Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 20/03/2018

WITHERS & ROGERS LLP

4 More London Riverside

London SE1 2AU

UNITED KINGDOM

Application No:	017571308
Your reference:	T534330CTM/MC
Trade mark:	UNIVERSAL GUIDE
Mark type:	Word mark
Applicant:	SAMSUNG ELECTRONICS CO., LTD. 129, Samsung-ro, Yeongtong-gu Suwon-si, Gyeonggi-do - REPUBLIC OF KOREA

The Office issued a provisional refusal on 19 December 2017 pursuant to Article  7(1)(b) and (c) and Article 7(2) EUTMR, for the reasons set out in the attached letter.

The applicant submitted its observations on 19 January 2018 which may be summarised as follows:

• The sign UNIVERSAL GUIDE is not a known phrase in the English language and there is no reason to assume that the mark is directly descriptive of the goods.

• The mark UNIVERSAL GUIDE is an unusual construction of two words and is fanciful in nature and does not convey a meaning that customers will appreciate.

• The mark has a minimum degree of distinctiveness because the combination of words differs from the use in common parlance of the relevant consumers in relation to the goods and services.

• The Office previously granted registration for marks containing the element UNIVERSAL.

• The applicant requests that the Office waives the objection and allow the application to proceed for advertisment.

Pursuant to Article 94 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.

Article 7(1)(b) EUTMR provides that trade marks which are devoid of any distinctive character are not to be registered.

Article 7(1)(c) EUTMR determines that 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 services, shall not be registered.

In addition, Article 7(2) EUTMR states that paragraph 1 of that article shall apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

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 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).

The descriptiveness of a mark must be assessed in relation to the goods or services for which registration is sought and by reference to the relevant public’s perception of it (02/04/2008, T-181/07, Steadycontrol, EU:T:2008:86, § 38 and 21/05/2008, T-329/06, E, EU:T:2008:161, § 23).

The goods of the contested mark, namely, ‘Televisions; mobile phones; software for televisions; application software’ in class 9 are of interest to the average public purchasing general consumer electronics and software.

The provisions of Article 7(1)(b) and 7(1)(c) EUTMR overlap to a large extent and a word mark that is descriptive of certain characteristics of the goods in question is on that account necessarily devoid of any distinctive character in relation to those goods and services (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 18 and 19). A mark may none the less be devoid of distinctive character in relation to goods also for reasons other than the fact that it may be descriptive.

For a mark to possess distinctive character it must serve to identify the product or service in respect of which registration is applied for as originating from a particular undertaking, and thus enable the consumer or end user, without any possibility of confusion, to distinguish that product from products of other undertakings (08/04/2003, C-53/01, C-54/01 & C-55/01, Linde, EU:C:2003:206, § 40). Article 7(1)(b) EUTMR is thus intended to preclude registration of trade marks which are devoid of distinctive character which alone renders them capable of

fulfilling the essential function of guaranteeing the identity of the commercial origin (16/09/2004, C-329/02 P, SAT.2, EU:C:2004:532, § 23).

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 of refusal set out in that article (27/02/2002, T-34/00, Eurocool, EU:T:2002:41, § 39 and 27/09/2005, T-123/04, Cargo Partner, EU:T:2005:340, § 45). The absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual or striking (05/04/2001, T-87/00, Easybank, EU:T:2001:119, §39).

Furthermore, insofar as the applicant argues that its mark is at most ‘suggestive’ or ‘allusive’, Article 7(1)(c) EUTMR does not apply to those terms that are only suggestive or allusive as regards certain characteristics of the goods and services (27/06/2017, T-327/16, ANTICO CASALE, EU:T:2017:439, § 28 and Case-Law cited therein).

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 services or services in respect of which registration is sought (29/04/2004, C-468/01 P – C-472/01 P, Tabs, EU:C:2004:259, § 39, 26/11/2003, T-222/02, Robotunits, EU:T:2003:315, § 34, 22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 24).

As an adjective in English, ‘Universal’ has the meaning, inter alia ‘(of a tool or machine) adjustable to or appropriate for all requirements’ or ‘‘Relating to or done by all people or things in the world or in a particular group; applicable to all cases’ (source: Oxford English Dictionary). In word combinations, ‘Universal’ refers to the fact that something is all encompassing or fully applies to a particular area (cf. 14/06/2001, T 357/99 and T 358/99, Universaltelefonbuch and Universaltelefonbuch, EU:T:2001:162, § 30; confirmed by 05/02/2004, C 326/01).

