Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 23/11/2017

WITHERS & ROGERS LLP

4 More London Riverside

London SE1 2AU

REINO UNIDO

Application No:	016442105
Your reference:	T122627CTM/MC
Trade mark:	HDR10 PLUS
Mark type:	Word mark
Applicant:	SAMSUNG ELECTRONICS CO., LTD. 129, Samsung-ro, Yeongtong-gu Suwon-si, Gyeonggi-do - REPÚBLICA DE COREA (LA)

1. After re-examination of the application, the Office raised an objection on 01/08/2017 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.

2. The applicant submitted its observations on 27/09/2017, which may be summarised as follows:

• The applicant finds that there are serious issues with the Office’s reasoning in refusing the mark, much of which is drawn from the non-objective submissions of competitors of the applicant.

• Enclosed is a table of registered trade marks featuring the word PLUS combined with a non-distinctive term. This is the exact structure which the Office and third parties find unacceptable in the applicant´s mark; the applicant´s mark must therefore also be accepted. The applications mentioned were filed no earlier than 2015 and there has not been any great change in the law since then which would allow the Office to reach a drastically different conclusion.

• The applicant also encloses a list of marks consisting of the word PLUS alone, or with minor stylistic elements, as well as a list of marks consisting of the letters HDR, or the letters HDR with other elements which would be considered non-distinctive, that all have been allowed registration by the Office.

• Further examples are given of accepted marks containing the letters HD (meaning “High Definition”) which would not be treated any differently than the acronym HDR.

• When examined as a whole, the mark applied for will not be recognised as a term descriptive of the goods and services. As has been shown by the marks previously accepted by the Office, minor additions to HDR are more than sufficient to inform the consumer that the sign is functioning as an indicator of origin. The same goes for the word PLUS.

• The mark is neither descriptive nor non-distinctive. The Office has not shown that the mark has an easily discernible meaning or that it is used as a whole in trade.

• The applicant refers to case law in support of its arguments

3. 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).

The Office cannot detect anything distinctive whatsoever about the mark HDR10 PLUS in relation to the goods and services at issue.

HDR is an official abbreviation for “High Dynamic Range” and the number 10 refers to the bit depth. As such, the term HDR10 is totally descriptive and obviously cannot be monopolised in relation to any goods or services applying or supporting this standard. The word PLUS adds no distinctive character to the mark as a whole but would merely be interpreted as an extra added quality or an improved version of the HDR10 standard.

The applicant has not questioned the descriptive meaning of the term HDR10 in the mark but mainly refers to marks with a similar structure to HDR10 PLUS that previously have been registered. Among others, the applicant refers to a number of registered marks filed by LG Electronics such as CAM PLUS, Hi-Fi Plus, Sound Plus and Play Plus. In fact, all these marks apart from two (HEALTH PLUS and HEALTHCARE PLUS) were considered descriptive and were partially refused by the Office.

Other marks referred to by the applicant consisting of or containing the terms PLUS, HDR, or HD were also either partially refused, registered in other Member States or simply distinctive as a whole.

Apart from the partially refused marks that the applicant refers to, the Office has also rejected a multitude of marks containing the words PLUS or HDR, see a few examples below:

013778972  - PLUS (fig.)

003572898  - PLUS

015310171  - HDR PREMIUM (applicant´s own mark)

015152011  - HDR 1000 (applicant´s own mark)

The fact that the word PLUS signifies that goods or services have additional features or advantages has also been established on a number of occasions. The list of decisions in this regard is long, see some examples below:

16/12/2010, T-497/09, Kompressor Plus, EU:T:2010:540

30/09/1998, R 66/1998-1, COMFORT PLUS

08/09/1999, R 8/1999-3, QUICK VIEW PLUS

15/10/1999, R 201/1998-1, EuroVorsorge PLUS

15/12/1999, R 329/1999-1, PLATINUM PLUS

16/05/2000, R 416/1999-1, LIFE PLUS

14/05/2001, R 257/2000-4, e plus / PLUS

18/09/2002, R 387/1999-2, ENERGY PLUS

11/12/2002, R 735/2002-3, ErdgasPlus

09/07/2003, R 101/2003-1, COMFORT PLUS

07/10/2003, R 642/2000-4, SUNPLUS / SUN

02/08/2004, R 262/2003-2, ECONOMY PLUS

13/10/2004, R 704/2004-2, THERAPY PLUS

24/01/2005, R 580/2004-1, CONVERSION PLUS

16/02/2006, R 915/2005-2, EUROSTOCKSPLUS

02/06/2006, R 1496/2005-1, TOLL FREE PLUS

29/06/006, R 44/2006-4, WATER PLUS

08/09/2006, R 515/2006-2, PREMIUM PLUS

25/05/2007, R 273/2007-2, PENSION PLU;

