Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 29/01/2016

COHAUSZ & FLORACK Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB

Bleichstr. 14

D-40211 Düsseldorf

ALEMANIA

Application No:	014510614
Your reference:	151252EU
Trade mark:	Sound share
Mark type:	Word mark
Applicant:	LG ELECTRONICS INC. 128, Yeoui-daero, Yeongdeungpo-gu Seoul 150-721 REPÚBLICA DE COREA (LA)

1. Summary of facts

The Office raised an objection on 16/09/2015 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. Observations by the applicant

The applicant submitted its observations on 19/11/2015, which may be summarised as follows.

• The mark ‘Sound share’ has distinctive character and fulfils the essential function of a trade mark.

• The expression ‘Sound share’ does not have a clearly delineated meaning in respect of the goods covered by the application.

• The message conveyed by the mark is non-specific. The expression is vague and merely alludes to a number of different contexts.

• The examiner submits that the words ‘Sound share’ immediately inform consumers without further reflection that the goods applied for are intended for sound sharing purposes or that the goods enable sharing and enjoying sound and/or music jointly with another or others, or that the goods incorporate such a sound sharing feature. However, such understanding does not make any sense and many relevant questions are left open.

• The expression ‘Sound share’ is not commonly used in the relevant market or sale and distribution of electronic devices.

• As regards goods such as computer application software for smartphones or hardware goods like smartphones themselves, the expression has no meaning at all.

• The mark does not consist of characteristics of the goods applied for at all. In particular the relevant consumer will not see any indication of the quality of the products in the expression as it is much too vague.

• The relevant public being both the professional and the average consumer when buying the contested products will spend a great deal of time and forethought considering the merits of one producer’s products compared to another before one is finally chosen.

• The mark ‘Sound share’ will be found on the applicant’s product packaging etc. and will become associated in the mind of the consumer with the goods in question.

• The mark has the minimum level of distinctiveness which is necessary under Article 7(1)(b) CTMR.

• The mark is not descriptive for all the contested goods. Even if the opinion of the Office was correct, there would be no immediate link with the goods. If the Office argues this point the applicant requests that the Office states good per good how this expression can be descriptive for all.

3. Decision

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 waive the objection in respect of the following goods:

Class 9 Portable chargers for mobile phones.

The objection is maintained for the remaining goods.

Article 7 CTMR, bearing the title ‘absolute grounds for refusal’, provides in material part that:

1. The following shall not be registered:

…

(b) trade marks which are devoid of any distinctive character;

(c) 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;

…

2. Paragraph 1 shall apply notwithstanding that the grounds of non-registrability

obtain in only part of the Community.

The signs referred to in Article 7(1)(c) CTMR are signs regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired the product or service to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (judgment of 27/02/2002, T-219/00, ‘Ellos’, paragraph 28).

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 applied for may be freely used by all. This provision, therefore, prevents such signs and indications from being reserved for one undertaking alone because they have been registered as trade marks (judgment of 08/04/2003 in Joined Cases C-53/01, C-54/01 and C-55/01, ‘Linde’, paragraph 73). It is also irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary.

According to settled case-law, the descriptiveness and distinctiveness of a trade mark must be appraised by looking at the mark as a whole and by having regard to the way that it is likely to be perceived by potential consumers of the goods or services at issue. For a sign to fall under the prohibition set out in Article 7(1)(c) CTMR, there must be a sufficiently direct and specific link between the sign and those goods or services to enable the public concerned to perceive immediately, without further thought, a description of the goods and services in question or one of their characteristics (judgment of 03/12/2003, T-16/02, ‘TDI’, paragraph 29; and judgment of 19/11/2009, T-399/08, ‘CLEARWIFI’, paragraph 20, and the case-law cited therein). As regards the requirement of ‘sufficiently direct and specific link between the sign and the goods or services in question’, the Court has stressed in its recent judgment of 25/09/2015, T-591/14, ‘PerfectRoast’, paragraphs 25-26, that in order to be descriptive, it is not relevant that the goods concerned serve directly the activity concerned, but it may be enough that the goods are in sufficiently close relation to the activity concerned.

According to established case-law, a word sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgment of 23/10/2003, C-191/01 P, ‘DOUBLEMINT’, paragraph 32, and order of the Court of 05/02/2004, C-326/01, ‘Universaltelefonbuch’, paragraph 28).

The goods concerned are aimed at both average consumers and a professional public. As regards the attentiveness of the relevant public the Office agrees with the applicant that, in view of the nature of the goods concerned, the attentiveness of that public is either high (professional public) or relatively high (average consumers). However, contrary to what the applicant asserts, the high attentiveness on the part of the relevant public does not imply that a sign is less likely to be caught by any absolute grounds of refusal (judgment of 12/07/2012, C-311/11 P, ‘Smart Technologies’, paragraph 48, decision of 05/02/2010, R-1118/2009-4, ‘ACTIVECONTINENCE’, paragraph 25, decision of 21/10/2010, R-595/2010-2, ‘PROFIT HUNTER’, paragraph 18). In fact, it can be quite the contrary: terms that are not (fully) understood by average consumers, may be grasped immediately by the specialised and highly attentive public, particularly if the sign is composed of words which relate to the field in which that public is active. The professional public is expected -not only to know the subject matter and terminology of the field concerned and the goods available on the relevant market - but also to be aware of new, more advanced technologies and instruments with new features and functionalities entering the relevant market.

