Refusal of application for a European Union trade mark

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

Alicante, 13/06/2016

COHAUSZ & FLORACK Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB

Bleichstr. 14

D-40211 Düsseldorf

ALEMANIA

Application No:	014811608
Your reference:	152467EU
Trade mark:	LAVENDER
Mark type:	Word mark
Applicant:	LG ELECTRONICS INC. 128, Yeoui-daero, Yeongdeungpo-gu Seoul 150-721 REPÚBLICA DE COREA (LA)

This decision replaces the decision sent earlier today 13/06/2016.

The Office raised an objection on 04/12/2015 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, after an extension of time limit, submitted its observations on 08/04/2016, which may be summarised as follows:

1. The expression ‘LAVENDER’ does not have a clearly delineated meaning, at least with respect to the goods applied for. The term does not give a proper indication of the colour of the cited goods, since colour can be measured and qualified in various ways. The message conveyed by the mark is therefore non-specific. Even when the particular goods are known, the meaning is vague, merely allusive and can be used in a number of different contexts.

2. The expression ‘LAVENDER’ is not commonly used in the relevant market.

3. When buying consumer electronics the average consumer will spend considerable time and forethought considering the merits of one producer’s products compared to another and the level of attention will therefore be high.

4. In the event that the objection is maintained, the Office is requested to argue and state good per good how the expression can be considered descriptive.

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 maintain the objection.

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.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR 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).

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR

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) [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).

In its submissions the applicant has argued that the expression ‘LAVENDER’ does not have a clearly delineated meaning in the context of the goods applied for. That the term does not give a proper indication of the colour of the goods since colour can be measured and qualified in various ways. That the message conveyed by the mark is therefore non-specific and that, even when the particular goods are known, 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 and services 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 ‘LAVENDER’ 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 objectionable goods for which registration is being sought, namely that, as explained in the initial notification, they are goods which are coloured in an official colour name, as designated by the Pantone standard. It is, therefore, the Office’s view that the term ‘LAVENDER’ is readily intelligible when taken in conjunction with the objectionable goods applied for, and viewed by the relevant consumer, who will see the phrase ‘LAVENDER’ merely as a descriptor of a characteristic of the goods being provided rather than an indication of trade origin.

As regard to the applicant’s arguments regarding the various meanings of the various elements within the mark, the Office would advise that for a trade mark to be refused registration under Article 7(1)(c) EUTMR,

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.)

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 consumer electronics 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.

As regards the argument that the Office has not shown that other similar signs are used in the market, 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).

Finally, as regard to the request that the Office make a full assessment for all of the individual goods applied for by giving specific reasons for each of the terms. 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 contested goods in Class 14 are all chronological and horological instruments and bracelets. 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.

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 14 811 608 is hereby rejected for the following goods:

Class 9 Mobile phones, smart TV and handheld electric communication device, which is used for implementing internet of things; Remote control apparatus; Universal serial bus (USB) Dongle (Wireless network adapters); Transmitters and receivers of electronic signals; Adapters for wireless network access; Audio speakers; Computer monitors; TV remote controls; Remote controls for controlling electronic products; Home network devices; Electronic security system for home network; Home automation device; Interfaces and peripheral devices for computers; Server for home network system; Server for home automation; Digital audio interface apparatus; Wireless audio/video receivers; Wireless communication apparatus; Battery charge devices; Smart phones; Mobile phones; Wearable smart phones; Wireless headsets; Headsets; Wireless headsets for mobile phones; Wireless headsets for smartphones; Digital set top boxes; Leather case for mobile phones; Leather case for smart phones; Flip covers for mobile phones; Flip covers for smart phones; Tablet PC; Monitors for commercial use; Wearable computers; Computers; Printers for computers; Leather case for tablet computers; Flip covers for tablet computers; Portable computers; 3D spectacles; Digital cameras; Network monitoring cameras; 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; Oscillation sensor devices; Air pollution measuring devices; Measuring and control devices for air conditioning technology; Air measuring apparatus; Dust measuring apparatus; Weight scales not for medical purposes; Measuring apparatus not for medical purposes; Sensor controllers; Automatic control apparatus and instruments; Lighting control apparatus; Digital audio and video recorders and players; Speaker systems; Electric audio and visual apparatus and instruments; Handheld multimedia players; Modems; Wireless routers; Remote air conditioning control devices; Remote control telemetering machines and apparatus; Mobile phones; Telecommunication machines and implements; Remote control apparatus for controlling lighting; Computer hardware modules for use in internet of things electronic devices; Watchbands that communicate data to personal digital assistants, smart phones, and personal computers through internet websites and other computer and electronic communication networks; Bracelets that communicate data to personal digital assistants, smart phones, and personal computers through internet websites and other computer and electronic communication networks; Watch bands combined with sensor.

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, 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.

Magnus ABRAMSSON