ECJ sucks the life out of LG’s vacuum cleaner CTM application

European Union
In LG Electronics Inc v Office for Harmonisation in the Internal Market (OHIM) (Case C-88/11 P, November 10 2011), the Court of Justice of the European Union (ECJ) has upheld a decision of the General Court in which the latter had itself upheld a decision of the First Board of Appeal of OHIM refusing a Community trademark (CTM) application for KOMPRESSOR PLUS under Article 7(1)(c) of Community Trademark Regulation (207/2009).

In 2008 LG Electronics Inc filed a CTM application for the word mark KOMPRESSOR PLUS for goods in Class 7 of the Nice Classification - namely, electric washing machines, electric dishwashers and electric vacuum cleaners for household use.

The OHIM examiner refused the application on the grounds that the mark was devoid of distinctiveness and was descriptive of the relevant goods. On appeal by LG, the First Board of Appeal of OHIM overturned the examiner’s decision with regard to washing machines and dishwashers, but upheld the decision with regard to electric vacuum cleaners on the basis of descriptiveness.

LG appealed to the General Court, arguing that the board’s decision violated Article 7(1)(c). The court acknowledged that a number of facts were not in dispute - for example, that the relevant public, being English, German and Dutch consumers, would understand 'kompressor' to mean a mechanical device that compresses gas. Therefore, the question was whether a “mechanical device that compresses gas” would be viewed as descriptive for a vacuum cleaner.

The court rejected LG’s appeal, reasoning as follows:
  • While a vacuum cleaner does not contain a particular compression device, it can compress air and expel it. Where this function can be performed by the fan, no specific compression device is required.
  • It was common knowledge that vacuum cleaners can be used as compressors. On this point, the court relied on a website extract produced by OHIM which described a vacuum cleaner as “more than a vacuum cleaner, a true small compressor”.
Accordingly, the court held that the board had committed no error, and confirmed that the element 'kompressor' would be understood by the relevant public as a description of a characteristic of a vacuum cleaner, being its multifunctional character, which enabled it to be used as a compressor when a removable tube was attached to the end of the vacuum cleaner system.

LG appealed before the ECJ on three separate grounds:
  • violation of the principles applicable to an appeal seeking to overturn a decision; 
  • distortion of facts and evidence; and
  • violation of Article 7(1)(c) of the regulation.
With regard to the first ground of appeal, it was accepted by the parties that the General Court had considered evidence submitted for the first time to it. LG considered that this was a violation of procedural rules as, in its view, the court was not permitted to review new facts or new evidence; it could only review the legality of the decision.

The ECJ disagreed. It considered that the General Court was entitled to consider new evidence for the purpose of determining the truth of an appellant’s argument that a particular fact was not common knowledge. In the case in point, LG had challenged the Board of Appeal’s assertion that it was common knowledge that a vacuum cleaner could be used as a compressor, so OHIM had submitted new evidence to demonstrate that this was in fact the case.

With regard to the second ground of appeal, LG considered that the court had made two contradictory statements in paragraph 18 of its judgment when it had held that, “according to the description given by the Board of Appeal, a vacuum cleaner can also compress air” and that, “where this function is performed by the fan, no specific compressing device is required”. LG claimed that this was contradictory, as no device could compress gas without comprising a compressor device, so a fan was not similar to a compressor.

However, the evidence filed by LG did not prove that the facts and evidence had been distorted by the court. The ECJ considered that the alleged contradiction between the two statements did not exist, as it was only a ‘specific’ compression device, that is to say, independent of the fan, which the court had considered was unnecessary.

LG also argued that the court had wrongly interpreted the contents of the website extract that described a vacuum cleaner as “more than a vacuum cleaner, a true small compressor”. In LG’s view, this was not a description of characteristics of the product, but merely promotional language designed to emphasise the true qualities of the product. The court should not have attributed great significance to the extract, given that a compressor was, in reality, a powerful industrial equipment typically used in airplanes or oil pipelines. OHIM responded that LG’s argument was speculative and a subjective interpretation of the extract.

The ECJ did not agree with LG’s arguments, which it considered were an attempt to bring into question the interpretation of the facts, which was not a question of law.

In its final ground of appeal, LG argued that the General Court’s distortion of the facts rendered the decision that the mark was descriptive void, as the decision of the court had not been based on admissible or relevant evidence showing that the vacuum cleaner could be used as a compressor. LG concluded that there was no direct link between the mark and electric vacuum cleaners which would make the relevant public consider the mark to be a description of the goods or one of their characteristics. However, LG failed to raise any arguments (other than those already raised in support of the first and second grounds of appeal) to support the third ground. Since the first and second grounds were unfounded and inadmissible in part, the third ground was rejected for the same reasons.

This case represents the last line of appeal for LG. Its application is relatively limited to the facts in the case, but it is interesting to see confirmation of the principle that the General Court can consider new evidence submitted to prove (or refute) a challenge to a decision based on the assumption that a fact is common knowledge. Interestingly, much of the current promotional material online for vacuum cleaners under the KOMPRESSOR mark refer to its ‘dirt compressor technology’, arguably being a characteristic of the goods.

Ellie Forrest-Charde and Chris McLeod, Squire Sanders & Dempsey (UK) LLP, London

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