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17 February 2023TrademarksStaff Writer

EU court refuses LG’s bid to revive trademark

The telecom’s giant’s dispute with a Chinese company dates back to 2019 | Court held that when a sign has several meanings, it must be refused registration | Alphanumeric combinations found to be frequently used in the field of smartphones.

The EU General Court has refused to overturn an EU Intellectual Property Office’s (EUIPO) decision to invalidate an LG-owned trademark covering mobile phones.

In a ruling handed down on February 15, the General Court dismissed LG’s action and ordered it to pay costs, in a dispute involving Chinese telecoms company ZTE.

In June 2019, ZTE applied for a declaration of invalidity of the EU word mark ‘V10’ which LG had registered in classes 9 and 14. The following year, the EUIPO’s Cancellation Division upheld the application for a declaration of invalidity in its entirety, finding that the mark was devoid of any distinctive character.

According to the Cancellation Division, ZTE had established that it was extremely common to use alphanumeric codes to indicate the model number of the various technological and auxiliary goods covered by the mark, so the contested mark couldn’t function as an indication of the commercial origin of those goods.

LG appealed against the decision and secured a partial win from the EUIPO Board of Appeal which upheld the appeal in respect of all the goods concerned, except for ‘smartphones; mobile phones; wearable smart phones’ and ‘application software’ in class 9.

Again, LG appealed against the decision but, earlier this week, the General Court refused to overturn the EUIPO’s decision, leaving intact its finding that the ‘V10’ trademark was invalid for ‘smart phones; mobile phones; wearable smart phones’. LG did not appeal against the finding that ‘application software’ was invalid.

“It is apparent from the documents submitted by the intervener and on which the Board of Appeal relied that alphanumeric combinations are frequently used in the field of mobile phones and smartphones. The court also notes that those combinations are generally in the form of the letter ‘v’ followed by a number in ascending order, according to the year or month in which the mobile telephone or smartphone is launched on the market,” said the General Court.

It added that the combination of the letter ‘v’ followed by a number indicated to the relevant public a characteristic of the goods at issue relating to their technological evolution, identifying the different version of those goods.

According to the General Court: “The court has held previously that when a sign has several meanings, it must be refused registration if at least one of its possible meanings designates a characteristic of the goods, a principle which applies in the same way to word signs and figurative signs.”

The court also rejected LG’s argument that the appeal board had failed to carry out a separate assessment of the descriptiveness of the contested mark vis-à-vis the goods at issue and ‘application software’.

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