Samsung wins case against LG in Russia: "QLED" mark is not distinctive
In its judgment of 17 May 2018 the Intellectual Property Court in Russia has confirmed the decision of the Russian Trademark Office (Rospatent) against granting protection to the "QLED" trademark of LG Electronics based on the invalidation action filed by Samsung Electronics.
The "QLED" word mark written in standard characters was registered by Rospatent in the name of LG in October 2016 for a variety of goods in Class 9, including mobile phones, smartphones, computers, laptops, tablet computers, TV apparatus, monitors, computer displays, light-emitting diode panels and displays. Evidently, at that time Rospatent found the "QLED" mark to be in compliance with trademark registration requirements, including the level of distinctiveness.
Nevertheless, later in July 2017 the Chamber for Patent Disputes of Rospatent found in favor of the invalidation claim filed by Samsung against the "QLED" trademark registration with regard to the goods of Class 9 related to devices for data transmission, processing, reproduction and storage. The reason underlying this decision was lack of distinctive character.
In its ruling in favor of Samsung Rospatent stated that the word "QLED" was a long known acronym for "Quantum dot LED", which was a generic term in connection with a particular type of display technology. Therefore, registration of the "QLED" mark had been made in contradiction to point 1 of article 1483 of the Russian Civil Code. According to this, trademarks that are devoid of any distinctive character cannot be registered.
LG appealed Rospatent’s decision before the Russian IP Court arguing that the "QLED" mark was not an acronym of a generic term, but a fanciful word.
Despite the efforts of LG, the Court fully upheld Rospatent’s decision and confirmed the lack of distinctiveness of the "QLED" mark in relation to the relevant goods of Class 9. In its decision the Court stated the following:
- "QLED" is a commonly accepted abbreviation in the field of science and technology (electronics and computer technologies) produced from the first letters of the English term "Quantum dot Light-Emitting Diod/Quantum dot LED" which is the name of a display production technology known before the disputed trademark’s date of priority;
- the "QLED" term was used by other producers in connection with goods identical to LG’s goods before the disputed trademark’s date of priority;
- "QLED" was mentioned in US, EU and Chinese patents related to the field of electronics before the disputed trademark’s date of priority;
Based on the above the Court confirmed that Rospatent had issued the correct decision that the word element "QLED" was the term typical for a particular field of electronics and was therefore not eligible for protection as a trademark for the relevant goods of Class 9.
The Court specifically emphasized that the disputed mark was recognized as a commonly used term that refers to certain qualities of goods. The Court stated that there was no evidence "QLED" would become a generic name for the goods of a certain kind. This conclusion prevents potential speculation about which producer was the first to introduce "QLED" on the market.
Rospatent is not the only authority whose decision to register the "QLED" trademark has been challenged. This trademark has also been invalidated in China and is currently subject to invalidation proceedings in the EU. In the US LG was able to register the "QLED" trademark only for the goods for which the QLED technology is not a feature.