Refusal of application for a European Union trade mark

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

Alicante, 02/11/2016

TAYLOR WESSING LLP

5 New Street Square

London EC4A 3TW

REINO UNIDO

Application No:	015145014
Your reference:	PUZ2.UC2
Trade mark:
Mark type:	Figurative mark
Applicant:	Puzzler Media Group Limited Stonecroft 69 Station Road Redhill, Surrey RH1 1DL REINO UNIDO

The Office raised an objection on 15/03/2016 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR 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 15/07/2016, which may be summarised as follows:

1. The word ‘PUZZLER’ is not a common English word and would not be known to either the average consumer or the professional public.

2. The ordinary English consumer would not know what goods labeled with the word ‘PUZZLER’ are.

3. The mark applied for is not the word ‘PUZZLER’ but a stylised word. The mark is in a particular font and style and contains the distinctive question mark.

4. No evidence has been produced to suggest that members of the English-speaking public currently use or are ever like to use the mark to designate characteristics of the goods and services applied for.

5. The mark is allusive and it needs to be analysed before the consumer can drive a descriptive meaning of the mark.

6. The mark does not give any details about any specific goods or services. It is vague and indeterminate and does not immediately and precisely identify the goods and services or their characteristics.

7. The Office did not provide any proof that the mark is used by third parties and the applicant is not aware of any such use. It indicates that the mark is not a common way of referring to the goods and services claimed.

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 for the following list of goods of services (the list of goods and services of the above trade mark application has been amended because of classification deficiencies):

Class 9 Computer software; electronic software; application software; computer programs; computer games software; video game software; electronic game software; television game software; computer games; electronic game programs; video games; computer programmes for television games; programmes for console games; digital games; electronic games for mobile phones and smartphones; electronic games for televisions and touch sensitive electronic screens; electronic games for PCs, DS and LCD players; computer games provided through a global computer network or supplied by means of multimedia electronic broadcast or through telecommunications or electronic or digital transmission or via the Internet; games and puzzles, all supplied in the form of pre-recorded cartridges, flash cartridges, tapes, cassettes, records, discs, CDs, CDROMs and DVDs, or other electromagnetic, magnetic, digital or optical media; computer discs; interactive digital and electronic games; interactive CDs; video CDs; computer apparatus, peripherals and accessories for use in playing games.

Class 16 Printed publications; printed matter; books; printed publications containing puzzles; crossword puzzles; instructional and teaching materials.

Class 28 Playing cards; card games; travel games; game consoles; arcade games and handheld electronic games for use with television receivers only; electronic games; video games machines for use with televisions; electrical and electronic apparatus, peripherals and accessories for use in playing games.

Class 41 Entertainment services; education services; arranging and conducting competitions, workshops, conferences; demonstrations of puzzles, games and crosswords for educational, cultural or entertainment purposes; production of television programmes, cable television programmes, cine-films and video tapes; on-line entertainment services; digital entertainment services; internet games and puzzles, nondownloadable; provision of computer games to video game machines, mobile phones, televisions and computers; amusement arcade services; game services provided on-line from or via a computer network; providing information to players about the ranking of their game scores including from a website; arranging, organising and conducting digital game tournaments; rental of video, digital and electronic games; publishing services; publication of magazines, books, newspapers, printed matter and texts; publication of electronic books, magazines, newspapers and texts; providing on-line electronic publications (not downloadable); providing online non-downloadable puzzle books; information, consultancy and advisory services relating to the aforesaid.

Class 42 Software as a service; software as a service (SaaS); computer software development; computer software design; computer software consultation; computer software installation; computer software programming; computer software maintenance; computer software updating; rental of computer software; hosting services; building, designing and maintaining of websites and microsites; commissioned writing of computer programmes, software and code for the creation of web pages on the Internet; information, consultancy and advisory services relating to the aforesaid.

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).

Under Article 7(1)(c) EUTMR, ‘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.

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

1. Regarding the applicant’s first argument, the Office notes that it provided, in its notice of 15/03/2016, a dictionary definition of the word ‘PUZZLER’ extracted from Oxford Dictionary. This extract defines it as ‘a difficult question or problem’ or as ‘a person who solves puzzles as a pastime’. The Office considers existence of a dictionary definition in the renowned dictionary sufficient to conclude that the word would be known and understood by the relevant public.

