of the First Board of Appeal
of 12 January 2017
In Case R 807/2016-1
LG ELECTRONICS INC.
Republic of Korea
Applicant / Appellant
represented by COHAUSZ & FLORACK Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB, Bleichstr. 14, 40211 Düsseldorf, Germany
APPEAL relating to European Union trade mark application No 14 575 435
THE FIRST BOARD OF APPEAL
composed of Th. M. Margellos as a Single Member having regard to Article 135(2) and (5) EUTMR, Article 1(c)(2) BoA-RP and Article 10 of the Decision of the Presidium on the organisation of the Boards of Appeal as currently in force, and to the First Board’s Resolution No 3 of 9 March 2012 on decisions by a single Member
Registrar: H. Dijkema
gives the following
Summary of the facts
- By an application filed on 21 September 2015, LG ELECTRONICS INC. sought to register the word mark
for the following goods:
Class 9 – Smart phones; Displays for smart phone; Mobile phones; Wearable smart phones; Wireless headsets; Headsets; Wireless headsets for mobile phone; Wireless headsets for smart phone; Digital settop boxes; Leather cases for mobile phone; Leather cases for smart phone; Flip covers for mobile phone; Flip covers for smart phone; Applications software; Software for mobile phone; Software for television; Tablet computers; Monitors for computer; Commercial monitors; Wearable computers; Computer; Printers for computer; LED displays; Leather cases for tablet computer; Flip covers for tablet computer; Portable computers; Rechargeable batteries; Battery chargers; 3D spectacles; Digital cameras; Network monitoring cameras namely for surveillance; Television receivers; Displays for television receiver; Audio component system composed of surround sound speakers, loudspeakers, tuners, sound mixers, equalizer, audio recorders, radio receivers; Apparatus for recording, transmission or reproduction of sound or images; Earphones; Digital Versatile Disc [DVD] players; Portable media players; Speakers; Bluetooth cameras; Computer software for virtual reality game; Wearable telecommunication devices for the wireless receipt, storage and/or transmission of data and messages; Head-mounted video display apparatus; Watchbands that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks; Bracelets that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks; Wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers;
Class 14 – Watches; Parts and fittings for watches; Wrist watches; Electronic clocks and watches; Bracelets (jewelry); Watchbands; Control clocks; Watches with the function of wireless communication; Watches that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks; Watches incorporating cameras and MP3 players, and that communicate data to smart phones and PDAs.
- On 16 October 2015, the examiner provisionally refused the mark applied for in its entirety under Article 7(1)(b) and (c), in conjunction with Article 7(2), EUTMR. The examiner defined the relevant public as both the professional public and the average consumer. The examiner cited the definition in English of a vertical plane, position, or line; a vertical post, pillar, or other structural member’ (information extracted from http://www.collinsdictionary.com/dictionary/english/vertical on 16/10/2015. Therefore, in the examiner’s opinion the word ‘VERTICAL’ immediately informed consumers without further reflection that the goods applied for were those that could be used, placed, or had a vertical shape, which conveyed obvious and direct information regarding the kind and intended purpose of the goods in question, and that the link between the mark and the goods was sufficiently close to fall within the scope of the prohibition laid down by Article 7(1)(c) and Article 7(2) EUTMR. Consequently, the impact of the mark was primarily descriptive; the examiner also concluded that the mark applied for lacked distinctive character.
- On 18 December 2015, the applicant replied contesting the examiner’s objections.
- On 25 February 2016, the examiner maintained the objection and refused the mark applied for in its entirety based on the finding that all the goods claimed were likely to be used or placed vertically or were vertical in shape, which the relevant public would perceive as a characteristic of the goods but not as an indication of their commercial origin, irrespective of the reflection needed to acquire the goods.
- On 2 May 2016, the applicant filed an appeal against the contested decision. The statement of grounds of the appeal was received on 1 July 2016.
Grounds of appeal
- The applicant argues as follows:
- The mark applied for has no clearly delineated meaning for the goods in the application.
