Refusal of application for a European Union trade mark

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

Alicante, 26/04/2017

WITHERS & ROGERS LLP

4 More London Riverside

London SE1 2AU

REINO UNIDO

Application No:	016171621
Your reference:	T122256CTM/DM
Trade mark:	No gap wall mount
Mark type:	Word mark
Applicant:	Samsung Electronics Co., Ltd. 129, Samsung-ro, Yeongtong-gu Suwon-si, Gyeonggi-do REPÚBLICA DE COREA (LA)

The Office raised an objection on 05/01/2017 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 03/03/2016, which may be summarised as follows:

1. The mark is not descriptive, but distinctive.

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.

Descriptive and non-distinctive

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).

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).

The applicant argues that the mark must be assessed as a whole and not unnaturally dissected into its constituent parts.

The Office agrees with the applicant that, 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 Office based its objection on an assessment of the mark as a whole; however, to determine the meaning of mark, it necessary to explain the meaning of the different elements in turn.

The applicant argues that ‘No gap wall mount’ is not a known phrase in the English language. The mark is an unusual combination of the four individual words, which, when considered together, do not form a new phrase with an instantly recognisable meaning.

Furthermore, the applicant argues that the combination of words does not have any obvious meaning in relation to the goods for which registration is sought, namely television sets; television receivers; display panel for television; monitors for commercial purposes, and it would be highly unlikely that the relevant consumers would use these words to describe 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.)

For a trade mark that consists of a neologism or a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) EUTMR, ‘it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so’ (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 31).

The examination of the mark is based on whether the mark as a whole describes characteristics of the goods in question and how the relevant consumers will perceive the mark in the context of these goods, not if the combination of words exist or are in use. It can be noted that:

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts …

(12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32.)

Contrary to the applicant’s argument, the four words ‘No’, ‘gap’, ‘wall’ and ‘mount’ do form a phrase with an instantly recognisable meaning, namely, ‘no space between the wall and the placing of an object’. The message conveyed by the phrase is clear and direct and there are no fanciful elements that would trigger a cognitive process. On the contrary, the phrase provides straightforward information about a feature and the intended purpose of the goods in question.

As for the fact that the mark as a whole is not used in common parlance, the Board of Appeal has held that:

In fact, common use is not necessary for the applicability of Article 7(1)(b) EUTMR. As stated earlier, Article 7(1)(b) EUTMR requires that the trade mark is able to perform the essential function of a trade mark, namely that of identifying the commercial origin of the goods in the mind of the relevant public.

(24/04/2007, 1616/2006-2, GLOBAL IDENTITY, § 16.)

‘No gap’ describes a feature of the goods, namely that they leave ‘no hole’, ‘no space’ or ‘no opening’ between two objects, one of which is specified to be a ‘wall’. ‘Mount’ describes the action of placing or fixing the applicant’s goods on the wall. Therefore, the mark conveys obvious and direct information regarding the intended purpose and a feature of the goods in question.

In the context of the goods in question, the relevant consumers would immediately perceive the mark ‘No gap wall mount’ as indicating that the goods in question are television sets, television receives, display panels for televisions and monitors for commercial purposes that can be mounted on a wall without leaving any space between them and the wall. There are no elements that make the mark fanciful or leave the consumers in doubt about the characteristics of the goods.

As regards the argument that it is up to the Office to show that the mark is used in a descriptive way on 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.

(15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 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 (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

Nevertheless, ‘wall mount’ is an expression that is commonly used in English to refer to the placing or fixing of, for example, a television. See the following examples:

(http://www.homedepot.com/c/wall_mounting_a_flat_screen_tv_HT_PG_EL );

(http://www.currys.co.uk/gbuk/knowhow-tv-wallmount-demo-422-commercial.html ).

In combination with the words ‘no gap’, it is evident that the relevant consumers would understand the meaning of the phrase as attributed to it by the Office.

The applicant argues that no other traders would use a meaningless and nonsensical expression such as ‘No gap wall mount’ to describe their goods.

As demonstrated above, the Office does not consider the combination of words meaningless or uncommon in relation to the goods in question; therefore, it is likely that competitors may use the expression or a very similar expression to describe their goods.

It must be observed that the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) EUTMR, does not depend on there being a real, current or serious need to leave a sign or indication free (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 39).

‘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 service in question … The lack of prior use cannot automatically indicate such a perception’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

In conclusion, the Office maintains that the mark is descriptive and non-distinctive for the goods for which registration is sought.

Further proceedings

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 16 171 621 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.

Anja Pernille LIGUNA