CANCELLATION No 34 863 C (INVALIDITY)

Motorola Mobility Germany GmbH, Vorstadt 2, 61440 Oberursel (Taunus), Germany (applicant), represented by Bird & Bird LLP, Carl-Theodor-Str. 6, 40213 Düsseldorf, Germany (professional representative)

a g a i n s t

LG Electronics Inc., 128, Yeoui-daero, Yeongdeungpo-gu, Seoul 150-721, Republic of Corea (EUTM proprietor), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative).

On 31/07/2020, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 12 052 403 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 12 052 403 ‘G7’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 9: Mobile phones.

Class 38: Communications by fiber [fibre] optic networks; remote screen communication; news agencies; cable television broadcasting; audio teleconferencing; network audio and videoconferencing services; providing facilities and equipment for video conferencing; providing telephone conferencing services; video teleconferencing; web audio and video conferencing services; the services covered do not apply to the transport and logistics activities, storage, archiving and car rental.

The applicant invoked Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b) and (c) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The case for the applicant

The applicant argues in both its submissions that the term ‘G7’ lacks distinctive character and is descriptive pursuant to Articles 7(1)(b) and (c) EUTMR.

It first argues that the public will only perceive the sign as a generic term that only indicates the respective generation of the relevant goods and the related services (‘G4’, ‘G5’, ‘G6’, ‘G7’, ‘G8’, ‘G9’ ...). ‘G7’ merely indicates that the goods and services registered are the 7th generation ‘mobile phones’ in Class 9 and the telecommunication services in Class 38 are in relation to this.

As it is common in the mobile phone sector, ‘G7’ is a typical description of a certain model of a mobile phone series, which does not identify the origin, and is only used in connection with a further distinctive element (which does identify the origin) such as ‘LG’, ‘iPhone’, ‘Galaxy’, etc. The applicant submitted screenshots (Annex B&B 4) to demonstrate that a letter in combination with a digit is only perceived as a descriptive indication of the respective model (generation), not as an indication of commercial origin or reference to a specific manufacturer. Clear evidence for this is the EUTM proprietor’s own branding. The EUTM proprietor and the applicant use the numbers after the letter ‘G’ as an indication of the generation. This is a common branding system for mobile phones, which is also used by Apple, one of the key players in the market, which also gives a new number to each new generation of iPhone.

Finally, ‘G7’ is a typical designation that is common in connection with mobile radio standards: the relevant public associates the sign with the ascending designations of the well-known mobile radio standards (‘3G’, ‘4G’, ‘5G’, etc.) or recognises it as the designation of a specific model or generation of a mobile phone series. Currently, ‘5G’ is the latest generation of cellular mobile communications. As technology is always advancing and standards take some time to consolidate, it is only a question of time before ‘6G’ and ‘7G’ and even better wireless connectivity will be available, as shown by a selection of articles (Annex B&B 7).

The EUTM proprietor is already working on its sixth-generation network solution and has opened a ‘6G’ research laboratory, in cooperation with the National Institute of Science and Technology of Korea (KMST), in regard to the core technology of ‘6G’ mobile communications (see Annex B&B 8).

The relevant public, consisting of customers of mobile phones and users of mobile communications, is generally used to those standards as an indication of the quality and speed of mobile data, as well as the practice of using ascending numbers in order to show the particular generation of mobile radio standard. Consequently, the public will not understand the combination of the capital letter ‘G’ with a digit as an indication of origin for one particular undertaking, but as an indication of a particular characteristic of the goods and services protected by the contested mark. The designation ‘G7’ is devoid of any distinctive character.

In support of its observations, the applicant filed the following evidence:

 Annex B&B1: excerpt of the contested trade mark,

 Annex B&B 2: copy of decisions of the Office against EUTM applications No 8 271 272 ‘G3’ (word), No 8 271 462 ‘G4’ (word), No 8 271 678 ‘G5’ (word), No 14 973 069 ‘G5 PAY’ (word) and No 8 954 794 ‘G3’ (word),

 Annex B&B 3: copy of Wikipedia article on ‘LG Series’:

,

 Annex B&B 4: screenshots of typical designations of mobile phones,

 Annex B&B 5: screenshots of the home page of the EUTM proprietor at www.lg.com,

 Annex B&B 6: Wikipedia article ‘List of mobile phone generation’,

 Annex B&B 7: articles regarding future development of ‘6G’ and ‘7G’ mobile radio standards,

 Annex B&B 8: articles regarding the establishing of a 6G Centre by LG and KAIST,

 Annex B&B 9: Wikipedia article about ‘iPhone’:

 ,

 Annex B&B 10: Wikipedia article about ‘Samsung Galaxy’,

 Annex B&B 11: Wikipedia article about ‘Sony Xperia’,

 Annex B1B 12: Wikipedia article about ‘Nokia phone series’:

,

 Annex B&B 13: article/reviews regarding typical references to mobile phone designations.

