Refusal of application for a European Union trade mark

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

Alicante, 21/06/2017

ELZABURU, S.L.P.

Miguel Angel, 21

E-28010 Madrid

ESPAÑA

Application No:	015988322
Your reference:	CE-20160576
Trade mark:	EPIC GAMES
Mark type:	Figurative mark
Applicant:	Epic Games, Inc. 620 Crossroads Boulevard Cary, North Carolina 27518 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 22/12/2016 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.

On 21/02/2017, the applicant requested and was granted a two-month extension of time limit to submit observations in reply.

The applicant submitted its observations on 27/04/2017, which may be summarised as follows:

1. The wording “EPIC GAMES” neither lacks distinctiveness nor is merely descriptive.

The term “Epic” has several meanings, all of which are understood by the relevant public and in the trade. The mark recalls both the “Greek epic” historical roots of the word “Epic” and juxtaposes it with the word’s more recent informal meaning, i.e., something that is “particularly impressive or remarkable” (See Exhibit A, definitions of “Epic.”). Thus, the mark suggests a clever integration of the various different meanings of “Epic”. As such, it conveys no single descriptive meaning but, rather, alludes to many different things to the relevant public, and is, therefore, perceived as a distinctive indicator of source. The applicant refers to the judgment of 04/10/2001, C-517/99, ‘BRAVO’, EU:C:2001:510, in which the word ‘BRAVO’ is not considered descriptive, as it is unclear who says ‘BRAVO’ to whom, and what is being praised.

2. The sector of trade of the goods and services claimed in the Application and the target consumers for those goods and services must be taken into account.

The application seeks protection for goods and services directly related to the sector of video games and computer games, among other goods and services. The target consumers for this type of goods and services are accustomed to seeing the use as trademarks of terms or expressions which have their own meaning and which may be evocative of the characteristics or content of the games but which are not merely descriptive of the games or simple laudatory messages. In this sense, the applicant refers to the following decisions: 17/09/1999, R 31/1999-3 Interview; 26/03/1999, R 187/1998-2 Safejaw; 26/02/1999, R 71/1998-3 Porfolio; 31/05/1999, R 207/1998-1 Toptool, and also 16/07/1998, C-210/96, Gut Springenheide, EU:C:1998:369, § 31.

3. The mark applied for does not consist merely of the “EPIC GAMES” wording. The mark includes a black pentagonal design with rounded edges, inside of which is displayed a small white upside-down triangle. The words “EPIC” and “GAMES” are stacked above the triangle, with the word “EPIC” presented in a different and considerably larger font than the word “GAMES”, thus emphasizing this portion of the mark’s literal element. The overall impression created by the figurative elements of the mark, when combined together, provide a sleek, modern look that is more complex than that of a simple, non-distinctive, geometric shape. And it neither reproduces nor alludes to any of the goods/services claimed. Hence it is distinctive.

4. The Office’s position contravenes its other decisions regarding the applicant’s EPIC marks. EPIC has filed two EUTM applications for protecting its logo in two different versions, one in black & white, the other in color. The Office has not objected to the color version. This is demonstrated by EUTM filing 15972508, which was granted on 18 April 2017 for the identical goods and services as claimed in the application.

Further, the dominant portion of the lexical part of applicant’s mark, “EPIC”, has already been recognized by the EUIPO as sufficiently distinctive as a word mark. On 8 April 2002, EPIC filed EUTM (CTM) application 2647154 EPIC for goods in class 9 and services in class 42. The Office did not raise any objection to this EPIC (word) trademark, which was published on 17 February 2003.

In addition, the EUIPO found that “EPIC” could be registered as a trademark for video games in the EUTM (CTM) 10133891 for EPIC PINBALL, filed on 19 July 2011 and granted 30 November 2011.

The departure from the decision to register the other three marks is an outlier, and that the implicit logic of the three earlier decisions should be followed here as well.

5. The applicant claims that the mark has acquired distinctiveness.

The applicant recently collected and submitted to the Office a vast quantity of evidence of the use of the mark when it filed defensive briefs in the EUTM 13372628 EPIC GAMES (word). The applicant refers to that evidence here, along with additional evidence collected and filed within the appeal proceedings R1935/2016-2. Therefore, the applicant gives the following information and material in support of the claim):

• The applicant’s company was established in 1991.

• The company is responsible for the best-selling “Unreal” series of games, the billion-dollar blockbuster “Gears of War” franchise and the ground-breaking “Infinity Blade” line of mobile games.

• Epic Game’s award-winning “Unreal Engine technology” has won dozens of awards and is available for licensing.

• Epic Games is continually recruiting top talent for its studios located in North Carolina, Washington, Utah, Poland, Korea and Japan.

