Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 26/10/2015

COHAUSZ & FLORACK Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB

Bleichstr. 14

D-40211 Düsseldorf

ALEMANIA

Application No:	014423214
Your reference:	151096EU
Trade mark:	WALL TV
Mark type:	Word mark
Applicant:	LG ELECTRONICS INC. 128, Yeoui-daero, Yeongdeungpo-gu Seoul 150-721 REPÚBLICA DE COREA (LA)

1. The Office raised an objection on 13/08/2015 pursuant to Article 7(1)(b) and (c) and 7(2) CTMR 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.

2. The applicant submitted its observations on 12/10/2015, which may be summarised as follows:

• The mark has distinctive character and fulfils the essential function of a trade mark.

• The expression WALL TV does not have a clearly delineated meaning with respect to the goods applied for. The attribute WALL TV is not the same as “wall mounted televisions”; it does not make sense to understand WALL TV as a wall mounted television. Therefore the mark is vague and allusive.

• What exactly does WALL TV mean in the context of for example smart phones, digital cameras or computers? How could a wall be converted into a television? How can displaying an image on a wall be the same as a television? There are many questions left open and moreover, the expression WALL TV is not commonly used in the relevant market of electronic devices.

• The mark has no descriptive meaning in relation to the goods applied for. The relevant consumers will not see any indication of quality of the products in the mark. When purchasing the applicant´s products the consumers will rely on hard facts such as the quality of the goods but the expression WALL TV does not have any impact on whether or not to buy such a device.

• Given the high technical level of goods, any decision to take up the goods offered by the applicant will be made only after thorough analysis and after comparison with similar goods. This means that the sign will become known to the relevant consumer during the deliberation process. The relevant consumers will know that the mark WALL TV is not an expression used for the goods applied for.

• The applicant refers to relevant case law.

3. Pursuant to Article 75 CTMR, 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) CTMR, ‘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.

By prohibiting the registration as Community trade marks of the signs and indications to which it refers, Article 7(1)(c) CTMR

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.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 31.)

‘The signs and indications referred to in Article 7(1)(c) [CTMR] 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’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

The Office cannot find anything distinctive about the mark WALL TV for the goods in question.

Both the words WALL and TV have clearly defined meanings in English. When combining the words they form an expression that makes perfect sense and that will immediately be understood by the relevant consumers as referring to a television or television images that that can be mounted on a wall or viewed on a wall.

Wall mounted televisions is a common occurrence nowadays. There also exist mobile phones and similar devices that can project movies, television and other media onto a wall. See below an example:

http://www.gizmag.com/samsung-galaxy-beam/21606/

Such devices will most likely be common in the future.

In relation to TVs or other devices that either is to be mounted on a wall or allow for viewing TV on the wall, the mark WALL TV directly describes the kind and intended purpose of those goods. Applied to interrelated goods, the mark would also be seen as descriptive and non-distinctive.

As for the goods computers, cameras etc., these days many electronic devices have various functions; a mobile phone or a TV can at the same time have computer functions and vice versa. Also, the expression “to watch TV” can refer to any viewing of movies, programmes on a screen such on a computer screen, or on a wall.

Moreover, for a trade mark to be refused registration under Article 7(1)(c) CTMR,

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.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 32.)

There is nothing vague or allusive about the mark in relation to any of the goods objected to. Any English speaking person will immediately perceive the descriptive message conveyed by the mark WALL TV.

A sign which is imaginative, original, unusual and fanciful is far more likely to be able to do the job of distinguishing the goods of a specific undertaking than a sign which in banal, hackneyed, commonplace and derivative. In particular, when a sign contains information about the characteristics of the goods or services in relation to which it is to be used, it may none the less qualify for registration if that information is presented in an original or imaginative manner. No such techniques are present in the sign and the mark does not contain any element whatsoever that would make it distinctive.

As regards the argument that the expression WALL TV is not commonly used in the relevant market, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question … The lack of prior use cannot automatically indicate such a perception.’ (judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 88).

No proof has been submitted to show that the mark has become “known” to the relevant consumer during the deliberation process due to the relatively high technical level of the goods.

In fact, there is nothing about the mark that would lead the relevant consumers to believe that it is an indication of commercial origin.

4. For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 14423214 is hereby rejected for the following goods:

Class 9 Smart phones; Display for smart phones; Mobile phones; Wearable smart phone; Digital set top boxes; Computer application software; Computer application software for mobile phones; Computer application software for TV; Tablet PC; Monitor for computers; Monitors for commercial purposes; Wearable computers; Computers; Light emitting diode (LED) displays; Portable computers; 3D spectacles; Digital cameras; Network surveillance cameras; Television receivers; Display for television receivers; Audio components system, comprising surround sound speakers, Loud speakers, tuners, sound mixers, equalizers, audio recorders, and radios; Apparatus for recording, transmission or reproduction of sound or images; DVD players; Handheld media players.

The application is accepted for the remaining goods.

According to Article 59 CTMR, you have a right to appeal this decision. According to Article 60 CTMR, notice of appeal must be filed in writing with the Office within two months of the date of notification of this decision. 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 800 has been paid.

Cecilia ALIN