Total refusal of an application for a EU trade mark under Articles 7 and 37 of the European Union Trade Mark Regulation (EUTMR) no. 207/2009, the Amending Regulation no. 2015/2424 and Rule 11(3) of the Implementing Regulation (IR) no. 2868/1995

Alicante, 14/02/2017

Mr. John FERDINAND, Esq.

Marks & Clerk LLP

Alpha Tower

Suffolk Street

Queensway

Birmingham B1 1TT

United Kingdom

Application Nº:	10614221
Your reference:	JO41847TEM
Trade Mark:	UFC ULTIMATE FIGHTING CHAMPIONSHIP
Applicant:	Zuffa, LLC 2960 W. Sahara Avenue, Suite 200 Las Vegas, Nevada 89102 United States

• Legal basis

The result of the examination on absolute grounds of the application is that registration of this sign cannot take place, because it lacks distinctive character and consists only of signs or indications which may serve in trade to designate the subject matter of the goods and services. According to article 7(1)(b) and article 7(1)(c) EUTMR such a sign cannot be granted EU Trade Mark protection. Since the sign consists of English words, article 7(2) also applies.

• Procedure

The Office raised an objection on 25 October 2012, pursuant to article 7(1)(b) and article 7(1)(c) in combination with article 7(2) CTMR (now EUTMR), because it was found that this sign is descriptive and devoid of any distinctive character.

On 28 March 2013 the applicant replied to the objections, but was not able to convince the Office of waiving the objections.

On 11 October 2013 the Office sent out another objection letter, giving the applicant the opportunity to file evidence of acquired distinctiveness through use. The deadline for this material would have been 11 April 2014.

On 3 April 2014 the applicant inquired about the progress in the case claiming not to have heard from the Office since the end of 2012. The Office sent out the 11 October 2013 letter again with a new deadline, expiring on 3 October 2014.

On that date the applicant sent evidence of acquired distinctiveness through use. The file was put on hold however, because a very similar file, also with evidence of acquired distinctiveness through use, was pending at the Court in Luxembourg at that time (EUTMA 11277118 ULTIMATE FIGHTING CHAMPIONSHIP, filing date: 18 October 2012).

The Court has meanwhile rendered its judgment (12 May 2016) and accepted the evidence of acquired distinctiveness through use only for the following goods and services.

9

Pre-recorded audio cassettes; phonograph records; compact discs; pre-recorded video cassettes; laser video discs; digital video discs; digital versatile discs; electronic storage media; USB flashdrives; CD-ROM discs all featuring mixed martial arts competitions, events and programs; motion picture films in the field of mixed martial arts.

41

Provision of information relating to mixed martial arts via communication and computer networks; providing news and information in the fields of sports, fitness and mixed martial arts via communication and computer networks.

It follows from the foregoing that the renown of the mark applied for has been proved solely in respect of the specialist public of mixed martial arts fans. Consequently, the applicant is only justified in claiming that the Board of Appeal infringed Article 7(3) of Regulation No 207/2009 in so far as the Board of Appeal did not uphold its appeal as regards the specific goods and services, which are especially intended for that specialist public (see paragraph 57 above).¹

It was concluded that, since none of these goods and services is included in this application, the applicant could either withdraw this application or make another effort to produce evidence of acquired distinctiveness through use. To this end a deadline of 2 January 2017 was set (letter of 21 October 2016).

On 22 December 2016 Mr. John FERDINAND and the examiner spoke on the phone. The message was that the applicant will not send any more evidence of use and will comply with the judgment of the Court in the parallel file.

By letter of 28 December 2016 the applicant requested a limitation of the goods and services in this file which would read:

9

Computer game software; computer-gaming software; all of the aforesaid goods featuring or relating to mixed martial arts.

41

Entertainment and gaming services, namely, providing live games of chance and live slots games; entertainment and gaming services, namely, providing online games of chance and online slots games; entertainment services, namely, conducting gaming contests and tournaments, and providing a website featuring online computer games; all of the aforesaid services featuring or relating to mixed martial arts.

This is not “complying with the Court’s judgment”, so the examiner sent out an informal e-mail to Mr. Ferdinand on 18 January 2017:

Dear Mr. Ferdinand,

We spoke on the telephone on 22 December 2016 and as far as I can recall and can rely on my notes you told me that you would accept the judgment of the Court in the parallel case (T-590/14).

Your letter of 28 December came as a surprise, because it contradicts the Court’s judgment.

Gaming software was in the specification of 11277118 and you were not able to show acquired distinctiveness through use. That means that you cannot limit the specification in class 9 of this application, you first have to send convincing evidence of acquired distinctiveness through use. The same goes for the services in 41.

So, there are two options.

Either you accept the Court’s decision and you abandon this application or you are given another 6 months to gather evidence for gaming software and gaming services, but since you were not able to do this in the other file either, it seems that it does not make much sense to keep this file open for another 6 months or a year.

Please let me know at your earliest convenience, if you have a good chance of collecting this material for an article 7(3)-claim.

Yours sincerely,

Robert KLIJN BRINKEMA

Almost a month has gone by without any reply. There will be no more evidence of acquired distinctiveness through use and there is no explanation as to why the applicant decided not to comply with the judgment either.

• Decision

Pursuant to article 75 EUTMR, it is up to the Office to make a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due and careful consideration to the applicant’s arguments, the Office has decided to maintain the objection and refuse the application for all goods and services.

• How to appeal this decision

Under Article 59 of the European Union Trade Mark Regulation no. 2015/2424 you have a right to appeal against this decision. Under Article 60 of the Regulation a notice of appeal must be filed in writing at the Office within two months from the date of receipt of this notification and within four months from the same date a written statement of the grounds of appeal must be filed. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720,00 has been paid.

Robert KLIJN BRINKEMA