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LG Electronics Inc (LG) v Samsung Electronics Co Ltd (Samsung)

A recent decision of the Australian Trade Marks Office has resulted in Samsung’s trade mark, SAMSUNG QLED, proceed to registration despite it wholly containing LG’s QLED trade mark and the products on which the trade mark is used by Samsung, not actually using QLED technology.

background

QLED is arguably a broad descriptive term used to define technologies which encompass quantum dots, allowing screens to emit its own light. In December 2014, LG successfully registered the trade mark “QLED” in Class 9 for inter alia, computers, software and electronics. Almost two years later, in October 2016, Samsung filed a trade mark application for “SAMSUNG QLED”, for similar goods in Class 9.

Samsung’s application for trade mark registration was accepted and published in the Australian Official Journal of Trade Marks. Following publication, LG opposed the registration of Samsung’s trade mark.

opposition

LG objected to the registration of Samsung’s trade mark on two grounds, s43 (that SAMSUNG QLED was inherently confusing) and s44 (that SAMSUNG QLED was deceptively similar to LG’s earlier registered trade mark) of the Trade Marks Act 1995 (Cth) (TMA).

section 43

LG submitted that Samsung’s trade mark was likely to deceive the public or cause confusion in the marketplace as Samsung doesn’t use QLED technology in its products.

The Delegate relied on the judgement in McCorquodale v Masterson which highlighted that for s 43 to be enlivened:

• there needs to be a connotation in Samsung’s trade mark itself, or in a part of it; and
• because of this connotation, the use of Samsung’s trade mark would be likely to deceive or cause confusion. (emphasis added)

In McCorquodale, Judge Kenny utilised dictionary definitions to give meaning to the term connotation which is not defined in the TMA. In Pfizer Products Inc v Karam, Judge Gyles highlighted that connotation signifies a secondary meaning implied by the trade mark in question which would make use of the trade mark in respect of the relevant class likely to deceive consumers or cause confusion.

LG argued that QLED technology, as applied in respect of Class 9, means that each quantum-dot light emitting diode element in the panels or screens emits its own light – and this is a technology that Samsung does not use in its products.

However, while the Delegate accepted this submission, it was held that ordinary consumers would be unlikely to know the specific types of QLED technology and were unlikely to apply a precise technical meaning to the term QLED. Additionally, the Delegate noted that the TMA made reference to the word ‘would’ and not ‘could’. Therefore, there had to be a certainty that deception or confusion will occur and not a possibility.

In light of the above and that trade marks can be filed on the basis of future use, there was no certainty that consumers would be deceived by the use of SAMSUNG QLED on products sold by Samsung that technically weren’t using QLED technology. Accordingly, this ground failed.

section 44

Even though Samsung’s trade mark contains the entirety of LG’s trade mark (QLED), this doesn’t mean these two trade marks are substantially identical or deceptively similar.

It was held:

• in using Windeyer J’s side-by-side test to determine if the trade marks were substantially identical that the presence of the word SAMSUNG is a distinct addition which prevents the finding of substantial identity; and

• in applying Shell Co. (Aust) Ltd v Esso Standard Oil, which states:

“…the comparison… is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the defendant’s [trade mark]”,

the Delegate held that Samsung’s two word trade mark was striking and aurally different to LG’s one word trademark due to the presence of the word SAMSUNG at the beginning of the trade mark (and the significance of this distinctive and prominent element of the trade mark).

Accordingly, this ground also failed.

take aways

1. The use of a technical descriptive term in relation to products that don’t possess this characteristic, may not be deemed to be deceptive or confusing; and
2. The fact that a trade mark is wholly contained within another trade mark doesn’t necessitate that the trade marks are substantially identical or deceptively similar.

This article first appeared on WTR Daily, part of World Trademark Review, in July 2020. For further information, please go to www.worldtrademarkreview.com.