English speaking consumers will understand the term ‘GUIDE’ in the sense of ‘A book, document, or display providing information on a subject or about a place’ or as a verb as Show or indicate the way to (someone) (source: Oxford English Dictionary).

The overall expression therefore has the meaning of ‘an all-encompassing, broadly applicable help or usher which provides information or at least directs the user to it’. The Office notes that a trade mark consisting of a word or neologism composed of elements each of which is descriptive of characteristics of the goods in respect of which registration is sought is itself descriptive of the characteristics of those goods for the purposes of that provision, unless there is a perceptible difference between the word or neologism and the mere sum of its parts: that assumes either that, because of the unusual nature of the combination in relation to the goods, the 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 or that the word or neologism has become a part of everyday language and has acquired a meaning of its own, with the result that it is now independent of its component parts (25/02/2010, C-408/08 P, Color Edition, EU:C:2010:92, § 61 and 62 and case-law cited therein).

The Office does not consider that the combination ‘UNIVERSAL GUIDE’ is more than the sum of its parts. Indeed the Office finds that the expression ‘UNIVERSAL GUIDE’, taken as a whole, immediately informs consumers without further reflection that the software applied for will be a help, a guide, for the user to access certain information. The television devices or mobile telephones will be believed to have such a property incorporated It is reasonable to believe that relevant consumers do not require a high degree of sophistication to make a sufficiently clear link between the mark and the goods and therefore to perceive the descriptive message of the mark. Indeed, the mark, although not specifying in detail the exact nature of this type of guidance nor its subject, not only directly embodies a sensible meaning in relation to the goods in question; it is an expression that might profitably be employed for such goods. It should be observed that under Article 7(1)(c) EUTMR, a mark must be refused registration where, as in this instance, the indications composing the mark may be used to designate the goods in question. It is thus not necessary that the signs and indications composing the mark are currently in use (12/01/2005, T-367/02 to T-369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3).

As regards the sign being combined in a creative, respectively non usual syntax resulting that the mark neither is not-descriptive nor the sign lacks the necessary small amount of distinctive character the Office would like to refer the holder to the decision of the Board of Appeal in the case WHITENING MULTIACTION: “The applicant relies heavily on the BABY-DRY judgment of the Court of Justice. In this judgment the Community Courts appeared to accept an unusually low standard of distinctiveness and upheld the registrability of trade marks that had a high degree of descriptive content. If the contested decision were tested against that case law alone, the Board might have to conclude that it should be annulled. If, however, the contested decision is tested against the whole of the case law that has emerged from the Community Courts over the last five years, the conclusion must be that the examiner’s assessment was entirely in conformity with the law” (WHITENING MULTI-ACTION, R 118/2003-2, 22/06/2004, at paragraph 22).

In the overall assessment, the combination of the elements of the contested mark is not capable of performing a trade mark function. The word component has a plain meaning and is not arbitrary or a fanciful expression in relation to the goods or services in question. The word combination ‘UNIVERSAL GUIDE’ lacks any original sequence or structure for goods in the market for software or televisions and mobile phones. The meaning of the contested mark is thus self-explanatory in relation to the goods in the application. Therefore, considered in its entirety, the sign at issue has to be considered as devoid of distinctive character.

That conclusion cannot be altered by the fact that the expression may not exist in everyday or technical language, that it is not listed in dictionaries, and that some of the terms included in it could have other meanings. It should be recalled that a word sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned. Therefore, it is not necessary, in order for EUIPO to refuse such a registration, that the sign in question should actually be in use in a way that is descriptive, but merely that it could be used for such purposes (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 32). Nor is there a requirement that the expression must be listed in dictionaries for it to be refused protection pursuant to Article 7(1)(c) EUTMR. It is further recalled that it suffices for the mark applied for to fall foul of Article 7(1)(c) EUTMR where it describes a characteristic of the goods concerned such as in present case.

