Refusal of application for a European Union trade mark

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

Alicante, 12/09/2017

ISERN PATENTES Y MARCAS, S.L.

Avenida Diagonal, 463 bis, 2° piso

E-08036 Barcelona

SPAIN

Application No:	16 611 402
Your reference:	OT53710
Trade mark:	AMBIENT VIEWING EXPERIENCE
Mark type:	Word mark
Applicant:	SAMSUNG ELECTRONICS CO., LTD. 129, Samsung-ro, Yeongtong-gu Suwon-si, Gyeonggi-do - REPÚBLIC OF KOREA

The Office raised an objection on 26/05/2017 pursuant to Article 7(1)(b) and Article 7(2) EUTMR, because it found that the mark applied for was devoid of any distinctive character in relation to all the goods for which registration is sought, for the reasons set out in the attached letter.

The applicant submitted its observations on 21/07/2017, which may be summarised as follows:

1. The mark applied for, ‑ ‘AMBIENT VIEWING EXPERIENCE’ ‑, is not descriptive of the goods for which registration is sought. The mere fact that a trade mark conveys a descriptive message to the public does not support the conclusion that it is devoid of distinctive character (21/01/2010, C.398/08, Vorsprung durch Technik, EU:C:2010:29, § 58).

2. The mark will be perceived as a short and striking memorable phrase.

3. Contrary to the examiner’s findings, the mark does not relate to specific features of the goods concerned, such as their design. The adjective ‘AMBIENT’ refers to consumers’ mood, rather than to any feature of television sets or receivers, which are complementary goods that may be incorporated in TV apparatus.

4. The Office has already accepted for registration similar slogans, and the applicant refers to a selection of those trade marks.

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, and having re-considered the mark in accordance with the case-law mentioned below, the Office maintains that the mark applied for is not capable of functioning as a badge of commercial origin for the goods for which registration is sought.

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).

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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).

It is clear from the wording of Article 7(1)(b) EUTMR that a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in that provision (15/09/2005, T-320/03, Live richly, EU:T:2005:325, § 68).

Registration of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use (04/10/2001, C-517/99, Bravo, EU:C:2001:510, § 40). In addition, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign (11/12/2001, T-138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44). It is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44). Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

Regarding the applicant’s first argument, it suffices to state that the objection raised against the mark is only under Article 7(1)(b) EUTMR, and not under Article 7(1)(c) EUTMR. The mark applied for, ‘AMBIENT VIEWING EXPPERIENCE’, was found to be non-distinctive per se, and not because of its descriptiveness. Furthermore, in relation to the objection under Article 7(1)(b) EUTMR, a finding of descriptiveness is not required. As already mentioned in the introductory part of this decision, each of the grounds for refusal listed in Article 7(1) EUTMR is independent and requires separate examination. Therefore, all the applicant’s arguments relating to the non-descriptiveness of the mark at issue are irrelevant.

As regard the applicant’s second objection, it is settled case-law that a sign which fulfils functions other than that of a trade mark in the traditional sense of the term, such as an advertising slogan, is only distinctive for the purposes of Article 7(1)(b) EUTM if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin (05/12/2002, T-130/01, Real People, Real Solutions, E:T:2002:301, § 20; 13/04/2011, T-523/09, Wir machen das Besondere einfach, EU:T:2011:175, § 31 confirmed by 12/07/2012, C-311/11 P, EU:C:2012:460). For all the reasons indicated in the notice of provisional refusal and in this decision, the Office does find this to be the case with the mark at issue, even if it could be perceived by the relevant public as a short, striking phrase. On this point, it is also to be recalled that length is not a conclusive factor in finding that a mark is distinctive or not.

The crux of the notification of refusal was that the Office expected the consumer to view the mark only as a slogan, and not as an indication of trade origin. A slogan, to be registered as a trade mark, must possess ‘“a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public”’ (21/01/2010, C-398/08 P, Vorsprung Durch Technik, EU:C:2010:29, § 57). The Office does not consider that the promotional message conveyed by the slogan ‘AMBIENT VIEWING EXPERIENCE’, which is per se simple and clear and, therefore, easily understandable, requires any effort of interpretation on the part of the potential consumers of the goods concerned, namely television sets; television receivers, or sets off a cognitive process in the minds of those consumers.

In reply to the applicant’s third argument, the Office, first, points out that ‘AMBIENT’ is an adjective, which means, inter alia, creating a relaxing atmosphere, and is also used to describe atmosphere, light, music, etc. (information extracted from Collins English Dictionary on 05/09/2017 at https://www.collinsdictionary.com/dictionary/english/ambient ). In that context, it can refer to the consumers’ mood, for example, referring to the creation of an ambient mood at home.

As regards the applicant’s arguments relating to the nature of the goods concerned, television sets; television receivers, those goods are defined as follows:

TELEVISION SET noun

another name for television

TELEVISION countable noun

A television or television set is a piece of electrical equipment consisting of a box with a glass screen on it on which you can watch programmes with pictures and sounds.

RECEIVER noun

A receiver is the part of a radio or television that picks up signals and converts them into sound or pictures.

(information extracted from Collins English Dictionary on 05/09/2017 at https://www.collinsdictionary.com/dictionary/english/television-set )

In addition, it is well-known that televisions or television sets come in a variety of designs and are equipped with various, specialised technologies, including technologies that are specifically intended for creating a relaxing atmosphere for watching TV programmes, such as ambient screen back-lighting.

Therefore, the relevant consumer, when encountering the mark in relation to television sets; television receivers would perceive it merely as a promotional, laudatory message the function of which is to communicate that the applicant’s goods are designed to enable customers to enjoy an ambient TV watching experience. It would inform all potential users only that the applicant’s goods possess features, such as a beautiful design, ambient screen back-lighting, true-to-life picture quality, etc., that allow users to enjoy watching TV in a relaxing atmosphere.

The applicant points out that the Office has already registered similar slogans and refers specifically to the following trade marks:

• ‘WHEN PASSION MEETS INNOVATION’ (EUTM No 12 914 503 of 27/05/2014);

• ‘DNS FOR PEOPLE’ (EUTM No 12 696 746 of 14/03/2014);

• ‘BEYOND LUXURY’ (EUTM No 5 537 691of 08/12/2006);

• ‘YOUR MONEY. WHEREVER YOU ARE’ (EUTM No 1 733 161of 24/03/2000);

• ‘PLUG AND POWER’ (EUTM No 819 425 of 07/05/1998);

• ‘HYPERBARIC TUNNEL CONSTRUCTION AND DIVING’ (EUTM No 906602 of 13/08/1998).

In response to this argument, it should first be stressed that, 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; 09/10/2002, T‑36/01, Surface d’une plaque de verre, EU:T:2002:245, § 35).

Second, it is also well established that the distinctiveness required by Article 7(1)(b) EUTMR must be assessed in the light of the circumstances of each case. In this regard, the Office emphasises that the trade marks to which the applicant refers have quite different semantic meanings from the mark ‘AMBIENT VIEWING EXPERIENCE’ and, taken as a whole, create aural and conceptual impressions that are quite different from that conveyed by the mark at issue. In addition, none of those trade marks is registered for goods that are identical or even similar to the goods for which registration of the slogan ‘AMBIENT VIEWING EXPERIENCE’ is sought. Therefore, the considerations under absolute grounds in the cases cited were different from those in the present case.

As a result, the Office does not find any of the registrations cited persuasive.

For all the reasons given above, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 16 611 402 is hereby refused for all the goods for which registration is sought.

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 with the Office within two months of the date of notification of this decision. 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.

Mirjana PUSKARIC