Refusal of application for a European Union trade mark

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

Alicante, 27/05/2016

COHAUSZ & FLORACK Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB

Bleichstr. 14

D-40211 Düsseldorf

ALEMANIA

Application No:	014995922
Your reference:	160112EU
Trade mark:	Home IoT Network
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 29/01/2016, pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character for all the goods applied for. The objection letter is attached.

The applicant submitted its observations on 04/04/2016 which may be summarised as follows:

• The mark Home IoT Network has distinctive character and fulfils the essential function of a trade mark.

• The expression Home IoT Network does not have a clearly delineated meaning in respect of the goods covered by the mark.

• The message conveyed by Home IoT Network in non-specific. The expression is vague and merely alludes to a number of different contexts.

• The examiner submits that the words Home IoT Network immediately informs consumers without further reflection that the goods applied for are, or directly relate to a system of interconnected household objects/appliances that communicate with each other over the Internet allowing information to be exchanged to the user, applications and each other, however the applicant submits that this viewpoint does not make sense.

• The expression Home IoT Network does not give useful information to the consumer.

• The expression Home IoT Network is not commonly used in the relevant market or sale and distribution of electronic devices.

• 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 sign is not descriptive for all the contested goods. If the Office argues this point the applicant requests that the Office argues and states good per good how this expression can be descriptive for all.

• Twenty-one IoT trademarks filed at the EUIPO have been accepted and published for registration. Therefore the examiner is requested to follow practice and allow the subject mark to proceed to registration.

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.

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.

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 which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (see Judgment of 16 September 2004, Case C-329/02P SAT.1 SatellitenFernsehen GmbH / OHIM (EUIPO), (SAT.2), ECR I-8317, paragraph 25).

By prohibiting the registration as European 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 (see Judgment of 23 October 2003, Case C-191/01P, OHIM (EUIPO) /WM. Wrigley JR. Company (DOUBLEMINT), ECR I-12447, paragraph 31).

The Office is of the opinion that contrary to what the applicant says, the term Home IoT Network is indeed descriptive of the kind and characteristics of all the goods applied for.

It is noted that in terms of the contested goods the applicant requests that the Office states good per good how the expression Home IoT Network can be descriptive for all.

To reiterate, the Office remains of the opinion that taken as a whole, the words Home IoT Network immediately informs consumers without further reflection that the goods applied for are, or directly relate to a system of interconnected household objects/appliances that communicate with each other over the Internet allowing information to be exchanged to the user, applications and each other. The combined words the expression consist of provide a straightforward and clear message in relation to the goods concerned. There is nothing abstract about the expression Home IoT Network as its semantic content, in relation to the goods applied for, is quite obvious. The meaning of the expression as a whole applied to the relevant goods is simply the sum of the individual terms and will be perceived with that meaning. Therefore, the mark conveys obvious and direct information regarding the kind and characteristics of the goods in question.

The applicant is reminded that IoT is an abbreviation of the expression ‘The Internet of Things’ being the connection of devices over the internet, letting them talk to the user, applications, and each other (Information extracted online from the Guardian.com on 29/01/2016, at http://www.theguardian.com/technology/2015/may/06/what-is-the-internet-of-thingsgoogle

As such, the Internet of Things (IoT) is a system of interrelated computing devices, mechanical and digital machines, objects, animals or people that are provided with unique identifiers and the ability to transfer data over a network without requiring human-to-human or human-to-computer interaction: (http://internetofthingsagenda.techtarget.com/definition/Internet-of-Things-IoT .

Furthermore, a UK government produced document, states that the IoT (Internet of Things) is a transformative development relating to technologies that could allow literally billions of everyday objects to communicate with each other over the Internet which could have enormous potential to change people’s lives. These technologies are a way of boosting productivity, of keeping us healthier, making transport more efficient, reducing energy needs and making homes more comfortable, etc., it could include electricity meters that talk to the grid to get the best deals; health monitors that keep an eye on user’s heart rate; and cars that avoid congestion on a motorway, etc. (Information extracted online from the Gov.UK on 29/01/2016, at:

https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/409774/14-1230-internet-of-things-review.pdf

As previously stated, the relevant consumer will therefore understand the words Home IoT Network as a meaningful expression, namely a system of interconnected everyday household objects/appliances that communicate with each other over the Internet allowing information to be exchanged to the user, applications and each other.