In its first objection the examiner wrongly included the argument that the users will be able to scan through (including typo) aggregated content from a variety of different content providers, including Apple itself. Although this argument does not reflect the lack of distinctiveness of the combination UNIVERSAL GUIDE, it does not invalidate the Office’s overall conclusion that the applied for sign is descriptive and lacks distinctive character. The relevant consumer confronted with the expression UNIVERSAL GUIDE on the televisions or phones or their packaging or in connection with the software will see in this message UNIVERSAL GUIDE nothing more than an indication of the functionality or one of the functionalities of the apparatus and software. They will attach to this expression no more trade mark value that of, for instance, ‘High Definition’, ‘LED’, ‘UHD TV’ or ‘Dual Sim’.

Thus, the relevant public, when seeing the applicant’s sign as a whole, will immediately perceive a meaningful, descriptive indication of essential characteristics of the goods at issue. The relevant public will not be prone to identify the goods concerned as originating from a particular undertaking.

In that regard, the Office finds that the mark at issue, taking into account of all its components and considered as a whole, affords a link with all of the contested goods to such an extent that this nexus is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1) (c) EUTMR.

It is sufficient for one of the absolute grounds of refusal to apply for the sign not to be registered as a European Union trade mark. Nevertheless, the Office shares the contested decision’s finding that the sign applied for also lacks distinctiveness in respect of the goods concerned for the purpose of Article 7(1)(b) EUTMR. As confirmed by the Court, a word mark which is descriptive of characteristics of goods and services for the purposes of Article 7(1)(c) EUTMR is necessarily devoid of any distinctive character in relation to those goods and services within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 86, and 14/06/2007, T-207/06, Europig, EU:T:2007:179, § 47

and the case-law cited therein).

The fact that the sign at issue does not give an absolute precise message or can have several meanings 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 holder’s services and so as to enable the relevant public to distinguish, without any possibility of confusion, the holder’s services from those of a different commercial origin. (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

A mark which, as in the case at hand, would simply be seen as a descriptive term, cannot guarantee the identity of the origin of the marked goods to the consumer or end-user by enabling him/her, without any possibility of confusion, to distinguish the said goods from others which have a different origin. As such, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (03/07/2003, T-122/01, Best Buy, EU:T:2003:183, § 20).

Insofar as the applicant cites other signs containing the word element UNIVERSAL that have been accepted by the Office, it is true that the Office should attempt to be consistent. Previous decisions of the Office may therefore be invoked and, if a genuinely comparable precedent is cited, the Office must consider whether it should be followed. The Office must nonetheless decide in each case whether, on the basis of a correct interpretation of the legislation, the mark applied for is eligible for registration. If the Office, including the Boards of Appeal conclude that the mark is barred from registration by the terms of Article 7(1)(b) and/or Article 7(1)(c) EUTMR, it cannot decide otherwise simply because an equally non-distinctive mark has been registered in the past.

In fact, the Courts have consistently held that decisions concerning the registration of a sign as a European Union trade mark which the Office, including the Boards of Appeal, are called on to take under the EUTMR are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, and notwithstanding the importance of the principles of equal treatment and the principles of sound administration, the legality of those decisions must be assessed solely on the basis of that Regulation and not on the basis of the Office’s previous decision-making practice (10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 73-75 and 16/07/2009, C-202/08 P and C-208/08 P, RW feuille d’érable, EU:C:2009:477, § 57 and the case-law cited therein).

The Office also notes that, insofar as a certain inconsistency might have occurred with a mark, a person who files an application for registration of a sign as a trade mark cannot rely, to his/her advantage and in order to secure an identical decision, on a possibly unlawful act committed with respect to other marks to the benefit of someone else (10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 76 and case-law cited therein).

It can be concluded in this particular case that the expression ‘UNIVERSAL GUIDE’ conveys obvious and direct information regarding the perceived application or feature of the goods in question. Therefore, the sign as such falls within the scope of prohibition laid down by Article 7(1)(c) and Article 7(1)(b) EUTMR.

In the overall assessment, the combination of the elements of the contested mark is not capable of performing a trade mark function. The word component has a plain meaning and is not arbitrary or a fanciful expression in relation to the goods in question. The word combination ‘UNIVERSAL GUIDE’ lacks any original sequence or structure for software, televisions and mobile phones. The meaning of the contested mark is thus self-explanatory in relation to the goods in the application. Therefore, considered in its entirety, the sign at issue has to be considered as devoid of distinctive character.

For the abovementioned reasons, and pursuant to Article 7(1) EUTMR, protection of European Union Trade Mark Application 017571308 is hereby rejected for all goods.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 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.

Steven Charles STAM