Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 15/01/2016

COHAUSZ & FLORACK Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB

Bleichstr. 14

D-40211 Düsseldorf

ALEMANIA

Application No:	014497903
Your reference:	151225EU
Trade mark:	Smoky Gray
Mark type:	Word mark
Applicant:	LG ELECTRONICS INC. 128, Yeoui-daero, Yeongdeungpo-gu Seoul 150-721 REPÚBLICA DE COREA (LA)

The Office raised a partial objection on 09/09/2015 pursuant to Article 7(1)(b) and (c) and 7(2) CTMR 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 11/11/2015, which may be summarised as follows:

1. The sign applied for is not descriptive in relation to the goods applied for and enjoys a minimum degree of distinctive character. It does not give useful information to consumers. The sign applied for does not consist of characteristics of the goods applied for. The relevant consumers will not perceive any indication of the quality of the goods in question.

2. The relevant public will spend a great deal of time and forethought when considering the purchase of electronic goods. It will result in the sign becoming known to the relevant public during its deliberation process because it will be found on the applicant’s goods packaging, therefore, consumers will know that the sign applied for, ‘SMOKY GRAY’, is not an expression used for describing the goods applied for.

The sign applied for has not a clearly delineated meaning since the perception of colours depends on a consumer’s subjective process.

3. The Office is requested to state good per good how the sign applied for can be a description at all.

Pursuant to Article 75 CTMR, 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.

1. Under Article 7(1)(c) CTMR, ‘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) CTMR 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 Community trade marks of the signs and indications to which it refers, Article 7(1)(c) CTMR 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) CTMR 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).

A sign consisting exclusively of the name of a colour must be objected to under Article 7(1)(c) CTMR when the application claims any goods for which the colour can reasonably be perceived by the public as a description of one of its characteristics.

In the present case the sign applied for ‘SMOKY GRAY’, directly designates a characteristic of the goods objected, namely their external appearance by a clear reference to their colour.

This reference can be perceived from the dictionary definitions provided where ‘smoky’ is defined as ‘resembling smoke’ or ‘of the colour of smoke’ and ‘gray’ is defined as ‘of a neutral tone’. Furthermore, it is even more clear from the internet results cited on the Office’s communication of 09/09/2015, where electronic devices and accessories are described as being offered in a ‘smoky gray’ colour.

2. The Office agrees with the applicant’s opinion that the consumer might pay a lot of attention when purchasing electronics; however, the Office is also of the opinion that the consumer not only pays high attention to technical features of electronic products but also to their external appearance and aesthetics when deciding their acquisition. Moreover, the colour is one of the most visible characteristics of the product and will play a significant role in the consumer’s final decision.

Taking into account that colour is a typical feature of the goods of concern and that ‘SMOKY GRAY’ has a strong connotation with definite colours, as can be perceived from the internet results provided, it will be highly relevant for consumers’ choice. The fact that the perception of a colour depends on the consumer’s subjectivity is of no importance to the case at hand; what matters is how the consumer will perceive the word combination ‘SMOKY GRAY’ in relation to the goods and it will be, without any doubt, a name of a colour, namely a shade of grey.

The Office points out that, according to case-law, a mark has a minimum degree of distinctive character when it is, prima facie, capable of enabling the relevant public to identify the origin of the goods without confusion (T‑441/05, I, EU:T:2007:178, § 55).

In the Office’s view, and without any evidence on file proving the contrary, the mark applied for per se will not permit the average consumer to recognize the origin of the goods unless it has been previously educated to do so through intensive use.

3. Regarding the applicant’s request of a good per good analysis, the Office points out that it is settled case-law that it is sufficient that a ground for refusal applies to a single homogenous category of goods and general reasoning applies to all of them.

A homogenous category is considered a group of goods that have a sufficiently direct and specific link to each other (02/04/2009, T‑118/06, Ultimate fighting championship, EU:T:2009:100, § 28). In the present case, all the goods objected to are electronic devices (smartphones, PDAs, etc.) that can be presented in a smoky grey colour, as well as their accessories or ancillary goods (mobile phone cases, headphones, etc.). All these goods can be offered or presented in this colour.

Where the same grounds for refusal are given for a category or group of goods only general reasoning for all of the goods concerned may be used (15/02/2007, C‑239/05, The Kitchen Company, EU:C:2007:99, § 38).

Moreover, the internet results provided confirm the Office point of view where several of the goods objected to are described as being offered in a ‘smoky gray’ colour.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 14 497 903, ‘SMOKY GRAY’, is hereby rejected for the following goods:

Class 9 Smart phones; Portable communications apparatus namely handsets, walkie-talkies, satellite telephones and personal digital assistants [PDA]; Audio component; Apparatus for recording, transmission or reproduction of sound or images; Television receivers; Wearable smart phones; Mobile phone cases; Mobile phone stands; Stylus for smart phones; Portable chargers for mobile phones; Headphones; Earphones; Wireless headphones.

The application is accepted for the remaining goods:

Class 9 Computer application software; Computer application software for mobile phones.

According to Article 59 CTMR, you have a right to appeal this decision. According to Article 60 CTMR, 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 800 has been paid.

Octavio MONGE GONZALVO