LG Electronics, Inc filed an EU trade mark application for the mark SECOND DISPLAY covering the following goods in classes 9 and 14.
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.
The Examiner found that SECOND DISPLAY was descriptive of the goods applied for. The mark would be seen as referring to products with an extra screen, for example. Due to this descriptive meaning, ‘Second Display’ was also deemed to lack any distinctive character for these goods. LG filed the following arguments in response.
- The term ‘Second Display’ is an invented word unique to LG and is not contained in any dictionaries;
- The combination of the words ‘second’ and ‘display’ are not generic or descriptive of the goods applied for;
- ‘Second Display’ would not be viewed by consumers as a meaningful expression. It is indeterminate and vague. LG also argued that it had no obvious or direct meaning which could be linked to the goods;
- Registration of a sign is not subject to a finding of specific level of linguistic or artistic creativity. The public should be able to identify the origin of the goods;
- The EUIPO (and the French Registry) have accepted other marks which contain the term ‘Display’ in the past.
LG’s arguments were dismissed by the EUIPO. Although ‘Second Display’ may not appear in any dictionaries, it is still made up of two independent dictionary words that have common meanings. The average English speaker would recognise these meanings even when the terms were combined.
The argument that the EUIPO and French Registries had accepted trade marks containing ‘Display’ in the past was also not persuasive. The EUIPO do not generally accept these arguments. In response they stated that they were unaware as to why ‘Display’ trade marks may (or may not) have been accepted at any national offices in the past. In relation to any differences at EUIPO level these would most likely be due to variations in practice over time. The Office was concerned with current practice only.
LG’s appeal to The Board of Appeal also failed and LG appealed to the General Court.
General Court’s Decision:
The Court stated that the mark would be considered descriptive if one of the possible meanings of the mark ‘Second Display’ was seen by the relevant public to designate one of the characteristics of the goods applied for.
The relevant public of the goods were comprised of both average consumers and professionals in the electronics sector. The level of attention ranges from normal to high, taking into account the technological nature and price of most of the goods concerned as well as the fact that they are not regularly purchased.
As a result, for the majority of the goods the expression ‘Second Display’ described a characteristic of the products, i.e. that have an extra screen or possibly a screen measuring seconds. For those goods not directly caught by this (which, for example, comprised of leather covers, flip covers, software and some other electronic devices) they were found to be ancillary and closely linked products. The same objections therefore applied.
LG also based their appeal on the fact that the Board of Appeal failed to give sufficient reasoning for its decision and that the mark was distinctive. Unsurprisingly, both of these grounds were easily dismissed. A word mark that describes the characteristics of the goods (for example having a second screen) is also likely to lack any distinctive character also.
This case is a useful reminder that citing the acceptance of other earlier trade marks is not likely to be very persuasive both for EU marks and national marks throughout the EU.