CANCELLATION No 10774 C (INVALIDITY)

adp Gauselmann GmbH, Merkur-Allee 1-15, 32339 Espelkamp, Germany (applicant), represented by Wolfgang Schröder, Paul-Gauselmann-Straße 8, 32312 Lübbecke, Germany (employee representative)

a g a i n s t

VideoB Holdings Limited, Trident Chambers, Road Town, Tortola, British Virgin Islands (CTM proprietor), represented by KELTIE LLP, No. 1 London Bridge, London SE1 9BA, United Kingdom (professional representative).

On 18/03/2016, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. Community trade mark No 13398821 is declared invalid in its entirety.

3. The CTM proprietor bears the costs, fixed at EUR 700.

REASONS

The applicant filed an application for a declaration of invalidity against Community trade mark No 13398821, (figurative mark) (the CTM):

The request is directed against all the goods and services covered by the CTM, namely:

Class 9: Computer game software; computer software for gambling and gaming.

Computer game software; computer software for gambling and gaming.

Class 28: Video game machines; gaming machines for gambling.

Video game machines; gaming machines for gambling.

Class 41: Gambling services; online gaming services; rental of gaming equipment for gambling. Gambling services; online gaming services; rental of gaming equipment for gambling.

The applicant invoked Article 52(1)(a) CTMR in conjunction with Article  7(1)(c) CTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

Applicant’s request

The applicant argues that the CTM is descriptive of the goods and services in question and that the word elements contained in the mark have the following meanings:

MULTIGAME: more than one game is integrated, for example in a slot machine;

MEGA: the game package is particularly large;

MIX: there is a mix of different types of games, for example, bingo games or card games.

CTM proprietor’s response

The CTM proprietor disputes the applicant’s submissions and requests that the application for a declaration of invalidity shall be refused in its entirety for the following reasons:

The mark must be examined as a whole and the graphic stylisation and colour of the mark must also be taken into account. Whilst the word MULTIGAME may suggest that multiple games are on offer, the words MEGA MIX do not describe the goods or services or their characteristics. The consumer will not take the term as meaning that “there is a mix of different types of games, for example, bingo games or card games”. There would be a significant mental process and step of thought to arrive at such a conclusion. There is no direct or immediate connection. It is not typical to refer to a “mix” of games. The noun “mix” is more commonly associated with a combination or blending of ingredients in the food and beverage sector, but not for the goods of the registration and certainly not for the service of the registration. At worst, MEGA MIX may allude to the nature of the goods or services, but is, however, sufficiently vague and will not be found to describe a characteristic of the goods or services.

Furthermore, the Office accepted CTM No 4055331 MEGAMIX for cement for the building industry and CTM No 7102023 MEGA MIX for Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; bread; honey, treacle; yeast, baking-powder; salt, mustard; vinegar; spices, which establishes that the expression is sufficiently distinctive for registration. It is argued that the relevance of the term MEGA MIX to the goods and services of the CTM proprietor is even more remote than it is for the goods of the aforementioned registered marks. In addition, the term MEGA MIX has been accepted for registration in a number of countries within the EU for a variety of goods and services, confirming that the mark is distinctive and registrable.

The applicant makes no reference to the stylisation of the registered mark. It is submitted that the stylisation and colour of the mark alone are sufficient to bring the words out of the scope of a refusal under Article 7(1)(c) CTMR. The font in which the mark is represented departs significantly from commonly used typefaces. The colouring and shape of the letters is distinctive, in particular the “A” of MULTIGAME and MEGA hardly resembles an “A” at all.

Bearing in mind that the words MEGA MIX are (in size) the most dominant in words within the mark, and having regard to the overall impression created by the mark, including its stylisation, it is denied that the mark is exclusively descriptive.

The Office accepted a number of marks with similar stylisation, which demonstrates that such stylisation of words at worst may allude to the goods or services of characteristics and may render descriptive words registrable.