The case for the EUTM proprietor

In both its submissions, the EUTM proprietor considers that the contested EUTM does not convey any perceptible meaning that could be construed as describing any characteristics of the designated goods and services in Classes 9 and 38. The term ‘G7’ cannot, on its own, be construed as meaning ‘Generation 7’ or as referring to mobile radio standards. No evidence has been adduced to support the idea that a sign composed of the letter ‘G’ next to a number would necessarily be perceived as meaning ‘Generation’ followed by the number of the corresponding generation of goods/services. In practice, the letter ‘G’ does not stand for ‘Generation’ in the EUTM owner’s G-Series and the term is arbitrary. In fact, if ‘G7’ were to be construed as an acronym by the relevant public, it is much more likely that it would be considered as standing for ‘Group of Seven’, an international intergovernmental economic organisation whose media impact is very important in the European Union, as four of its seven members are countries from the European Union (France, Germany, Italy and the United Kingdom). In an acronym indicating the generation to which given goods or services belong, and in which the letter ‘G’ would stand for ‘generation’, the order of the elements would naturally be the opposite. No ‘G7’ acronym can be found on the website www.acronymfinder.com that would relate to technological products.

The ‘mobile radio standards’ to which the applicant refers are those called ‘3G’, ‘4G’, and ‘5G’. It is plain to see that these will not be associated with the contested EUTM. These are a number followed by the letter ‘G’, that is the exact opposite of the contested EUTM. Accordingly, these are not comparable. Furthermore, the standards referred to by the applicant are currently blocked at ‘5G’ and no projects of ‘7G’ standards exist at the moment, nor did they exist when the contested EUTM was filed in 2013. Therefore, there is no chance that the contested EUTM will be associated with or mistaken for ‘mobile radio standards’ as erroneously alleged by the applicant. Finally, due consideration must be given to the fact that the goods and services at issue target inter alia the general public. Accordingly, the relevant public displays an average level of attention.

The numerous assertions made by the applicant as regards the purported lack of distinctive character of the contested EUTM are unfounded, contradictory or irrelevant. The applicant’s reference to the norms and customs of the sector and its allegations that the contested EUTM does not depart from those are plainly inappropriate in the present case as they apply to three-dimensional marks.

Trade marks composed of a single letter have been recognised by the Court of Justice as capable of indicating a commercial origin (09/09/2010, C‑265/09 P, α, EU:C:2010:508). This is so, a fortiori, for trade marks comprising a letter followed by a number; those are by essence even more capable than a single-letter trade mark of distinguishing the goods and services of a company from those of other undertakings.

The applicant’s claim that comparable trade marks would be commonly used in the sector of mobile phones and related telecommunication services has not been substantiated.

Model designations are perfectly able to function as trade marks as long as they are distinctive, be it inherently (which is the case of the contested EUTM) or as a result of their intensive use.

The applicant gave examples of identical or similar trade marks that have been accepted by the Office.

In support of its observations, the EUTM proprietor filed the following evidence:

 Enclosure 1: internet excerpt showing that numerous words other than ‘generation’ start with the letter ‘G’,

 Enclosure 2: internet excerpts providing information as regards the Group of Seven, an intergovernmental economic organisation,

 Enclosure 3: internet excerpts of pages dedicated to the history of the EUTM owner’s G-Series, in which it can be seen that the letter ‘G’ is meaningless and does not stand for ‘generation’,

 Enclosure 4: excerpt from the website www.acronymfinder.com showing that it does not reference any ‘G7’ acronym related to technological products,

 Enclosure 5: eSearch excerpts pertaining to trade marks owned by the applicant and that bear very similar characteristics to those of the contested EUTM,

 Enclosure 6: internet excerpts showing that the term ‘version’ is often abbreviated as the letter ‘v’ followed by a number when indicating the version number of a product,

 Enclosure 7: internet excerpts demonstrating that the V3 and V6 word marks owned by the applicant comprised the designation of the model of goods provided by it,

 Enclosure 8: eSearch extracts of registered ‘G7’ EUTMs and international registrations designating the EU for goods and services in the same sector,

 Enclosure 9: eSearch extracts of registered EUTMs and international registrations designating the EU comparable to the contested EUTM for goods and services in the same sector,

 Enclosure 10: internet excerpt showing that numerous words other than ‘generation’ start with the letter ‘G’,

 Enclosure 11: excerpts of EUTM registrations for signs comprising one letter followed by one number in relation to mobile phones and telecommunication services.

