Refusal of application for a European Union trade mark

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

Alicante, 02/06/2016

COHAUSZ & FLORACK Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB

Bleichstr. 14

D-40211 Düsseldorf

ALEMANIA

Application No:	014995311
Your reference:	160059EU
Trade mark:	Finger ID
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 27/01/2016 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 01/04/2016, which may be summarised as follows:

1. The application has distinctive character and fulfils the essential function of a trade mark, that is in particular to guarantee the trade mark as an indication of origin, namely to distinguish the products of one undertaking from those of other undertakings. The expression ‘FINGER ID’ does not have a clearly delineated meaning, at least with respect to the goods covered by the application. The message conveyed by the mark applied for is non-specific. Even when the particular goods are known, the expression is vague, merely allusive and can be used in a number of different contexts.

2. The Office understands the words ‘FINGER ID’ to immediately inform consumers without further reflection that the goods applied for are apparatus or sensors with a safety feature of identification with the help of a finger to operate them and/or computer software to operate such apparatus and sensors. However, such understanding does not make any sense. What exactly means ‘FINGER ID’? What is the meaning of ID when brought in context with a FINGER? Does it stand for identity document? Or rather the military “dog tag IDs” as they are worn by soldiers? But what is the exact meaning when related to “Finger”?

3. The expression ‘FINGER ID’ is not commonly used in the relevant market of sale and distribution of electronic devices.

4. As regards software goods such as operating system programs or hardware goods like computers, handsets, walkie-talkies and PDAs claimed by the application, the expression ‘FINGER ID’ has no meaning at all.

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

6. The awareness of the relevant public, given the relatively high technical level of the products, will be higher than normal. Any decision to take up the goods offered by the applicant under the proposed mark will be made only after thorough analysis of the experience and the capabilities of the applicant and after comparisons with similar goods of other undertakings. Various products and their producers will be closely scrutinized over a period of time. In turn, this means that the sign under which each producer trade will become known to the relevant consumer during the deliberation process.

7. Likewise, the mark ‘FINGER ID’ will be found on the applicant’s product packaging etc. and will become associated in the mind of the consumer with the goods in question. The relevant consumers will know that the expression ‘FINGER ID’ is not an expression used for the applied goods.

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).

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially.

(See judgment of 12/02/2004, C‑363/99, ‘Koninklijke KPN Nederland’, paragraph 102.)

It is the Office opinion that ‘FINGER ID’ will be understood as a meaningful expression by the consumers as identification with the help or impression or mark made on a surface by a person’s fingertip thus describing a function in the apparatus, sensors or hardware applied for a safety feature of identification of a user with the help of a fingerprint before the apparatus, sensors or hardware can be used and/or computer software to operate such apparatus and sensors. It is not uncommon to identify yourself with a fingertip or fingerprint. There are an increasing number of electronic devices that are using fingerprint identification for the user or users to access the device, thus ‘FINGER ID’ will indicate a function of the apparatus and are therefore descriptive.

The Office agrees with the applicant that the attention of the consumer will be higher than normal when purchasing the objected goods. This does not however contribute to make the sign less descriptive. With a higher level of attention from the consumer it is, in the Office view, that the consumer will make the connection between ‘FINGER ID’ and see it as a function of the product not an indication of origin.

Regarding the applicant’s statement that the mark will be found on the product packaging etc. and therefore associate the mark ‘FINGER ID’ to the applicant’s products. It is the Office view that the word ‘FINGER ID’ on a packaging of a product would in a consumers mind firstly be seen as a description of the goods inside the packaging or a function of that goods, not as an indication of commercial origin of that product.

Furthermore a search on the internet on the 02/06/2016 shows that, while not widely used at the moment for all the objected goods, the technology of FINGER identification exist for electronic apparatus.

https://www.qualcomm.com/products/snapdragon/security/sense-id

http://www.winbeta.org/news/surface-pro-4-type-cover-with-FINGER-id-coming-to-uk-germany-on-march-15

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 14 995 311 is hereby rejected for the following goods:

Class 7 Dish washing machines for household purposes; Automatic dishwashers; Washing machines; Laundry washing machines for household use; Electric washing machines for household purposes; Clothes washing machines; Dishwashers; Dishwashing machines for household purposes; Spin dryers for household purposes (not heated); Clothes managing apparatus for laundry use; Electric clothes managing apparatus for household purposes; Steam cleaners for household purposes; Electric cleaners for household purposes; Vacuum cleaners; Robot cleaners for household purposes; Bed cleaners for household purposes; Solar power generators.