The subject mark does not convey any direct, specific or immediate meaning. Whilst the term MEGA MIX may not be highly distinctive, it does at least carry the minimum degree of distinctive character as to render the mark as a whole distinctive.

The proprietor attached CTM file information downloaded from https://oami.europa.eu/eSearch/ regarding two prior registrations of other parties.

Applicant’s reply

The applicant explains that the CTM is recognisable without further ado as reading MULTIGAME MEGA MIX. The word MULTI refers to “multiple”. The word GAME refers to a fun activity or a competition. The word MEGA is used as prefix meaning “big, hugely or giant” in numerous combinations especially in the scientific-technical field in words such as “megabyte, megahertz, megalith, megaphone”, but also in colloquial language in expressions such as “mega hit” or “mega star”. The word MIX describes a mixture of multi items. All four of the mark elements are commonly used and the meaning is understood by the relevant public at first view. The mark will be understood as reference to a varied mixture of games which are grandiose, phenomenal games.

The Office rejected the parallel word mark CTM No 13398813 MULTIGAME MEGA MIX.

The stylisation and the graphical design of the letter “A” is very similar to the Latin letter “A” and easily recognised as such.

In Germany exists the company MEGA Spielgeräte since 1988, which is a subsidiary company of the Gauselmann Group, one of the leading companies in the business of coin-operated gambling machines. The product catalogue of adp Gauselmann GmbH of Spring 2015 shows on page 10 that there is an almost confusing number of available games to choose from. That kind of gambling machines is called “Mulitgame-player” because the client is able to choose from a selection of more than 200 games. Pages 34 and 35 of the catalogue show how many games are in one game package. The expression MULTIGAME MEGA MIX, therefore, describes the feeling of the consumer when using such game facilities.

Furthermore, the applicant submits a copy of German Registration No DE39739990 for MEGA in the name of MEGA Spielgeräte Entwicklungs- und Vertriebsgesellschaft mbH & Co. KG for respective goods in classes 9 and 28.

The applicant enclosed an abstract of German trade mark registration No DE3973990 MEGA and an extract from a product catalogue.

CTM proprietor’s rejoinder

The CTM proprietor notes that the applicant denies that the additional elements of the CTM, such as the colour and the stylisation, are sufficient to render the mark distinctive and merely repeats its initial arguments.

The CTM proprietor argues that the stylisation, the unusual and imaginative font and the colour of the mark alone are sufficient to bring the words out of the scope of a refusal under Article 7(1)(c) CTMR. The letter “A” within the mark is just as likely to be viewed as a golden triangle or pyramid and holds a prominent, eye-catching and memorable position.

In addition, the applicant has provided details of an earlier German trade mark registration for the mark MEGA in the name of the CTM proprietor’s subsidiary, which is completely irrelevant and should have no bearing on the present case. Indeed, it seems somewhat contradictory that the applicant on the one hand challenges the CTM as being descriptive, yet on the other hand holds up a registration for the mark MEGA in Germany, which suggests that the term is distinctive. In any event, the applicant did not provide evidence of the link between the companies. Secondly, the applicant has sought to invalidate the CTM on the basis that it is descriptive and not on the basis of an earlier registered or unregistered right.

Furthermore, the catalogue pages provided show no evidence to suggest that the goods in question are referred to as “multigame player” games. Simply stating that the goods could be referred to as “multigame player” games is not enough.

It is beyond doubt that the CTM carries the requisite degree of distinctiveness considering the stylisation of the mark. Accordingly, as held by the original examiner, the registration should not be caught by the prohibition of Article 7(1)(c) CTMR.

It is requested that the invalidity action is dismissed and registration of the CTM will be maintained.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 52(1)(a) IN CONJUNCTION WITH ARTICLE 7 CTMR

According to Article 52(1)(a) and (3) CTMR, a Community trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 CTMR. Where the grounds for invalidity apply for only some of the goods or services for which the Community trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) CTMR that Article 7(1) CTMR applies notwithstanding that the grounds of non‑registrability obtain in only part of the Community.

