Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 26/08/2019

MITSCHERLICH, PATENT- UND RECHTSANWÄLTE, PARTMBB

Sonnenstraße 33

80331 München

GERMANY

Application No:	018031919
Your reference:	M36903/EU
Trade mark:	Display Speaker
Mark type:	Word mark
Applicant:	LG ELECTRONICS INC. 128, Yeoui-daero, Yeongdeungpo-gu Seoul 150-721 REPUBLIC OF KOREA (THE)

The Office raised an objection on 18/04/2019 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.

With the above notice and an extension of time until 17/06/2019 the applicant was given opportunity to submit observations in reply.

By letter of 24/06/2019 the applicant submitted its observations. The applicant restricts the application. The list of goods shall only cover:

"OLED displays that function as audio amplifiers and audio speakers; Application software for smartphones, namely, software for controlling and improving audio equipment sound quality; Application software for smartphones, namely, software for editing and producing sound and music".

The applicant’s submissions and arguments may be summarised as follows:

1. The technical construction of a display is normally completely different from that of a speaker since display and speaker serve different purposes. Hence, the relevant public would not without further thought come to the conclusion that an OLED display could also represent a speaker.

2. The contested trademark may be deemed descriptive of one part the products only if the relevant public perceives the characteristics of that part as able to have a significant impact on an essential characteristic of the product itself. Accordingly, usually, displays do not improve the speaker's sound and are therefore not considered as being important for the speaker's quality.

3. A function as speakers or loudspeakers incorporating displays does not exist. Therefore, the sign for which protection is sought does not establish a direct and concrete link with the goods under exam because the wording does not refer to such a concrete technical function.

4. For the reason above the applied for sign is non-descriptive and, thus, is has a minimum degree of distinctiveness.

5. In defence of the mark, the applicant relies heavily on established trade mark principles and on the case-law, judgments T-423/18, ‘vita’, T-57/18, ‘LIEBLINGSWEIN’, T-373/18, ‘FLEXLOADER’, T-60/17, ‘TSA Lock’ among others.

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.

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).

A word mark which is descriptive of characteristics of the goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) EUTMR. A mark may be devoid of (any) distinctive character in relation to goods or services for reasons other than the fact that it may be descriptive (12/02/2004, C-363/99, ‘Postkantoor’, EU:C:2004:86).

The marks referred to in Article 7(1)(b) are, in particular, those which 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).

Article 7(1)(b) EUTMR is intended to preclude registration of trade marks which are devoid of distinctive character which alone renders them capable of fulfilling that essential function (16/09/2004, C-329/02 P, ‘SAT.2’, EU:C:2004:532). The finding that a sign is devoid of distinctiveness within the meaning of Article 7(1)(b) EUTMR is not conditioned by a finding that the term concerned is commonly used (12/02/2004, C-265/00, Biomild EU:C:2004:87).

The absolute grounds for refusal of a lack of distinctive character and the characteristics of descriptive and usual indications each have their own scope of application and are neither mutually dependent nor mutually exclusive. Even though the existence of just one ground for refusal is enough, they can also be examined cumulatively. Interpreting the case-law by the Courts, it can be concluded that the sign must be refused registration under Article 7(1)(b) EUTMR if, on the basis of its most obvious meaning in relation to the goods or services in question, it is devoid of distinctive character.

Article 7(2) EUTMR states that paragraph 7(1) shall apply notwithstanding that the grounds of preventing registration obtain in only part of the European Union.

1) Regarding the amendment of the application

In an attempt to overcome the objections, the applicant amends the specification of goods as follows:

"OLED displays that function as audio amplifiers and audio speakers; Application software for smartphones, namely, software for controlling and improving audio equipment sound quality; Application software for smartphones, namely, software for editing and producing sound and music".

In accordance with Article 49(1) EUTMR, the applicant may, in reply to an objection regarding absolute grounds, partially withdraw the list of goods and/or services of the application. Such restriction must be made expressly and unconditionally (see, to that effect: ‘The Guidelines¹). Further, in order to be effective, the restriction must meet the requirements of classification under Rule 2 EUTMIR.

The applicant has presented a limitation of the scope of protection. The Office points out that, in light of the new scope of protection, the mark remains to be refused under articles 7(1)(b), (c) and 7(2) EUTMR.

