Questions Abound on Samsung’s Belated Withdrawal of ‘HDR10' Trademark Bid
Samsung withdrew its European application to register “HDR10" as a trademark Aug. 16, weeks after the EU Intellectual Property Office (EUIPO), acting on an opposition letter from LG Electronics, ruled the application “not eligible,” show documents posted at the agency’s website (login required). Samsung’s withdrawal of the application came roughly two weeks before the opening of the IFA show, where HDR10 is expected to get prominent mention among exhibitors of the many high-dynamic-range TVs that likely will be on display at the Messe Berlin fairgrounds.
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Questions abound about Samsung’s HDR10 application at EUIPO, including why the company only belatedly pulled the application there, months after abandoning an identical attempt to register HDR10 at the U.S. Patent and Trademark Office (see 1704100061). Samsung representatives told us Tuesday they would have "no comment" on the matter. Samsung’s applications remain in force at PTO and EUIPO to register “HDR10 PLUS,” the company’s nomenclature for technology that enhances the HDR TV picture performance of the open HDR10 standard by adding“dynamic tone mapping” to the processed signal (see 1704200043).
EUIPO “never comments on individual cases,” agency spokeswoman Ruth McDonald said Tuesday when asked another important question, that of how agency examiners initially could have given the Samsung application the green light when HDR10 as a term is known to be in ubiquitous use throughout the consumer tech industry. After its late-March publication of the HDR10 application, the EUIPO received “third party observations” from LG that “give rise to serious doubts concerning the eligibility of the trade mark for registration and therefore the Office decided to re-examine the application,” the agency told Samsung in an Aug. 1 letter.
That re-examination found that "the trade mark applied for is not eligible for registration” because HDR10 is in widespread industry use and under EUIPO rules is “devoid of any distinctive character” that would qualify the term as a trademark, the agency said. “In the present case,” an internet search that EUIPO conducted Aug. 1 “revealed that the term in question is commonly used in the relevant market,” said the letter. It contained links to various articles in the consumer tech media attesting to HDR10's common use -- information that would have been plainly available to EUIPO examiners who originally cleared the application for publication March 22, two weeks after Samsung's London based lawyers filed it with the agency.
Though it's not known how quickly trademark applications typically progress at EUIPO from the filing of the original papers to their approval for publication, the two-week turnaround time in the example of HDR10 would be lightning-fast by the standards of PTO, where it customarily takes three months for an examiner just to weigh in with a preliminary ruling on a trademark request. It's also worth noting that EUIPO took roughly five weeks to finish its re-examination of the HDR10 application -- three weeks longer than the original review.
LG thinks the “objectionable goods” covered by the HDR10 trademark that Samsung applied for “are everyday consumption/mass consumption goods and are mainly aimed at both average consumers and a professional public,” LG’s Munich-based lawyers told EUIPO in a June 26 letter attached to a 37-page summary documenting HDR10's common use. The lawyers traced the earliest mention of HDR10 to voluntary guidelines that CTA (then CEA) released in August 2015 on what features would qualify a TV to be called “HDR-compatible” (see 1508270058), they said.
Case law shows “the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character,” the lawyers told EUIPO. “This is clearly applicable to the present case. Given that the mark has a clear descriptive meaning in relation to the goods and services applied for, the impact of the mark [on] the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.”