As regards assessment of the absolute grounds of refusal pursuant to Article 7 CTMR, which were subject of the ex officio examination prior to registration of the CTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Although these facts and arguments must date from the period when the Community trade mark was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

Article 7 CTMR

The applicant based the Application for a Declaration of Invalidity of a Community Trade Mark against the CTM exclusively on Article 7(1)(c) CTMR.

Under Article 7(1)(c) CTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) CTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (see judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 25).

By prohibiting the registration as Community trade marks of the signs and indications to which it refers, Article 7(1)(c) CTMR pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (see judgment of 23/10/2003, C-191/01 P, ‘Wrigley’, paragraph 31).

The signs and indications referred to in Article 7(1)(c) CTMR are those which may serve in normal usage from a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought (see judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its descriptive character it must be considered as a whole. However, that is not incompatible with an examination of each of the mark’s individual components in turn (see judgment of 19/09/2001, T-118/00, ‘Procter & Gamble’, paragraph 59).

The applicant argues that the CTM is descriptive with regard to the goods and services at issue. The CTM proprietor instead is of the opinion that the CTM does not convey any direct, specific or immediate meaning and that at least the words MEGA MIX carry the minimum degree of distinctive character as to render the mark as a whole registrable. In addition, the CTM proprietor emphasizes that the stylisation, the peculiar typeface and the colouring and shape of the letters is distinctive, in particular the letter “A” in MULTIGAME and in MEGA hardly resembles an “A” at all.

The descriptiveness of a trade mark has to be assessed always in relation to the goods or services for which registration of the term is sought.

The CTM covers Computer game software; computer software for gambling and gaming in Class 9, Video game machines; gaming machines for gambling in Class 28 as well as Gambling services; online gaming services; rental of gaming equipment for gambling in Class 41, which are aimed at both average consumers as well as at a professional public. Where the goods and services are intended for all consumers, i.e. both the average consumer and the specialist/professional consumer, the relevant public must be deemed to be composed of the average consumer, reasonably well-informed and reasonably observant and circumspect (see judgment of 22/06/1999, C-342/97, “Lloyd Schuhfabrik Meyer”, para 26, and judgment of 06/05/2003, C-104/01 “Libertel”, para 46). As such, the Cancellation Division will take into account the level of attention of someone who is reasonably well-informed and reasonably observant and circumspect.

Moreover, since the CTM consists of English word elements, the relevant public with reference to which the absolute ground for refusal must be examined is the English-speaking consumer in the Community (judgment of 22/06/1999, C‑342/97, ‘Lloyd Schuhfabrik Meyer’, paragraph 26; and judgment of 27/11/2003, T‑348/02, ‘Quick’, paragraph 30).

According to common English dictionaries, the term “MULTI” refers to “many or much; more than one” (see Collins Concise Dictionary, 3^rd Ed.). The term “GAME” is a plain description of the kind and intended purpose of the goods and services in question (computer software for gaming/gambling, gaming/gambling machines, gaming/gambling services and rental of gaming equipment). “MEGA”, according to the same standard dictionary, refers to “extremely good, great, or successful; large or great” and MIX refers to “the result of mixing; mixture”, which is “something mixed, i.e., combined or blend together” (Collins Concise Dictionary, 3^rd Ed.).

The Cancellation Division reaches the conclusion that the CTM MULTIGAME MEGA MIX is indeed descriptive of the kind and the characteristics of the goods and services in question. The meaning of the words, even if not the most appropriate words, will be easily understood by the relevant English-speaking public as reference to a large mixture of multiple games. Therefore, the CTM describes some of the characteristics of the gaming software, gaming machines and gaming services at issue, namely that they cover more than one or multiple games combining a large and impressive mixture of different games. The message expressed by the sign is clear, direct and immediate to the relevant public when applied to the goods and services at issue.

