Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 07/08/2020

MITSCHERLICH, PATENT- UND RECHTSANWÄLTE, PARTMBB

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D-80331 München

ALEMANIA

Application No:	018221002
Your reference:	M37537/EU
Trade mark:	Pure OLED
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 18/04/2020 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.

The applicant requested an extension of time limit on 17/06/2020 which was granted on 26/06/2020 and submitted its observations on 30/07/2020, which may be summarised as follows:

1. The Office is incorrect in claiming that the mark ‘Pure OLED’ is descriptive of the goods for which protection is sought. ‘Pure OLED’ is at the utmost a vague concept and at least several mental steps are necessary to arrive to its descriptive meaning in relation to the goods for which protection is sought. The expression is not listed in any of the dictionaries and the relevant consumers will not understand the meaning of the verbal elements contained in the sign. Subsequently, they will not draw any conclusions regarding the characteristics of the goods in question. Therefore, the sign is not directly descriptive and thus, does not lack distinctiveness. The sign has at least a minimum degree of distinctiveness in relation to the goods applied for and, thus, will be perceived by the relevant public as an indication of origin.

2. Many of the goods are not even concerned with the organic light-emitting diode first in quality displays.

3. The Office has already accepted similar marks for registration. A number of “Pure”-based word mark registrations together with a descriptive element are listed in the Annexes provided by the applicant. These registrations, even though not binding to the Office, is a strong indication of the registrability of the sign at issue ‘Pure OLED’.

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 waive the objection for the following goods:

Class 9 Black boxes for cars; Encoded electronic chip cards for improvement of television image quality; Universal serial bus [USB] hardware drives; Headsets for mobile phones; Portable chargers for mobile phone batteries and digital camera batteries; Portable hard disk drives; Integrated circuits; Transponders, namely, electronic terminals equipped in vehicles for electronic commercial transactions; Solar batteries.

The objection is maintained for the remaining goods.

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. Article 7(2) EUTMR provides that this shall apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

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).

Furthermore, signs or indications which may serve, in trade, to designate characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) EUTMR, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired the goods or service designated by the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 30; 27/02/2002, T−219/00, Ellos, EU:T:2002:44, § 28).

For a sign to fall under the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned to perceive immediately, without further thought, a description of the goods or services in question or one of their characteristics (20/07/2004, T‑311/02, Limo, EU:T:2004:245, § 30).

Therefore, the mark may only be assessed, first, in relation to the understanding of the mark by the relevant public and, second, in relation to the goods or services concerned (30/11/2004, T‑173/03, Nurseryroom, EU:T:2004:347, § 26; 27/02/2002, T‑34/00, Eurocool, EU:T:2002:41, § 38).

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

The absolute grounds for refusal for a lack of distinctive character and the characteristics of descriptive and common indications each have their own scope of application and are neither mutually dependent nor mutually exclusive. Even though the existence of just one ground for refusal is sufficient, they can also be examined cumulatively. Interpreting the case-law of the courts, it can be concluded that the sign must be refused registration under Article 7(1)(b) EUTMR if, on the basis of its most obvious meaning in relation to the goods or services in question, it is devoid of distinctive character.

Article 7(2) EUTMR states that paragraph 7(1) should apply notwithstanding that the grounds preventing registration obtain in only part of the European Union.

As regards the applicant’s arguments

1. The Office disagrees that the expression ‘Pure OLED’ is at the utmost a vague concept and at least several mental steps are necessary to arrive to its descriptive meaning in relation to the goods for which protection is sought.

Each verbal element of the sign ‘Pure OLED’ has a dictionary meaning, as provided in the 18/04/2020 objection letter and confirmed from Collins and Lexico dictionaries. In addition, the European Union judicature has also confirmed the descriptive meanings of both verbal elements:

• Adjective ‘Pure’ meaning, inter alia, not mixed or adulterated with any other substance or material’ or ‘without any extraneous and unnecessary elements’ (06/06/2017, R 1541/2016-2, PURE Pb +, § 11) or ‘complete, only’, ‘not mixed with anything else’ (06/022009, R 1480/2008-2, PUREXML, § 13).

