Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 14/03/2016

COHAUSZ & FLORACK Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB

Bleichstr. 14

D-40211 Düsseldorf

ALEMANIA

Application No:	014677611
Your reference:	151909EU
Trade mark:	ROLL
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 02/11/2015 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 06/01/2016, which may be summarised as follows:

1. The word ‘Roll’ does not have a clearly descriptive meaning, at least with respect to the goods covered by the application. The word ‘Roll’ is vague, merely allusive, and can be used in a number of different contexts.

2. The applied for expression is not commonly used in the relevant market of the sale and distribution of electronic devices.

3. The applied for mark does not contain any references to the characteristics of the claimed goods. In particular the relevant consumers will not see any indication of the quality of the products referred to in the expression.

4. The mark has at least a minimum degree of distinctiveness.

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; Digital set top boxes; Leather case for mobile phones; Leather case for smart phones; Flip cover for mobile phones; Flip covers for smart phones; Computer application software; Computer application software for mobile phones; Computer application software for TV; Printers for use with computers; Leather case for tablet PC; Flip cover for tablet PC; Chargeable batteries; Battery compensation chargers; Network surveillance cameras; Television receivers; Audio components system, comprising surround sound speakers, loud speakers, tuners, sound mixers, equalizers, audio recorders, and radios; Earphones; DVD players; Handheld media players; Speakers; Digital cameras; Wireless cameras; 3D spectacles; Virtual reality game software.

Class 14 Parts and fittings for watches; Wristwatches; Electronic clocks Bracelets with precious metal; Watch bands; Control clocks.

The objection is maintained for the remaining goods.

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/2, EU:C:2004:532, § 25).

Under Article 7(1)(c) CTMR, trademarks 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.

The sign which has been applied for ‘Roll’ immediately informs consumers without further reflection that the goods applied for are various electronic goods that are flexible and can be rolled up. Therefore, the mark conveys obvious and direct information regarding the kind of the goods in question.

By prohibiting the registration as Community trademarks 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, Doublemint, EU:C:2003:579, §31.)

According to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (judgment of 19/09/2002, C-104/00 P, Companyline, EU:C:2002:506, § 21).

This is clearly applicable to the present case. Given that the mark has a clear descriptive meaning in relation to the goods and services applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin. Consequently, taken as a whole, the mark applied for is devoid of any distinctive character and is not capable of distinguishing the goods and services for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) CTMR.

As regards the applicant's observations, the Office replies as follows:

1. The word ‘Roll’ does not have a clearly descriptive meaning, at least with respect to the goods covered by the application. The word ‘Roll’ is vague, merely allusive, and can be used in a number of different contexts.

The word ‘Roll’ as referring to the goods is directly descriptive, as it immediately informs consumers without further reflection that the goods applied for are various electronic goods that are flexible and can be rolled up. Therefore, the mark conveys obvious and direct information regarding the kind of the goods in question. The Office considers there to be no need for an additional mental step to understand the connection between the mark and the goods. The Applicant’s consideration that the claimed word combination could be used in a number of different contexts is not relevant in the present case as the assessment of the descriptiveness of the applied for trade mark should be focused on the claimed goods and the circumstance in which the relevant public perceives the claimed sign. In relation to refused goods (displays and devices) the mark indicates their flexibility, that is, the fact that that one could them roll up when needed. Whether there exist other connotations or not is irrelevant since in the context of the claimed goods the trade mark has at least one meaning which is directly descriptive. 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, Doublemint, EU:C:2003:579, § 32. Therefore the Office cannot agree with the Applicant that the claimed expression is too vague and that there is no obvious or direct link between the sign and the objected goods.

2. The applied for expression is not commonly used in the relevant market of the

sale and distribution of electronic devices.

In the present case, the fact that the term is not commonly used is irrelevant. The question of the actual use of the trade mark could only be relevant if the Office had raised an objection based on CTMR Article 7(1)(d). Currently the Office has established the fact that the term “roll’’ describes the goods at issue. CTMR Articles 7(1) (b) and (c) do not include an additional requirement for the Office to prove the common use of descriptive words. It is not necessary that the signs and indications composing the mark that are referred to in Article 7(1) (b) actually be in use at the time of the application for registration in a way that is descriptive of the 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. 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, EU:T:2005:325, § 88).

Therefore the Office must refuse to give legal protection to a descriptive term even if any actual use of the claimed mark has not been demonstrated or even if there is some other word that is used more frequently for describing the claimed goods.

3. The applied for mark does not contain any references to the characteristics of the claimed goods. In particular the relevant consumers will not see any indication of the quality of the products referred to in the expression.

In response to the Applicant’s statement, the Office explains that in the present case the word presented in the trade mark is directly descriptive; the word „roll “, as previously explained, refers to a flexibility, that is, to the fact that the goods could be rolled up. This connotation is attributed to the word on the basis of information found in Collins English Dictionary. In the Office’s opinion, the relevant consumer is able to attribute to the word the same meaning as is claimed by the Office. The goods in the present case are either screens, displays or various electronic devices that may be manufactured in way that they are not rigid or stiff, but flexible, and could be rolled up when it is needed. Nowadays many manufacturers Samsung, Sony Xerox Parc, HP and ASU (https://en.wikipedia.org/wiki/Flexible_display ) focus on producing such electronic goods that are flexible. Therefore taking into account on the one hand the meaning of the claimed trade mark, and on the other hand, the claimed goods, the Office considers there to be a direct connection between the mark and the goods, as the applied for trade mark describes directly the kind and intended purpose of the goods in question.

4. The mark has at least a minimum degree of distinctiveness.

According to the case-law of the Court of Justice, the fact that a sign is composed of descriptive words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (judgment of 19/09/2002, C-104/00 P, Companyline, EU:C:2002:506, § 21). This is clearly applicable to the present case.

Given that the mark has a clear descriptive meaning in relation to the services applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

The mark applied for –“Roll”– is devoid of any distinctive character and is not capable of distinguishing the goods and services for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) 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 14 677 611 is hereby rejected for the following goods:

Class 9 Smartphones; Display for smart phones; Mobile phones; Wearable smart phone; Tablet PC; Monitor for computers; Monitors for commercial purposes; Wearable computers; Computers; Light emitting diode (LED) displays; Portable computers; Display for television receivers; Apparatus for the recording/transmission or reproduction of sound and images; 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; Electronic watches; 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.

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.

Liina PUU