• In August 2014 Epic Games UK was formed, setting up long-time collaborator and trusted partner Pitbull Studio as a fully integrated team driving Unreal Engine 4 in the region.

• Epic Games UK is expanding its presence in Guildford, with offices in Newcastle and Royal Leamington Spa as well.

• Attachment 1: Company review information published by GCI (Global Company Intelligence).

• Attachment 2: Press release of 28/02/2011 about a licensing agreement reached between Epic Games and Gameloft.

• Attachment 3: Announcement regarding the setting up a base of operations by Epic Games within the EU market.

• Attachment 4: A list of top 50 video game makers by IGN Entertainment Inc.

• Attachment 5: Detailed report with information about Epic Games on CBS Interactive, Inc. website.

• Attachment 6: Interview made in 2015 with Mr. Mark Rein, a co-founder of Epic Games.

• Attachment 7: Press release from March 2015 announcing that Epic Games opened “Unreal Engine 4” to the public.

• Attachment 8: A list of the best Epic Games for the years 1994-2010 published on the website www.ranker.com.

• Attachment 9: Information about the history of Epic Games published on www.gearsofwar.wiki.com .

• Attachment 10: A list of the games provided by Epic Games on the website www.g4tv.com.

• Attachment 11: Information and news regarding various Epic Games activities and games published on www.gamerant.com .

• Attachment 12: Reference to the applicant’s website www.epicgames.com .

• Attachment 13: US registration certificate.

• Affidavit of John T. Farnsworth, Vice president Director of Operations of Epic Games, Inc. Mr. Farnsworth says the following:

The applicant company was established in the United States in 1991, and is a leading developer of computer games and game engine technology. The company has been active in Europe since 1991 and for over two decades the applicant has used “EPIC GAMES” as its corporate name and as its primary trade mark and service mark. The applicant has continuously used the mark in the US, Europe and throughout most of the world on and in connection with among others its computer games, game engines, sponsored events; promotional material.

The applicant is well-known in most of the world for its Unreal series of games (7 million copies sold), it’s Gears of War franchise (more than 22 million copies sold of which 7 million were sold in Europe), and its Infinity Blade line of mobile games (more than 11 million copies sold).

The applicant has received at least 100 awards for its games, including numerous “best game” honors. Addendum A contains a list of these awards.

The applicant has created and licenses its Unreal Engine (“UE”), widely recognized as world-leading computer game engine technology. The UE and its versions have powered many of the most successful games of all time. Addendum B is a Wikipedia list of third party games built on UE.

The UE is widely used by government, industry, and others to create “serious games” for simulation, visualization and training in many fields. Addendum C contains additional information about UE’s use in serious games.

Many of the most sophisticated and respected technology companies in the world license UE (Addendum D), as do individual developers and companies, many in the European Union. European sales of games built on the UE have generated over $4.2 billion.

The applicant partners with 132 universities and vocational schools (52 in Europe) to train the next generation of programmers by making UE available for free. Addendum E contains a complete list of these institutions, and Addendum F contains a list of the European institutions.

The applicant has actively participated in international game industry conferences, including the Game Developers Conference Europe, held in Cologne, Germany (Addendum G), and has since 2004 initiated and sponsored educational programs and challenges in Europe. Examples are given in Addendums H – L.

The applicant has for many years maintained websites at www.epicgames.com and www.unrealengine.com, and actively communicates with its fan and developer bases on Facebook, Twitter, LinkedIn and YouTube.

• The applicant also provides 12 statements by professionals within the relevant industries.

• CD-ROM 1: Containing sales data and revenue figures, divided into 4 folders:

1. Revenue by region: The content summarizes revenue by EU country comprising data from the period between 2009 and 2015 [Excel file ‘Revenue by Region Summary 2009-2015’], apart from detailed information ‘focused to current from 2016’ (sic.) [Excel file ‘Revenue Analysis by Geography 2016’]. This latter information is intended to show the consistent presence and commercial success of ‘EPIC GAMES’ within the European Union jurisdiction for English-speaking countries among other relevant territories within this jurisdiction. There is a specific chart with information regarding only royalties and licensing related to ‘EPIC GAMES’ ,’Unreal’ series of games from 1999 to 2007, that includes several countries including EU countries with detailed data for Great Britain [Excel file ‘Unreal Royalties-broken down by country’];

(2) Gears of War: In this folder the applicant provides specific information about sales figures of games produced under the ‘EPIC GAMES’ mark under the title ‘Gears of War’ : [Excel file ‘Gears revenue data for Epic’ and three PDF files ‘Forecast by Region’, ‘Gears Of War 3 Pre Orders, ‘GoW2 Pre Orders’];