- For computer hardware ‘VERTICAL’ is not a line, plane or position. Reference is made to the definitions of ‘vertical scaling’ and horizontal scaling in Wikipedia. To scale vertically means to add resources or to remove resources from a single node in a system, typically, involving the addition of CPU or memory to a single computer.
- ‘VERTICA’L does not have the meaning proposed by the examiner. It is vague and allusive.
- The meaning of ‘a line, plane or position’ does not make sense for software headsets, 3D spectacles and digital cameras. Television receivers or displays for a television receiver cannot have a vertical shape.
- ‘VERTICAL’ is not commonly used on the market for electronic devices.
- ‘VERTICAL’ is not a characteristic of the goods. Consumers will not perceive in that word an indication of the quality of the goods. Consumers will have regard to the attributes of the goods and ‘VERTICAL’ will have no impact on the decision to purchase the goods.
- Given the technical content of the goods in the application, a decision to purchase the goods will be made only after a thorough analysis of the applicant’s experience and capabilities and after a comparison with similar goods of other undertakings. The sign will become known in the deliberation process. The mark ‘VERTICAL’ will be found on product packaging and will become associated in the mind of the public with the goods in question.
- The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.
- Article 7(1) EUTMR, bearing the title ‘absolute grounds for refusal’, provides in material part:
‘The following shall not be registered:
(b) trade marks which are devoid of any distinctive character;
(c) 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.’
- Although it is clear that each of the grounds for refusal listed in the above provision is independent of the others and calls for separate examination, there is a clear overlap between the scope of the grounds for refusal set out in subparagraphs (b) and (c) of Article 7(1) EUTMR. In particular, a word mark which 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 in relation to those goods or services within the meaning of Article 7(1)(b) EUTMR. A mark may nonetheless be devoid of distinctive character in relation to goods or services for reasons other than the fact that it may be descriptive, as has been acknowledged by the Court of Justice (12/02/2004, C265/00, Biomild, EU:C:2004:87, § 18-19, and the judgments cited therein).
- 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 when examining each of those grounds for refusal may or even must reflect different considerations according to the ground for refusal in question (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 55 and 16/09/2004, C-329/02 P, SAT/2, EU:C:2004:532, § 25).
- It is sufficient that one of the absolute grounds for refusal applies in order for the sign at issue not to be registrable as a European Union trade mark (16/03/2006, T322/03, Weisse Seiten, EU:T:2006:87, § 110).
- Furthermore, Article 7(2) EUTMR states that a trade mark shall not be registered, even if the grounds of non-registrability are only met in part of the European Union. An obstacle pertaining to the English-speaking population of the European Union is consequently sufficient to reject the trade mark application.
- The question whether or not any of the grounds for refusal set out in Article 7(1) EUTMR apply to the mark must be assessed, first, not in the abstract but by reference to those goods or services, and, second, by reference to perception of the trade mark on the part of the average consumer of the goods or services in question, who is reasonably well informed and reasonably observant and circumspect, taking account of all the relevant facts and circumstances (12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 31-35, and the judgments cited therein).
The goods for which registration is sought
- With regards to Class 9, the goods concerned, essentially consist of the following: ‘different kinds of phones, displays, monitors, cameras, headsets, software and computers; earphones; digital set top boxes; 3D spectacles; television receivers; printers for computer; audio component system composed of surround sound speakers, loudspeakers, tuners, sound mixers, equalizer, audio recorders, radio receivers; apparatus for recording, transmission or reproduction of sound or images; DVD players; portable multimedia players; cases and covers for phones and computers; rechargeable batteries; battery chargers; watchbands and bracelets that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks’.
- With regards to Class 14, the goods, in general terms, can be categorised as follows: ‘different types of watches, watchbands and clocks; parts and fittings for watches; bracelets (jewelry)’.
The relevant public
- The Board recalls that the average consumer’s attention is likely to vary according to the category of goods and services in question (see 07/10/2010, T244/09 Acsensa, EU:T:2010:430, § 18 and the case-law cited therein).
