Refusal of application for a European Union trade mark

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

Alicante, 05/04/2017

MITSCHERLICH, PATENT- UND RECHTSANWÄLTE, PARTMBB

Sonnenstraße 33

D-80331 München

ALEMANIA

Application No:	016041402
Your reference:	M35989/EU
Trade mark:	Dual Dry
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 09/12/2016 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 02/02/2017, which may be summarised as follows:

1. With reference to case-law, the applicant argues that the alleged concept of the words ‘Dual Dry’ with respect to the goods in question – and also in general – is very vague and does not clearly describe any of the characteristics of the relevant goods. The English-speaking public could, at most, perceive the mark as indirectly suggestive of certain characteristics of the goods; however, more information would be required for the relevant public to reach a conclusion regarding the exact nature of the goods. Moreover, the sign ‘Dual Dry’ is a coined term that does not appear in dictionaries and cannot be artificially dissected.

2. The applicant refers to various similar accepted European Union trade marks in Classes 7 and 11, such as EUTM No 5 289 574 ‘DUAL’, EUTM No 6 577 415 ‘DualDrive’, EUTM No 11 098 084 ‘DUAL STEEL MONOSTEEL’, EUTM No 14 688 725 ‘DUALCOOL’, etc. Furthermore, there are numerous accepted European Union trade marks in other Classes than Class 7 and 11 that consist of the word ‘DUAL’ or contain this word.

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.

The mark applied for consists of the words ‘Dual Dry’ and definitions of these words were provided in the Notice of grounds for refusal of application for a European Union trade mark. Accordingly, the Office established that the relevant consumer will understand the words as a meaningful expression that means ‘double dry’.

For the purposes of assessing descriptiveness, it must be determined whether the relevant public will make a sufficiently direct and specific association between the expression and the goods/services for which registration is sought (20/07/2004, T‑311/02, LIMO, EU:T:2004:245, § 30).

The Office maintains that, taken as a whole, the words ‘Dual Dry’ immediately inform consumers, without further reflection, that the goods for such as drying equipment, washing equipment, vacuum cleaners (and their parts) with drying function have a mode of double, that is to say twice longer or more intensive than normal, drying process. In respect of other goods, such as humidifiers, the words ‘Dual Dry’ immediately inform consumers that these goods increase humidity where the air is twice dryer than usual. Finally, when applied on the goods, such as dehumidifiers, heating, ventilation and air conditioning apparatus, the words inform consumers that these goods have a ‘double dry’ mode, which helps to remove the extra humidity in the air. Therefore, the mark conveys obvious and direct information regarding the intended purpose and one of the functions/modes of the goods in question.

The sign does not have any unusual or ambiguous character, in the light of English linguistic rules of syntax, grammar, phonetics and/or semantics, that would lead the relevant public, which is, as mentioned above, reasonably well informed and reasonably observant and circumspect, to make an association of a different kind. There are no mental steps required to deduce the meaning of the words ‘Dual Dry’.

Finally, although the sign applied for does not appear in dictionaries, this is not decisive when assessing the eligibility of the sign for registration. As mentioned above, the combination of the words ‘Dual’ and ‘Dry’ cannot be viewed as an unusual or ambiguous combination or as a lexical invention capable of giving the sign applied for a distinctive character (26/01/2006, R 0366/2005-4, PERSONAL PAGES, § 20).

It follows that the link between the words ‘Dual Dry’ and the goods referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR.

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.

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).

However, for the sake of completeness it must be noted that various European Union trade marks referred to by the applicant contain different verbal elements (which are not necessarily devoid of any distinctive character) and/or are applied for different goods and services than those of the case at hand and therefore cannot be compared for the purpose of examination with the mark ‘Dual Dry’.

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 16 041 402 is hereby rejected for the following goods:

Class 7

Electric clothes washing machines; Automatic dishwashers; Electric vacuum cleaners; Clothes management machines for deodorizing, ironing and sterilizing clothes for household purpose; Electric clothes managing apparatus for household purpose; Hoses for Electric vacuum cleaners; Bags for Electric vacuum cleaners; Stick type vacuum cleaners; Robots; Spin driers [not heated]; Robotic vacuum cleaners; Steam cleaners for household purposes; Hand-held vacuum cleaners; Electric vacuum cleaners for bedding.

Class 11

Air conditioners; Hot air apparatus, namely, hot-air space heating apparatus; Humidifiers; Electric dehumidifier for household use; Heating apparatus; Heating, ventilation and air conditioning [HVAC] equipments; Electric clothes dryers; Ventilation [air conditioning] apparatus and installations; 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; Ventilators for automobiles; Ventilation installations and apparatus for automobiles in the nature of air conditioners; Heaters for automobiles.

The application may proceed for the remaining goods, namely:

Class 7

Electric Rotary blowers; Air compressors; Rotary compressors; Compressors for refrigerators; Electric mixers for household purposes; Electric food processors.

Class 11

Electric ranges; Water purifiers for household purposes; Water ionizers for household purposes; Water ionizers; Membrane apparatus in the nature of filters for purifying water; Solar thermal collectors [heating]; Air purifiers; Light Emitting Diode [LED] lighting; Gas ranges; Electric kitchen ovens; Electric cooking utensils; Electric refrigerators; Precision filters for water treating; Water desalination plants; Purification installations for sewage; Purification installations for wastewater reclamation and reusing system; Wastewater purifying and treatment apparatus; Filters for wastewater; Water purifiers for industry; Street lamps; Incandescent lamps; Fluorescent lamps; Automobile lights; Electric wine cellar for household purposes.

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.

Sandra KASPERIŪNAITĖ