’s argument that the Office did not provide evidence that the goods against which an objection has been raised, really incorporate a dispenser, the Court has confirmed that:

where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods… In such a case, the Board of Appeal is not obliged to give examples of such practical experience.

(15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19).

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

Furthermore, in relation to the applicant’s view concerning ‘unproven allegation that food processors could have a dispenser which dispenses batter straight into the pan’, the market reality shows that such products do exist.

Information extracted on 11/11/2019 at https://www.amazon.co.uk/Electric-Battery-Powered-Dispenser-Measuring/dp/B07PGGQQZ8/ref=sr_1_3?keywords=electric+batter+dispenser&qid=1572365661&sr=8-3

In relation to robots (machines), the Office’s reasoning has been broad because the term ‘robots (machines)’ is also broad and encompasses different kinds of robots. However, a sign is always perceived together with the goods to which it is applied. Therefore, the sign ‘ezDispenser’ applied to, for example, an industrial robot immediately informs consumers that this robot will have a dispensing function that is easy to use. The following internet search demonstrates the existence of dispensing robots on the market:

Information extracted on 11/11/2019 at http://www.techconsystems.com/en/dispensing-robots/

As regards the apparatus or installations for cooking, this term also encompasses different cooking appliances and therefore the Office explained the relationship in broader terms. Nevertheless, as mentioned above, the sign ‘ezDispenser’ will be applied to concrete goods and will be perceived by the relevant public in relation to those goods.

An example of a cooking appliance is an instant hot water dispenser (see https://en.wikipedia.org/wiki/List_of_cooking_appliances ). In relation to this good, the sign has a clear descriptive meaning.

As for the rest of the goods, it is clear from the market reality that dispensers form an integral part of these goods (for example, a washing machine always contains a detergent dispenser), or they can be an option for these goods (for example, a refrigerator with an ice and water dispenser).

The Office holds that the dispenser may have a significant impact on these goods. For example, in the field of washing machines, there are producers who strive to improve the traditional way of dispensing the laundry detergent by saving time and gaining on precision. The following internet search demonstrates this:

Information extracted on 11/11/2019 at https://www.home-tech.com/8350/washing-machine-laundry-detergent-dispensing/

Easy dispense is a function that ensures precision and saves time and may have a significant impact on the efficiency of the goods for which protection is sought.

Moreover, it should be noted that

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially.

(12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

In addition,

It is not necessary to prove that the word sign applied for is currently being used as a descriptive indication. Instead, it is enough if this can reasonably be expected in the future. As a result of the directly descriptive meaning of the word sign applied for, it can be assumed that even if it is not currently used as a descriptive indication, it will at least be used in the future (22/09/2011, R 340/2011‑1, ecoDoor, § 23).

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 18 092 220 is hereby rejected for the following goods:

Class 7 Electric clothes washing machines; automatic dishwashers; electric clothes management machines for deodorizing, ironing and sterilizing clothes for household purpose; robots (machines); electric mixers for household purposes; electric food processors; steam cleaners for household purposes; housekeeping robots for household purpose; robots for personal use, namely, robots for cleaning.

Class 11 Humidifiers; electric dehumidifier for household use; water purifiers for household purposes; water ionizers for household purposes; membrane apparatus in the nature of filters for purifying water; air purifiers; apparatus or installations for cooking; electric refrigerators; electric clothes dryers; electric clothes management machines for drying clothes for household purpose; electric clothing management machines having the functions of deodorizing, sterilizing and steaming garments for household purposes; electric clothes drying machines with sterilization, deodorization and crease-resistant treatment functions for household purposes.

The application may proceed for the remaining goods:

Class 7 Electric vacuum cleaners; hoses for electric vacuum cleaners; bags for electric vacuum cleaners; stick type vacuum cleaners; electric rotary blowers; compressed air pumps; electric rotary compressors; compressors for refrigerators; spin driers (not heated); robotic vacuum cleaners; hand-held vacuum cleaners; electric vacuum cleaners for bedding.

Class 11 Air conditioners; hot air apparatus, namely, hot-air space heating apparatus; electric ranges; solar thermal collectors (heating); ventilation (air-conditioning) apparatus for heating; light emitting diode lightings; gas ranges; electric kitchen ovens; ventilation hoods; ventilation hoods for ovens.

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.

Stanislava MIKULOVA