ABSOLUTE GROUNDS FOR INVALIDITY — ARTICLE 59(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 59(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non registrability obtain in only part of the Union.

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

The registration of a European Union trade mark cannot give rise to a legitimate expectation for the proprietor of that mark with regard to the result of subsequent invalidity proceedings, since the applicable rules expressly allow for that registration to be challenged subsequently in an application for a declaration of invalidity or a counterclaim in infringement proceedings (19/05/2010, T‑108/09, Memory, EU:T:2010:213, § 25).

Otherwise, challenging the registration of an EUTM in the context of invalidity proceedings would, where the subject-matter and the grounds were the same, be deprived of any practical effect, even though such a challenge is permitted under the EUTMR (22/11/2011, T‑275/10, Mpay24, EU:T:2011:683, § 18).

Non-distinctiveness – Article 7(1)(b) EUTMR

The distinctive character of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the relevant public, which is composed of the consumers of those goods or services (27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 29).

The average consumer’s level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C‑342/97, Lloyd Schuhfabrik, § 26).

In the present case, the goods and services covered by the contested trade mark are mobile phones and various telecommunication services that target both the average consumers and more experienced specialists. Depending on the nature of the goods and services in question, the awareness of the relevant public will be that of the average consumer, who is reasonably well-informed and reasonably observant and circumspect, or that of a more attentive public with a higher level of attention.

Furthermore, it is settled case-law that the relevant point in time in respect of which the assessment of the claimed descriptive character or lack of distinctiveness of the sign ‘G7’ must be made is the date of filing of the EUTM. In other words, it is necessary to establish whether or not ‘G7’ was lacking in distinctiveness in relation to the contested goods on 08/08/2013.

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

The trade mark at issue here is a letter and a numeral – G7 – which will be perceived as such by all consumers in the European Union.

It is the applicant’s position that on the mobile phone market, and, by extension, the telecommunication market, it is extremely common to use alphanumeric codes to indicate the model number of products. In the mobile phone sector, it is accepted that letters are used to indicate a particular series and a number to indicate an improved model within that series. As shown in Annexes B&B 3 and 5 (home page of the EUTM proprietor), the EUTM proprietor uses the letter ‘G’ as a series for a line of android devices first introduced in 2012. The number following the letter ‘G’ indicates the number of the series. Therefore, the contested ‘G7’ would be understood as the seventh product of series G.

In the telecommunication sector, alphanumerical combinations are also used, such as ‘1G’ to ‘5G’, as shown in Annex B&B 6, where ‘G’ stands for ‘Generation’. This was true at the relevant date. It is therefore likely that an alphanumerical combination using the letter ‘G’ in the telecommunication field would be associated with ‘Generation’ whether followed or preceded by a single digit number. Even if it is acknowledged that ‘7G’ is not ‘G7’ as argued by the EUTM proprietor, the fact remains that letter ‘G’ combined with a one-digit number is likely to be perceived as non-distinctive in this technological field.

It is the nature of the mobile phone and telecommunication sector that consumers will sign up to contracts of finite length, then upgrade to a new contract, a new mobile phone and or a new generation of telecommunication technology. They are, therefore, aware of the series, new models or new generations of telecommunication technology on the market. They are familiar with multiple manufacturers using identical or similar alphanumeric references to designate a series and model number, alongside the manufacturer and/or product brand. As mentioned in the Wikipedia article, the G-series are designated as ‘LG G series’. Consumers are aware of the developments in technology and even if the current generation is number 5 and it was number 4 at the relevant date, number 7 does not project such a distant future that it would immediately be perceived by consumers as a fanciful indication for telecommunications services in a broad sense. As demonstrated by the applicant, development of ‘6G’ is already the object of studies and investments including by the EUTM proprietor itself (Annexes B&B 7 and 8). Therefore, ‘7G’ is not that far in the future. Even if the contested trade mark is ‘G7’, its simple inversion is not regarded as sufficient to provide the minimum distinctive character required for it to be perceived as an indication of origin in this particular field of technological goods and services.

Contrary to the EUTM Proprietor’s assertions, the applicant has brought evidence that comparable trade marks would be commonly used in the sector of mobile phones and related telecommunication services. In Annexes B&B 4 and B&B 9-13, the applicant proves that the use of alphanumeric codes for mobile phones, and related telecommunications services, is extremely widespread. In Annexes B&B 8-13, the applicant demonstrates how the naming convention of a mobile phone manufacturer operates, using different letters and numerals in combination with the house mark.

