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Unprotectable? Not if the words are merged

26 May 2015

The Patent Office examined the appeal on the official action of the examiner who refused registration of a trade mark in application number 2012728603 with priority of August 17 2012 with regard to goods in class 9 and services in class 35.


The examiner explained its decision by the fact that the claimed designation consists of non-protectable elements which point to the kind (battery) and quality (real) of the claimed goods and services associated therewith because it is formed of two joined words. The examiner also explained that the documents on file do not include information showing that it possesses distinctiveness.

The Patent Office, while considering the appeal, pointed out that judging from the meaning of the constituent words which make up the designation Realbattery it may be inferred that the designation as a whole may be regarded as a coined word because the consumer perceives it as a figure of speech (good battery, reliable battery, etc). The Patent Office has no information to the effect that the word element "Real" is a set technical term for batteries or their parts used by various manufacturers to describe the properties of their products. With regard to these arguments the claimed designation cannot be categorised among the designations directly pointing to the characteristics of the goods and associate services.

Besides, batteries thus labelled are already present on the market. For example, the website of the applicant contains information on the products made by the applicant. It says: "The battery under designation 'Realbattery' was developed to order for the trading house 'Start' at a manufacturing facility having modern equipment and laboratory testing facilities."

Hence, the Patent Office concluded that the designation Realbattery is able to perform its main function of a trade mark – to designate the goods and services in classes 9 and 35. As a result, the Patent Office cancelled the decision of the examiner and registered the trade mark. The Patent Office also pointed out that registration of the claimed designation in the name of the applicant would not affect the rights or interests of other companies making similar equipment and rendering similar services.

The decision of the Patent Office may provide a clue to inventing other designations according to the same technique however caution should be exercised to avoid the possible interpretation of a word as describing the properties of the product.