12/06/2007, R 271/2007-2, BONDS PLUS

30/07/2007, R 567/2007-2, RESULTS PLUS

05/10/2007, R 662/2007-4, COMMODITIES PLUS

26/11/2007, R 435/2007-1, PLUS

07/05/2008, R 655/2007-1, Foamplus

28/08/2008, R 497/2008-4, STOCKSPLUS

10/09/2008, R 1143/2007-1, Cura Plus

04/12/2008, R 1158/2008-1, FILM PLUS

01/09/2009, R 1707/2008-4, PRECISION XTRA PLUS

30/08/2010, R 1462/2009-4, Security-Plus

17/04/2013, R 1179/2012-1, PUREPLUS

07/06/2012, R 2619/2011-1, CLOUDPLUS

23/01/2012, R 1565/2011-4, WOHNKONZEPT 50 PLUS

28/04/2014, R 2368/2013-4, LUXPLUS

03/03/2014, R 1847/12013-1, ULTRASAFE PLUS

26/11/2014, R 1732/2014-4, PLUS-SERIE

Indeed, there are sound legal principles to support the partial refusal of the applicant´s mark.

There is also already generic use of the whole term HDR10 PLUS or HDR10+. See the following as an example:

“If you already thought the situation was confusing then buckle up, because you’re going to have to get familiar with another standard pretty soon. It’s name is HDR10+, and it wants to bring the same advanced functionality of Dolby Vision to an open standard. 

http://www.techradar.com/news/hdr10-the-new-hdr-standard-thats-taking-a-leaf-out-of-dolbys-book

When conducting a Google search on the term HDR10 PLUS or HDR10+ it is obvious that it is a new form of standard or format already used by several traders in the relevant field. As a whole, the mark will not be recognised as an indicator of commercial origin but as a descriptive term that cannot be linked to one single provider.

4. 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 016442105 is hereby rejected for the following goods:

Class 9 Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; cash registers, calculating machines, data processing equipment, computers; computer software; cinema processors for motion pictures; cinema servers; motion picture cinematographic films; visual enhancing apparatus and software for use in connection with the processing, recording, reproduction, broadcasting, streaming, transmission, and reception of electronic or digital signals; video encoders, video decoders, video codecs; computer programs, computer software, computer hardware and components of computers and other digital devices used for generating, processing, measuring, analyzing, recording, amplifying, enhancing, reproducing, transmitting, controlling, testing, receiving and playing visual signals, files and images; computer hardware and software, and computer hardware and software systems, for operating interactive TV and Over-The-Top (OTT) video and audio services, and for generating and displaying video-on-demand programming, visual media, TV programs, digital animation, video clips, film footage and audio data; digital signal processing chips; integrated circuits; graphics cards; magnetic, optical, and digital storage media, namely, recordable discs, hard drives, solid state drives, flash drives, pre-recorded computer discs, compact discs, video discs, digital versatile discs, digital video discs, DVD discs, high definition digital discs; high capacity digital and optical/magneto-optical discs, ultraviolet discs, optical and magneto-optical discs; downloadable video recordings, streamed video recordings; broadcast video recordings; video converters, video adapters, and converter and adapter units for use in theaters; cinematographic equipment, theater projection equipment, digital projection equipment, 3D projection equipment, home video projection equipment; alignment and test equipment for use with video equipment used in connection with the processing, recording, reproduction, broadcasting, streaming, transmission, and reception of electronic or digital signals; televisions; displays; monitors; portable recording and playback equipment; video cameras; video interfaces; display management software; video and computer games; content creation tool for on-set viewing, images, signals, videos, and film visual effects; motion picture theater screens; set top boxes; optical and magneto-optical disc players and recorders for audio, video and computer data; next generation disc players; graphics processors; display management equipment; computers; tablet computers; mobile phones; smart phones; mobile devices; internet-connected receivers and streaming devices; over-the-top content (OTT) boxes, digital media streaming devices, audio-video receivers; electronic apparatus and devices for controlling access to pay-television services; electronic components for computers; electronic and optical communications instruments and components, namely, digital transmitters; computer hardware and software for use in connection with the processing, recording, reproduction, broadcasting, streaming, transmission, and reception of electronic or digital signals; computer programs for video and computer games for playing and enhancing video and computer games; visual enhancing apparatus in the nature of camera filters, film editing equipment, video editing equipment, video decoders, graphics processors.

Class 28 Computer and video game consoles.

Class 38 Telecommunications; digital and electronic transmission of voice, data, sound, music, graphics, images, audio, video, information, and messages; video on demand (VOD) transmission services; digital media streaming services; transmission of network and satellite television programming.

The application may proceed for the remaining goods, namely for:

Class 9 Mechanisms for coin-operated apparatus; fire-extinguishing apparatus.

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.

Cecilia ALIN