Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 21/03/2016

COHAUSZ & FLORACK Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB

Bleichstr. 14

D-40211 Düsseldorf

ALEMANIA

Application No:	014677512
Your reference:	151906EU
Trade mark:	MIRROR IN DISPLAY
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 05/11/2015 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 08/01/2016, which may be summarised as follows:

1. The applicant refutes the Office´s findings and claims that the mark for which registration is sought can function as an indication of origin.

2. The expression ‘MIRROR IN DISPLAY’ does not have a clearly delineated meaning for the goods for which registration is sought. Therefore the mark at issue is a vague and allusive expression and not descriptive for the goods for which registration is sought. The expression ‘MIRROR IN DISPLAY’ does not give useful information to the consumers. The applicant wonders why should smartphones computers and their related displays have mirror on them and claims that when these devices are equipped with mirrors they cannot be used for their intended purpose which is to transfer messages.

3. The applicant claims that the expression ‘MIRROR IN DISPLAY’ is not commonly used in the relevant market of sale and distribution of electronic devices.

4. The relevant public is not only the average consumer but also professionals. Given the nature of the goods, the level of attention of the relevant public is higher than average.

5. The mark will be found on the applicant´s product packaging and will be associated, in the mind of the consumer, with the goods applied for.

6. The applicant requested that the Office explain good-per-good why the mark is descriptive.

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 waive the objection for the following goods:

Class 9 Chargeable batteries; Battery compensation chargers; Audio components system, comprising surround sound speakers, loud speakers, tuners, sound mixers, equalizers, audio recorders, and radios.

The objection is maintained for the remaining goods.

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).

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).

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).

Given that the mark has a clear descriptive meaning in relation to the goods 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. Accordingly, it also has to be rejected under Article 7(1) b CTMR.

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, that is not incompatible with an examination of each of the mark’s individual components in turn (see judgment of 19/09/2001, T‑118/00, ‘Procter & Gamble’, paragraph 59).

The applicant expressed its concern that the Office did not look at the meaning conveyed by the mark applied for but provided its own interpretation, which extends far beyond the meaning conveyed by the mark in the form applied for.

Firstly, the Office points out that its assessment is based on the perception of the mark in the mind of the relevant consumer in relation to the goods and/or services applied for, thus it is not carried out in the abstract.

Secondly, the Office would like to draw the applicant’s attention to the objection letter of 05/11/2015 where relevant definitions from Collins English Dictionary were quoted. As the cited English dictionary is an acknowledged reference source, its entries allow the conclusion that both components of the trade mark are known in the English-speaking part of the European Union and, contrary to applicant’s statement, will have a meaning for the relevant public. The relevant consumer will understand the words as a meaningful expression: an electronic device with a built in function for the visual presentation of data or images capable of reflecting a clear image resembling to a reflecting surface.

The applicant claims that the expression ‘MIRROR IN DISPLAY’ does not give useful information to the consumers and wonders why should smartphones computers and their related displays have mirror on them and adds that when these devices are equipped with mirrors one cannot use these devices for their intended purpose which is to transfer messages. The Office reminds the applicant that smartphones today are not only used to make phone calls and send messages but are intricate multifunctional apparatus which may also be equipped display that has a mirror functionality, for example to facilitate the user when taking selfies.

It has to be noted that according to the settled case-law for a trade mark to be refused registration under Article 7(1)(c) 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, emphasis added.)

The applicant argues that the goods for which registration is sought are also aimed to professionals. Moreover, it claims that the level of attention for both average consumers and professionals is higher than average. It must be held that the fact that the relevant public might a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (judgment of 12/07/2012, C‑311/11 P, ‘Smart Technologies’, paragraph 48).

Moreover, the Office is not obliged to show that the meaning of the term is immediately apparent to the relevant consumers that the goods target. It suffices that the term is meant to be used, or could be understood by part of the relevant public, as a description of the claimed goods or services, or a characteristic of the goods (judgment of 17/09/2008, T‑226/07, ‘PRANAHAUS’, paragraph 36). It is not necessary for the Office to show that there is a present or future need or concrete interest of third parties to use the descriptive term applied for (judgment of 04/05/1999, C 108/97, ‘Chiemsee’, paragraph 35; judgment of 12/02/2004, C 363/99, ‘Postkantoor’, paragraph 61).

Article 7(1)(b) makes it clear that a minimum degree of distinctive character suffices for the absolute ground for refusal set out in that article not to apply. However, in the present case the required minimum degree of distinctive character could not be established. The Office admits that the registration of a sign as a trade mark is not subject to a finding of a specific degree of inventiveness or creativity on the part of the trade mark proprietor. However, it is also clear from the case-law of the Court of Justice in relation to Article 7(1)(b) CTMR that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings and, therefore, being able to fulfil the essential function of a trade mark. Due to the impression produced by the mark, the connection between the relevant goods and the mark is not sufficiently indirect to endow the mark with the minimum level of inherent distinctiveness required under Article 7(1)(b) CTMR (see also judgment of 12/02/2004, C‑363/99, ‘Koninklijke KPN Nederland NV’, paragraph 99). The Office considers, therefore, that it is highly unlikely that, without substantial use, the consumer could perceive it as a badge of origin to distinguish the origin of the goods applied for.

Therefore, the applicant’s argument that it will use it in the future on the packaging its products and therefore it will be associated in the mind of the consumer with the goods applied for it is irrelevant and cannot overcome the present objection on absolute grounds.

With regard to the request to explain good per good why the mark is descriptive, the Office reminds the applicant that where the same ground of refusal is given for a category or group of goods or services, the competent authority may use only general reasoning for all of the goods or services concerned. In the present case, the Office has decided that all the goods applied for, constitute one group of class 9 goods, (namely that they are items that can be equipped with display that has a mirror functionality such as smartphones, displays, wearable digital electronic devices and even cases) and one group for class 14 (as all goods are watches that can be equipped with a mirror on their display). Therefore, the Office finds that has sufficiently illustrated why the mark is descriptive for the objected goods providing an assessment of the goods on the basis of a general homogeneous categorisation.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 14 677 512o is hereby rejected for the following goods:

Class 9 Smartphones; Display for smart phones; Mobile phones; Wearable smart phone; Wireless headsets; Headsets; Wireless headset for cellphones; Wireless headsets for smartphones; Digital set top boxes; Leather case for mobile phones; Leather case for smart phones; Flip cover for mobile phones; Flip covers for smart phones; Computer application software; Computer application software for mobile phones; Computer application software for TV; 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; Network surveillance cameras; Television receivers; Display for television receivers; Apparatus for the recording/transmission or reproduction of sound and images; Earphones; DVD players; Handheld media players; Speakers; Digital cameras; Wireless cameras; 3D spectacles; Virtual reality game software; wearable telecommunication devices for the wireless receipt, storage and/or transmission of data and messages; Head mounted video display; 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; Wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers.

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 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.

Aliki SPANDAGOU