Furthermore, the Cancellation Division assumes that also the term MEGA MIX per se will be easily understood In the field of gaming by the relevant public as a combination or mixture of different games in one package (of multiple games).

This is also reflected by the examiner’s decision to refuse the CTM proprietor’s parallel verbal mark MULTIGAME MEGA MIX CTM No. 13398813.

The Cancellation Divisions does note, however, that the CTM at issue is a figurative sign and contains certain figurative elements that confer upon it a degree of stylisation. This cannot be ignored.

In the examination of a mark, when the verbal elements are of descriptive character, it must be examined, in particular, whether the figurative element is striking, surprising or unexpected, or capable of creating in consumers’ minds an immediate and lasting memory of the sign by diverting their attention from the descriptive message conveyed by the word element. This means that the stylisation must be such as to require an effort of interpretation on the part of the relevant public to understand/deduce the meaning of the word element.

This is not the case with the present CTM, since the font of the mark, apart from the representation of the letter “A”, is a standard, easily legible and unmemorable typeface and thus devoid of distinctive character.

This is also confirmed by the judgment of 19/05/2010, T‑464/08, ‘Superleggera’. The Court observed that while the font might be slightly peculiar, it was not likely to leave an immediate and lasting impression on the relevant public or to distinguish the applicant’s goods from those of other suppliers on the market. This was because the stylised letters used in the mark were customary in the commercial field and would be perceived as such by the relevant public. The same applies here.

The colours claimed “Yellow” and “Gold” are commonly used in gaming and gambling labels. Shining elements are used to entice consumers to play games and to gamble, which is the purpose of gaming goods and gaming services offered. The letter “A” in MULTIGAME and MEGA is slightly stylised in a modern way, but still easily readable.

The figurative representation of the verbal elements does not possess any feature that allows the mark to fulfil its essential function in relation to the goods and services covered by the trade mark application (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 74).

The figurative CTM will be understood as referring to large mixtures of different games within multiple games (packages) of many undertakings in the field of gaming.

As regards the CTM proprietor’s argument that similar registrations, on the one hand marks containing the word elements MEGA MIX, and on the other hand marks covering similar goods and services with similar stylisations, have been accepted by the Office, according to settled case law, ‘decisions concerning registration of a sign as a Community trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a Community trade mark must be assessed solely on the basis of the CTMR, as interpreted by the Community judicature, and not on the basis of previous Office practice (judgment of 15/09/2005, C 37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T 36/01, ‘Surface d’une plaque de verre’, paragraph 35).

The Office strives to be consistent and always has regard for previous registrations; however, each examination must be taken on its own merits and must dynamically reflect changes in linguistic norms and commercial realities and the jurisprudence which reflects them. The examination of absolute grounds for refusal must be full and stringent (see judgment of 6 May 2003, C 104/01, ‘Libertel’, para. 59), and may not just consist of the mere repetition of supposedly comparable decisions. Moreover, the fact that different marks contain elements of the present mark which were registered for completely does not suffice to overcome the present objection as they contain different figurative and verbal elements which render the marks distinctive.

Therefore, the Cancellation Division concludes that the CTM in question as a whole is descriptive of the goods and services for which registration is sought. The figurative elements fail to add any distinctive character to the CTM which would allow the sign to fulfil its function as a trade mark. The relevant public will perceive the sign as descriptive and not as an indication of the commercial origin of the goods and services in question, which could originate from many undertakings.

Conclusion

In the light of the above, the Cancellation Division concludes that the application is totally successful and the Community trade mark should be declared invalid for all the contested goods and services. Therefore, the request for invalidity according to Article 52(1)(a) CTMR is upheld.

COSTS

According to Article 85(1) CTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the CTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Rule 94/(3) and (6) and Rule 94(7)(d)(iii) CTMIR, the costs to be paid to the applicant is the cancellation fee.

The Cancellation Division

Richard BIANCHI

Lydia HASSENPFLUG

Dafydd COLLINS

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 has been paid (Article 2(30) CTMFR).