• The term ‘OLED’ as referring to ‘a light-emitting diode containing thin flexible sheets of an organic electroluminescent material, used for visual displays’ (Oxford Dictionaries), also defined as: ‘OLED abbreviation for ‘organic light-emitting diode’ (Collins English Dictionary) (07/12/2016, R 1061/2016-2, Wallpaper OLED, § 15).

As to the applicant claim that the relevant consumers will not understand the meaning of the expression, the Office points that the meaning of both word elements is clear in view of dictionary references. In addition, the applicant did not suggest any other relevant meaning.

It should be noted, that in the case of a composite word mark, what matters is the relevant meaning of the trade mark as understood on the basis of all of its constituent elements as a whole — and not just on the basis of one or more elements (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 39, 43; 15/05/2014, T-366/12, Yoghurt -Gums, EU:T:2014:256, § 16). Merely bringing a number of descriptive elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark that is descriptive as a whole (16/11/2018, 583/2018-4 -5, EPS PRIME, § 13).

The combination of the adjective ‘Pure’ with the abbreviation ‘OLED’ is not ungrammatical and is not fanciful in itself. It does not go beyond the meaning of the two descriptive word elements. It should be noted that abbreviations of descriptive terms are in themselves descriptive if they are used in that way, and the relevant public, whether general or specialised, recognises them as being identical to the full descriptive meaning (13/06/2014, T-352/12, Flexi, EU:T:2014:519). As for the grammatically correct use of the adjective ‘Pure’ with the abbreviation ‘OLED’, it is self-evident that in English this can mean ‘pure, clean, not mixed or adulterated with any other substance or material organic light-emitting diode’ and this is how at least English-speaking relevant public will undoubtedly understand it without any hesitation. The combination of these word elements does not add any further features that would make the sign as a whole capable of distinguishing the applicant’s goods from those of other undertakings.

Under Article 7(1)(c) EUTMR a sign must be refused as descriptive if it has a meaning that is immediately perceived by the relevant public as providing information about the goods and services applied for. Therefore, the Office has to demonstrate how the sign describes certain characteristics of the goods. However, the Office is allowed not to indicate characteristics of each and every product for which objection has been sought. It is sufficient that a ground for refusal applies to a single homogenous category of goods. A homogenous category is considered a group of goods and/or services that have a sufficiently direct and specific link to each other (02/04/2009, T-118/06, Ultimate fighting championship, EU:T:2009:100, § 28). Where the same ground or grounds for refusal is given for a category or group of goods or services, only general reasoning for all of the goods or services concerned may be used (15/02/2007, C-239/05, The Kitchen Company, EU:C:2007:99, § 38).

In the 18/04/2020 objection letter the Office did analyse and specify the relevant characteristics of all homogenous categories of the goods in question. Namely, that all goods which are electronic and/or IT-related, contain a display that allows background graphic images or patterns to be shown and use organic light-emitting diode (OLED) technology or are used in very close conjunction with apparatus that display such background images or patterns as accessories or parts of such apparatus. All these goods are, incorporate or in any other way may feature organic light-emitting diode (OLED) technology which which is pure, not mixed with any other technology. Another identified category was of the software when it is to be used in relation with a device or application that can display background graphic images or patterns. Such descriptiveness has been confirmed by the Boards of Appeal (07/12/2016, R 1061/2016-2, Wallpaper OLED, § 25). Consequently, and applying the Boards of Appeal reasoning the remaining goods which can also be used in relation with a device or application that can display background graphic images or patterns, have been refused.

In view of the dictionary references, and the actual use of the terms in relation to electronic and IT devices or other goods which can be used in relation with a device or application displaying background graphic images or patterns, the existence and meaning of the composite mark cannot be reasonably called into question. Adjective ‘Pure’ indicates that this technology is clean, not mixed with any other substance or material. ‘OLED’ is a simple abbreviation of the technology used to display images or patterns. Subsequently, the Office disagrees that the ‘Pure OLED’ is a suggestive/evocative term and that at least several mental steps are necessary to arrive to its descriptive meaning in relation to the goods for which protection is sought. It follows that the link between the expression ‘Pure OLED’ and all the applied for goods is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR.

