Refusal of application for a European Union trade mark

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

Alicante, 01/06/2016

COHAUSZ & FLORACK Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB

Bleichstr. 14

D-40211 Düsseldorf

ALEMANIA

Application No:	014627211
Your reference:	151768EU
Trade mark:	Light Sapphire
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 25/01/2016 pursuant to Article 7(1)(b) and (c) EUTMR and Article 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 24/03/2016, which may be summarised as follows:

1. The expression ’Light Sapphire’ does not have a clearly delineate meaning with respect to the goods for which registration is sought. The message conveyed by the mark is non-specific. The expression is vague and merely allusive.

2. The expression ‘Light Sapphire’ does not give useful information to the consumers. The term ‘Light Sapphire’ does not give a proper indication of the colour of the cited goods.

3. Element ‘Sapphire’ is not the name for a colour, but an indefinite description of a material, namely a precious stone. And especially in combination with the term ‘Light’, it is vague as well.

4. The expression ‘Light Sapphire’ has no meaning in relation to software goods.

5. The expression ‘Light Sapphire’ is not commonly used in the relevant market of sale and distribution of electronic devices.

6. The mark ‘Light Sapphire’ does not consist of characteristics of the goods applied for at all. The relevant consumers will not see any indication of the quality of the products in the expression as it is much too vague.

7. The relevant consumers are average consumers and a professional public so the awareness of the relevant public will be at least average, that is an argument that the mark applied for is distinctive. The consumers, when buying goods in question, will spend a great deal of time before one is finally chosen.

8. The mark ‘Light Sapphire’ will be found on the applicant’s products packaging and will become associated in the mind of the consumer with the goods in question. The relevant consumers will know that the mark ‘Light Sapphire’ is not an expression used for the goods applied for.

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 waive the objection for the following goods:

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

The objection is maintained for the remaining goods.

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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’ (judgment of 27/02/2002, T‑79/00, ‘LITE’, paragraph 26).

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.

‘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).

1. Regarding the applicant’s first argument, the Office disagrees. The Office provided, in its notice of 25/01/2016, dictionary definitions of the words within the mark. The Office then came to the conclusion that the relevant consumers would perceive the mark ‘Light Sapphire’ as obvious and direct information that the goods applied for are of a pale bright blue colour. The mark conveys a specific message regarding the colour of the goods in question. Therefore the mark in question is not vague or merely allusive at all.

2. Regarding the applicant’s second argument, the mark provides consumers with direct information that the goods applied for are of a pale bright blue colour. The mark in question is a common combination of words with a dictionary definition. The consumers would understand the mark in question as a meaningful expression ‘a pale bright blue colour’. The existence of dictionary definitions of the words within the mark is sufficient to conclude that the relevant consumers would understand the mark with no additional mental effort.

3. As regards the applicant’s third argument, the Office disagrees. The Office provided, in its notice of 25/01/2016, a dictionary definition of the word ‘Sapphire’. The said extract defines it as ‘a bright blue colour’. Therefore in combination with the word ‘Light’ the mark conveys obvious and direct information regarding the colour of the goods in question.

4. As regards the software goods applied for, the Office waived the objections.

5. Regarding the applicant’s fifth argument, the Office notes that ‘the distinctive character of a trade mark is determined on the basis of the fact that 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’, paragraph 88).

6. As regards the applicant’s sixth argument, the Office disagrees. Because of the meaning of the mark in question (‘of a pale bright blue colour’) the mark consists of the characteristics of the goods applied for. It conveys obvious and direct information that the goods in question are of the pale bright blue colour.

7. Regarding the applicant’s seventh argument, the Office does not dispute the applicant’s argument regarding the relevant consumers and their awareness. However, the Office is of the opinion that it does not mean that the mark in question is distinctive. The Office maintains its opinion that the mark merely conveys the information regarding the colour of the goods in question. Therefore, the fact that the consumers could spend a great deal of time before purchasing goods in question does not change the outcome that they would perceive the mark ‘Light Sapphire’ merely as descriptive information and not as a badge of commercial origin.

8. As regards the applicant’s last argument, the Office disagrees. The Office maintains its opinion that the mark for which registration is sought merely conveys obvious and direct information that the goods in question are of the pale bright blue colour. The relevant consumers would not see it as a badge of commercial origin.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 14 627 211 is hereby rejected for the following goods:

Class 9 Smart phones; Display for smart phones; Mobile phones; Wearable smart phones; Wireless headsets; Headsets; Wireless headset for mobile phones; Wireless headset for smart phones; Digital set top boxes; Leather case for mobile phones; Leather case for smart phones; Flip cover for mobile phones; Flip cover for smart phones; Tablet PC; Monitor for computers; Monitors for commercial purposes; Wearable computers; Computers; Printers for use with computers; Light emitting diode (LED) displays; Leather case for tablet PC; Flip cover for tablet PC; Portable computers; Chargeable batteries; Battery compensation chargers; 3D spectacles; Digital cameras; Network surveillance cameras; Television receivers; Display for television receivers; Audio components system, comprising surround sound speakers, loud speakers, tuners, sound mixers, equalizers, audio recorders, and radios; Apparatus for the recording/transmission or reproduction of sound and images; Earphones; DVD players; Handheld media players;  Watchbands that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; Bracelets with precious metal that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks.

Class 14 Watches; Parts and fittings for watches; Wristwatches; Electronic clocks and watches; Bracelets with precious metal; Watch bands; Control clocks; Watches with wireless communication function; Watches that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; Watches incorporating cameras and MP3 players, and that communicate data to smart phones and PDAs.

The application is accepted for the remaining goods.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 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.

Klara BOUSKOVA