Refusal of application for a European Union trade mark

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

Alicante, 16/11/2016

COHAUSZ & FLORACK Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB

Bleichstr. 14

D-40211 Düsseldorf

ALEMANIA

Application No:	015688807
Your reference:	161575EU
Trade mark:	UltraWide Mobile+
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 10/08/2016 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 17/10/2016, which may be summarised as follows:

1. The expression “UltraWide Mobile+” does not have a clearly delineated meaning in respect of the goods applied for.

2. The message conveyed by the mark is non-specific, merely allusive and can be used in a number of different contexts.

3. The term “UltraWide Mobile+” would not be interpreted by average consumers as indicating the goods in question.

4. The expression “UltraWide Mobile+” is not commonly used in the relevant market of sale and distribution of electronic devices.

5. The mark does not consist of characteristics of the goods applied for and the relevant consumer will not see any indication of the quality of the products in the expression.

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.

General remarks on Article 7(1)(c) EUTMR

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 (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 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.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 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’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

Specific remarks concerning the applicant’s observations

1. The expression “UltraWide Mobile+” does not have a clearly delineated meaning in respect of the goods applied for.

The Office disagrees with this argument and asserts that the message conveyed by the mark in relation to the specified goods is clear and unambiguous, ie. mobile electronic goods that feature a very wide screen or monitor.

2. The message conveyed by the mark is non-specific, merely allusive and can be used in a number of different contexts.

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.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added.)

3. The term “UltraWide Mobile+” would not be interpreted by average consumers as indicating the goods in question.

The Office refers to the points above and asserts that the unambiguous message in relation to the goods would not require from the average consumer, who is reasonably well-informed and circumspect, any particular intellectual effort to be immediately understood.

4. The expression “UltraWide Mobile+” is not commonly used in the relevant market of sale and distribution of electronic devices.

The Office refers to point 2 above and reiterates that a mark must be refused if at least one of its possible meanings designates a characteristic of the goods.

5. The mark does not consist of characteristics of the goods applied for and the relevant consumer will not see any indication of the quality of the products in the expression.

The Office disagrees with this argument and asserts that the words clearly and unambiguously refer to characteristics of the goods. The relevant consumer would consider this a desirable quality of such goods, particularly in the current market for wider screens and viewing monitors in mobile devices.

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 015688807 is hereby rejected for the following goods:

Class 09 Display for smart phones; Wearable smart phones; Handheld media players; Tablet PC; Monitor for computers; Monitors for commercial purposes; Wearable computers; Computer; Television.

The application may proceed 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.

Lance EGGLETON