Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 19/02/2016

COHAUSZ & FLORACK Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB

Bleichstr. 14

D-40211 Düsseldorf

ALEMANIA

Application No:	014677322
Your reference:	151898EU
Trade mark:	FILM TV
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 05/11/2015 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.

The applicant submitted its observations on 08/01/2016, which may be summarised as follows:

1. The trade mark is distinctive and not descriptive.

2. The relevant public will have a high degree of awareness; the mark will therefore become known as a trade mark to the relevant public due to their degree of awareness and because the mark will be used on the packaging, etc. of the goods.

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 for the following goods:

Class  9 Wireless headsets; Headsets; Wireless headset for cellphones; Wireless headsets for smartphones; Leather case for smart phones; Flip cover for mobile phones; Flip covers for smart phones; Printers for use with computers; Leather case for tablet PC; Flip cover for tablet PC; Chargeable batteries; Battery compensation chargers; Network surveillance cameras; Earphones.

The objection is maintained for the remaining goods.

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.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) CTMR 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 (judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 25).

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).

1. The trade mark is distinctive and not descriptive

In its letter of 08/01/2015, the applicant argues that the trade mark applied for has distinctive character.

Furthermore, the applicant argues that:

The expression ‘FILM TV’ does not have a clearly delineated meaning, at least with respect to the goods covered by the application.

The applicant continues:

The message conveyed by the mark applied for is non-specific. Even when the particular goods are known, the expression is vague, merely allusive and can be used in a number of different contexts.

Firstly, the Office maintains that the trade mark is a descriptive term and therefore also lacks distinctive character (¹).

Secondly, when assessing a trade mark the mark must be examined in the context of the goods for which registration is sought. The Office reiterates that, in connection with the goods objected to, the mark will simply indicate that the goods enable consumers to both display/watch television and/or films (motion of pictures).

In its letter the applicant asks the meaning of the mark within the context of bracelets, watches and software.

Firstly, the Office can refer to the reasoning for the objection explained above which also applies to these goods – the mark indicates that the watches and bracelets may have a function that enable consumers to display television and films, and the software enables the display of television and films. In other words, a bracelet or a watch can be a computerised multifunctional device with a screen for, for example, watching TV and films and the software facilitate such a function.

Furthermore, the applicant requests to state good per good how the expression ‘FILM TV’ can be a description.

According to established case-law the examination of the grounds for refusal laid down in Article 7 CTMR has to be carried out in relation to each of the goods and services for which trade mark registration is sought. A decision refusing registration of a trade mark must, in principle, state reasons in respect of each of those goods and services. None the less, the Court has confirmed that where the same ground of refusal is given to a category or group of goods or services, the competent authority may use only general reasoning for all of the goods and services concerned (judgment of 15/02/2007, C-239/05, ‘THE KITCHEN COMPANY’, paragraph 38). This is clearly applicable to the case at hand.

The goods covered by the application in annex 1 have common characteristics in that they are goods enabling consumers to both displaying or watching television and motion of pictures (films) or closely related ancillary goods. The goods are complementary and adopt similar marketing practices. The Office concludes therefore, that the relevant consumer’s perception of the mark would be the same in respect of those goods and considers it justified to provide an overall statement of reasons.

Similarly, the Office considers that the goods in annex 2 can be computerised multifunctional devices that have a function enabling consumers to display television and films, and the software included in this group is software facilitating such a function.

The applicant also argues that the expression ‘FILM TV’ is not commonly used in the relevant market.

As regards this argument, ‘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).

Furthermore, the applicant argues that:

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

In its letter of 05/11/2015, the Office stated that the mark is descriptive of the intended purpose of the goods in question. The Office agrees with the applicant that the mark does not describe the kind or quality of the goods. However, the fact that the mark indicates that the goods enable consumers to display television and films, means that the mark describes the intended purpose of the goods and therefore also a characteristic of the goods.

It is also to be noted that Article 7(1)(c) CTMR states that marks which describe 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 cannot be registered. It is therefore irrelevant if the consumer’s choice depends only on the goods’ quality, because every supplier should be able to describe any characteristic of the goods or services it provides.

Moreover, the objection does not depend on whether or not the characteristic the mark describes is an essential characteristic of the goods for which registration is sought, as explained above.

2. The relevant public will have a high degree of awareness; the mark will therefore become known as a trade mark to the relevant public due to their degree of awareness and because the mark will be used on the packaging, etc. of the goods

The applicant argues that:

‘A professional public and the consumers when buying software will spend a great deal of time and forethought considering the merits of one producer´s product compared to another before one is finally chosen. Any decision to take up the goods offered by the applicant under the proposed mark will be made only after thorough analysis of the experience and the capabilities of the applicant and after comparison with similar goods of other undertakings.’

The Office maintains that the fact of the relevant public being specialist cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (judgment of 12/07/2012, C‑311/11 P, ‘Smart Technologies’, paragraph 48).

The applicant’s argument, that the mark will become associated with the goods in question in consumers’ minds, because the mark will be used on the packaging, and because the goods will be closely scrutinized over a long period of time, cannot be taken into account when examining the mark, without evidence demonstrating that the mark had acquired distinctiveness through use before the date of application.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 14677322 is hereby rejected for the following goods:

Class  9 Smartphones; Display for smart phones; Mobile phones; Wearable smart phone; Digital set top boxes; Leather case for mobile phones; 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; 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 the recording/transmission or reproduction of sound and images; DVD players; Handheld media players; Speakers; Digital cameras; Wireless cameras; 3D spectacles; Virtual reality game software; wearable telecommunication devices for the wireless receipt, storage and/or transmission of data and messages; Head mounted video display. Watchbands that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; Bracelets with precious metal that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; Wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers.

Class 14 Watches; Parts and fittings for watches; Wristwatches; Electronic clocks and watches; Bracelets with precious metal; Watch bands; Control clocks; Watches with wireless communication function; Watches that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; Watches incorporating cameras and MP3 players and that communicate data to smart phones and PDAs.

The application is accepted for the remaining goods:

Class  9 Wireless headsets; Headsets; Wireless headset for cellphones; Wireless headsets for smartphones; Leather case for smart phones; Flip cover for mobile phones; Flip covers for smart phones; Printers for use with computers; Leather case for tablet PC; Flip cover for tablet PC; Chargeable batteries; Battery compensation chargers; Network surveillance cameras; Earphones.

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.

Ineta GALUBICKE

Annex 1

Class  9 Smartphones; Display for smart phones; Mobile phones; Wearable smart phone; Digital set top boxes; Leather case for mobile phones; 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; 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 the recording/transmission or reproduction of sound and images; DVD players; Handheld media players; Speakers; Digital cameras; Wireless cameras; 3D spectacles; Virtual reality game software; wearable telecommunication devices for the wireless receipt, storage and/or transmission of data and messages; Head mounted video display.

Annex 2

Class  9 Watchbands that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; Bracelets with precious metal that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; Wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers.

Class 14 Watches; Parts and fittings for watches; Wristwatches; Electronic clocks and watches; Bracelets with precious metal; Watch bands; Control clocks; Watches with wireless communication function; Watches that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; Watches incorporating cameras and MP3 players and that communicate data to smart phones and PDAs.