Refusal of application for a European Union trade mark

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

Alicante, 06/10/2016

FILEMOT TECHNOLOGY LAW LTD

25 Southampton Buildings

London WC2A 1AL

REINO UNIDO

Application No:	015501521
Your reference:	R4749-00072
Trade mark:	IGAMBLE
Mark type:	Figurative mark
Applicant:	REALISTIC GAMES LIMITED 8th Floor North, Reading Bridge House, Reading Bridge, George Street Reading RG1 8LS REINO UNIDO

The Office raised an objection on 13/06/2016 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 08/08/2016, which may be summarised as follows:

1. The mark is not just ‘GAMBLE’ but a complex, coloured figurative mark including the i prefix in a distinctive and unusual lettering. These prominent visual features are not of the commonplace type that can be easily ignored by the average consumer, but will instead have a significant impact.

2. The trade mark should be assessed as a whole. The average consumer will certainly notice the striking blue lettering and it cannot therefore be said that the whole message that the consumer will receive is obvious and direct information.

3. The presence of the big dot over the i is not likely to enhance the information that this is internet related. The average consumer has been conditioned by marks such as iPhone to see a simple I prefixed sign as a trade mark and it is no longer obvious to say I obviously means ‘internet’.

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.

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

Descriptive character

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.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR 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 (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR

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.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

‘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).

According to settled case-law, the descriptive character and distinctiveness of a trade mark can be assessed only by reference first to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign (29/04/2001, joined cases C-468/01 P - C-472/01 P, Tabs, EU:C:2004:259, § 33; 08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 67; 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 34; 14/06/2012, T-293/10, Colour per se, EU:T:2012:302; and of 12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 23).

In the present case, the services for which registration is sought consist of casino, gaming, gambling and entertainment services. These are general consumption services, aimed mainly at average consumers. In view of the nature of the services in question, the awareness of the relevant public will be average to low.

As stated in the notice of grounds for refusal, the trade mark contains the expression ‘iGAMBLE’, which will be understood by the English-speaking consumer as a meaningful expression relating to internet gambling or interactive gambling. In relation with the services applied for, the expression ‘iGAMBLE’ immediately informs consumers without further reflection that the services applied for are provision of risk or chance games via the Internet or via interactive devices.

The sign combines the letter ‘i’ with the word ‘GAMBLE’. ‘GAMBLE’ has the meaning of ‘to play games of chance to win money; a bet, a wager, or other risk or chance taken for possible monetary gain’ (Collins English Dictionary, online version, http://www.collinsdictionary.com/dictionary/english/gamble). As to the use of the letter ‘i’ as a prefix, the Court has held that it will be understood as referring to information technology, telecommunications and, in particular, as an abbreviation of the word ‘internet’ (3.09.2015, T-225/14, IDIRECT24, EU:T:2015:585, § 54; 16.12.2010, T-161/09, iLink, EU:T:2010:532, §§ 30, 31). The Boards of Appeal have also consistently adopted the same approach in a number of decisions (12.07.2012, R 2484/2011-2, IGAME.COM; 20.03.2009, R 1732/2008-2, iCallCentre; 19.05.2004, R 758/2002-2, ITUNES; 18.07.2003, R 682/2002-2, I-CARD; 6.11.2012, R 612/2012-2, iGolf; 14.02.2008, R 660/2007-1, I-player; 26.03.2003, R 931/2001-4, I-VOTE; 19.09.2013, R 2303/2012-1, IHAUS). Considered as a whole, the sign will be readily understood by the relevant English-speaking public as ‘internet gamble’ or ‘interactive gamble’.

‘iGAMBLE’ directly describes the gambles as being provided over the internet or via interactive devices. There is nothing unusual about the combination of the letter ‘i’ and the word ‘GAMBLE’ and nothing in the meaning of this combination that would go beyond the meaning of these elements as explained above. The sign only indicates the kind of the services applied for.

It follows that the link between the words ‘iGAMBLE’ and the goods referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR.

Distinctive character

Under Article 7(1)(b) EUTMR, ‘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) EUTMR 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 (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

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).

The trade mark for which registration is sought consists of a combination of word elements and figurative elements. As terms or signs that are non-distinctive, descriptive or generic may be brought out of the scope of a refusal based on Article 7(1)(b), (c) or (d) EUTMR if combined with other elements that make the sign as a whole distinctive, the Office will assess first whether the word elements are distinctive, and second whether the mark is figurative enough to reach the minimum degree of distinctive character that is required for registration. Such a prior examination of the trade mark’s individual features is not contrary to the following assessment as a whole (09/07/2003, T‑234/01, Orange und Grau, EU:T:2003:202, § 32).

1. Assessment of the word elements

According to the case-law of the European courts, a word mark that is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services for the purposes of Article 7(1)(b) EUTMR (12/06/2007, T-190/05, TWIST & POUR, EU:T:2007:171, § 39).

In a similar vein, even though a given term might not be clearly descriptive with regard to the goods and services concerned, as to the point that an objection under Article 7(1)(c) EUTMR would not apply, it would still be objectionable under Article 7(1)(b) EUTMR on the ground that it will be perceived by the relevant public as only providing information on the nature of the goods and/or services concerned and not as indicating their origin (12/07/2012, T-470/09, Medi, EU:T:2012:369, § 22).