(3) Infinity Blade: Sales for the entire ’Infinity Blade’ series of games are summarized for 2010 - 2016 and overall sales for the series in Europe are also included [Excel files ‘IB sales 2014-2016’ and ‘Infinity Blade European Sales by IB Product’] with two additional printouts [png archives named European Sales by ‘IB game’ and ‘Overall Sales’ for all IB products by region]. For greater clarity the applicant provides a breakdown of detailed sales information for each EU jurisdiction for the years 2010 to 2016;

(4) Unreal Marketplace: Containing two Excel files named ‘Marketplace Buyers by Country’ and ‘Marketplace Sellers by Country’. The ‘Marketplace Buyers’ file summarizes (i) total sales of content on ‘EPIC GAMES’ Unreal Engine digital marketplace by country of the purchaser from 2014 to 2016 and (ii) the total royalties received by EPIC GAMES from such sales. These figures account for returns/refunds. The ‘Marketplace Sellers’ file summarizes sales on ‘EPIC GAMES’ Unreal Engine digital marketplace, by country of seller. Again Great Britain is the first market within the whole of the EU countries.

Certain information provided regarding sales data and revenue figures specific to each country within the EU included in the CD-Rom could be also confirmed through the following summary of sales figures for some of ‘EPIC GAMES’ products available at an independent source: http://www.vgchartz.com/. The applicant copied the content and information from this independent source which summarizes sales figures of certain ‘EPIC GAMES’ games in the USA and Europe.

• CD-ROM 2: Containing marketing materials and other evidence of consistent use of the trade mark ‘EPIC GAMES’, including seven folders:

The Applicant submitted extensive evidence of its continuous and consistent marketing and other commercial use of Applicant’s Mark between 1999 and 2016.

Applicant’s Mark, with or without its logo, is always depicted or referred to in these marketing materials and game covers as a distinctive sign, i.e., as a trademark (or house mark) that clearly transmits a commercial source, and never as a descriptive indication of the goods marketed under various titles of games produced and sold by EPIC for almost two decades.

(1) 00 products: Including several individual files referring to different games produced and marketed under the sign applied for. Each file is named with an indication of the year and title of each game. The applicant provides a summary and additional information about the files and their content. This data was compiled from 1999 until the year 2016, which is an objective sign of the continuous and consistent commercial presence of the sign in question. ‘EPIC GAMES’ with or without logo is always depicted or referred to in these marketing materials and game covers as a distinctive sign, i.e. as a trademark (or house mark) that clearly transmits a commercial source and never as a descriptive indication of the goods marketed under various titles of games produced and sold by ‘EPIC GAMES’ for almost two decades;

(2) 01 UK: Containing a compilation of marketing and advertising material in connection with the sign ‘EPIC GAMES’ specifically in Great Britain, considered to be very relevant for surmounting the objection raised;

(3) 02 Germany: Containing marketing material in Germany;

(4) 03 Nordics: Containing marketing material in Nordic countries;

(5) 04 Poland: Containing marketing material in Poland;

(6) 05 France: Containing marketing material in France;

(7) 06 Spain: Containing marketing material in Spain.

• CD-ROM 3: Containing evidence of statements regarding the trade mark and house mark ‘EPIC GAMES’ including a compilation of more than 40 references from independent sources such as chambers of commerce and other trade/professional associations which have been organized by identification of the source (column A), including links to the corresponding websites (column C) highlighting and reproducing the content of constant reference to ‘EPIC GAMES’ as a commercial sign.

• CD-ROM 4: Containing evidence of market share.

The data has been compiled in a very exhaustive manner for greater clarity as can be checked in the main four folders contained:

1. 01 Paragon;

2. 02 Epic Accounts;

3. 03 UT Monthly Active Users;

4. 04 Unreal Engine.

CD-Rom #4 also contains an independent news article from TNW Deals entitled “This engine is dominating the gaming industry right now” suggesting that EPIC’s Unreal Engine was the second most popular platform of its kind in the UK as of 2014, occupying 12-17% of the market

• CD-ROM 5: Containing information on figures spent to promote the trade mark ‘EPIC Games’.

The compiled data consists of five Excel archives and two PDF archives of marketing and promotional material and detailed information about advertising made through the Internet, as well as information regarding countries outside the EU. The applicant provides a summary of the evidence provided in the following files:

1. Excel file ‘Marketing by location 2010-2016’;

2. Excel file ‘ Google AdWords campaign’;

3. Excel file ‘Facebook Campaigns’;

4. Excel file ‘Unreal Dev Grand Tracking Sheet’;

5. PDF file ‘GoW marketing spend Europe’;

6. PDF file ‘ GoW Marketing spend Spain’;

7. Excel file ‘Marketing by location 2010-2016’;

8. Excel file ‘Paragon_European reporting’;

9. Excel file ‘UnrealDev Grant Tracking Sheet’.

CD-Rom #5 also contains detailed information regarding EPIC’s Internet marketing campaigns through Facebook and Google AdWords. This data also includes information regarding countries outside of the EU because of the globalized nature of the 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.

