Refusal of application for a European Union trade mark

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

Alicante, 16/06/2016

COHAUSZ & FLORACK Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB

Bleichstr. 14

D-40211 Düsseldorf

ALEMANIA

Application No:	014815807
Your reference:	152490EU
Trade mark:	The Special One
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 02/12/2015, pursuant to Article 7(1)(b) and 7(2) EUTMR, because it was found that this trade mark is devoid of any distinctive character. The objection letter is attached.

For ease of reference, the contested goods are listed below:

Class 9 Television receivers (TV sets); Display panel for televisions; Monitors (computer hardware); Monitors for commercial use; Software for televisions; Smart phones; Portable communications apparatus; Audio components; Apparatus for recording, transmission or reproduction of sound and images; Application software; Software for mobile phones; Wearable smart phones; Cases for mobile phones; Portable mobile phone chargers; Headphones; Earphones; Personal headphones for use with wireless sound transmitting systems.

• The mark The Special One has distinctive character and fulfils the essential function of a trade mark.

• The expression The Special One does not have a clearly delineated meaning in respect of the goods covered by the mark.

• The message conveyed by The Special One in non-specific. The expression is vague and merely alludes to a number of different contexts.

• The examiner submits that the words The Special One immediately inform consumers without further reflection of a positive aspect of the goods at issue; however it is submitted that this viewpoint does not make sense.

• The expression The Special One does not give useful information to the consumer.

• The expression The Special One is not commonly used in the relevant market or sale and distribution of electronic devices.

• The mark does not consist of characteristics of the goods applied for at all. In particular the relevant consumer will not see any indication of the quality of the products in the expression as it is much too vague.

• The relevant public being both the professional and the average consumer when buying the contested products will spend a great deal of time and forethought considering the merits of one producer’s products compared to another before one is finally chosen.

• The sign is not descriptive for all the contested goods. If the Office argues this point the applicant requests that the Office argues and states good per good how this expression can be descriptive for all.

• The Office has previously allowed other marks containing the slogan ‘The Special One” to be registered.

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)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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 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, 'SAT1', paragraph 25).

As the General Court has held, the marks referred to in Article 7(1)(b) EUTMR are, in particular, those which 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 (see judgment of 27/02/2002, T-79/00, 'LITE', paragraph 26). Such is the case for inter alia signs which are commonly used in connection with the marketing of the goods or services concerned (see judgment of 15/09/2005, T-320/03, 'LIVE RICHLY', paragraph 65).

Registration of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods covered by that mark is not excluded as such by virtue of such use (see, by analogy, judgment of 04/10/2001, C-517/99, 'Merz & Krell', paragraph 40).

Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign (see judgment of 11/12/2001, T-138/00, 'DAS PRINZIP DER BEQUEMLICHKEIT', paragraph 44).

The Court of Justice has held that, although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (see judgment of 29/04/2004, joined cases C-456/01 P and C-457/01 P, 'Henkel', paragraph 38).

Moreover, it is also settled case-law that the way in which the relevant public, perceives a trade mark is influenced by that person’s level of attention, which is likely to vary according to the category of goods or services in question (see judgment of 05/03/2003, T-194/01, 'Unilever', paragraph 42 and judgment of 03/12/2003, T- 305/02, 'Nestlé Waters France', paragraph 34).

Furthermore, since the mark The Special One is composed of English words, the relevant public with reference to which the absolute ground for refusal must be examined is the English language-speaking consumer in the Community (judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’, paragraph 26; and judgment of 27/11/2003, T-348/02, ‘Quick’, paragraph 30).

A sign which fulfils functions other than that of a trade mark in the traditional sense of the term is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods of the owner of the mark from those of a different commercial origin.

Furthermore, where the Office finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from the facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources. The Office is not required, before refusing an application under Article 7 (1)(b) EUTMR, to produce any additional evidence of its objections.

The Office considers that it sufficiently justified the objection. The Office gave dictionary references and examined the meaning of the term in relation to the goods in question. As a result, the Office came to the conclusion that the slogan The Special One consist exclusively of a meaningful expression easily understood by the relevant public, who will not perceive it as a trade mark but as promotional or advertising information indicating to the consumer the positive aspects of the goods concerned, namely that they are different from the norm in a way that makes them unique, better and set apart from other similar goods in the marketplace and as such, provides a clear indication of the characteristic of the goods related to their market value.

As already stated in the notification of 02/12/2015, the expression The Special One is a promotional/marketing laudatory message, the function of which is to merely communicate a positive statement about the goods concerned. The term transmits the message that the goods applied for are different from the norm in a way that makes them unique, better and set apart from other similar goods in the marketplace and as such it is considered highly improbable that the relevant public would fail to grasp the signs promotional message.

Taken as a whole, the meaning of the expression The Special One is clear to any English-speaking consumer who will immediately and without any difficulty establish a direct and specific link between the mark and the goods in respect of which registration is sought. It is, therefore, the Office’s view that the term The Special One is readily intelligible when taken in conjunction with the goods applied for and viewed by the relevant consumer.

