Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 18/01/2016

COHAUSZ & FLORACK Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB

Bleichstr. 14

D-40211 Düsseldorf

ALEMANIA

Application No:	014642607
Your reference:	151793EU
Trade mark:	Indian Red
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 13/10/2015, pursuant to Article 7(1)(b) and (c), and 7(2) CTMR, because it was found that this trade mark is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observation on 11/12/2015. These may be summarised as follows:

• The subject mark ‘Indian Red’ has no clear, delineated meaning, at least in the context of the goods applied for. The mark is composed of words which each have various meanings, but when used in combination the meaning is vague, merely allusive and can be used in a number of different contexts.

• The expression ‘Indian Red’ is not commonly used in the relevant market and the level of attention of consumers when buying electronic goods is higher than average.

• In the event that the objection is maintained, the Office should provide specific reasoning for the objection in relation to each of the individual goods specified in the application.

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 partially maintain the objection. It is agreed that the mark is acceptable for the following goods:

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

However, the objection is maintained in respect of the remaining goods, namely:

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; Computer application software; Computer application software for mobile 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.

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 which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (see judgment of 16/09/2004, C-329/02 P, 'SAT.1', paragraph 25).

The signs and indications referred to in Article 7(1)(c) CTMR are those which may serve in normal usage from a consumer's point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought (see judgment of 26/11/2003, T-222/02, 'ROBOTUNITS', paragraph 34).

In its submissions the applicant has argued that the subject mark ‘Indian Red’ has no clear, delineated meaning, at least in the context of the goods applied for, and that the mark is composed of words which each have various meanings, but when used in combination the meaning is vague, merely allusive and can be used in a number of different contexts.

The Office has noted the applicant’s submissions. However, it must be advised that, when assessing a mark, the Office must consider it, not in its strictest grammatical sense, but how it would represent itself to the public at large who are to look at it in relation to the goods for which registration is being sought, and form an opinion of what it connotes.

The Office is of the opinion that when taken as a whole, the meaning of the term ‘Indian Red’ will be clear to any English-speaking consumer who will immediately and without any difficulty establish a direct and specific link between the mark and the specified goods for which registration is being sought, namely that, as explained in the initial notification, they are goods coloured Indian red. It is, therefore, the Office’s view that the term ‘Indian Red’ is readily intelligible when taken in conjunction with the specified goods applied for, and viewed by the relevant consumer, who will see the phrase ‘Indian Red’ merely as a characteristic of the goods being provided rather than an indication of trade origin.

As regards to the applicant’s arguments regarding the various dictionary meanings of the verbal elements of the subject mark, the Office would advise that for a trade mark to be refused registration under Article 7(1) CTMR,

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. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(See judgment of 23/10/2003, C 191/01 P, ‘Wrigley’, paragraph 32.)

Turning to the applicant’s argument that use of the term ‘Indian Red’ is not customary in trade, the Court has confirmed that:

where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods… In such a case, the Board of Appeal is not obliged to give examples of such practical experience.

(See judgment of 15/03/2006, T‑129/04, ‘Forme d'une bouteille en plastique’, paragraph 19.)

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (judgment of 05/03/2003, T‑194/01, ‘Tablette ovoïde’, paragraph 48).

As regards to the applicant’s argument that the level of attention of consumers when buying electronic goods is higher than average, the Office would advise that the relevant consumer of the types of communications equipment, information technology audiovisual equipment, time instruments and jewellery listed in the subject application is considered to be the general public, who are considered to be reasonably well-informed and reasonably circumspect. The level of attention will therefore be average

Finally, as regard to the applicant argument that the Office should make a full assessment for all of the individual goods applied by giving specific reasons for each of the terms which is required according to established case-law. First of all, with regard to the obligation to state reasons, it is true that the examination of absolute grounds for refusal must be carried out in relation to each of the goods and services for which trade mark registration is sought and, secondly, that the Office must, in principle, state reasons in respect of each of those goods or services, although a general reasoning may be used where the same ground of refusal is given for a category or group of goods or services (see, to that respect, 15.02.2007, C- 239/05, The Kitchen Company, EU:C:2007:99, § 34 and 37) which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group (see order of 18.03.2010, C- 282/09 P, P@YWEB CARD and PAYWEB CARD, EU:C:2010:153, § 40). In the case in hand the contested goods listed in Class 9 are types of communications equipment and information technology audiovisual equipment and the goods listed in Class 14 are time instruments and jewellery. As such, it is considered that these constitute sufficiently homogeneous groups that can allow for a general reasoning. The argument of the applicant must therefore be set aside.

Due to the reasons set out above, and pursuant to Article 7(1)(b) and (c), and 7(2)

CTMR, the application for the Community Trade Mark ‘Indian Red’ 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; Computer application software; Computer application software for mobile 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 will be accepted for the remaining goods, namely:

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

Under Article 59 of the Community Trade Mark Regulation you have a right to appeal against this decision. Under Article 60 of the Regulation notice of appeal must be filed in writing at the Office within two months from the date of receipt of this notification and within four months from the same date a written statement of the grounds of appeal must be filed. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.

Andrew CARTER