2. As regards the applicant’s second argument, the Office provided, in its notice of 15/03/2016, a dictionary definition of the word ‘PUZZLER’ extracted from Oxford Dictionary. This extract defines it as ‘a difficult question or problem’ or ‘a person who solves puzzles as a pastime’. Furthermore, the Office notes that the relevant consumers will not perceive the mark alone but in relation to the goods and services for which registration is sought. Therefore the Office is of the opinion that the relevant consumers would know when perceiving the mark in relation to e.g. computer games or printed matter that they contain puzzlers (difficult questions or problems to be solved).

3. Regarding the applicant’s third argument, the Office does not contest that the mark applied for is not the plain word ‘PUZZLER’ but the stylised mark . The Office is of the opinion that the font used is a common one. In relation to the stylised question mark the Office notes that the relevant consumers will understand that the word in question is the word ‘PUZZLER’ with no additional mental effort. Stylisation of the letter ‘P’ into a question mark in the word meaning ‘a difficult question or problem’ or ‘a person who solves puzzles as a pastime’ in relation to the goods and services for which registration is sought is not original and unusual enough to endow the mark with distinctive character.

4. Regarding the applicant’s fourth argument, the Office notes that ‘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 service 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).

5. As regards the applicant’s fifth argument, the Office provided, in its notice of 15/03/2016, a dictionary definition of the word ‘PUZZLER’ extracted from Oxford Dictionary. This extract defines it as ‘a difficult question or problem’ or ‘a person who solves puzzles as a pastime’. The Office is of the opinion that the relevant public will read the mark with no effort as the word ‘PUZZLER’. Furthermore, the Office notes that the relevant consumers will not perceive the mark alone but in relation to the goods and services for which registration is sought. The Office considers existence of a dictionary definition sufficient to conclude that the relevant consumers would understand the mark with no additional mental effort. The Office maintains its opinion that the mark immediately informs consumers without further reflection that the goods and services applied for are goods containing puzzler or puzzler itself and services related to solving puzzles.

6. As regards the applicant’s sixth argument, the Office reiterates its response to point 5.

7. Regarding the applicant’s final argument, the Court has confirmed that:

where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods… In such a case, the Board of Appeal is not obliged to give examples of such practical experience.

(15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19).

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 15 145 014 is hereby rejected for the following goods/services (the list of goods and services has been amended based on the applicant’s communication of 14/03/2016 because of classification deficiencies):

Class 9 Computer software; electronic software; application software; computer programs; computer games software; video game software; electronic game software; television game software; computer games; electronic game programs; video games; computer programmes for television games; programmes for console games; digital games; electronic games for mobile phones and smartphones; electronic games for televisions and touch sensitive electronic screens; electronic games for PCs, DS and LCD players; computer games provided through a global computer network or supplied by means of multimedia electronic broadcast or through telecommunications or electronic or digital transmission or via the Internet; games and puzzles, all supplied in the form of pre-recorded cartridges, flash cartridges, tapes, cassettes, records, discs, CDs, CDROMs and DVDs, or other electromagnetic, magnetic, digital or optical media; computer discs; interactive digital and electronic games; interactive CDs; video CDs; computer apparatus, peripherals and accessories for use in playing games.

Class 16 Printed publications; printed matter; books; printed publications containing puzzles; crossword puzzles; instructional and teaching materials.

Class 28 Playing cards; card games; travel games; game consoles; arcade games and handheld electronic games for use with television receivers only; electronic games; video games machines for use with televisions; electrical and electronic apparatus, peripherals and accessories for use in playing games.

Class 41 Entertainment services; education services; arranging and conducting competitions, workshops, conferences; demonstrations of puzzles, games and crosswords for educational, cultural or entertainment purposes; production of television programmes, cable television programmes, cine-films and video tapes; on-line entertainment services; digital entertainment services; internet games and puzzles, nondownloadable; provision of computer games to video game machines, mobile phones, televisions and computers; amusement arcade services; game services provided on-line from or via a computer network; providing information to players about the ranking of their game scores including from a website; arranging, organising and conducting digital game tournaments; rental of video, digital and electronic games; publishing services; publication of magazines, books, newspapers, printed matter and texts; publication of electronic books, magazines, newspapers and texts; providing on-line electronic publications (not downloadable); providing online non-downloadable puzzle books; information, consultancy and advisory services relating to the aforesaid.

Class 42 Software as a service; software as a service (SaaS); computer software development; computer software design; computer software consultation; computer software installation; computer software programming; computer software maintenance; computer software updating; rental of computer software; hosting services; building, designing and maintaining of websites and microsites; commissioned writing of computer programmes, software and code for the creation of web pages on the Internet; information, consultancy and advisory services relating to the aforesaid.

The application may proceed for the remaining goods/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