Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 30/11/2015

MARKS & CLERK LLP

Fletcher House Heatley Road

The Oxford Science Park

Oxford OX4 4GE

REINO UNIDO

Application No:	013434006
Your reference:	LMEY
Trade mark:	LET ME ENTERTAIN YOU
Mark type:	Word mark
Applicant:	FremantleMedia Limited 1 Stephen Street London W1T 1AL REINO UNIDO

The Office raised an objection on 03/12/2014 pursuant to Article 7(1)(b) and (c) and 7(2) CTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 30/01/2015, which may be summarised as follows:

1. There is no sufficiently direct link between the mark applied for and the goods and services for which registration has been refused in classes 9, 38 and 41 to find the mark to be descriptive. On the contrary, only a part of the sign merely alludes in an imaginative way to the goods and services.

2. Marks consisting of advertising or promotional slogans expressing even simple messages in relation to the goods or services covered by those marks are not excluded from registration. The relevant authorities should assess the distinctive character of each trade mark based on the facts of a particular case.

3. Despite the fact that the sign at issue does not present a high degree of artistic creativity, the statement contained therein is of elliptical nature. Therefore, it would be incorrect to consider that the sign is devoid of any distinctive character.

4. The relevant consumer for the goods and services applied for will be both an average consumer and professionals in the television and media production industry. The relevant public is accustomed to the common use by media production companies of slogans as trade marks for the names of television of radio programmes. Consequently, the relevant consumer will easily recognize the sign in question as an indicator of origin.

5. Lastly, the applicant argues that the fact that previous registrations of trade marks containing the word ‘ENTERTAIN’ for similar goods and services were granted by the Office, only confirms that the slogan at issue is registrable.

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

The applicant’s request for additional time to submit further written submissions if the objection is maintained, is not granted. The applicant should have submitted all its observations and evidence within the deadline of two months starting from the date of notification by the Office of the objection letter to the applicant, or it should have provided the Office with an express unconditional request for extension of time. The Office considers that in the case at hand an extension of time is not appropriate under the circumstances. Another round of submissions would constitute discrimination in relation to other applicants who are usually granted one round of submissions. The Office’s refusal to grant a further period of time does not contravene Article 75 CTMR as the applicant has had an opportunity to present its comments.

General remarks on Article 7(1)(c)

Under Article 7(1)(c), ‘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 September 2004, C-329/02 P, ‘SAT.2’, paragraph 25).

By prohibiting the registration as Community trade marks of the signs and indications to which it refers, Article 7(1)(c) 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 October 2003, C 191/01 P, ‘DOUBLEMINT’, 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 November 2003, T-222/02, ‘ROBOTUNITS’, paragraph 34).

General remarks on Article 7(1)(b)

Under Article 7(1)(b) CTMR, ‘trade marks which are devoid of any distinctive character’ 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 underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 25).

The marks referred to in Article 7(1)(b) CTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (judgment of 27/02/2002, T‑79/00, ‘LITE’, paragraph 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 65).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (judgment of 04/10/2001, C‑517/99, ‘Merz & Krell’, paragraph 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (judgment of 11/12/2001, T‑138/00, ‘DAS PRINZIP DER BEQUEMLICHKEIT’, paragraph 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (judgment of 29/04/2004, joined cases C‑456/01 P and C‑457/01 P, ‘Henkel’, paragraph 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (judgment of 05/03/2003, T‑194/01, ‘Tablette ovoïde’, paragraph 42 and judgment of 03/12/2003, T‑305/02, ‘Forme d'une bouteille’, paragraph 34).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) CTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (judgment of 05/12/2002, T‑130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 20 and judgment of 03/07/2003, T‑122/01, ‘BEST BUY’, paragraph 21).

In addition, in view of the nature of some of the goods and services in question, even if the awareness of part of the relevant public is high, given the relatively high technical level and cost of the services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (judgment of 05/12/2002, T‑130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 24).

It must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (judgment of 12/07/2012, C‑311/11 P, ‘Smart Technologies’, paragraph 48).

After giving due consideration to the applicant’s arguments, the Office has decided to waive the objection for the following goods and services:

Class 9 Audio-visual teaching apparatus; holograms; communications apparatus and instruments; chargers; chargers for mobile phones; hands-free apparatus for mobile phones; parts and fittings for all the aforesaid goods.

Class 41 Education services; education and instruction by or relating to radio and television; organisation, production and provision of video clips via mobile or computer networks for educational purposes.

The objection is maintained for the remaining goods and services.