In the present case, the expression ‘iGAMBLE’ merely conveys a clear and obvious message to the relevant consumer, namely that the services are provision of risk or chance games via the Internet or via interactive devices.

There is nothing about the expression ‘iGAMBLE’ that might, beyond its obvious descriptive meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods in question.

2. Assessment of the figurative elements

The presence of figurative elements may give distinctive character to a sign consisting of a descriptive and/or non-distinctive word element so as to render it eligible for registration as an EUTM. Therefore, the question to be considered is whether the stylisation and/or the graphical features of a sign are sufficiently distinctive for the sign to act as a badge of origin.

According to the applicant, the trade mark contains distinctive features: it would be a complex, coloured figurative mark including the prefix ‘i’ in a distinctive and unusual lettering. These would be ‘prominent visual features’ that are not of the commonplace type that can easily be ignored by the relevant consumer, but will have ‘a significant impact’. Because of the ‘striking blue lettering’, the relevant consumer would not perceive the whole message as obvious and direct information. The big dot over the ‘i’ would not be likely to enhance the information that it is Internet-related.

The Office does not agree that these elements render the mark as a whole distinctive.

When the word elements in a trade mark are descriptive or lack distinctive character, it should be established whether the figurative elements:

• are striking and/or surprising and/or experienced as unexpected and/or arbitrary;

• allow to make an instant and lasting impression on the consumer by distracting the consumer’s attention from the descriptive and/or non-distinctive message of the word elements;

• require a mental effort from the relevant public in order to understand the meaning of the word elements.

In the present case, the figurative elements consist of the expression ‘iGAMBLE’ in a stylised font in a blue lettering with a white and black border and a large dot on the letter ‘i’.

In this regard, it should be pointed out that in general, descriptive or non-distinctive word elements appearing in a basic or standard typeface, lettering or handwritten style typefaces — with or without font effects (bold, italics) — are not registrable.

Where standard typefaces incorporate elements of graphic design as part of the lettering, those elements need to have sufficient impact on the mark as a whole to render it distinctive. When these elements are sufficient to distract the attention of the consumer from the descriptive meaning of the word element or are likely to create a lasting impression of the mark, the mark is registrable.

Fonts that are easy to read normally do not render a sign distinctive. In order for a font to endow distinctive character upon a trade mark, the stylisation of the font should be such that it requires a mental effort from the consumer in order to understand the meaning of the word elements in relation to the goods and services applied for.

In the present case, it should be held that the trade mark - - is easy to read and that the font does not distract the attention of the consumer from the clear message conveyed by the word elements. Whereas it can not be denied that the font is stylised, its stylisation is of a kind that is commonly used for online or interactive games, see for example:

From: http://www.clubwomen.org/wp-content/uploads/2013/02/gambling-casino-games.jpg

From: http://winning21official.blogspot.com.es/2016/03/12win-casino-live-malaysia-with-sexy.html

From: https://allmicrogamingslotsonline.com/our-casino.html

From: http://pokersite.minnim.org/quick-hits-slots-online.html

From: https://winning2121.wordpress.com/2016/07/27/3win8-online-slot-game3win8-safari-heat-slot3win8-ios-slot-game3win8-online-gambling-slot-malaysia/

From: http://winning21official.blogspot.com.es/2016/04/lucky-palace-and-crown-slot-games.html

From: http://www.spinpalace.org/

As is clear from these examples, the use of stylised fonts is very common in relation with online and interactive games. The font of the trade mark in question is not sufficiently stylised to the extent that it will take the attention of the relevant consumer – who is playing online and interactive games – away from the descriptive meaning of the mark or would require any mental effort in order to understand the mark’s meaning.

The fact that the font is designed in a blue lettering with a white and black delineation does not alter this fact, as the mere addition of a single colour to a descriptive/non-distinctive word element, either to the letters themselves or as a background, is not sufficient to give a mark distinctive character. Use of colours is common in trade and would not be seen as a badge of origin.

Therefore, the figurative elements do not add anything to the whole that could be perceived as striking, surprising or unexpected, that could leave an instant and lasting impression on the consumer, that could distract the consumer’s attention from the clear meaning, or would require any mental effort from the relevant public in order to understand the meaning of the word elements.

3. Assessment of the trade mark as a whole

When assessing the distinctive character of a trade mark consisting of a combination of elements, the mark needs to be considered as a whole. However, that does not preclude prior examination of the trade mark’s individual features (09/07/2003, T‑234/01, Orange und Grau, EU:T:2003:202, § 32).

In general, the combination of figurative elements and word elements, which if considered individually are devoid of distinctive character, does not give rise to a distinctive mark.

Nevertheless, a combination of such elements when considered as a whole could be perceived as a badge of origin due to the presentation and composition of the sign. This will be the case when the combination results in an overall impression that is sufficiently far removed from the descriptive/non-distinctive message conveyed by the word element.

In the present case, however, the combination of the figurative and the word elements does not create an overall impression that is sufficiently far removed from the obvious and clear message conveyed by the word element ‘iGAMBLE’.

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 15 501 521 is hereby rejected for all the services claimed.

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.

Kaat SCHEERLINCK