Judgments nº T-659/16 of Tribunal General de la Unión Europea, June 14, 2017

• Resolution Date: June 14, 2017
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-659/16

(EU trade mark - Application for the EU word mark Second Display - Absolute grounds for refusal - Descriptiveness - No distinctive character - Article 7(1)(b) and (c) of Regulation (EC) No 207/2009) In Case T-659/16,

LG Electronics, Inc., established in Seoul (Republic of Korea), represented by Mr T. de Haan and P. Péters, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas, acting as Agent,

defendant,

ACTION brought against the decision of the First Board of Appeal of EUIPO dated 10 June 2016 (Case R 106/2016-1) concerning an application for registration of the word sign Second Display as an EU trade mark,

THE GENERAL COURT (Third Chamber),

composed of S. Frimodt Nielsen, President, V. Kreuschitz (Rapporteur) and N. Półtorak, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 16 September 2016,

having regard to the response lodged at the Court Registry on 4 November 2016,

having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

1 On 15 July 2015, the applicant, LG Electronics Inc., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

2 The mark in respect of which registration was sought is the word sign Second Display.

3 The goods in respect of which registration was sought fall within Classes 9 and 14 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

- 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 set top boxes; Leather cases for mobile phone; Leather cases for smart phone; Flip covers for mobile phone; Flip covers for smart phone; Application software; Software for mobile phone; Software for television; Tablet computers; Monitors for computer; Commercial monitors; Wearable computers; Computers; 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; DVD players; Portable multimedia players.’

- 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; 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; Watches incorporating cameras and MP3 players, and that communicate data to smart phones and PDAs.’

4 By decision of 19 November 2015, the examiner rejected the application for registration on the ground that the mark applied for was caught by the grounds for refusal set out in Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009.

5 On 18 January 2016 the applicant brought an appeal before EUIPO against the examiner’s decision, under Articles 58 to 64 of Regulation No 207/2009.

6 By decision of 10 June 2016 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal.

7 First, the Board of Appeal considered that the relevant public in the European Union was made up of both average consumers and of professionals in the electronics sector, who were English-speaking or had a basic knowledge of English, and whose level of attention ranged from normal to high, taking into account the technological nature and price of most of the goods concerned (paragraphs 33 to 37 of the contested decision).

8 Secondly, in the context of its assessment of the absolute ground for refusal under Article 7(1)(c) of Regulation No 207/2009, the Board of Appeal found that the sign applied for consisted of the combination of two English words, namely first ‘second’, meaning ‘alternate, additional, extra, [or] 1/60th minute of time’ and, second, ‘display’, meaning ‘a device capable of representing information visually, as on a cathode-ray tube screen’ (paragraphs 40 and 41 of the contested decision). Consequently, the sign applied for could be understood as meaning ‘an alternative display screen’ or, while less likely, ‘a device which shows seconds of time’. From the point of view of the relevant public, the combination of the words, ‘second’ and ‘display’ would be immediately and perfectly comprehensible and would be perceived as designating a device with an additional display or, possibly, a device showing the seconds passing. Given that there is no perceptible difference between the meaning of that combination and the mere sum of the two terms of which it is composed, it is not a neologism (paragraphs 43 and 60 of the contested decision). The Board of Appeal held, furthermore, that there was a sufficiently direct and specific link between the sign applied for and all the goods concerned, about which the sign informed the relevant public of the intended purpose and method of functioning. Confronted with the sign applied for, the relevant public would deduce, without going through any complex mental processes, that, either it designates goods that incorporate or are capable of incorporating an additional display or, possibly, a display specifically measuring seconds or goods that function by means of such displays, or it designates goods intended to be used in conjunction with such screens or goods necessary for the functioning of such displays (paragraphs 47 to 52 of the contested decision).

9 Third, as regards the absolute grounds for refusal set out...