LG Electronics v EUIPO (QD) (EU trade mark - Application for the EU word mark QD - Absolute grounds for refusal :Judgment) [2017] EUECJ T-650/16 (13 July 2017)

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(EU trade mark — Application for the EU word mark QD — Absolute grounds for refusal — Descriptive character — No distinctive character — Article 7(1)(b) and (c) of Regulation (EC) No 207/2009)

LG Electronics, Inc., established in Seoul (South Korea), represented by R. Schiffer, lawyer,

European Union Intellectual Property Office (EUIPO), represented by M. Rajh, acting as Agent,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 24 May 2016 (Case R 2046/2015-1), relating to the application for registration of the word sign QD as an EU trade mark,

composed of V. Tomljenović, President, E. Bieliūnas and A. Kornezov (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 7 September 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,

1 On 12 January 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).

3 The goods in respect of which registration was sought are in Class 9 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 to the following description: ‘Television receivers; Mobile phones; smart phones; tablet computers; computers; apparatus for recording of sound; apparatus for recording of images; apparatus for transmission of sound; apparatus for transmission of images; apparatus for reproduction of sound; apparatus for reproduction of images; software; software for interactive television; communication software; application software; computer software’.

4 By decision dated 19 August 2015, after having raised objections, the examiner refused the application for registration in respect of all the goods concerned on the basis of Article 7(1)(b) and (c) of Regulation No 207/2009.

5 On 9 October 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the examiner’s decision.

6 By decision of 24 May 2016 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. In the first place, it considered, on the basis of Article 7(1)(c) of Regulation No 207/2009, that the word sign QD was descriptive of the goods covered by the mark for which registration was sought. It held, in essence, that the acronym QD actually meant, inter alia, ‘quantum dot’, a type of display technology that uses small light emitting crystals, in particular for television sets, monitors and mobile devices. Given that the application for registration concerns electronic devices and software, the Board of Appeal concluded that the word sign QD was a direct and obvious reference to their nature or purpose.

7 In the second place, the Board of Appeal considered that the word sign QD was devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.

10 The applicant raises two pleas in law, the first, alleging infringement of Article 7(1)(c) of Regulation No 207/2009, and the second, alleging infringement of Article 7(1)(b) thereof .

First plea in law, alleging infringement of Article 7(1)(c) of Regulation No 207/2009

11 The applicant claims, in essence, that the Board of Appeal infringed Article 7(1)(c) of Regulation No 207/2009 since the sign QD is not descriptive of the goods covered by the trade mark application.

12 Under Article 7(1)(c) of Regulation No 207/2009, ‘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’ must not be registered.

13 Article 7(1)(c) of Regulation No 207/2009 prevents the signs or indications to which it refers from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim that is in the public interest, which requires that such signs or indications may be freely used by all (judgment of 25 November 2015, bd breyton-design v OHIM (RACE GTP), T‑520/14, not published, EU:T:2015:884, paragraph 15; see, to that effect, judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31).

14 Furthermore, signs or indications which may serve, in trade, to designate characteristics of the goods or services for which registration is sought are, pursuant to Article 7(1)(c) of Regulation No 207/2009, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, thus enabling the consumer who acquired the goods or service designated by the mark to make the same choice, when making a subsequent acquisition, if the experience has proved positive, or to make another choice, if it has proved negative (judgments of 15 November 2012, Verband Deutscher Prädikatsweingüter v OHIM(GG), T‑278/09, not published, EU:T:2012:601, paragraph 34; and of 25 November 2015, RACE GTP, T‑520/14, not published, EU:T:2015:884, paragraph 15; see, to that effect, judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30).

15 It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a link between the sign and the goods or services in question that is sufficiently direct and specific to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or of one of their characteristics (judgments of 15 November, GG, T‑278/09, not published, EU:T:2012:601, paragraph 36; of 25 November 2015, RACE GTP, T‑520/14, not published, EU:T:2015:884, paragraph 16; and of 8 September 2016, Dr Vita v EUIPO (69), T‑360/15, not published, EU:T:2016:451, paragraph 14).

16 The descriptiveness of a sign may be assessed only, first, by reference to the way in which it is understood by the relevant public and, second, by reference to the goods or services concerned (see judgment of 22 November 2011, LG Electronics v OHIM (DIRECT DRIVE), T‑561/10, not published, EU:T:2011:685, paragraph 18 and the case-law cited).