Class 9 Computer application software for smart phones/ mobile phones/ smart televisions/ handheld electric communication devices (for use in Internet of Things); Motion recognizing sensors; Gyro sensors using GPS functions; Motion detectors; Invader sensors; Sensors for privacy protection; Alarm sensors for refrigerators; Alarm sensors for laundry washing machines; Range sensors; Digital sensory devices; Sensor controllers; Pressure sensors; Sensors for measuring instruments; Window opening and closing detecting sensors; Object detecting sensors; Door opening and closing detecting sensors; Remote control apparatus; USB Dongle (wireless network adapters); Transmitters and receivers of electronic signals; Adapters for connecting wireless network; Multifunctional touch buttons; Sensor stations; Audio speakers; Monitors (computer hardware); Door locks; TV remote controls; Remote controls for electronic products; Home network devices; Electronic security system for home network; Home automation device; Downloadable smart phone application (software); Interfaces and peripheral devices for computers; Cloud server; Server for home network system; Server for home automation; Digital audio interface apparatus; Wireless audio/ video receivers; Wireless communication apparatus; Computer software for the remote control of security apparatus; Computer software for the remote control of office machines; Computer software for the remote control of electric lighting apparatus; Application software for the remote control of electronic apparatus/ home appliances; Computer software for the remote control of electronic apparatus/ home appliances; Computer programs for the remote control of electronic apparatus/ home appliances (for installation of electronic apparatus/ home appliances); Computer software for the remote control of telephones/ wireless phones; Computer software for the remote control of vacuum cleaners/ printers/ computers; Smartphones; Display for smartphones; Cellular phones; Wearable smartphones; Wireless headsets; Headsets; Wireless headset for cellphones; Wireless headsets for smartphones; Digital set top boxes; computer application software; Computer software applications, downloadable; Computer application software for mobile phones; Computer software for cellular phones; Computer software for Smart TV; Tablet PC; Monitors for industrial purposes; Wearable computers; Computers; Printers for use with computers; Light emitting diode (LED) displays; Portable computers; Battery compensation chargers; 3D spectacles; Digital cameras; Network monitoring cameras; Television receivers; Displays for television receivers; Audio component system {comprised of surrounding sound speakers/ loudspeakers/ tuners/ sound mixers/ equalizers/ audio recorders/ radio}; Apparatus for the recording/ transmission or reproduction of sound and images; Earphones; DVD players; Portable 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; Automatic control apparatus and instruments; Light switches; Remote multi switches; Electric power distribution apparatus; Apparatus for improving power efficiency; Apparatus and instruments for conveying, distributing, transforming, storing, regulating or controlling electric current; Lighting control apparatus; Apparatus for diagnosing electrical power installations; Apparatus for measuring/ monitoring/ analyzing electricity consumption; 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; Telemetric apparatus and instruments; Remote control telemetering machines and apparatus; Mobile phones; Telecommunication machines and implements; Remote control apparatus for controlling lighting; Telecommunication converters; Computer software for controlling and managing access server applications; Computer programs for connecting remotely to computers or computer networks; Computer software; Digital electronic controllers; Accumulators for photovoltaic power; Electric control devices for heating and energy management; Computer hardware modules for use in internet of things electronic devices; Computer software and firmware used to allow electronic devices to share data and communicate with each other; Computer operating system software; Electronic device software drivers that allow computer hardware and electronic devices to communicate with each other; Middleware for management of software functions on electronic devices; Software for network and device security; Computer software for others to use for the development of software to manage, operate and connect internet of things (electronic devices); Software for mobile device management; Bands with sensors; Watchbands that communicate data to personal digital assistants, smartphones, and personal computers through internet websites and other computer and electronic communication networks; Bracelets that communicate data to personal digital assistants, smartphones, and personal computers through internet websites and other computer and electronic communication networks.

Class 11 Lightings for bathroom; Lightings for master rooms; Gas ranges; Gas oven range; Cooking ovens for household purposes; Ovens; Kitchen ranges (ovens); Hot-water heating apparatus; Solar heating apparatus; Gas refrigerators; Air conditioners for household purposes; Air conditioners; Air conditioning installations; Air conditioning apparatus; Fans (air-conditioning); Portable air conditioners; Cooling fans; Freezers; Heating and air conditioning apparatus; Heating installations; Refrigerating or freezing showcases; Refrigerating containers; Room air conditioners; Room coolers; Refrigerating display cabinets; Range hoods for household purposes; Ventilators for household use; Ventilating fans for household use; Ventilation installations for kitchens; Solar thermal collectors (heating); Air purifiers for automobiles; Heating and cooling systems for motor cars; Air conditioners for automobiles; Heat exchangers for automobiles; Lighting apparatus and devices for automobiles; Air purifiers (for household purposes); Household air cleaners; Air sterilizers for household purposes; Air cleaning apparatus for household purposes; Ionization apparatus for the treatment of air or water; Air humidifying apparatus; Air driers; Air sterilizing and disinfecting device; Air purifiers; Filters for air purifiers; Water filters for household purposes; Water ionizers (for household purposes); Desalination plants; Water sterilizers; Water filtering apparatus; Water purification installations; Water purifying apparatus; Water purifying apparatus and machines; Tap-water purifying apparatus; Water purifying apparatus; Purification installations for sewage; Electric lighting apparatus; Solar cell lighting apparatus; Electric humidifiers for household use; Electric drying apparatus for household purposes; Electric dehumidifiers for household purposes; Dehumidifiers for household use; Anion generator humidifier; Laundry dryers, electric for household purposes; Electric dish drying machines for household purposes; Electric clothes drying machines for household purposes; Clothes dryers; Electric dehydrators; Electric ovens for household purposes; Induction ranges; Electric ranges; Electric oven ranges; Microwave ovens; Refrigerators for household purposes; Electric refrigerators (for household purposes); Electric wine cellar for household purposes; Electric water purifiers for household purposes; Electric water purification filters for household purposes; microwave ovens for household purposes; Kimchi refrigerators; Refrigerators; Wine refrigerators; Electric humidifiers; Electric refrigerators; Electric refrigerating showcases; Electric wine coolers; Electric sterilizers for household purposes; Heat exchangers.

Class 14 Clocks; Parts and fittings for watches; Wristwatches; Electronic clocks and watches; Bracelets; Watch bands; Control clocks (master clocks); Watches with wireless communication function; Watches that communicate data to personal digital assistants, smartphones, and personal computers through internet websites and other computer and electronic communication networks; Watches incorporating cameras and MP3 players, and that communicate data to smartphones and PDA.

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