- The goods target both the general public and professionals. The goods directed at the average consumer do not fulfil basic needs and are not bought on a daily basis. According to the case-law of the General Court, the fact that a product is not purchased on a regular basis, leads one to assume that the public’s degree of attention will be rather high (13/10/2009, T-146/08, Redrock, EU:T:2009:398 § 45; 12/02/2015, T-76/13, QUARTODIMIGLIO QM, EU:T:2015:94, § 34 and the case-law cited). Furthermore, account must be taken of the fact that, in view of nature of most of the goods concerned, their price and technological character, even the average consumer will display a particularly high level of attention when purchasing them (08/09/2011, T-525/09, Metronia, EU:T:2011:437, § 37 and the case-law cited therein; particularly, with respect to goods in Class 9 and their technical nature and high price, 02/12/2008, T-212/07, Barbara Becker, EU:T:2008:544, § 26 and 03/12/2015, T-105/14, iDrive / IDRIVE, EU:T:2015:924, § 37). However, it cannot be ignored that some goods (see certain ‘watches, clocks and bracelets’ in Class 14) may be purchased without consumers even paying particular attention to them, in particular when they are rather inexpensive (see, in terminis, 12/02/2015, T-76/13, QUARTODIMIGLIO QM, EU:T:2015:94, § 34 and the case-law cited).
- Notwithstanding the fact that the relevant public is attentive does not necessarily mean that the ‘descriptiveness threshold’ of the sign must be ‘higher’ or the distinctiveness threshold lower to a certain extent in order for that sign to fall under the ground for refusal set out in Article 7(1) EUTMR (see by analogy, 12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48). On the contrary, terms that may not be fully clear to consumers of inexpensive mass consumer goods can be immediately clear to a professional audience, particularly if the mark consists of words related to the field in which this specialised audience is active (11/10/2011, T-87/10, Pipeline, EU:T:2011:582, § 27-28), since training and professional experience will enable that public to grasp more easily the descriptive connotations of the mark applied for in respect of the goods at issue, whose characteristics it knows very well (14/04/2016, C-479/15 P, NANU / NAMMU, EU:C:2016:276, § 30). This is clearly the case for the mark ‘VERTICAL’ for the goods in the application, all of which have specific technical features.
- The mark applied for is an English word. The Court has confirmed that a basic understanding of English by the general public, in any event, in the Scandinavian countries and the Netherlands is a well-known fact, and the same applies to Cyprus. Consequently, the relevant public includes, at the very least, the public in those countries as well as in United Kingdom, Ireland, and Malta (09/12/2010, T307/09, Naturally active, EU: T:2010:509, § 26).
Article 7(1)(c) EUTMR
- The signs or indications which may serve, in trade, to designate characteristics of the goods or services 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 services 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 asubsequent acquisition (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 30; 27/02/2002, T219/00, Ellos, EU:T:2002:44, § 28).
- For the purposes of Article 7(1)(c) EUTMR it is necessary to consider, on the basis of a given meaning of the sign in question, whether the relevant public will immediately and without reflection perceive a direct and specific link between the word combination as a whole and the goods and services claimed (see 27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 44)
- The descriptive character must be assessed with regard to the ordinary meaning the word applied for has in common parlance for the public to whom the goods and/or services are directed (see 08/07/2004, T-289/02, Telepharmacy Solutions, EU:T:2004:227,§ 45).
- The applicant argues that the mark applied for is not used on the market for electronic goods. For the purposes of Article 7(1)(c) EUTMR, it is not necessary that the trade mark actually be in use. It is sufficient, as the wording ‘which may serve’ indicates that such signs and indications could be used for such purposes. A sign must, therefore, be refused registration under Article 7(1)(c) EUTMR if at least one of its possible meanings may designate a characteristic of the goods or services concerned (see 27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 32).
- The mark applied for consists of the sole word element ‘VERTICAL’. It means a straight line or plane surface. It also refers to the characteristic of being perpendicular or upright. In that sense it is used for mechanical appliances, machines or structures that operate vertically (see Oxford English Dictionary http://www.oed.com).