According to the case-law of the Court of Justice, the fact that a sign informs the public of a characteristic of the goods and services is relevant to conclude that the sign is devoid of distinctive character (judgment of 19/09/2002, C-104/00 P, ‘Deutsche Krankenversicherung’, paragraph 21). Since the sign ‘Pure OLED’ is descriptive of the goods concerned, it is, on that account necessarily devoid of any distinctive character in respect of those goods for the purposes of Article 7(1)(b) EUTMR.

2. As to the applicant´s observation that many of the goods are not even concerned with the Pure Organic Light-Emitting Diode displays, the Office notes that the objection indeed has been waived for some of the goods listed above. However, the mark remains descriptive for the remaining goods.

3. Concerning the applicant’s argument that the Office has already accepted a number of “Pure”-based word marks together with a descriptive element for registrations, according to settled case-law: ‘decisions concerning registration of a sign as a European Union trade mar 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 (15/09/2005, C 37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T 36/01, Glass pattern, EU:T:2002:245, § 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’ (27/02/2002, T 106/00, Streamserve, EU:T:2002:43, § 67).

The applicant provides a number of registered “Pure”-based word marks. On the other hand, the Office points that a number of decisions of the Boards of Appeal found to be ineligible for protection in respect of trade marks with the element “Pure”: 06/06/2017, R 1541/2016-2, PURE Pb +; 06/022009, R 1480/2008-2, PUREXML, 20/09/2007, T-461/04, PURE DIGITAL, ECLI:EU:T:2007:294.

The above only confirms that 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. The marks indicated by the applicant (including the highlighted EUTM registration 4631263 “PURE BLACK PANEL”) are not identical to the sign for which registration is sought. This implies, a different examination and assessment of descriptiveness and non-distinctiveness for these marks. Each trade mark application requires separate examination. Therefore, the reasons for their registrations would not necessarily apply to the applicant’s mark in question.

In the present case the Office concludes, that the sign describes the kind (goods with Pure OLED technology), quality (not mixed, pure OLED technology) and intended purpose (OLED technology which allows to show background images and patterns) of the goods in question. Therefore, the sign ‘Pure OLED’ is descriptive and devoid of any distinctive character in relation to the goods for which objection remains.

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 18221002 is hereby rejected for the following goods:

Class 9

Wireless telephone sets; Portable communications apparatus, namely, mobile phone handsets, walkie-talkies, satellite telephones and personal digital assistants [PDA]; Mobile phones; Smartphones; MPEG audio layer-3 players; Television sets; Television receivers; Car televisions; GPS navigation devices for cars; Video recording apparatus for vehicles; Television remote controllers; Digital media broadcasting [DMB] players; Electronic photo albums; Digital picture frames; Digital signage; Monitors for computers; Laptop computers; Computers; Players for high-density optical discs using a blue-violet laser; Apparatus for recording, transmission or reproduction of sound or images; Stereos; Computer application software for mobile phones; Computer application software for televisions; Computer application software for personal computer monitors; Displays for television receivers; Displays for mobile phones; Digital versatile disc [DVD] players; Audio speakers; Audio-video receivers; Multimedia projectors; Closed circuit television [CCTV] cameras; Network monitoring cameras namely for surveillance; Laser printers; Ink jet printers; Color printers; Printers for use with computers; Recorded computer programs; Downloadable computer programs; Personal computer [PC] cameras; Digital voice recorders; Videocassette recorders; Network monitors; Electronic notepads; Tablet computers; Interactive electronic white board computers; Set-top boxes; Downloadable image files accessible via the Internet; Electronic downloadable publications in the nature of magazines, newspapers, books, manuals in the field of electronics; Video conference system; Monitors for video conference; Cameras for video conference; Speakers for video conference; Three dimensional eyeglasses for television receivers; Head mounted displays; Display panels.

The application may proceed for the remaining goods:

Class 9 Black boxes for cars; Encoded electronic chip cards for improvement of television image quality; Universal serial bus [USB] hardware drives; Headsets for mobile phones; Portable chargers for mobile phone batteries and digital camera batteries; Portable hard disk drives; Integrated circuits; Transponders, namely, electronic terminals equipped in vehicles for electronic commercial transactions; Solar batteries.

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.

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