Consequently, the meaning of the expression Home IoT Network as a whole, when applied to the contested goods is simply the sum of the individual terms ‘Home IoT Network’ and it will be perceived with that meaning. Therefore, the mark conveys obvious and direct information regarding the kind and characteristics of the goods in question.

As the above reasoning applies to all the goods claimed it is not necessary for the Office to provide an explanation to the objection on a good by good basis it is sufficient for the applicant to note that the objection raised and the reasoning provided in support of the objection applies equally to all the contested goods.

The words in the mark applied for are presented in a sequence that is intellectually meaningful. Therefore, there is no doubt that the relevant consumer will not perceive it as unusual but rather as a meaningful expression in relation to the goods concerned.

Furthermore, the term Home IoT Network is not sufficiently ambiguous or fanciful in order to require a measure of interpretation, thought or analysis by the relevant consumer. As a result, the message conveyed by the mark is clear, direct and immediate to the relevant public and in relation to all the goods applied for on the basis that it is not vague in any way, nor does it lend itself to different interpretations, nor is it akin to an allusive fanciful sign in relation to the goods claimed.

With regard to the argument that the expression Home IoT Network is not commonly used in the relevant market or in relation to the sale and distribution of electronic devices has no significance. The applicant is reminded that for a trade mark to be refused registration under Article 7(1)(c) EUTMR, 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 such as those in relation to which the application is filed, or of characteristics of those goods. It is sufficient, as the wording of that provision 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 concerned (See judgment of 23/10/2003, C-191/01 P, ‘Wrigley’, paragraph 32.).

As regards the argument that the relevant consumer would regard the word mark Home IoT Network as a distinctive badge of origin and not as a non-distinctive/descriptive term in relation to the goods in question it has to be put forward that where the Office finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods (see, by analogy, judgment of 22/06/2004, T-185/02, 'PICARO', paragraph 29). In such a case, the Office is not obliged to give examples of such practical experience (judgment of 15/03/2006, T-129/04, 'Develey', paragraph 19).

It is on that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as a descriptive message and not as the trade mark of a particular manufacturer. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is for the applicant to provide specific and substantiated information to show that the trade mark sought has either an intrinsic distinctive character or a distinctive character acquired by usage, since it is much better placed to do so, given its thorough knowledge of the market (see judgment of 05/03/2003, T-194/01, 'Unilever', paragraph 48).

The Office notes the applicant’s comments that the goods concerned would tend to be purchased by both professional and average consumers who when buying those goods concerned would spend a great deal of time and forethought considering the merits of one producer’s products compared to another before one is finally chosen. As such, the applicant appears to be suggesting that as the goods concerned are likely to be a considered purchase the relevant public would undertake the relevant purchase with a higher than average level of care and attention resulting in a heightened level of awareness and consequently the relevant consumer would see the sign Photo View as a badge of sole trade origin and not as a descriptive/non-distinctive term in relation to the goods concerned. Regretfully, the Office cannot agree with this viewpoint.

There is no evidence to suggest that the relevant consumer in the area of the goods claimed would be particularly trade mark ‘educated’ or savvy and would instantly perceive Home IoT Network as a trade mark in relation to the contested goods rather than a descriptive message in relation to the kind and characteristics of the goods.

Furthermore, on a similar note, it must be held that the fact that the relevant public is a professional/specialist one 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 public is, by definition, higher than that of the average consumers carrying out everyday purchases, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist/professional (judgment of 12/07/2012, C-311/11 P, ‘Smart Technologies’, paragraph 48).

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, according to settled case law, ‘decisions concerning registration of a sign as a European Union 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 European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union 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).

Consequently, due to the reasons set out above, and pursuant to Article 7(1)(b) and (c), and 7(2) EUTMR, the application for the Community Trade Mark Home IoT Network is hereby rejected for all the goods claimed.

According to Article 59 EUTMR, you have a right to appeal this decision. According to Article 60 EUTMR, 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.

Sam CONGREVE