- Thus, in relation to the goods at issue the sign ‘VERTICAL’ will be understood as a reference to any feature, function or characteristic that is perpendicular or upright as explained below.
- The meaning of perpendicular or upright is obvious for ‘Displays for smart phone; LED displays; Displays for television receiver; Head-mounted video display apparatus’ which can be adapted to function with a ‘VERTICAL’ orientation or format. Likewise, in relation to ‘monitors for computer; commercial monitors; television receivers’, which also function with a screen that can function with a vertical display. It cannot be excluded that, therefore, television receivers or displays for a television receiver may have a vertical shape, if an application so requires that they be in that shape.
- A digital set-top box is an information appliance device that generally contains a TV-tuner input and displays output to a television and an external source of signal, turning the source signal into content in a form that can then be displayed on the television. The signal may be converted for display in a vertical format.
- An integral feature of ‘Smart phones; Mobile phones; Wearable smart phones; Wearable telecommunication devices for the wireless receipt, storage and/or transmission of data and messages; Tablet computers; Wearable computers; Computer; Portable computers; Wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers; Apparatus for recording, transmission or reproduction of images’ is a screen which displays, for viewing and accessibility, data and images in a vertical orientation. Web browsing is facilitated by the vertical layout of the screen.
- Accordingly, the design of ‘Leather cases for mobile phone; Leather cases for smart phone; Flip covers for mobile phone; Flip covers for smart phone; Leather cases for tablet computer; Flip covers for tablet computer’ may be such that they facilitate the use of the phone, tablet or computer screen in the vertical plane for data viewing, analysis and browsing.
- Moreover, in computers and devices with smart technology, communication that moves through a chain of command typically is vertical in nature since the language of computer software is vertical in nature.
- In addition, computers have screens with the ability to switch from horizontal to vertical via the horizontal-to-vertical control known as the ‘rotation setting’, or simply ‘portrait’ to represent a vertical setting. Other electronic devices may need application software to switch from horizontal display to vertical. Vertical for ‘Applications software; Software for mobile phone; Software for television; Computer software for virtual reality game’, refers to the purpose of the software to display on the screen the data in a vertical mode, irrespectively of how the data and images have been captured. With the increasing use of computers and other smart devices for access to data on the web, programs and applications increasingly require a vertical display functionality.
- In photography, an aerial image is often referred to as a vertical aerial photograph to distinguish it from one taken from an oblique view An important characteristic of a camera used in surveillance is to take a plan view of the images by looking vertically downward. ‘Digital cameras; Network monitoring cameras namely for surveillance; Bluetooth cameras’ are for use in surveillance or may be used for the capture of images for focusing vertically downwards as in aerial photography.
- ‘3D spectacles’ are for use with 3D movies in which two images are shown on the same screen, one using horizontally-polarized light, and the other using vertically-polarized light. While watching a movie with 3D spectacles, one eye only sees the horizontal image and the other only sees the vertical one. The quality of the image requires that the head does not tilt or move and this may be compensated by the design of the fit of the spectacles. A vertical fit ensures that the glasses stay in place and do not move.
- ‘Apparatus for recording, transmission or reproduction of sound; Audio component system composed of surround sound speakers, loudspeakers, tuners, sound mixers, equalizer, audio recorders, radio receivers; Digital Versatile Disc [DVD] players; Speakers’, are perpendicular or upright in structure and shape and have screens with vertical displays.
- Printers are available for printing a wide variety of material. Printing of large format graphics is by vertically operated wall-mounted printing machines. Furthermore, printers can be adjusted for vertical operation, and a vertical orientation to save space is a functionality of printers.
- For ‘Rechargeable batteries; Battery chargers’ also the word vertical may be an indication of the vertical stacking of the batteries or of the vertical structure of the charging unit.
- Vertical headsets and ear phones are a style of headset or ear phone that are particularly suitable for active users, as their vertical structure ensures that they are secure and comfortable for users. The mark applied for is, therefore, an indication of the style of ‘Wireless headsets; Headsets; Wireless headsets for mobile phone; Wireless headsets for smart phone; Earphones’ in the application.