As to the arguments of the applicant:

1. There is no sufficiently direct link between the mark applied for and the goods and services for which registration has been refused in classes 9, 38 and 41 to find the mark to be descriptive. On the contrary, only a part of the sign merely alludes in an imaginative way to the goods and services.

It must be noted that a slogan will be found objectionable under Article 7(1)(c) when it immediately conveys the kind, quality, intended purpose or other characteristics of the goods and services.

As regards such goods in class 9 as mobile phones or karaoke machines, the sign ‘LET ME ENTERTAIN YOU’ clearly makes direct reference to the entertainment features of the goods by pointing out that the intended purpose of the goods is amusement.

In respect of goods in class 9 for which protection is sought, such as cinematographic films; animated cartoons; pre-recorded compact discs, DVDs and other electronic and digital media featuring games, etc., it is obvious that the subject matter or content of the goods in question is entertainment.

The sign has been also found descriptive of the following services applied for in class 38: Broadcasting; television broadcasting; radio broadcasting; satellite television broadcasting; cable television broadcasting. The sign ‘LET ME ENTERTAIN YOU’ indisputably indicates that the said services aim at broadcasting entertainment content. Therefore, the sign is descriptive of the intended purpose and/or subject matter of those services.

With regard to services in class 41 such as entertainment services; publishing services; organization of shows, etc., it is evident that the purpose of the services is to provide entertainment or that the subject matter of the publishing services is entertainment content.

Overall, the Office feels that the descriptive nature of the sign, where four semantically unambiguous terms are put together in an unremarkable fashion to create an equally unambiguous term on the whole, would lead the relevant consumer to see the sign as meaning nothing more than ‘relating to amusement’. It is the Office’s opinion that the sign ‘LET ME ENTERTAIN YOU’ does nothing more than state in a clear, precise and unambiguous manner that the contested goods and services offer entertainment.

In view of the above, it must be concluded that the relevant consumer will not perceive ‘LET ME ENTERTAIN YOU’ as unusual but rather as a banal descriptive message which eclipses entirely any purported trade mark message.

2. Marks consisting of advertising or promotional slogans expressing even simple messages in relation to the goods or services covered by those marks are not excluded from registration. The relevant authorities should assess the distinctive character of each trade mark based on the facts of a particular case.

The Office agrees that it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (judgment of 11/12/2001, T‑138/00, ‘DAS PRINZIP DER BEQUEMLICHKEIT’, paragraph 44).

Moreover, it is established case law and practice of the Office that each case is examined on its own merits.

As it is shown in present the decision, circumstances of the case at issue have been duly analysed and each of the grounds for refusal under Article 7(1) CTMR examined separately.

3. Despite the fact that the sign at issue does not present a high degree of artistic creativity, the statement contained therein is of elliptical nature. Therefore, it would be incorrect to consider that the sign is devoid of any distinctive character.

According the established case-law, there are a number of criteria to be used when assessing the distinctive character of a slogan (judgments of 21/01/2010, C‑398/08 P ‘VORSPRUNG DURCH TECHNIK’, para. 47, and of 13/04/2011, T‑523/09, ‘WIR MACHEN DAS BESONDERE EINFACH’, para. 37).

After due consideration of the sign in question and the applicant’s observations, it has been found that the mark applied for does not meet the criteria set by the Court of Justice.

In the case at issue the sign ‘LET ME ENTERTAIN YOU’ is composed of commonplace words which are constructed by means of a grammatically and syntactically correct structure proper to the English language. No stylistic devices such as alliteration, metaphor, rhyme or paradox have been used to design the slogan. Additionally, the combination of elements does not constitute a play on words. Quite the opposite, from a semantic point of view, the combination of words can only be interpreted as a meaningful expression: allow me to amuse you.

The interpretation of the sign does not require considerable mental effort of the relevant consumers. On the contrary, it conveys a direct and meaningful message that the goods and services offered relate to entertainment.

Therefore, the relevant public will perceive the sign as merely promotional information which simply serves to highlight the positive aspects of the goods and services concerned, namely that they serve for amusement or enable customers to pass their time enjoyably.

Overall, the words contained in the objected sign will be understood by the relevant public as a simple laudatory formula and not as an indication of the commercial origin of the goods and services in question.

It follows that the relevant public will not be able to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (judgment of 05/12/2002, T‑130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 20 and judgment of 03/07/2003, T‑122/01, ‘BEST BUY’, paragraph 21).

4. The relevant consumer for the goods and services applied for will be both an average consumer and professionals in the television and media production industry. The relevant public is accustomed to the common use by media production companies of slogans as trade marks for the names of television of radio programmes. Consequently, the relevant consumer will easily recognize the sign in question as an indicator of origin.

