Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 12/07/2016

COHAUSZ & FLORACK Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB

Bleichstr. 14

D-40211 Düsseldorf

ALEMANIA

Application No:	014956411
Your reference:	152686EU
Trade mark:	Home Guard
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 14/01/2016 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR 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 17/03/2016, which may be summarised as follows:

1. The trademark applied for has no descriptive meaning in relation to the goods applied for. The designation ‘HOME GUARD’ does not have a clearly delineated meaning, at least with respect to the goods covered by the application. The expression is vague, merely allusive and can be used in a number of different contexts. It remains unclear what the expression ‘HOME GUARD’ stands for exactly, as a device cannot protect something, and a ‘guard’ is a human being.

The awareness of the relevant public will be at least normal, given the relatively high technical level of goods. The applicant adds that any decision to buy the goods offered under the proposed mark will be made by the consumers only after thorough analysis of the experience and capabilities of the applicant, and after comparison with similar goods of other undertakings. It is highly likely that the various products and their producers will be closely scrutinized, perhaps over a long period of time. This means that the sign under which each producer trades will become known to the relevant consumer during the deliberation process.

Likewise, the mark ‘HOME GUARD’ 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, thus the relevant consumers will know that the mark ‘HOME GUARD’ is not an expression used for the goods applied for.

2. The expression ‘HOME GUARD’ is not commonly used in the relevant market of sales and distribution of electronic devices.

3. The applicant adds that in view of the minimum level of distinctiveness, the trade mark applied for is distinctive. The term ‘HOME GUARD’ does not constitute a merely descriptive indication of the kind or quality or purpose of the objected goods. The applicant requests the Office to argue and state good per good how this expression can be a description at all.

Pursuant to Article 75 EUTMR, 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.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR 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 (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

Under Article 7(1)(c) EUTMR, ‘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 European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR 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 (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31)

The signs and indications referred to in Article 7(1)(c) EUTMR 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 (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

1. Regarding the applicant’s arguments that the trademark applied for has no descriptive and/or delineated meaning in relation to the objected goods, the Office is on the opinion that the meaning of the English words ‘HOME’ and ‘GUARD’ together refer to something/someone, which/who provides protection for users’ homes. The Office however disagrees with the applicant that only a person can be a ‘guard’, as it is clear from the dictionary definition provided in the original objection.

In addition, the word ‘guard’ may be also understood as a verb, with the following meaning: ‘Watch over in order to protect or control’ (information extracted from the Oxford Dictionary online on 12/07/2016 at http://www.oxforddictionaries.com/definition/english/guard). In the Office’s opinion, this is exactly what the consumers become capable of, by using the products ‘electric vacuum cleaners which enable users to monitor or remote control via wireless communications; Robot cleaners for household purposes which enable users to monitor or remote control via wireless communications; Robot cleaners for household purposes in which image surveillance function has been built’. These products enable the user to watch over the cleaning process carried out by those in their homes, while controlling these activities fully, even from a distance.

However, with regard to all of the goods concerned, the relevant consumers may immediately think that those are designed for maintaining and protecting the tidiness and order in the user’s home, either automatically/by their nature, and/or under the (remote) control of the user.

It follows, that the mark conveys obvious and direct information regarding the purpose and the kind of the goods in question.

It can be true that the various products concerned and their producers will be closely scrutinized by the relevant consumers, perhaps over a long period of time, and therefore the sign under which each producer trades will become known to the consumers during the deliberation process, and characteristic packaging may also make the consumers associate a mark with a trademark owner. However, the fact remains that the expression ‘HOME GUARD’ clearly refers to a positive feature of the products in question, which renders the mark descriptive.

It must be noted however, that in case the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

2. Although the Office accepts the applicant’s argument that the expression ‘HOME GUARD’ might not be commonly used in the relevant market of sales and distribution of electronic devices, and more closely regarding the objected products, it must be noted with regard to the assumption that no other competitors make use of the same combination, that ‘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’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

3. In the light of the foregoing, the Office maintains that given that the mark has a descriptive meaning in relation to the goods 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.

Regarding the applicant’s requests that the Office should state the reason why the objected mark is considered descriptive for each of the objected goods, reference is made to point 1 above.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 14 956 411 is hereby rejected for all the goods claimed.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. 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 720 has been paid.

Volker Timo MENSING