- ‘Portable media players; Watchbands and bracelets that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks’ also contain features including screens for vertical operation and viewing.
- The foregoing also applies to ‘Watches; Wrist watches; Electronic clocks and watches; Control clocks Watches with the function of wireless communication; Watches that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks; Watches incorporating cameras and MP3 players, and that communicate data to smart phones and PDAs’ in Class 14.
- ‘Bracelets (jewelry); Watchbands; Parts and fittings for watches’ in Class 14 often have as a design feature vertical bars and patterns and are often interchangeable elements of smart wrist watches.
- Thus, all of the goods in the application are devices that operate vertically or have features that operate vertically, or their shape or design as such may possess design features that may be vertical. ‘VERTICAL’ is not vague or allusive as the applicant alleges. To the contrary, the attentive public with knowledge of the technical and functional properties of the goods will understand that ‘VERTICAL’, which means ‘a line, plane or position’, designates, in relation to the goods in the application, the characteristic of being perpendicular or upright or the vertical operation of the product or any feature thereof.
- Accordingly, in light of the above considerations, there exists a sufficiently direct and specific relationship, from the point of view of the relevant public, between the trade mark and those goods in the application. The mark applied for constitutes a mere indication of their kind, intended purpose, shape and technical characteristics. The examiner rightly refused the EUTM application for those goods pursuant to Article 7(1)(c) EUTMR.
- By prohibiting the registration as European Union trade marks of 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 judgments of 04/05/1999, C-108/97 and C-109/97, Chiemsee, EU:C:1999:230, § 25; 27/02/2002, T-219/00, Ellos, EU:T:2002:44, § 27; 08/04/2003, C-53/01, C-54/01 and C-55/01, Linde, EU:C:2003:206, § 73; 06/05/2003, C-104/01, Libertel, EU:C:2003:244 § 52; 12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 35 and 36). It is sufficient, as the very wording of that provision itself indicates that those 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 (23/10/2003, C191/01 P, Doublemint, EU:C:2003:579, § 31 and 32), which is clearly the case here.
Article 7(1)(b) EUTMR
- The marks referred to in Article 7(1)(b) EUTMR are, in particular, those which 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 subsequent acquisition of the goods or services concerned (27/02/2002, T-79/00, Lite, EU:T:2002:42, § 26).
- As has been found, ‘VERTICAL’ has meaningful in relation to all the products in the application. Indeed, there is nothing vague or unusual about the word ‘VERTICAL’ in the context of goods for display and viewing and goods that function with the vertical synchronization of signals. Insofar as the ability to interact with the user requires a feature that is vertical, or the design of a structure requires that the device operates in a vertical manner, the mark applied for ‘VERTICAL’ is clearly banal. Moreover, there is a clear link between the attributes of the goods and the meaning of the sole word element of the mark applied for. Indeed, there is no element which would allow the view to be reached that the mark applied for is unusual or might have its own meaning which, in the perception of the relevant public, distinguishes the goods offered by the applicant from those of a different commercial origin.
- The mark applied for consists primarily of a word that the relevant public, who is attentive as regards the features of the goods in this case, will understand immediately. The word has a plain meaning and does not constitute an arbitrary or fanciful expression for such a public. The mark applied for would not trigger, in the minds of the relevant public, a cognitive process or require an interpretative effort on their part to constitute anything more than a mere message extolling the essential characteristics of the goods.
- The examiner, therefore, rightly refused the application in its entirety pursuant to Article 7(1)(b) EUTMR.
- That the mark applied for will become known in the deliberation process when it is found on product packaging and will become associated in the mind of the consumer with the goods in question is an issue that can only be addressed in the context of acquired distinctiveness under Article 7(3) EUTMR. A claim under that Article has not been made.
- The appeal is, accordingly, dismissed.
On those grounds,
Dismisses the appeal.
Th. M. Margellos
12/01/2017, R 807/2016-1, VERTICAL