As the amended scope of protection consists in “OLED displays that function as audio amplifiers and audio speakers; Application software for smartphones, namely, software for controlling and improving audio equipment sound quality; Application software for smartphones, namely, software for editing and producing sound and music” the Office believes that a direct link between the sign for which application is sought and the goods under exam continues to exist as it will be explained further.

2) Regarding the absolute grounds for refusal

The Office wishes to clarify that, in this particular case, there is a sufficiently direct and specific link to the objected group of goods, which lies in the broad meaning of the term “DISPLAY SPEAKER” in itself, rather than on the intrinsic nature of the goods, as the descriptive meaning of the sign applied for would be perceived identically for all the goods which have been objected to because, even if they can be grouped in software, OLED displays and mobile phones, they all are or may be related to goods that are displays with built-in speakers (see Cases ‘BigXtra’, C-253/14 P, EU:C:2014:2445, §48; ‘PIONEERING FOR YOU’ T-601/13, EU:T:2014:1067, §§ 36-37, and ‘Take your time Pay After‘, T-755/16m EU:T:2017:663, § 44).

The applied-for mark “DISPLAY SPEAKER” consists of the combination of two words which are directly connected to one another. It is true that, when assessing eligibility for registration, a mark must be judged solely by the overall impression it makes. In order to recognize that impression, however, it is first necessary to consider the individual elements. That understanding must in each case be based on the language area to whose vocabulary those elements belong.

The two word elements of the application are both terms from the English language. The word “display” has the particular meaning of a “piece of electronic equipment that shows information, such as a computer screen”. The second word element, “speaker”, indicates a “device that changes electrical signals into sounds loud enough to be heard at a distance”.

The two words are linked to form a combination that is generally comprehensible in that language. Its conceptual content is apparent at first glance, at least to the public in the EU familiar with the English language, so that, to this extent, under Article 7(2) EUTMR, a bar to registration as a whole exists notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

The goods listed in the application are directed to an average consumer who is reasonably well informed, observant and circumspect. The mark applied for, as a whole, will be understood immediately and without any special analytical effort by anyone using a mobile or smart phone.

With reference to the argument that consumers will not perceive the contested sign as indicating a display that functions as a loudspeaker or a loudspeaker that embodies a display due to the fact that consumers are not used to displays that also function as a loudspeaker as, usually, technical devices regularly contain separate loudspeakers. Additionally, it states that even if the sign may be understood as referring to a speaker, in any case, “DISPLAY SPEAKER” would be distinctive as it does not describe the main technological feature of the goods that is the display part. The Office points out that the current technological market already provides consumers with a vast choice of loudspeakers incorporating displays or displays/screens with built-in loudspeakers. Simply put, any kind of mobile phone now sold is composed of a display and loudspeakers that reproduce sounds loud enough to be heard at a distance. For this reason, it is clear that consumers are accustomed to this kind of goods and the sign “DISPLAY SPEAKER” will be simply perceived as indicating that the goods consist in screens (displays) with speakers, or a speaker with a screen.

Furthermore, having regard to the relevant context of reference, where loudspeakers come with different technological features (included displays) as well as mobile phones come with wide screens and loudspeaker systems, these are nowadays commonly used in relation to a wide range of products and it cannot be reasonably maintained that the relevant consumer will perceive the mark as meaningless in respect of the above mentioned goods.

Accordingly, the Office notices that in order to have a functioning loudspeaker or screen/display, it is clear that a combination of software running on a computer or any technological device is required. Further, modern technological development permits to find this type of technology also built in, for example, in mobile phones. For this reason the Office believes that all the objected goods fall within the group of technologies that carry a built-in software that allows the screens and loudspeaker to function.

The loudspeaker is a small sound driver fitted within a mobile phone, or other communication device, which is used to produce sound. Traditionally, loudspeakers on mobile phones are used to produce sound alerts for events such as incoming calls, incoming messages and alarms. Often the loudspeaker is represented as an icon.

In the light of the above, the Office disagrees with the applicant’s claim that the sign is vague, allusive and distinctive. The combination of words “DISPLAY SPEAKER”, when viewed alongside the goods in question, describes with total clarity the characteristics that devices are displays or screens with speakers, or loudspeakers with a display. Nowadays, consumers usually choose to purchase technological devices according to the functionalities related to its use. Consequently, tech companies go to great lengths and expend large sums of money in order to convince potential consumers that their goods have the best cutting-edge technology, especially in regard to multi functionality.

