Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 15/12/2016

KILBURN & STRODE LLP

20 Red Lion Street

London WC1R 4PJ

REINO UNIDO

Application No:	015828908
Your reference:	T107024EM/CAL/pac
Trade mark:	POWER INVERTER
Mark type:	Figurative mark
Applicant:	MITSUBISHI DENKI KABUSHIKI KAISHA also trading as Mitsubishi Electric Corporation 7-3 Marunouchi 2-chome Chiyoda-ku, Tokyo JAPÓN

The Office raised an objection on 06/10/2016 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.

The applicant submitted its observations on 06/12/2016, which may be summarised as follows:

1. The examiner has failed to take into account the first part of the specification, namely “air conditioning apparatus”.

2. The verbal elements “POWER INVERTER” do not have any immediately informative meaning relating to air conditioning apparatus.

3. The definition of the verbal elements ‘POWER’ and ‘INVERTER’ are not indicative of the core characteristics of an air conditioner.

4. The visual elements have not been taken into account in the assessment of the mark.

5. The stylisation and the fact that the verbal elements are not descriptive of the goods in question renders the mark as a whole distinctive under Article 7(1)(b) EUTMR.

Pursuant to Article 75 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 applicant’s observations

1. The examiner has failed to take into account the first part of the specification, namely “air conditioning apparatus”.

The Office disagrees with this argument and asserts that the specification in its entirety was taken into consideration when assessing the mark. As a whole it was concluded that the words ‘POWER INVERTER’ would be descriptive of characteristics of both the apparatus and the parts and fittings related thereto.

2. The verbal elements “POWER INVERTER” do not have any immediately informative meaning relating to air conditioning apparatus.

The Office asserts that the verbal elements would clearly be perceived as describing the goods applied for, being air conditioners that function using power inverters and parts and fittings for these goods. The following pages from the internet illustrate that this is a known term:

(sourced on 15/12/2016 at http://www.oksolar.com/technical/running_air-conditioners_on_inverters.htm )

(sourced on 15/12/2016 at http://powerinverter.blogspot.com.es/2005/06/power-inverters-and-air-conditioners.html )

(sourced on 15/12/2016 at http://www.inverter.co/ppower-inverter-in-air-conditioner-436714.html ).

Therefore, the verbal elements in the mark convey direct and unambiguous information and would be seen by the consumer as describing characteristics of the goods, rather than signifying a particular brand or badge of single trade origin.

3. The definition of the verbal elements ‘POWER’ and ‘INVERTER’ are not indicative of the core characteristics of an air conditioner.

The Office asserts that it is the combination of these two words which form the descriptive term relating to the goods, as evidenced in the internet pages shown above.

4. The visual elements have not been taken into account in the assessment of the mark.

The Office asserts that the visual presentation has been taken into account in its assessment of the mark. However, the overall impact of the visual aspects is considered insufficient to offset the descriptive nature of the verbal elements and imbue the mark with sufficient distinctiveness.

The visual element consisting of two arrows arranged in a circle suggests a continuous flow of something, be it air or power. When combined with the verbal element ‘POWER INVERTER’ the presentation a whole reinforces the message about the kind of goods and how they function, rather than signifying a particular brand or single undertaking. Therefore the mark in totality does not create an impression which is more than the sum of its parts.

5. The stylisation and the fact that the verbal elements are not descriptive of the goods in question renders the mark as a whole distinctive under Article 7(1)(b) EUTMR.

In view of the aforesaid, the mark is considered descriptive for the goods applied for. Therefore the Office contends that it must also fail under Article 7(1)(b) as being non-distinctive for the goods also. As stated in the initial letter, 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.

Although the mark applied for contains certain figurative elements that confer upon it a degree of stylisation, these elements are so minimal in nature that they do not endow the trade mark applied for as a whole with any distinctive character. Those elements do not possess any feature, as regards the way in which they are combined, that allows the mark to fulfil its essential function in relation to the goods and services covered by the trade mark application (15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 74).

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 No 015828908 is hereby rejected.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 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