Semantics? LG Electronic’s Losing Battle Over DIRECT DRIVE®

Semantics? LG Electronic’s Losing Battle Over DIRECT DRIVE®

Courtney Doagoo is a doctoral student at the University of Ottawa, Faculty of Law.

On November 22, 2011, the European Community Court of Justice rejected an Appeal made by LG Electronics for the trade mark registration of the word sign DIRECT DRIVE for Class 7 and 11 wares (namely electric washing machines for household purposes, vacuum cleaners, laundry dryers and air conditioners).

On June 7, 2010, LG applied for and was refused registration for the mark DIRECT DRIVE in a decision made by the Examiner of the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) based on Regulation No 207/2009 of the Community Trade Mark, in accordance with subparagraphs 7(1)(b) and (c) as well as subsection 7(2). Subparagraphs 7(1)(b) and (c) act to bar registration where the trade marks applied for are:

(b) ...devoid of any distinctive character; and

(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.

Finally, subsection 7(1) applies even if only one part of the Community is affected, by virtue of subsection 7(2).

LG appealed the Examiner's decision to the Second Board of Appeal of the OHIM, based on Articles 58 and 64 of Regulation No 207/2009. The Board upheld the Examiner's reasons, dismissing the appeal.  The Board reasoned that the general 'relevant public' would interpret the words ‘direct drive’ to be understood as “appliances driven directly by a motor, without an intervening belt or gearbox”, rendering the mark to be descriptive of the mechanism of the machine, rather than as the indicator of the “commercial origin” of the good. The 'relevant public' was defined by the Board to include English speaking consumers originating from England, Ireland and Malta. Finally, the Board concluded that the mark DIRECT DRIVE was descriptive of the goods applied for, and therefore lacked a distinctive character.

In its Appeal to the Court, LG put forth three pleas in law. The first two pleas were rejected: echoing the Board, the Court held that because the proposed mark was descriptive of the character of the good, it necessarily lacked the requisite distinctive character.

In their final plea, LG argued that the OHIM Board failed to consider the “prior registrations and applications for Community and national trade marks”. LG reasoned that the successful registration of the trade mark INVERTER DIRECT DRIVE for the same class of wares in the Community under trade mark numbers 008345274 and 008302994, and the registration of the trademark DIRECT DRIVE in a non-Community jurisdiction comprising of a similar linguistic makeup was overlooked by the Board.

Of particular interest is the fact that LG applied for, and was granted registration of similar trade marks for identical wares in Canada under registered trade mark number TMA571321 for the DIRECT DRIVE mark,  and for the proposed use in Canada (pending registration) under application number 1474880 for the INVERTER DIRECT DRIVE mark. LG argued that Canada “belongs to the [same] linguistic area in which the mark applied for originated”, and that because Canada's trade mark laws are similar to that of the European Union, the successful uncontested trade mark registration in Canada could be considered as support for their EU application.

In Canada, the registration of a trade mark can be denied based on subparagraph 12(1)(b) of the Trade-marks Act in the event that the mark is deemed to be clearly descriptive or deceptively misdescriptive “of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin”. Similar to Article 7(3) of the EU Regulation, the bar to registration is not absolute: if a mark under subparagraph 12(1)(a) or (b) has acquired distinctiveness as of the filing date, the mark can be registered pursuant to subsection 12(2).

The Court held that although the trade mark was successfully registered in another jurisdiction (i.e. Canada), the “Community trade mark regime is an autonomous legal system…it applies independently of any national system”. The Court also asserted that it is not bound by the rules of any jurisdiction other than its own, regardless of whether the mark was "adopted in a country belonging to the linguistic area in which the word mark in question originated". Consequently, the third plea was also rejected.