Furthermore, for a finding that there is no distinctive character, it is sufficient to note that the semantic content of the word mark in question indicates to the consumer a characteristic of the product relating to its market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods (see judgment of 30/06/2004, T-281/02, ‘Mehr für Ihr Geld’, paragraph 31).

Likewise, there is nothing in the expression The Special One that might, beyond its obvious promotional meaning, enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods concerned. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its promotional sense.

Taking into account the goods applied for, the term The Special One will be simply apprehended as an encouragement to purchase the goods concerned. The expression applied for does not constitute a play on words and is not imaginative, surprising or unexpected. It is just an ordinary advertising message that possesses no particular resonance. It does not even have certain originality and resonance which makes it easy to remember (see decision of 23/06/2011, in R 1967/2010-2 – ‘INNOVATION FOR THE REAL WORLD’, paragraph 26).

The Office stresses that the sign applied for is not rejected merely because it is a promotional message, but rather because it is banal with a clear and unambiguous laudatory meaning.

It is noted that in terms of the contested goods the applicant requests that the Office states good per good how the expression The Special One can be descriptive for all. To reiterate, the Office raised an objection under Article 7(1)(b) EUTMR on the basis that the relevant public would perceive the expression The Special One as a promotional laudatory message, the function of which is to merely communicate positive characteristics of the goods concerned and not on the basis of descriptiveness. The Office remains of the opinion that the relevant consumer will understand the words as a meaningful expression in relation to all the goods concerned, namely that they are different from normal in a way that makes better or more important than other similar goods in the marketplace. The combined words the slogan consists of provide a straightforward and clear message in relation to the goods concerned. There is nothing abstract about the expression The Special One as its semantic content, in relation to the relevant goods is quite obvious.

Consequently, the meaning of the expression The Special One as a whole, when applied to the contested goods is simply the sum of the individual terms and it will be perceived with that meaning. Therefore, the mark conveys obvious and direct information regarding the characteristics of the goods in question. As the reasoning provided applies to all the terms concerned it is not necessary for the Office to provide an explanation to the objection on a good by good basis it is sufficient for the applicant to note that the objection raised and the reasoning provided in support of the objection applies equally to all the contested goods.

The expression applied for consists of the combination of readily identifiable and ordinary words from the English language. There is nothing unusual about the structure of that sign. The words in the mark applied for are presented in a sequence that is intellectually meaningful. Therefore, there is no doubt that the relevant consumer will not perceive it as unusual but rather as a meaningful expression in relation to the goods concerned.

As regards the argument that the relevant consumer would regard the word mark The Special One as a distinctive badge of origin and not as a non-distinctive term in relation to the goods in question it has to be put forward that where the Office 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 (see, by analogy, judgment of 22/06/2004, T-185/02, 'PICARO', paragraph 29). In such a case, the Office is not obliged to give examples of such practical experience (judgment of 15/03/2006, T-129/04, 'Develey', paragraph 19).

It is on that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as a non-distinctive message and not as the trade mark of a particular manufacturer. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is for the applicant to provide specific and substantiated information to show that the trade mark sought has either an intrinsic distinctive character or a distinctive character acquired by usage, since it is much better placed to do so, given its thorough knowledge of the market (see judgment of 05/03/2003, T-194/01, 'Unilever', paragraph 48).

The Office notes the applicant’s comments that the goods concerned would tend to be purchased by both professional and average consumers who when buying those goods concerned would spend a great deal of time and forethought considering the merits of one producer’s products compared to another before one is finally chosen. As such, the applicant appears to be suggesting that as the goods concerned are likely to be a considered purchase the relevant public would undertake the relevant purchase with a higher than average level of care and attention resulting in a heightened level of awareness and consequently the relevant consumer would see the sign The Special One as a badge of sole trade origin and not as a descriptive/non-distinctive term in relation to the goods concerned. Regretfully, the Office cannot agree with this viewpoint.

There is no evidence to suggest that the relevant consumer in the area of the goods claimed would be particularly trade mark ‘educated’ or savvy and would instantly perceive The Special One as a trade mark in relation to the contested goods rather than a descriptive message in relation to the characteristics and/or intended purpose of the goods.

Furthermore, on a similar note, it must be held that the fact that the relevant public is a professional/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 public is, by definition, higher than that of the average consumers carrying out everyday purchases, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist/professional (judgment of 12/07/2012, C-311/11 P, ‘Smart Technologies’, paragraph 48).

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, according to settled case‑law, ‘decisions concerning registration of a sign as a European Union trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, paragraph 35).

It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another (judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 67).

It is important to mention that even though the applicant stated that details of the previous acceptances had been included in their submissions the Office informs the applicant that such details do not actually appear to have been included with the said submissions.

Consequently, due to the reasons set out above, and pursuant to Article 7(1)(b), and 7(2) EUTMR, the application for the European Union Trade Mark The Special One is hereby rejected for all the contested 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. 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.

Sam CONGREVE