Refusal of application for a European Union trade mark

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

Alicante, 17/05/2017

COHAUSZ & FLORACK Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB

Bleichstr. 14

D-40211 Düsseldorf

ALEMANIA

Application No:	016095821
Your reference:	162299EU
Trade mark:	WATCH STYLE
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 16/12/2016 pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR because it found that the trade mark applied for ‘WATCH STYLE’ is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 14/02/2017, which may be summarised as follows:

1. As a result of high attentiveness of the relevant public, the sign is distinctive for the goods in question.

2. There is no direct relationship between the sign and the goods in question, rather the sign is vague and allusive for the goods applied for.

3. There is no use of the sign in relation to the goods in question.

4. There may be several meanings of the sign in relation to the goods in question.

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.

The applicant argues that for the goods in question the professional public and the consumers spend reasonable time for purchasing such high technical level of goods. That’s why it is unlikely for the relevant public of the goods in question understand the sign same as the Office. However, the Office does not share the view of the applicant. As it was mentioned in the previous letter, the Office stated that the goods in question are aimed at both average consumers and a professional public. The Office still maintains its position in this regard. However, with regards to this argument of the applicant, it should be noted that even if the products are intended for only professional public it will not change the outcome.

The Office considers that the high level of attention does not suffice, on its own, to establish that the consumer will recognize an indication of origin when confronted with such non-distinctive elements, unless it is represented in a really striking manner, which is not the case for the sign in question. Consumers do not tend to embark on analytical or complex analyses of indications on goods and services they are confronted with and they will perceive the sign ‘WATCH STYLE’ as a meaningful combination conveying direct information regarding the kind and the characteristics of the goods applied for. It is the Office’s view that, in the present case, the sign applied for is descriptive of the characteristics of the goods in question that it cannot carry out the ultimate function of the trade mark, even if the degree of the awareness of the relevant public would be higher than average. It is, therefore, the Office’s opinion that it will not be seen as a badge of origin and cannot be perceived as having the role of a trade mark.

Moreover, a high attentiveness on the part of the relevant public does not imply that a sign is less subject to any absolute grounds of refusal. In fact, it can be quite the contrary; terms which are not (fully) understood by the consumers of cheap mass consumption goods, can be grasped immediately by the specialized public, in particular if the sign is composed of words which relate to the field in which the latter public is active (see the Decision of BoA, 08/02/2017, R 1558/2016-2, Confirm Rx, § 17).

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).

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, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59). The words ‘WATCH’ and ‘STYLE’ separately and the combination of them as ‘WATCH STYLE’ are easily understandable by the relevant public regarding the characteristics of the goods in question namely, stylish goods which have higher quality in appearance and design.

As a general rule, the mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics within the meaning of Article 7(1)(c) EUTMR. Merely bringing those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned. (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 40, 41; 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 99, 100; similarly 16/09/2004, C-329/02 P, SAT.2, EU:C:2004:532; 15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 29). In the present case, the meaning of the combination ‘WATCH STYLE’ is not more than the meaning of the words ‘WATCH’ and ‘STYLE’ separately. There is nothing unusual for the combination ‘WATCH STYLE’ as to syntax or meaning considering the words alone.

Moreover, there is nothing vague or allusive in this obviously meaningful statement. The mark is not supposed to cause customers to wonder or philosophise about the goods in question, but to simply conveys obvious and direct information regarding the kind and the characteristics of them (see by analogy BoA decision 07/07/2011, R 238/2011-4, DESIGNED TO DO MORE, § 23). English-speaking consumers will clearly, immediately and unambiguously understand the meaning of the sign ‘WATCH STYLE’ and perceive it exclusively descriptive for the goods in question. Accordingly, contrary to what is argued by the applicant, the Office still maintains its position that the link between the goods in question and the sign is direct and obvious.

The applicant further argues that the sign WATCH STYLE is not commonly used in the relevant market for the sale or the distribution of such electronic devices. The applicant further argues that the sign can be used in a number of different contexts for the goods in question. 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.)

Moreover, as pointed out above, the sign in question need not already be known as a descriptive indication; it is enough if it can reasonably be expected to be understood as such in the future. Therefore, it is irrelevant whether or not the sign at issue is commonly used in the sector concerned (21/10/2004, C‑64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 46). It is settled case-law that: ‘the formulation “may serve” in Article 7(1)(c) EUTMR shows that a sign or indication must be refused registration if it may serve in trade to designate the characteristics of the goods, without its being necessary to show that the sign or indication is actually used or needed by the trade in question’ (16/06/1999, R 216/1998-1, DOUBLEMINT, § 12).

It should also be mentioned that, as confirmed by the Court in judgment of 15/02/2007, C-239/05, The Kitchen Company, EU:C:2007:99, § 37, 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 and services concerned ( see BoA decision of 31/08/2016, R 634/2016-2, EASYFLY, § 33). Consequently, in this regard the argument of the applicant stating that the Office should indicate the descriptive meaning for all the goods in question shall be rejected.

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 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).

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that 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’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Contrary to the applicant’s arguments in its observations, according to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character, which is clearly applicable to the present case.

The fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin (see judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 84).

The Office does not dispute the fact that the sign ‘WATCH STYLE’, taken in isolation and without any goods and services to use as a point of reference for assessment, might have various different meanings. However, the Office would like to emphasise that the mere fact that the word happens to have another meaning does not entitle the trade mark to be registered. It is not uncommon for a word to have more than one meaning, depending on the context, and this does not preclude a legitimate objection being raised under Article 7(1)(b) EUTMR.

In relation to the applicant’s submissions concerning the absence of the sign in the trade in relation to the goods/services at issue, the Office would like to note that according to the settled case-law 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 and services (see 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 of third parties to use or a concrete interest of third parties in using the term applied for (judgment of 04/05/1999, C‑108/97, ‘Chiemsee’, paragraph 35; and judgment of 12/02/2004, C‑363/99, ‘Postkantoor’, paragraph 61).

Moreover, the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question. The lack of prior use cannot automatically indicate such a perception’ (judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 88).

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 16 095 821 – WATCH STYLE is hereby rejected for all the goods claimed.

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.

Kubilay ÖZDEMIR