Refusal of application for a European Union trade mark

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

Alicante, 30/06/2017

WITHERS & ROGERS LLP

4 More London Riverside

London SE1 2AU

REINO UNIDO

Application No:	016391518
Your reference:	T122541CTM/FM
Trade mark:	Soundbar Sound+
Mark type:	Figurative 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 01/03/2017 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 31/03/2017, which may be summarised as follows:

1. The mark applied for, , is not used as a whole in reference to the goods in common parlance of the trade. There is no legitimate need to reserve the mark as whole free for other traders.

2. The mark applied for is semantically, visually and grammatically original. Its stylisation renders it unusual in the perception of the average consumer. Due to its stylisation, the relevant public will be able to recognize the mark as an indicator of a particular commercial origin.

3. The Office has recently accepted an EUTM application for a similar mark for comparable goods (EUTM no. 0015796519 ‘Sound+’).

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 (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).

As regards the applicant's observations, the Office replies as follows:

In its submissions the applicant has argued that the mark applied for, , is not used as a whole in reference to the goods in common parlance of the trade. There is no legitimate need to reserve the mark as whole free for other traders.

The Office has noted the applicant’s submissions. However, it must be advised that 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).

As regards the applicant’s argument that third parties, and more particularly its competitors, do not need to use the sign at issue to designate the goods to which the application relates, 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 applicant further argues that the mark applied for is semantically, visually and grammatically original. Its stylisation renders it unusual in the perception of the average consumer. Due to its stylisation, the relevant public will be able to recognize the mark as an indicator of a particular commercial origin.

The Office has noted the applicant’s submissions. However, it must be advised that, when assessing a mark, the Office must consider it, not in its strictest grammatical sense, but how it would represent itself to the public at large who are to look at it in relation to the goods and services for which registration is being sought, and form an opinion of what it connotes.

The sign at issue is composed of two English words, both of which are descriptive in relation to the goods claimed, and a sign ‘+’. The word ‘Sound’ together with the sign’ +’ informs the consumer that the goods at issue feature or are mean to provide a superior quality sound, while the word ‘Soundbar’ indicates that the respective goods directly feature or are meant to be used with a bar-shaped device containing multiple speakers. The applicant admits that these elements on their own may be descriptive but argues that their combination and stylisation as one sign is semantically, visually and grammatically original.

This argument of the applicant must be dismissed. The mere superposition of two descriptive dictionary words in different font sizes does not in itself represent a striking or in other way inventive enough stylisation which would automatically endow the sign with a sufficient degree of distinctive character. This is in line with the Common Communication on the Common Practice of Distinctiveness – Figurative Marks containing descriptive/non-distinctive words from 2 October 2015, according to which ‘…the fact that the word elements are arranged in vertical, upside-down or in one or more lines is not sufficient to endow the sign with the minimum degree of distinctive character that is necessary for registration’. The English speaking public will immediately perceive all elements of the sign applied for and make an instinctive dissection of the whole. 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 (judgment of 19/09/2001, T-118/00, ‘Tablette carrée blanche, tachetée de vert, and vert pâle’, paragraph 59).

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) [CTMR], 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 … (see judgment of 12/01/2005, joined cases T-367/02, T-368/02 and T-369/02, ‘SnTEM’, paragraph 32).

The expression ‘Soundbar Sound+’ immediately informs consumers without further reflection that the contested goods the goods applied for directly relate to devices, apparatus and relating accessories that come equipped with or can be used with a soundbar, and/or are capable of producing a superior, soundbar-like, quality sound. The combined words provide a straightforward and clear message in relation to the goods concerned. There is nothing abstract about the expression ‘Soundbar Sound Plus’ as its semantic content, in relation to the goods applied for, is rather obvious. The meaning of the expression as a whole applied to the relevant goods is simply the

sum of the individual terms ‘Soundbar’, Sound’ and ‘Plus’ and it will be perceived with

that meaning. The way in which the elements are juxtaposed follows the rules of English grammar and common parlance.

The Office is of the opinion that the sign at hand is a straightforward combination of three descriptive elements, which does not create an impression sufficiently far removed from that produced by the mere combination of the elements of which it is composed to amount to more than the sum of its parts.

The mark at issue conveys obvious and direct information regarding the kind, quality and intended purpose of the goods in question. The term ‘Soundbar Sound+’’ consists the mark consists essentially of an expression that, notwithstanding certain stylised elements, will be easily understood by the relevant public, which will perceive it not as a trade mark but as a descriptive indication of the characteristics of the goods in question.

Finally, as regards to the applicant’s argument that the Office has recently accepted an EUTM application for a similar mark for comparable goods (EUTM no. 015796519 ‘Sound+’), the Office has noted applicant’s comments.

However, the applicant cannot successfully rely on other and registered EU trade mark for the same or similar goods in Class 9. The circumstances which led to the acceptance of the mark cited cannot be subject of the objections in the present proceedings nor does it represent a valid argument in order to overcome the objection of descriptive character and lack of distinctiveness of the sign at hand. Every trade mark undergoes its own examination procedure, the outcome of which is based on specific grounds.

The ‘Sound+’ denominated EUTM registration no. 015796519 has been considered distinctive in its own right. The Office does not consider that it should follow this example, for the reasons stated above. Furthermore, more favourable Office decisions in allegedly similar cases cannot entitle to an equal treatment that may lead to a registration of the trade mark in question. The mere fact that, in other cases relating to other marks, a less restrictive approach may have prevailed, does not amount to a violation of the principle of non-discrimination, or to a reason for invalidating a decision which per se appears to be reasonable and to conform to the EUTMR, as interpreted by EU judicature. 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 (‘Streamserve’; 02/05/2012, T-435/11, ‘UniversalPHOLED’, EU:T:2012:210). Accordingly, if in previous case the Office has maybe incorrectly taken an overly generous approach, that error should not be compounded by following such an approach in a subsequent case.

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 (15/09/2005, C 37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T 36/01, Glass pattern, EU:T:2002:245, § 35).

It derives from all the foregoing that the applicant has not succeeded in convincing the Office that the sign will be perceived by the consumers as pointing to the commercial origin of the goods applied for. For the reasons mentioned above, the sign at hand does not possess any actual distinctive character for the goods applied for, pursuant to Article 7(1)(b) and (c) EUTMR and in combination with Article 7(2) EUTMR, and is therefore unable function as a trade mark in the market place, i.e. it fails to distinguish the goods of the applicant from those of other undertakings.

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 16 391 518 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.

Robert KLECUN