Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 14/07/2020

MITSCHERLICH, PATENT- UND RECHTSANWÄLTE, PARTMBB

Sonnenstraße 33

D-80331 München

ALEMANIA

Application No:	018190810
Your reference:	M37382/EU
Trade mark:	PELED
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 17/02/2020 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 30/04/2020, which may be summarised as follows.

Applicant’s arguments:

1. Simply for the reason that “pe” is by no means a common abbreviation for “perovskite”, the trademark “PELED” at issue is not descriptive with respect to the objected goods.

2. The trade mark at issue is a suggestive/evocative term that requires imagination, thought or perception for the relevant public to reach to the conclusion as to the exact nature of the goods at issue. In contrast to merely descriptive terms, suggestive/evocative trademarks do not lack distinctiveness/are not purely descriptive;

3. “PELED” is not listed in any dictionary and is a fanciful term; already for this reason “PELED” is distinctive and also regarding the objected goods.

4. For a sign to fall within the scope of the prohibition in that provision, it must suggest a sufficiently direct and concrete link to the goods or services in question to enable the public concerned immediately, and without further thought, to perceive a description of the category of goods and services in question or of one of their characteristics.

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.

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).

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

As for the applicant’s arguments:

1. In the present case, the consumer, namely a professional in the field of IT, would understand the sign as having the following meaning: a perovskite light-emitting diode.

For a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned. (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added.)

2. The trade mark at issue is not a suggestive/evocative term but rather a descriptive term, as the relevant consumers would perceive the sign as providing information that the screen or panel of the displays use PeLED technology (perovskite-based LEDs). Therefore, the sign describes characteristics such as the kind and composition of the goods in question.

A sign must be refused as descriptive if it has a meaning that is immediately perceived by the relevant public as providing information about the goods and services applied for. This is the case where the sign provides information about, inter alia, the quantity, quality, characteristics, purpose, kind and/or size of the goods or services. The relationship between the term and the goods and services must be sufficiently direct and specific (20/07/2004, T-311/02, Limo, EU:T:2004:245, § 30; 30/11/2004, T-173/03, Nurseryroom, EU:T:2004:347, § 20), as well as concrete, direct and understood without further reflection (26/10/2000, T-345/99, Trustedlink, EU:T:2000:246, § 35). If a mark is descriptive, it is also non-distinctive.

3. As for the applicant’s argument that the sign does not appear in dictionaries, for a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned. (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32).

4. The Office considers that the goods in respect of which an objection has been raised belong to a highly specialised market sector. In the present case, the relevant consumers would perceive the sign as providing information that the screen or panel of the displays use PeLED technology (perovskite-based LEDs). Therefore, the sign describes characteristics such as the kind and composition of the goods in question.

Therefore, there is a sufficiently direct and concrete link to the goods or services in question to enable the public concerned immediately, and without further thought, to perceive a description of the category of goods and services in question or of one of their characteristics.

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 018 190 810 is hereby rejected for the following goods/services:

Class 9 Mobile phones; Smartphones; Laptop computers; Computers; Tablet computers; Remote control apparatus; Wearable computers; Smart phones that fit on the user's face in the manner of eyeglasses; Wristbands adapted or shaped to contain or attach to handheld digital electronic media players; Personal portable devices for recording, organizing, transmitting, manipulating, reviewing and receiving text, data, images and audio files relating to health and wellness; Digital signage; Television receivers; Monitors for computers; Apparatus for recording, transmission or reproduction of sound or images; Digital Versatile Disc [DVD] players; Touch panels; Display panels; Polarizing films for LED panels; LED displays for televisions; Audio-video receivers for home theaters; Computer monitors.

The application may proceed for the remaining goods/services.

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.

Alfonso CID