17 As regards, in the first place, the definition of the relevant public, the Board of Appeal considered, in paragraphs 12 to 14 of the contested decision, that it consisted both of professionals and average consumers in the European Union and, given the nature of the goods, the degree of attention was, in general, average and the consumer was deemed to be reasonably well informed, observant and circumspect. Nevertheless, the relevant public for ‘software’ was considered particularly well informed and circumspect. The relevant public was composed of an English-speaking public within the Union, including professionals who, even if English is not their mother tongue, understand many English expressions used in the context of electronic devices and software.

18 The applicant merely states that the relevant public is composed of average consumers without contesting or putting forward evidence that challenges the Board of Appeal’s findings in that respect. Those findings, which are not vitiated by errors, must therefore be upheld.

19 As regards, in the second place, the question of how the public concerned will perceive the mark applied for in the light of the goods at issue, it must be noted, first, that the sign at issue is composed of two letters, ‘q’ and ‘d’, exclusively, and the goods covered by that mark are the electronic devices and software, listed in paragraph 3 above.

20 In that regard, the Board of Appeal considered, in paragraphs 19 to 23 of the contested decision, that the acronym QD was used in the electronic field as an abbreviation of the words ‘quantum dot’ relying on the fact that that abbreviation is listed with that meaning on two online acronyms and abbreviations dictionaries as well as on four other websites. It held, on that basis, that the acronym QD ‘does indeed mean, inter alia, “quantum dot”, which is a type of display technology for, in particular, television sets, monitors, and mobile devices, that uses small light emitting crystals’. The Board of Appeal inferred therefrom, in paragraph 27 of the contested decision, that the acronym QD was a direct and obvious reference to the nature or purpose of the goods covered by the trade mark application.

21 The applicant contests that analysis. First, it disputes the reliability of the sources cited by the Board of Appeal in support of its assertion that the sign QD can mean ‘quantum dot’. Second, the applicant observes that the sign QD is not a usual abbreviation of the words ‘quantum dot’, but rather of the Latin expression ‘quaque die’ (every day). Third, it argues that the abbreviation QD as meaning ‘quantum dot’ does not feature in any of the three dictionaries which it considers to be authoritative.

22 First of all, the applicant’s claim that the sources cited by the Board of Appeal are not a reliable source of information is not supported by any evidence or detailed argument. It is sufficient, in that regard, to state that, in the contested decision, the Board of Appeal referred to two online dictionaries specialised in abbreviations and acronyms as well as documents of a commercial nature relating to the goods at issue. Thus, as an example, one of the websites referred to was dedicated to advising consumers on their choice of television set, whereas another was dedicated to the development of information technology. It is indeed apparent from those internet pages that the acronym QD is the abbreviation of the words ‘quantum dot’, which refer to a display technology based on the use of small light emitting crystals and is used, in particular, for television sets, monitors and mobile devices. In addition, the Board of Appeal noted that the sources cited did not contain any indication of any kind of link between them, which the applicant does not contest. In those circumstances, the mere fact that one of the online dictionaries mentioned by the Board of Appeal enables users to add new entries, even if it were established, is not sufficient to challenge the reliability of all the sources referred to by the Board of Appeal.

23 Although reference to certain databases appearing on the internet, such as one of the sources cited by the Board of Appeal, must be made with particular caution, the use of an abbreviation by several operators in the field concerned on the internet can confirm the actual use of the abbreviation in practice. Several sources cited by the Board of Appeal specifically confirm such a use. In any event, the General Court has already held that evidence of the actual use of initials as an abbreviation of the words it relates to is sufficient as long as that evidence lies not only in the definition contained in a dictionary entry but also in documents of a commercial nature (see, to that effect, judgments of 20 July 2004, Lissotschenko and Hentze v OHIM (LIMO), T‑311/02, EU:T:2004:245, paragraph 36, and of 8 September 2016, 69, T‑360/15, not published, EU:T:2016:451, paragraph 23).

24 Next, the applicant’s argument that QD is not a usual abbreviation of the words ‘quantum dot’, but of the words ‘quaque die’ (every day), must also be rejected.

25 In that regard, it is sufficient to point out that registration of a word sign must be refused, pursuant to Article 7(1)(c) of Regulation No 207/2009, if at least one of its possible meanings identifies a feature of the goods or services concerned (judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579,paragraph 32; of 25 November 2015, RACE GTP, T‑520/14, not published, EU:T:2015:884, paragraph 46; and of 8 September 2016, 69, T‑360/15, not published, EU:T:2016:451, paragraph 29). It is apparent from paragraphs 22 and 23 of the present judgment that one of the possible meanings of the abbreviation QD is precisely ‘quantum dot’, which designates a characteristic of the goods concerned.

