Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 14/10/2016

FRKELLY

27 Clyde Road Ballsbridge

Dublin 4

IRLANDA

Application No:	014976906
Your reference:	TM101165EU00/NH
Trade mark:	TRACK MY BET
Mark type:	Word mark
Applicant:	Paddy Power Betfair plc Power Tower, Belfield Office Park, Beech Hill Road, Clonskeagh, Dublin 4, IRLANDA

The Office raised an objection on 26/02/2016 pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 10/06/2016, which may be summarised as follows:

1. The fact that a consumer might understand the applicant’s mark to mean ‘to follow the trail of my sum of money staked on the outcome of a future event’ does not mean that the mark is devoid of any distinctive character. There is no reason why the applicant’s mark which admittedly contains a simple objective message cannot act as an indicator of the origin of the goods and services applied for. It is permissible for a mark to highlight the positive aspects of the goods and services and at the same time indicate the commercial origin of those goods and services.

2. The applicant disagrees that the relevant English-speaking consumers in the Union will immediately and without any further reflection consider the mark to mean ‘to follow the trail of my sum of money staked on the outcome of a future event’. The average consumer will perceive the mark as a brand name relating to the applicant but it could not without further reflection identify the specific goods and services for which registration is sought. The mark requires some analysis to be understood.

3. The examination of the mark cannot be carried out based on the constituent elements of the mark but has to be based on the overall impression. The Office has erred in considering the constituent elements of the mark separately. The Office should consider the results of combining the constituent elements instead of focusing on the constituent element themselves.

4. There is a perceptible difference between the combination ‘TRACK MY BET’ and the terms used in everyday speech to designate the goods/services under objection. The mark applied for comprises a bold statement which although partly promotional in its nature is nonetheless capable of acting as an indicator of the origin of the goods and services applied for.

5. The applicant referred to the similar registered EUTMs.

6. The applicant requires analysis of the specific goods and services in question to ensure that the mark is considered in relation to each product or services in the specification.

Pursuant to Article 75 EUTMR, 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 requested an opportunity to make further submissions in the event that the Office decides to maintain the objection. The Office has already raised all its arguments in the previous communication and the applicant had an opportunity to submit its observations. The Office does not raise any new arguments in this communication and, therefore, the Office does not see any reason for granting additional time to the applicant to submit further observations.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

The marks referred to in Article 7(1)(b) EUTMR 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’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 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’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

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 (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 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) EUTMR 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’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

1. Regards the applicant’s first argument, the Office notes that the mark is devoid of any distinctive character when it does 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’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). And this is the case. The relevant consumers will perceive the mark ‘TRACK THE BET’ merely as promotional information and not as a badge of commercial origin. Therefore the Office maintains its opinion that the mark ‘TRACK MY BET’ is devoid of any distinctive character.

2. Regarding the applicant’s second argument, the Office provided, in its notice of 26/02/2016, dictionary definitions of all words contained in the mark. Then the Office assessed the mark as a whole in relation to the goods and services in question. The Office considers existence of dictionary definitions sufficient to conclude that the relevant consumers would understand the meaning of the mark without additional mental effort. The mark applied for is made up of three common words which are not linked in one unit in a catchy and unusual way, which would give the slogan a degree of originality. The mark applied for is a combination of words which does not, for example, constitute a play on words or introduce elements of conceptual intrigue or surprise or have some particular originality or resonance and which has a clear message. The mark applied for has no other additional element which would endow the mark with distinctiveness.

Furthermore the Office notes that the relevant consumers will not perceive the mark alone but in relation with the goods and services applied for, therefore, they will not have to identify the goods and services because they will perceive the mark together with them.

3. As regards the applicant’s third argument, the Office notes that the trade mark at issue is made up of several words. For the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59).

The Office examined the mark ‘TRACK MY BET’ as a whole and it came to the conclusion that the relevant consumers would perceive the expression ‘TRACK MY BET’ as a promotional laudatory message, the function of which is to merely promote the positive aspect of the goods and services concerned, namely that the goods and services enable to follow the bets of the clients or that they are related products.

4. As regards the applicant’s argument that the same combination is not used in everyday speech to designate the goods/services applied for, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

Furthermore the Office reiterates its response to point 2.

5. As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, according to settled case‑law, ‘decisions concerning registration of a sign as a European Union 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 European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 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’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

6. As regards the applicant’s final argument, where the same ground or grounds for refusal is/are given for a category or group of goods or services, only general reasoning for all of the goods and /or services concerned may be used (judgment of 15/02/2007, C-239/05, The Kitchen Company, EU:C:2007:99, § 38).

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 14 976 906 is hereby rejected for all the goods and services claimed.

Class 9 Gambling, gaming and betting computer software; computer software and computer programs relating to or featuring games, gaming, gambling, betting, card games, games of skill, poker, poker games and casino games; computer application software relating to or featuring games, gaming, gambling, betting, card games, games of skill, poker, poker games and casino games; downloadable electronic publications; downloadable electronic betting slips; electronic bulletin boards; betting terminals; betting terminals with self-service functions; indication panels, data and information transmission installations, monitors.

Class 16 Betting slips; betting forms; printed matter relating to gambling and betting; printed matter relating to sporting and cultural activities; tokens; diaries; calendars; stationery; books; programmes; magazines; periodicals; newspapers; printed matter; scratch cards; vouchers; paper; cardboard; posters; postcards; signboards of paper or cardboard; advertising signs of paper or cardboard; paper flags; paper badges; cardboard badges; paper bunting; paper pennants; paper signs; photographs; office requisites (except furniture); instructional and teaching material (except apparatus); plastics material for packaging included in Class 16.

Class 38 Providing access to multiple user network systems allowing access to gaming and betting information and services over the Internet and other global networks; telecommunications; broadcasting services; Internet broadcasting services.

Class 41 Betting, gambling and gaming services and information services relating thereto; offshore telephone betting services; provision of information relating to sporting events; entertainment; organization and conducting competitions; provision of gaming and betting services transmitted via a global computer network such as the Internet; on-line and telephone gambling, gaming and betting services; betting exchange services; lottery services; provision of horse racing data and information; on-line racing publications (non-downloadable); betting tips, online gaming and spread betting services.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. 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 720 has been paid.

Klara BOUSKOVA