Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 08/05/2018

MITSCHERLICH, PATENT- UND RECHTSANWÄLTE, PARTMBB

Sonnenstraße 33

D-80331 München

ALEMANIA

Application No:	017631111
Your reference:	M36460/EU
Trade mark:	Voice Assistant
Mark type:	Word mark
Applicant:	LG ELECTRONICS INC. 128, Yeoui-daero, Yeongdeungpo-gu Seoul 150-721 REPÚBLICA DE COREA (LA)

The Office raised an objection on 09/01/2018 pursuant to Article 7(1)(b) and (c) 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 26/02/2018, which may be summarised as follows.

1. The concept of “Voice Assistant” regarding the relevant goods, and in general, is at the utmost very vague.

2. Several mental steps are necessary to come to any relevant conclusions regarding the mark with respect to the objected goods. The mark is a suggestive/evocative term that requires imagination, thought or perception for the relevant public to reach the conclusion as to the exact nature of the goods at issue.

3. Registration cannot be denied based on Article 7(1)(c) EUTMR as the term “Voice Assistant” is not purely descriptive with respect to all the goods applied for.

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 waive the objection for the following goods:

Class 07 Hose for electric vacuum cleaners; bag for electric vacuum cleaners; compressed air pumps; rotary compressors; compressors for refrigerators.

Class 11 Membrane apparatus in the nature of filters for purifying water; Solar thermal collectors [heating]; Water desalination plants; Purification installations for wastewater reclamation and reusing system; Wastewater purifying and treatment apparatus; Filters for wastewater; Water purifiers for industry; Street lamps; Incandescent lamps; Ventilators for automobiles; Electric wine cellar for household purposes.

The objection is maintained for the remaining goods.

General remarks on Article 7(1)(c) EUTMR

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).

Specific remarks concerning the observations of the applicant

1. The concept of “Voice Assistant” regarding the relevant goods, and in general, is at the utmost very vague.

The Office does not agree with this view and asserts that the mark sends a clear and unambiguous message to the relevant consumer about a particular characteristic of the goods in question; namely that they can be activated by voice commands.

Voice command technology is become more prevalent and popular with the likes of Alexa, Siri and Cortana, which control domestic devices by human voice commands. Therefore, the notion of a ‘voice assistant’ in relation to the controlling of domestic goods is not as vague as the applicant suggests and would more likely be perceived as an indicator of a particular characteristic. The office asserts that this message is unambiguous and would be clearly understood by the relevant public immediately and without further thought. As such it would not function as a single indicator of trade origin.

2. Several mental steps are necessary to come to any relevant conclusions regarding the mark with respect to the objected goods. The mark is a suggestive/evocative term that requires imagination, thought or perception for the relevant public to reach the conclusion as to the exact nature of the goods at issue.

The Office does not agree that the term “Voice Assistant” is merely suggestive or evocative. It would take very little imagination on the part of the relevant consumer to understand the term, particularly in relation to the goods identified, being those which can be controlled by the human voice. The word ‘voice’ is easily understood and when combined with ‘assistant’ meaning “assisting; helping; that serves as a helper” (Collins), the combination is readily understood as denoting a characteristic of the goods, that which can assist and help control the household devices by means of the voice.

3. Registration cannot be denied based on Article 7(1)(c) EUTMR as the term “Voice Assistant” is not purely descriptive with respect to all the goods applied for.

The Office agrees that the term is not purely descriptive for all the goods applied for. Therefore the goods that are considered exempt from the objection under Article 7(1)(c) EUTMR have been excluded as indicated. For the remaining goods, however, the objection still stands, as the term “Voice Assistant” is deemed clearly and unambiguously descriptive of a characteristic of the goods identified, for the reasons elucidated above.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 017631111 is hereby rejected for the following goods:

Class 07 Electric clothes washing machines; Automatic dishwashers; Electric vacuum cleaners; Clothes management machines for ironing clothes for household purpose; Electric clothes managing apparatus for household purpose; Stick type vacuum cleaners; Robots; Electric rotary blowers; Spin driers (not heated); Electric mixers for household purposes; Robotic vacuum cleaners; Electric food processors; Steam cleaners for household purposes; Hand-held vacuum cleaners; Electric vacuum cleaners for bedding.

Class 11 Air conditioners; Hot air apparatus, namely, hot-air space heating apparatus; Humidifiers; Electric dehumidifier for household use; Electric ranges; Water purifiers for household purposes; Water ionizers for household purposes; Air purifiers; Ventilation [air-conditioning] apparatus for heating; Light Emitting Diode lighting fixtures; Gas ranges; Electric kitchen ovens; Apparatus or installations for cooking; Electric refrigerators; Electric clothes dryers; Clothes management machines for drying clothes (electric) for household purpose; Electric clothing management machines having the functions of deodorizing, sterilizing and steaming garments for household purposes; Electric clothes drying machines with sterilization, deodorization and crease-resistant treatment functions for household purposes; Precision filters for water treating; Purification installations for sewage; Fluorescent lamps; Automobile lights; Heaters for automobiles; Clothes management machines for deodorizing and sterilizing clothes for household purpose.

The application may proceed for the remaining 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.

Lance EGGLETON