Refusal of application for a European Union trade mark

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

Alicante, 15/06/2017

MITSCHERLICH, PATENT- UND RECHTSANWÄLTE, PARTMBB

Sonnenstraße 33

D-80331 München

ALEMANIA

Application No:	016125411
Your reference:	M36021/EU
Trade mark:	Premier Wash
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 21/12/2016 pursuant to Article 7(1)(b) and (c) and 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 17/02/2016, which may be summarised as follows:

1. The concept of ‘Premier Wash’ is very vague. The applied sign is at the utmost indirectly suggestive. Therefore the term is not descriptive.

2. The term ‘Premier Wash’ is also not listed in any dictionary.

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.

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 (judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 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.

(See judgment of 23/10/2003, C‑191/01 P, ‘Doublemint’, paragraph 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’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

Since the trade mark at issue is made up of several 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 (judgment of 19/09/2001, T‑118/00, ‘Tablette carrée blanche, tachetée de vert, and vert pâle’, paragraph 59).

As regards the first argument of the applicant, it must be said that to refuse to register a trade mark 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 provisions 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 (see judgment of 23/10/2003, C-191/01 P, 'Doublemint', paragraph 32, emphasis added). Therefore, it is not relevant either the trade mark or its composing elements have more than one possible meaning.

In respect to the argument that the mark is not descriptive, the Office respectfully disagrees. The expression ‘Premier Wash’, as mentioned in the objection letter of 21/12/2016, taken as a whole, immediately informs consumers without further reflection that the goods applied for contain a technical function of best washing or cleaning results.

With regard to the lack of distinctive character the Office is not convinced of the applicant’s argument. First, due to the fact that the applied mark is descriptive it also lacks distinctive character.

Secondly, the sign is not a fanciful combination. As a main rule, the mere combination of several descriptive terms remains essentially descriptive. The only exception is where the unusual nature of the combination of word elements creates an overall impression which is sufficiently far removed from that produced by the mere combination of its constituent elements, thereby making the resulting compound term more than the mere sum of its parts (19/04/2007, C-273/05 P, Celltech, EU:C:2007:224, § 76,78). Furthermore, given that the words ‘premier’ and ‘wash’ are well-known basic words with a clear and distinct concept, combined in accordance with English grammar rules without any graphic or semantic modification, the relevant consumer will immediately and without any mental effort deduce the conceptual content of the combined mark as stated in the letter of 20/12/2016.

As such it is irrelevant how many different meanings the constituent elements of the word components have as well as whether or not the mark as a whole appears in any dictionary (02/05/2012, T-435/11, UniversalPHOLED, EU:T:2012:210, § 31), since a word sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned (25/04/2013, T-145/12, Eco Pro, EU:T:2013:220, § 34). Even when the mark displays minor elements of vagueness in its conceptual content when viewed in isolation, such vague or unclear elements can be minimised or eliminated when consumers are confronted with the mark in the context of the relevant goods.

In the present case, there are no good reasons to assume that the consumer perceive the sign as a badge of origin.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR, the application for European Union trade mark No 016125411 is hereby rejected for the following goods claimed:

Class 7

Electric clothes washing machines; Automatic dishwashers; Electric vacuum cleaners; Electric clothes managing apparatus for household purpose; Hoses for Electric vacuum cleaners; Bags for Electric vacuum cleaners; Stick type vacuum cleaners; Robots; Robotic vacuum cleaners; Steam cleaners for household purposes; Hand-held vacuum cleaners; Electric vacuum cleaners for bedding.

According to Article 59 EUTMR, you have a right to appeal this decision. According to Article 60(1) EUTMR, notice of appeal must be filed in writing with the Office within two months of the date of notification of this decision. 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.

Martin EBERL