The sign “DISPLAY SPEAKER” only serves to promote, directly and unambiguously, that the goods in question have built in both a screen and a loudspeaker. The sign is not subtle or suggestive in any way and leaves nothing to the imagination when used in connection with OLED displays that function as amplifiers, software for controlling audio equipment sound quality or editing and producing music and related goods. The applicant’s mark therefore plainly falls within the ambit of Article 7(1)(b) and (c) EUTMR in respect of the goods listed in the application.

In the absence of any fanciful element which would confer on the expression the ability to function as a badge of origin, the sign “DISPLAY SPEAKER” is purely descriptive and is not capable of distinguishing the goods of one undertaking from those of other undertakings.

In the response to the argument that the applied for sign does not describe the main technological feature of the goods in question, namely, according to the applicant, indicating a speaker as a display. The fact that the goods listed in the application refer to different elements, other than the characteristic of being a screen with loudspeakers, such as application software for smartphones, namely, software for editing and producing sound and music, is not relevant for the purpose of overcoming the objection, as the mark will still be descriptive of one of the possible purposes of the goods.

For assessing descriptiveness under Article 7(1)(c) EUTMR, it is not necessary to establish that the mark may serve to designate each and every intended purpose of the goods in question. It is sufficient to establish that the mark consists exclusively of signs or indications that may serve, in trade, to designate one of the intended purposes of the goods. The existence of other purposes does not affect the need to keep the signs or indications available for traders to designate the purpose which they are also intended to serve.

It is irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of Article 7(1)(c) EUTMR does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (12/02/2004, C 363/99, ‘Postkantoor’, EU:C:2004:86, § 102).

Moreover, although the Office agrees with the applicant in that a minimum degree of distinctiveness is sufficient to render the mark acceptable, it is clear, from the above analysis and explanations, that in the present case the expression under analysis contains a non-distinctive statement about the goods of reference which merely serves to highlight a technical feature of the goods concerned, namely that they consist in a screen (display) with built-in speakers, or that they amount to loudspeakers with screens. It cannot, therefore, be reasonably maintained that the term applied for is too vague or meaningless with regard to such goods and that it will enable the relevant consumers to identify their origin.

In order to have the minimum degree of distinctiveness required under Article 7(1)(b) EUTMR, the mark concerned must simply appear prima facie capable of enabling the relevant public to identify the origin of the goods or services covered by the European Union trade mark application and to distinguish them, without any possibility of confusion, from those of a different origin (13/06/2007, T 441/05, I, EU:T:2007:178, § 55.)

Due to the impression produced by the mark as a whole, the connection between the relevant goods and the mark applied for is not sufficiently indirect to endow it with the minimum level of inherent distinctiveness required under Article 7(1) (b) EUTMR.

The word mark specifically claimed here, without any graphic or otherwise unusual addition, is however devoid of the necessary minimum of distinctive character, because it is understood by the targeted public merely as a mere reference to the goods offered and not as a trade mark making a distinctive reference to business origin.

It derives from all the foregoing that the applicant has not succeeded in convincing the Office that “DISPLAY SPEAKER” will be perceived by the consumers as pointing to the commercial origin of the goods in Class 9 (“OLED displays that function as audio amplifiers and audio speakers; application software for smartphones, namely, software for controlling and improving audio equipment sound quality; application software for smartphones, namely, software for editing and producing sound and music”).

For the reasons mentioned above, and in the previous notification, the sign “DISPLAY SPEAKER” does not possess any actual distinctive character for the goods applied for, pursuant to Article 7(1)(c) and 7(1)(b) and in combination with Article 7(2), and is therefore unable function as a trade mark in the market place, that is, it fails to distinguish the goods of the applicant from those of other undertakings. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its descriptive sense.

The absolute ground for refusal under Article 7(1)(b) and (c) EUTMR precludes the registration of the sign as a trade mark at least in the English-speaking territories of the European Union (Article 7(2) EUTMR), i.e. the public in the United Kingdom, Ireland and Malta.

Since the sign lacks an inherent distinctive character, it is prima facie barred from registration and hereby refused pursuant to Article 7(1)(b), (c) and 7(2) EUTMR for all the goods claimed, namely "OLED displays that function as audio amplifiers and audio speakers; Application software for smartphones, namely, software for controlling and improving audio equipment sound quality; Application software for smartphones, namely, software for editing and producing sound and music".

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.

Peter SCHYDLOWSKI