Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 21/03/2016

COHAUSZ & FLORACK Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB

Bleichstr. 14

D-40211 Düsseldorf

ALEMANIA

Application No:	014758502
Your reference:	152296EU
Trade mark:	One for All
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 19/11/2015 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 25/01/2016, 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.

3. Similar marks have already been registered by the Office.

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.

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 25/01/2016 , the applicant argues that the trade mark applied for has distinctive character.

Furthermore, the applicant argues that:

The expression ‘ONE FOR ALL’ 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 character¹.

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 and services enable consumers to use them for everything as a single source – in other words, that the goods and services applied for can be used for all purposes, applications and uses, for example a smart phone accessory with software that enables to process payments on all platforms based on any method.

Furthermore, the applicant requests to state good per good how the expression ‘ONE FOR ALL’ 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 have common characteristics as they can be computerised multifunctional devices enabling the consumers to use them for all interrelated purposes, applications and uses of an electronic device or closely related ancillary goods. Similarly, the Office considers that the the software applied for is software facilitating such functions. 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.

Furthermore, the Office equally considers that the services in class 36 are services for all types and methods of payments effectuated on various platforms or closely related ancillary services and that adopt similar marketing practices.

As concerns headsets, and cases for mobile phones, they can be smart devices incorporating such functions as GPS connection, additional memory, fast data sharing and even brain waves reading and controlling virtual objects (please refer to the internet excerpts below).

Digital signages can also be intelligent devices that suit diversified applications by providing interchange between all types of displays modes and integrating 3G and GPS technology to provide both mobile and place-based solutions. The can also integrate barcode devices. They can offer a complete portfolio of digital signage solutions including media players, servers, and software which are applicable to various industries, please see the inserted internet excerpts below.

As concerns battery charges, they can for example be used for all types of mobile devices or their batteries and/or with all kinds of plugs.

The applicant also argues that the expression ‘ONE FOR ALL’ 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 “ONE FOR ALL” does not consist of characteristics of the goods and services 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 19/11/2015, 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 and services enable consumers to use them for all purposes, applications and uses, means that the mark describes the intended purpose of the goods and services and therefore also a characteristic of those goods and services.

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 consumers electronics 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.

3. Similar marks have already been registered by the Office

As regards the applicant’s argument that a number of similar registrations have been accepted by OHIM, according to settled case‑law, ‘decisions concerning registration of a sign as a Community trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a Community trade mark must be assessed solely on the basis of the CTMR, as interpreted by the Community judicature, and not on the basis of previous Office practice (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, paragraph 35).

‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 67).

***

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 14758502 is hereby rejected for all the goods/services claimed.

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

Internet excerpts

21/03/2016 http://www.universitybusiness.com/article/mobile-technology-one-all

21/03/2016 http://www.amazon.com/One-For-All-mobile-Phone-Accessories/dp/B004F1EKPG

21/03/2016 http://techcrunch.com/2013/06/18/izettle-takes-its-mobile-payment-service-to-mexico-its-first-market-outside-of-europe-and-one-step-closer-to-square/

21/03/2016 https://www.ted.com/talks/tan_le_a_headset_that_reads_your_brainwaves?language=en

21/03/2016 https://intelligentheadset.com/

21/03/2016 https://i-blades.com/

21/03/2016 http://www.rmgnetworks.com/enterprise-solutions

21/03/2016 http://es.cayintech.com/news/20110523_cayin_showcase_new_multi-purpose_digital_signage_player_at_computex_taipei_2011.html