It should be noted that the fact that the relevant public is a specialist one and its degree of attention is higher than average cannot decisively influence the legal criteria used to assess the distinctive character of a sign. As stated by the Court of Justice, ‘it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist’ (judgment of 12/07/2012, C-311/11 P, ‘WIR MACHEN DAS BESONDERE EINFACH’, paragraph 48).

It is the contention of the applicant that the sign has a sufficient level of distinctiveness to enable it to function as a trademark, and that the attention paid by the relevant consumer when acquiring the contested goods and services would be of such a level as to make them see the sign as a designator of a particular trade origin.

Although it is true that the relevant public is used to applying slogans by media production companies in relation to names of television or radio programmes, it does not necessarily entail that the relevant consumer will be able to distinguish the goods and services of one undertaking to those of others.

5. Lastly, the applicant argues that the fact that previous registrations of trade marks containing the word ‘ENTERTAIN’ for similar goods and services were granted by the Office, only confirms that the slogan at issue is registrable.

As regards the above applicant’s argument, it should be noted that it is established case law and practice that each case is examined on its own merits and that the Office is in no way bound by previous decisions.

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 that regulation, as interpreted by the Community judicature, and not on the basis of a previous practice of the Office (see judgment of 15 September 2005, C‑37/03P, ‘BioID’, paragraph 47 and judgment of 9 October 2002, T‑36/01, ‘glass‑sheet surface’, paragraph 35).

It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another (see judgment of 27 February 2002, T-106/00, ‘STREAMSERVE’, paragraph 67).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) CTMR, the application for Community trade mark No 013434006 is hereby rejected for the following goods and services:

Class 9 Cinematographic films; animated cartoons; film strips; movies; magnetic recordings; optical recordings; magneto-optical recordings; solid-state recordings; electronic books and publications; downloadable electronic games via the Internet and wireless devices; multi-media discs and publications; multi-media recordings and publications; laser-readable discs; video discs and publications; computer software; computer programs; digital recordings; media bearing, or for recording, sound and/or video and/or data and/or information; apparatus for recording and/or reproducing sound and/or video and/or information; floppy disks; sound recordings; pre-recorded disks; recording disks; compact discs; gramophone records; audio tapes; tape cassettes; video tapes; laser discs; compact discs-interactive CD ROMS; digital video discs (DVD); telephones; mobile phones; computer game software for use on mobile and cellular phones; karaoke machines; parts and fittings for all the aforesaid goods; pre-recorded compact discs, DVDs and other electronic and digital media featuring games; multi-media discs and electronic publications (downloadable); multi-media recordings and electronic publications (downloadable); video discs and electronic publications (downloadable).

Class 38 Broadcasting; television broadcasting; radio broadcasting; satellite television broadcasting; cable television broadcasting.

Class 41 Entertainment services; publishing services; entertainment relating to radio and television; entertainment services in the form of television programme, radio, cable, satellite and Internet programmes; production, presentation and rental of television and radio programmes, cinematographic films, shows, cable programmes, satellite programmes, Internet programmes and sound and video recordings; interactive telephone competitions; provision of entertainment by means of radio, television, satellite, cable, telephone, the worldwide web and the Internet; organization of shows; rental of sound recordings and of pre-recorded shows, films, radio and television performances; production of video tapes and video discs; radio entertainment; television entertainment; cinema entertainment; theatre entertainment; game shows; television entertainment services involving telephonic audience participation; interactive entertainment for use with a mobile phone; internet based games; operation of lottery and games of chance; amusement game services; gaming services; gambling services; betting services; casino services; card game and casino tournaments, competitions, contests, games and/or events; lotteries; the provision of any of the aforesaid services to mobile phones, via a mobile network, by communications satellite, by microwave or other electronic, digital and analogue media, live, electronically, via computer network, via the internet, online and through the medium of television; organisation, production and presentation of events for cultural or entertainment purposes; organisation, production, management and presentation of competitions, contests, games, game shows, quizzes, fun days, exhibitions, shows, roadshows, staged events, theatrical performances, concerts, live performances and participation events; organisation, production and provision of video clips via mobile or computer networks for entertainment purposes; provision of games via mobile or computer networks; provision of interactive voice recognition games and competitions; competitions and quizzes provided by telephone and mobile phones; conducting and organising of phone-in competitions; competitions, quizzes and lotteries provided on-line; operation of lottery and games of chance.

The application is accepted for the remaining goods and services.

According to Article 59 CTMR, you have a right to appeal this decision. According to Article 60 CTMR, notice of appeal must be filed in writing with 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.

Anna MAKOWSKA

Annex:

The Office’s notice of grounds for refusal of application for a Community trade mark