Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 05/02/2016

COHAUSZ & FLORACK Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB

Bleichstr. 14

D-40211 Düsseldorf

ALEMANIA

Application No:	014544324
Your reference:	151517EU
Trade mark:	Smart Kitchen TV
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 21/09/2015 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 25/11/2015, which may be summarised as follows:

1. The words “Smart Kitchen TV” do not have a clearly descriptive meaning, at least with respect to the goods covered by the application. The expression “Smart Kitchen TV” is too vague.

2. The applied for expression is not commonly used in the relevant market of the sale and distribution of electronic devices.

3. The mark applied for does not contain any references to the characteristics of the claimed goods. In particular the relevant consumers will not see any indication of the characteristics of the products in the expression. The Office has not provided the required reasoning to demonstrate how the expression describes the goods in class 9.

4. The applied for trade mark has a distinctive character and it fulfils the essential function of a trade mark. The mark has at least the minimum degree of distinctiveness.

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.

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 (judgment of 16/09/2004, C-329/02 P, ‘SAT.1’, paragraph 25).

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.

Taken as a whole, the term “Smart Kitchen TV” immediately informs consumers without further reflection that the goods and services applied for are various kinds of apparatus or devices that are able to control, operate, and direct electronic equipment used in the kitchen.

Therefore, the mark conveys obvious and direct information regarding kind and intended purpose of the goods in question.

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. (See judgment of 23/10/2003, C-191/01 P, ‘Wrigley’, paragraph 31.)

According to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (judgment of19/09/2002, C-104/00 P, ‘DKV’, paragraph 21).

This is clearly applicable to the present case. Given that the mark has a clear descriptive meaning in relation to the goods and services applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin. Consequently, taken as a whole, the mark applied for – ‘Smart Kitchen TV’– is devoid of any distinctive character and is not capable of distinguishing the goods and services for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) CTMR.

As regards the applicant's observations, the Office replies as follows

1. The words “Smart Kitchen TV” do not have a clearly descriptive meaning, at least with respect to the goods covered by the application. The expression “Smart Kitchen TV” is too vague.

During the examination proceeding, the Office established that today’s modern kitchen may contain the ability to integrate a variety of electronic equipment to facilitate the cooking and meal preparation process. The claimed expression indicates that the goods have been specially designed and adapted for use in the modern, “smart” kitchen, the aim of which is to help one to cook, prepare meals, analyse nutrition information, etc. The goods used in the modern smart kitchen are for example electronic devices, displays containing recipes and TV sets for explaining and giving guidance for meal preparing and cooking. It is a well-known fact that the above-mentioned kitchen equipment, as could any other hardware, be operated and monitored by mobile phones and computers which use for such activities specially designed software. Therefore in the context of the refused goods the expression "Smart Kitchen TV" is directly descriptive, as it immediately informs consumers without further reflection that the goods applied for are TV sets, displays for the modern kitchen or various kinds of apparatus, machines, or devices that are able to control, operate, and/or direct kitchen equipment. The Office cannot agree with the Applicant that there is no obvious or direct link between the sign and the objected goods; on the contrary in the context of the claimed goods, the trade mark has a directly descriptive meaning.

2. The applied for expression is not commonly used in the relevant market of the sale and distribution of electronic devices.

The Office considers that in the present case, the fact that the term is not commonly

used is irrelevant. The question of the actual use of the trade mark could only be relevant if the Office had raised an objection based on CTMR article 7(1)(d). Currently the Office has established the fact that the term “Smart Kitchen TV” describes the goods at issue. CTMR Articles 7(1) (b) and (c) do not include an additional requirement for the Office to prove the common use of descriptive words. The Office explains that 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.

‘The distinctive character of a trade mark is determined on the basis of the fact that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question … The lack of prior use cannot

automatically indicate such a perception.’ (judgment of 15/09/2005, T- 320/03, ‘LIVE

RICHLY’, EU:T:2005:325, § 88)

The fact that a descriptive use of the term applied for cannot be ascertained is irrelevant. Examination of Article 7(1)(c) CTMR has to be made by means of prognostics (assuming that the mark will be used with respect to the goods or services claimed). It follows clearly from the text of Article 7(1)(c) CTMR that it suffices if the mark ‘may serve’ to designate characteristics of the goods and services (judgment of 23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 33).Therefore the Office must refuse to give legal protection to a descriptive term even if any actual use of the claimed mark has not been demonstrated.

3. The mark applied for does not contain any references to the characteristics of the claimed goods. In particular the relevant consumers will not see any indication of the characteristics of the products in the expression. The Office has not provided the required reasoning to demonstrate how the expression describes the goods in class 9.

The Office repeats its explanations given to the applicant above and in its objection letter. In the present case the sign consists of the expression “Smart Kitchen TV”. The list of the goods and services contains various electronic devices that could be used in a modern kitchen, therefore the Office reasonably explained that the mark conveys obvious and direct information regarding the kind and intended purpose of the goods in question. In the Office’s opinion, all the refused goods could be used either as TV sets or as screens and/or their parts (Personal portable devices for recording, organizing, transmitting, manipulating, reviewing and receiving text, data, images and audio files relating to health and wellness; Projector) or could be used for operating such devices, or software that enables one to communicate with such devices. The Office considers that there is no necessity to give a separate explanation in relation to each of the claimed goods. This statement is also supported by the European Court of Justice. According to case law: It is sufficient that a ground for refusal applies to a single homogenous category of goods and/or services. A homogenous category is considered a group of goods and/or services which have a sufficiently direct and specific link to each other (judgment of 02/04/2009, T-118/06, ‘ULTIMATE FIGHTING CHAMPIONSHIP’, para. 28). Where the same ground or grounds for refusal is given for a category or group of goods or services, only general reasoning for all of the goods and/or services concerned may be used (judgment of 15/02/2007, C-239/05, ‘Kitchen company’, para. 38).

4. The applied for trade mark has a distinctive character and it fulfils the essential function of a trade mark. The mark has at least the minimum degree of distinctiveness.

The claimed sign contains the words "Smart" “Kitchen” and "TV", which, when viewed as a whole, create an overall impression which is not sufficiently far from that produced by the combination of meanings of the elements of which it is composed, and the result is just the sum of its parts. The mark does not possess the minimum level of distinctiveness, originality or resonance required. The fact is that the mark is descriptive in respect of the goods and, as a consequence lacks distinctive character.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 14 544 324 is hereby rejected.

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.

Liina PUU