Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 04/05/2018

WITHERS & ROGERS LLP

4 More London Riverside

London SE1 2AU

REINO UNIDO

Application No:	017644204
Your reference:	T534430CTM/MC
Trade mark:	See Nothing Else
Mark type:	Word 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 11/01/2018 pursuant to Article 7(1)(b) and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 06/03/2018, which may be summarised as follows.

1. The structure of the expression ‘SEE NOTHING ELSE’ departs from normal usage of English language, and it is not the ‘normal’ manner to refer to the goods in question, nor a qualitative statement in reference to them.

2. The interpretation provided in the objection is a narrow one, and it ignores other possible interpretations.

3. The mark in question creates a nonsensical phrase, which is fanciful and without any discernible meaning to the relevant consumer, and, therefore, can act as a badge of origin.

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.

First of all, the Office hereby acknowledges the requested limitation of the list of goods, and accepts it. Consequently, the application and its examination will proceed taking into account that the scope of protection sought refers only to televisions and television receivers.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

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). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

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). ‘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).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR 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, EU:T:2002:301, § 20 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

The Office will now assess, in order, the arguments from the applicant.

1. The structure of the expression ‘SEE NOTHING ELSE’ departs from normal usage of English language, and it is not the ‘normal’ manner to refer to the goods in question, nor a qualitative statement in reference to them.

As for the first argument, the Office respectfully disagrees with the applicant. The use of the verb see, accompanied with the indefinite pronoun nothing and the adverb else obeys Standard English grammar rules. The use of nothing clearly refers to an absence of things, and the adverb else finishes the expression to convey the meaning of ‘other’, ‘another’, ‘different’ or ‘additional’.

Consequently, the whole expression, as explained in the previous letter sent by the Office, reads as an advice to not look further for additional and/or different things. When associated with the goods in question, especially during a buying or a marketing experience, it becomes abundantly clear that the aforementioned advice derives from the quality of the goods in question.

In this respect, it should be recalled that for a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark indicates to the consumer a characteristic of the goods or services relating to their market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods or services (30/06/2004, T 281/02, Mehr für Ihr Geld, EU:T:2004:198, § 31, emphasis added).

2. The interpretation provided in the objection is a narrow one, and it ignores other possible interpretations.

As for the second argument provided by the applicant, the Office argues that, while the existence of alternative interpretations for the meaning of the sign may very well be true, case law clearly states that the existence of those alternative interpretations does not preclude entirely a refusal based on non-distinctiveness:

Furthermore, the fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, 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 applicant’s goods, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin.

(15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

It must be stated that the alternative interpretation provided by the applicant of the last paragraph of the fourth page, i.e., that the sign would suggest that the consumer would see nothing beside its goods due to their striking appearance maintains the essence of the expression ‘SEE NOTHING ELSE’.

The Office holds that, regardless of the qualities of the goods in question, the gist of the sign in consideration remains unchanged: do not look further than the goods from the applicant. Therefore, given that the expression ‘SEE NOTHING ELSE’ has a clear and straightforward function as a slogan, and lacks any fancifulness that would allow it to function as a badge of origin, the objection must stand.

3. The mark in question creates a nonsensical phrase, which is fanciful and without any discernible meaning to the relevant consumer, and, therefore, can act as a badge of origin.

As for the final argument, the Office holds that, contrary to the point made by the applicant, the expression ‘SEE NOTHING ELSE’ is reasonable, complies with relevant grammar rules, and conveys the simple and clear message that there is no need to peruse alternative options after appraising the applicant’s goods. Whether the qualities that would make the consumer conclude that his search is over are due to striking appearances, novel designs, lower prices, etc., is beside the point. The relevant English-speaking consumer will readily acknowledge the aforementioned sign as a promotional formula, and fail to perceive it as an indication of commercial origin.

While it is true that the Vorsprung durch Technik judgment did not exclude promotional formulas from registration, it did not indicate that all slogans are distinctive and may be registered just because of the fact that they are promotional formulas. In paragraph 45 of that judgment, the ECJ stated that:

“in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood – perhaps even primarily understood – as a promotional formula has no bearing on its distinctive character” (Emphasis added).

(21/01/2010, C 398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 45).

This means that the relevant public has to perceive a promotional formula as a source originator in order for it to be considered as distinctive, which the Office reaffirms it will not be the case, as the sign in question merely conveys the meaning already explained throughout this response.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for EUTMA No 17 644 204 is hereby rejected for all the goods claimed.

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.

Christiano DOS SANTOS TIMBO