Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 15/06/2018

BOEHMERT & BOEHMERT ANWALTSPARTNERSCHAFT MBB - PATENTANWÄLTE RECHTSANWÄLTE

Postfach 10 71 27

D-28071 Bremen

ALEMANIA

Application No:	017163205
Your reference:	H32855EU
Trade mark:	MaxView Display
Mark type:	Word mark
Applicant:	Huawei Technologies Co., Ltd. Administration Building Huawei Technologies Co., Ltd. Bantian, Longgang District Shenzhen, Guangdong 518129 REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 15/09/2017 pursuant to Article 7(1)(b) and (c) 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.

On 13/11/2017, the applicant requested a limitation of the list of goods, which could not be granted by the Office in its totality, because one of the proposed terms was too vague and required further specification.

The applicant submitted its observations on 14/11/2017, which may be summarised as follows:

1. The expression ‘MaxView Display’ is not descriptive for the terms information technology and communications equipment; the term audio-visual, multimedia and photographic devices was deleted by the applicant, via limitation, from the list of goods.

2. According to case-law, there must be a sufficiently direct and specific relationship between the sign and the goods in question that will be perceived by the relevant public immediately and without further thought as a description of the goods or one of their characteristics.

3. The remaining terms encompass ‘a variety of goods of which the majority does not consist of a display’. Even though some may have a display, it is not their essential feature. According to case-law, signs ‘referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage from the point of view of the targeted public to designate, either directly or by reference to one of their essential characteristics, the goods in respect of which registration is sought’. Therefore, ‘the relevant English-speaking average consumers will not directly and immediately perceive the term “MaxView Display” as a descriptive term for all devices which fall under the term “information technology” in class 09.’

4. As the expression ‘MaxView Display’ is not descriptive, it is sufficiently distinctive.

On 03/04/2018, the applicant requested an extension of the time limit in order to remedy the deficiency in the limitation request, which was granted by the Office.

On 18/04/2018, the applicant provided the amended version of the list of goods after the limitation, which has been accepted by the Office. The amended list of goods is as follows:

Class 9 Communications equipment.

Pursuant to Article 94 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 (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 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.

(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).

The Office will now address the applicant’s arguments in relation to the goods for which the objection is maintained.

With regard to the applicant’s first argument, as demonstrated by the Office in its communication of 15/09/2017, the mark applied for is descriptive of the goods for which protection is sought:

The assessment of descriptiveness is based on how the relevant consumer would perceive the sign in relation to the goods and services for which protection is sought. In the present case, the average English-speaking consumer would understand the sign as having the following meaning: An electronic device for the visual presentation of data or images, with the maximum, the most significant, highest, furthest, or greatest view, vision.

Taken as a whole the sign immediately informs consumers without further reflection that the goods applied for in class 9 (information technology and audio-visual, multimedia and photographic devices, communications equipment) are devices and equipment which provide the consumers with a maximum, greatest, utmost view, visual presentation of something. The goods enable the consumer to display, show, exhibit a full/highest view of audio-visual, multimedia, photographic and communications data or information.

Therefore, the relevant consumers would perceive the sign as providing information about the kind, quality and intended purpose of the goods in question.

In view of the above and with reference to the second of the applicant’s arguments, the Office has clearly shown that there is a direct relationship between the sign and the goods for which protection is sought and that the relevant consumer, within the reality of the relevant market sector, will perceive the sign immediately and without hesitation as descriptive of the goods.

With regard to the applicant’s third argument, the remaining term, communications equipment, is broad and comprises a wide range of goods. As the applicant indicates, some of these goods do not consist of a display. Nevertheless, others do have a display and, therefore, the sign will be descriptive in relation to these goods within the reality of the relevant market sector.

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially.

(12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

In view of the above case-law, the characteristic described by a sign does not have to be an essential characteristic of the goods in question for the sign to be considered descriptive for the relevant English-speaking consumers.

Finally, the Office demonstrated that the sign is descriptive of the goods for which protection is sought and therefore it is also non-distinctive.

According to the case-law of the European courts, a word mark that is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services for the purposes of Article 7(1)(b) EUTMR (12/06/2007, T‑190/05, Twist & Pour, EU:T:2007:171, § 39).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 017 163 205, ‘MaxView Display’, is hereby rejected for all the goods claimed:

Class 9 Communications equipment.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 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.

Monika TOMCZYNSKA