The fact that consumers may nevertheless get into the habit of recognizing a product from the mark applied to it that is prima facie considered descriptive and non-distinctive, is not enough, in itself, to preclude the ground for refusal based on Article 7(1)(b) and (c) CTMR. Such a development in the public's perception of the sign, if proved, may be taken into account only for the purposes of Article 7(3) CTMR.

According to established case-law a mark consisting of a neologism or a word composed of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, is itself descriptive of the characteristics of those goods or services, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that would be the case where, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts (judgment of 12/02/2004, C-265/00 ‘Campina Melkunie’, paragraph 41).

The requirement described above is not met in the present case. The mark applied for consists of two readily identifiable words ‘Sound’ and ‘share’ from the English language. The expression does not diverge from the rules of English grammar but rather complies with them. The conjoining of the words ‘Sound’ and ‘share’ simply produces a sign that is merely the sum of its parts and is meaningful: to have or enjoy something, for example music, jointly with another or others. When applied to the goods covered by the application the expression will be understood by the relevant consumers as denoting goods that are intended for sound sharing purposes or that the goods enable sharing and enjoying sound and/or music jointly with another or others, or that the goods incorporate such a sound sharing feature. Therefore, the mark ‘Sound share’ conveys obvious and direct information regarding

the intended purpose, function, and subject matter of the goods in question. Contrary to what the applicant suggests, there is nothing allusive or vague in the expression ‘Sound share’. The descriptive meaning contained in the mark is clear, direct and immediate to the relevant public in the context of the goods covered by the application. It is very unlikely that the relevant attentive public would fail to grasp the descriptive message contained in the mark.

The feature, that the goods concerned are capable of sharing sound and music can also be one of the important and desirable qualities of the goods or a function that the relevant consumer would appreciate, and would therefore be a characteristic that is taken into account by the relevant public when making its choice.

For the reasons explained above the Office considers that from the point of view of the relevant public, there is a sufficiently direct and specific relationship between the expression ‘Sound share’ and the goods in question to enable the public concerned immediately to perceive, without further thought, a description of the goods or one of their characteristics.

The applicant has requested the Office to state good per good how the expression ‘Sound share’ can be descriptive for all.

It is clear from the case-law that, regarding the obligation to state reasons, first, an examination of the absolute grounds for refusal must be carried out in relation to each of the goods and services for which trade mark registration is sought and, secondly, that the decision of the competent authority refusing registration of a trade mark must, in principle, state reasons in respect of each of those goods or services (judgment of 20/05/2009, in Joined Cases T-405/07 and T-406/07 ‘P@YWEB CARD’ and ‘PAYWEB CARD’, paragraph 54 and the case-law cited). However, the Court has also established that where the same ground of refusal is given for a category or group of goods or services, that authority may use only general reasoning for all the goods and services concerned (judgment of 15/02/2007, C-239/05, ‘BVBA Management, Training en Consultancy, paragraphs 34 to 37).

In the present case all the contested goods are either goods that are intended for sound sharing purposes or goods that enable sharing and enjoying sound and/or music jointly with another or others, or goods that incorporate such a sound sharing feature. As all the contested goods are interlinked in a sufficiently direct and specific way to the point that they form a category or group of goods or services sufficiently homogeneous, the Office considers that the use of general reasoning is sufficient and there is no need to provide an explanation to the objection on a good by good basis.

The applicant’s argument that the expression ‘Sound share’ is not commonly used in the relevant market has no significance. The applicant is reminded that for a trade to be refused 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 provisions 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 (judgment of 23/10/2003, C-191/01 P, 'DOUBLEMINT’, paragraph 32). In addition, according to established case-law, 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 service 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).

It is clear from the wording of Article 7(1)(b) CTMR that a minimum degree of distinctive character is sufficient to render inapplicable the ground of refusal set out in that article (judgment of 27/02/2002, T-34/00, ‘Eurocool’, paragraph 39, and judgment of 27/09/2005, T-123/04, ‘Cargo Partner’, paragraph 45). However, the Court of Justice has recognised that the provisions of Article 7(1)(b) and 7(1)(c) CTMR overlap to a large extent, and it is clear from the case-law of the General Court and the Court of Justice that a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) CTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services for the purposes of Article 7(1)(b) CTMR (judgment of 12/02/2004, C-363/99, ‘Koninklijke KPN Nederland’, paragraph 86). Given that the mark ‘Sound share’ has a clear descriptive meaning for the goods applied for, the impact of the mark on the relevant public will be primarily descriptive in nature. Therefore, the mark is also devoid of any distinctive character with regard to the same goods within the meaning of Article 7(1)(b) CTMR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 14 510 614 is hereby rejected for the following goods:

Class 9 Computer application software; Computer application software for smart phones; Computer application software for mobile phones; Computer programs (downloadable software); Operating system programs; Computer application software for smart phones and tablet PC; Computers; Computer software; Smart phones; Portable communications apparatus namely handsets, walkie-talkies, satellite telephones and personal digital assistants [PDA]; Audio components; Apparatus for recording, transmission or reproduction of sound; Television receivers; Wearable smart phones; Portable speakers; Earphones; Wireless headphone; Wireless headsets.

The application is accepted for the remaining goods, namely for:

Class 9 Apparatus for recording, transmission or reproduction of images; Mobile phone cases; Portable chargers for mobile phones.

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.

Tuula RAJALA

ATTACHMENT Notice of grounds for refusal of application for a Community trade mark (Article 7 CTMR and Rule 11(1) CTMIR),

of 16/09/2015, 3 pages