26 As regards the assertion that the Board of Appeal did not show that the sign QD was in fact used to designate the goods at issue, it must be noted that, for EUIPO to refuse to register a mark under Article 7(1)(c) of Regulation No 207/2009, it is not necessary that the signs and indications composing the mark that are referred to in that provision 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 purpose (see judgment of 8 September 2016, 69, T‑360/15, not published, EU:T:2016:451, paragraph 28 and the case-law cited).

27 Finally, the inclusion of such an abbreviation in sources dedicated to it cannot be ignored on the sole ground that the dictionaries the applicant refers to (see paragraph 21 above) do not adopt QD as an abbreviation of ‘quantum dot’. In that regard, it is apparent from the case-law that EUIPO is under no obligation to prove that the sign in respect of which registration is sought as an EU trade mark is included in dictionaries (see, to that effect, judgment of 23 October 2007, BORCO-Marken-Import Matthiesen v OHIM (Caipi), T‑405/04, not published, EU:T:2007:315, paragraph 42 and the case-law cited).

28 As regards, in the third place, the question whether there is a sufficiently direct and specific link between the mark applied for and the goods at issue, to enable the public concerned immediately to perceive, without further thought, a description of those goods or of one of their characteristics, the Board of Appeal stated in paragraphs 24 and 25 of the contested decision, that the sign QD is understood, in the context of electronic devices, as making reference to the nature of those goods and the relevant public would immediately make a link with the application of the ‘quantum dot’ technology and these goods. The same reasoning has been followed for audio goods, covered by the application for registration, on the ground that they usually have a screen which can use that technology. The Board of Appeal has, furthermore, indicated that the sign QD is also understood by the relevant public as making reference to the nature of the software in that it could be intended to form part of devices with ‘quantum dot’ technology.

29 Without challenging that analysis in a specific and detailed way, the applicant merely states that the letters ‘q’ and ‘d’ have no specific meaning as regards the goods covered and the combination of two letters as such has no descriptive character, otherwise all possibility of registration of a combination of two letters as a mark would be excluded. It must be noted, in that respect, that the fact that that combination can convey the nature of the electronic goods and software is sufficient to find that there is a sufficiently direct and specific link between them and the mark applied for, of such a kind as to enable the public concerned immediately to perceive, without further thought, a description of one of the characteristics of those goods in accordance with the case-law referred to in paragraph 15 above (see, to that effect, judgment of 8 September 2016, 69, T‑360/15, not published, EU:T:2016:451, paragraph 24).

30 In the light of the foregoing, it must be held that the Board of Appeal was right to find that the sign QD was descriptive of the characteristics of the goods which it designates and it, therefore, fell under the prohibition set out in Article 7(1)(c) of Regulation No 207/2009.

31 It follows that the plea alleging infringement of Article 7(1)(c) of Regulation No 207/2009 must be rejected.

Second plea in law alleging infringement of Article 7(1)(b) of Regulation No 207/2009

32 The applicant claims that the Board of Appeal was wrong to find that the sign QD is devoid of distinctive character for the goods at issue. Indeed, since the sign QD has no descriptive meaning as regards the goods covered, it has an inherent distinctive character.

33 It must be noted that it is sufficient that one of the absolute grounds for refusal listed in Article 7(1) of Regulation No 207/2009 applies for the sign at issue not to be registrable as an EU trade mark (judgment of 27 February 2015, Universal Utility International v OHIM (Greenworld), T‑106/14, not published, EU:T:2015:123, paragraph 40).

34 As was concluded in connection with the first plea above, the Board of Appeal rightly considered, in the present case, that the ground for refusal set out in Article 7(1)(c) of Regulation No 207/2009 precluded registration of the mark applied for. It follows that there is no need to examine the applicant’s second plea in law, alleging infringement of Article 7(1)(b) of Regulation No 207/2009.

35 It is clear from all the foregoing considerations that the action must be dismissed.

36 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> LG Electronics v EUIPO (QD) (EU trade mark - Application for the EU word mark QD - Absolute grounds for refusal :Judgment) [2017] EUECJ T-650/16 (13 July 2017) URL: http://www.bailii.org/eu/cases/EUECJ/2017/T65016.html Cite as: EU:T:2017:489, ECLI:EU:T:2017:489, [2017] EUECJ T-650/16

Court of Justice of the European Communities (including Court of First Instance Decisions)