Refusal of application for a European Union trade mark

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

Alicante, 19/05/2016

WITHERS & ROGERS LLP

4 More London Riverside

London SE1 2AU

REINO UNIDO

Application No:	015012313
Your reference:	T346035CTM/MAA
Trade mark:	SUPREME UHD DIMMING
Mark type:	Word mark
Applicant:	SAMSUNG ELECTRONICS CO., LTD. 129, Samsung-ro, Yeongtong-gu Suwon-si, Gyeonggi-do 443-742 REPÚBLICA DE COREA (LA)

The Office raised an objection on 09/03/2016 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 03/05/2016, which may be summarised as follows:

1. The word supreme is not used often in English language to describe quality, and there are other definitions that better reflect the word supreme.

2. There is no direct relationship between the words and the goods claimed.

3. The geographical area relative to the mark is to be clarified

4. A request for further time for filing of evidence has been made.

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 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 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. (See judgment of 23/10/2003, C 191/01 P, ‘Wrigley’, paragraph 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’ (judgment of 26/11/2003, T 222/02, ‘ROBOTUNITS’, paragraph 34).

The applicant disputes that the word ‘supreme’ is used in the English language to describe the quality of a product. The Office respectfully disagrees and refers back to the standard dictionary definition as provided in the examination report and in particular the term ‘highest quality’. Although not the top dictionary reference it is nonetheless supportive of the notion of better quality, even if the term may not be utilised in everyday common parlance.

Although, the Office respectfully draws the applicant’s attention to the following case law quote, particularly the emphasised section:

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 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. 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, ‘Wrigley’, paragraph 32, emphasis added.)

The goods that are the subject of the application are:

Television receivers; Display panel for television; Monitors for commercial purpose; Television software; Mobile phone display screens; Smart phones.

As such, the Office considers that there is a sufficiently direct relation to all of the goods connected with the term ‘SUPREME UHD DIMMING’. The term is read in totality as supreme ultra high-definition dimming, and is commonly known to the relevant consumer as such, particularly given that this is an area where consumers pay attention to the features they are considering for their device or screen before committing to purchase.

In this context, it will be of particular importance to the consumer that their screen incorporates a better, or higher quality, screen or dimming function to that of a rival screen, as it means that performance is likely to be enhanced, for example in dark rooms where the screen can dim but retain its supreme UHD quality, or retain UHD quality but dim in a supreme way to other screens, i.e. to a better level of lower light.

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 15 012 313 is hereby rejected for all the goods claimed.

For the purposes of clarity, the objection relates to the English speaking countries where the Official language is English, i.e. the UK, Ireland and Malta. The Office acknowledges the applicant’s request for a two month period in which they can file evidence and as such this will be granted accordingly. A response will therefore be required within two months of this letter.

According to Article 59 EUTMR, you have a right to appeal this decision. According to Article 60(1) 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 720 has been paid.

Richard PRYCE