On the basis of the evidence filed by the applicant, it is hard to see how, in such a saturated market as the mobile phone and telecommunication sector, simple alphanumeric codes can function as a badge of origin. The applicant has succeeded in demonstrating that multiple manufacturers use letters and numbers to identify different product models. However, they do so always in combination with a distinctive house mark. The Cancellation Division is therefore persuaded that the relevant consumer would not perceive these codes as a badge of origin, but rather as a product or model number.

Although there may be occasions where an alphanumeric code can function in a distinctive manner, as argued by the EUTM proprietor in the light of some selected case-law, as soon as the premise that it is absolutely commonplace for mobile phones and telecommunication services to bear alphanumeric codes is accepted, any distinguishing capacity of such codes disappears. It is therefore impossible for a mark such as ‘G7’ to enable the relevant public to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods and services concerned.

The EUTM proprietor argues that ‘G7’ is not used to indicate an escalating sequential series or that the future technological standard of telecommunications would be ‘7G’ and not ‘G7’. The EUTM proprietor also disputes the meanings provided by the applicant for the letter ‘G’ as standing for Generation and proposes a totally unrelated and farfetched meaning. Nevertheless, it is not necessary that the trade mark be found descriptive of a characteristic of the goods and services (such as technical features, model number, etc.) to fall under the ground of being not distinctive, for all the reasons described above.

It is the task of the Cancellation Division to assess distinctive character on the date of filing: 08/08/2013. In addition, it is not necessary to show that the contested trade mark is used by other manufacturers in order to assess its distinctive character as perceived on that date. In the case at issue, the applicant has filed evidence mainly to prove that the use of simple combinations of alphanumerical codes is, and was on the filing date, very common on the market. What matters here is whether there is frequent use of numbers and letters on the mobile phone market and related telecommunication services and this has been amply proved by the applicant.

Even if ‘G7’ is not directly descriptive, what is relevant is the perception of the public and it has been demonstrated by the applicant that the public will not inherently identify ‘G7’ as a mark of origin. Even though a given term might not be clearly descriptive with regard to the goods and services concerned, with the result that an objection under Article 7(1)(c) EUTMR would not apply, it could still be objectionable under Article 7(1)(b) EUTMR on the ground that it will be perceived by the relevant public as only providing information on the nature of the goods and/or services concerned and not as indicating their origin.

The trade mark ‘G7’ is therefore intrinsically devoid of distinctive character within the meaning of Article 7(1)(b) EUTMR, and this was also the situation on the date of filing of the EUTM. Pursuant to constant case-law, it is sufficient that one of the absolute grounds for refusal enumerated in Article 7(1) EUTMR applies for a trade mark to be rejected or, as in the case at issue, to be cancelled. (22/05/2014, T‑228/13, exact, EU:T:2014:272, § 63, and 03/12/2015, T‑647/14, DUALSAW, EU:T:2015:932, § 39). Consequently, there is no need to deal with the question of whether the contested EUTM was also registered in breach of Article 7(1)(c) EUTMR.

The argument of the EUTM proprietor, according to which even a single letter can work as a trade mark, is not relevant in the present case. In the judgment mentioned (09/09/2010, C‑265/09 P, α, EU:C:2010:508), the Court of Justice ruled that, in the case of trade marks consisting of single letters depicted in standard characters with no graphic modifications, it is necessary to assess whether the sign at issue is capable of distinguishing the different goods and services in the context of an examination, based on the facts, focusing on the goods or services concerned (paragraph 39). This is precisely what the present decision does. Considering the market of mobile phones and telecommunications, it has been demonstrated that the alphanumerical combination ‘G7’ cannot work as a trade mark for these specific goods and services.

The fact that the Office has registered identical or similar marks mentioned by the EUTM proprietor is counterbalanced by the fact that the Office has also refused similar marks as mentioned by the applicant in Annex B&B 2, (although refusals are generally also based on Article 7(1)(c) EUTMR). In addition, the Office is not bound by previous decisions.

The EUTM proprietor is not claiming acquired distinctive character pursuant to Article 7(3) CTMR.

Conclusion

In the light of the above, the Cancellation Division concludes that the application is totally successful and the European Union trade mark should be declared invalid for all the contested goods and services.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Anne-Lee KRISTIENSEN

Jessica LEWIS

Richard BIANCHI

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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.