Refusal of application for a European Union trade mark

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

Alicante, 09/02/2017

MITSCHERLICH, PATENT- UND RECHTSANWÄLTE, PARTMBB

Sonnenstraße 33

D-80331 München

ALEMANIA

Application No:	016125321
Your reference:	M36014/EU
Trade mark:	Duo Tub
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 13/12/2016 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 06/02/2017, which may be summarised as follows:

1. The concept of a “Duo Tub” is a very vague one in relation to the contested goods. It is unclear which specific characteristics are allegedly described by the sign. It is a suggestive term that requires imagination, thought or perception for the relevant consumer to reach the conclusion of the exact nature of the goods at issue.

2. The term “Duo Tub” us a coin term that cannot be artificially dissected. The term is not listed in any dictionary and is a fanciful term.

3. The term “Duo Tub” is not purely descriptive with respect to the relevant goods.

4. There are a number of marks registered at the Office consisting of or containing the element “Duo”, a list of which is provided.

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 observations of the applicant

1. The concept of a “Duo Tub” is a very vague one in relation to the contested goods. It is unclear which specific characteristics are allegedly described by the sign. It is a suggestive term that requires imagination, thought or perception for the relevant consumer to reach the conclusion of the exact nature of the goods at issue.

The Office asserts that the combination of the words relates a clear and unambiguous message to the consumer about a characteristic of the goods in question, that these goods contain a pair of tubs or containers in their design or function. The message would be easily understood by the consumer without much intellectual effort.

2. The term “Duo Tub” us a coin term that cannot be artificially dissected. The term is not listed in any dictionary and is a fanciful term.

For a trade mark to be refused registration under Article 7(1)(c) EUTMR,

it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of 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 such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32).

For a trade mark that consists of a neologism or a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) EUTMR, ‘it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so’ (12/01/2005, T 367/02 - T 369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 31).

The Office has considered the term ‘Duo Tub’ in totality and not dissected the phrase into its individual words. It is the totality of this phrase that is found to be descriptive and therefore objectionable under Article 7(1)(c) EUTMR.

3. The term “Duo Tub” is not purely descriptive with respect to the relevant goods.

The Office asserts that the term would be seen as describing a characteristic of the goods, that being goods which feature a pair of containers in their design or function, rather than indicating a particular brand or badge of trade origin.

4. There are a number of marks registered at the Office consisting of or containing the element “Duo”, a list of which is provided.

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).

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 016125321 is hereby rejected for the following goods:

Class 07 Electric clothes washing machines; Automatic dishwashers; Spin driers [not heated].

Class 11 Electric clothes dryers; Electric clothes drying machines with sterilization, deodorization and crease-resistant treatment functions for household purposes.

The application may proceed for the remaining goods.

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