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).

The applicant argues that the lexical element of the mark, “EPIC”, conveys no single descriptive meaning but, rather, alludes to many different things to the relevant public, and is, therefore, perceived as a distinctive indicator of source.

This argument is not relevant or decisive. According to settled case-law, a sign must be refused registration under Article 7(1)(c) EUTMR when it is capable of being used as a descriptive indication and when at least one of its possible meanings designates a characteristic of the goods or services concerned (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added).

As explained in the notification, the compound term ‘EPIC GAMES’ will be understood by relevant consumers as a meaningful expression, namely ‘complicated and difficult computer games in which heroic deeds are performed, that last a long time and feature a lot of action’. The applicant has not denied the existence of this definition presented by the Office. The two words ‘EPIC’ and ‘GAMES’ are combined in a manner that is comprehensible in English and the information it contains will be instantly apparent for at least the English-speaking public. Therefore, the reference made by the applicant to the judgment of 04/10/2001, C-517/99, ‘BRAVO’, EU:C:2001:510 has no relevance with the case at hand.

The applicant’s argument that the expression ‘EPIC GAMES’, rather than being directly descriptive, is, at most, evocative (suggestive or allusive) of the characteristics some of the goods and services for which protection is sought, cannot be followed. The Office fails to see how the contested sign, as a whole, could create in the relevant consumers’ (both the average consumer and a specialised public) minds an overall impression that is sufficiently far removed from that produced by the mere combination of the descriptive meanings lent by the words ‘EPIC’ and ‘GAMES’. The combination of two generic terms forming ‘EPIC GAMES’ does not possess any additional characteristic so as not to be exclusively descriptive of (the essential characteristics of) the goods and services mentioned above (19/09/2002, C-104/00 P, Companyline, EU:C:2002:506, § 22-24).

Merely bringing those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 39 and 43). The compound expression ‘EPIC GAMES’ is readily and immediately understandable and conveys obvious and direct information about the kind, nature and intended purpose of the goods and services in question.

In contrast to the applicant’s assertion, the well-informed and observant relevant consumer will therefore immediately perceive the sign as a designation of the essential characteristics of the contested goods and services. The sign, when applied to the abovementioned goods and services in Classes 9, 28, 41 and 42 will be seen by English-speaking consumers as a meaningful, descriptive indication of the characteristics of the goods and services in question.

As to the applicant’s argument that in the specific sector concerned, the use in trade marks of allusive references in English to goods and services is rather common and that consumers nevertheless clearly recognise them as commercial brands, the Office notes, first, while this claim is by no means evidenced by the applicant, second, the decisive factor in the case at hand is that the concept carried by the expression ‘EPIC GAMES’ is straightforward and makes perfect sense to the relevant public.

The mark applied for conveys relevant, clear and unambiguous information, immediately apparent to the English-speaking public. Consequently, from the perspective of the relevant public there will be a direct association between the sign and the claimed goods and services. It follows that there is a sufficient and specific relationship between the sign ‘EPIC GAMES’ and the contested goods and services for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) and 7(2) EUTMR (see in analogy the decision 14/03/2016, R 971/2015-2, EPIC GAMES, § 49-54).

The applicant argues that the overall impression created by the figurative elements of the mark, when combined together, provide a sleek, modern look that is more complex than that of a simple, non-distinctive, geometric shape.

The Office disagrees with the applicant’s conclusion. In the present case, the figurative elements do not endow the sign –

– with the necessary distinctive character. The mark consists of a black pentagonal design with rounded edges and inside of this design there are words ‘EPIC’ and ‘GAMES’, written in standard white font, stacked above a small white upside-down triangle. These figurative elements are ordinary, common and not capable of being remembered by the relevant consumer in relation to the specific goods and services. As a whole, because the mark contains a descriptive verbal element and no unusual distinctive figurative elements, the sign would not serve as a trade mark.

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).

Furthermore, ‘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).

As regards the US registration referred to by the applicant, according the case-law:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

The Office also notes that a disclaimer was included for the word ‘GAMES’ regarding the above mentioned US registration.

As already established by the case-law, a word mark which 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 in relation to those goods or services within the meaning of Article 7(1)(b) EUTMR. Because the figurative mark ‘EPIC GAMES’ is clearly descriptive of characteristics of the goods and services, it is therefore also devoid of any distinctive character in relation to those goods and services.

Acquired distinctiveness

Under Article 7(3) [EUTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [EUTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader…

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages…

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation…

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied…

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect…

(10/11/2004, T‑396/02, Karamelbonbon, EU:T:2004:329, § 55-59; 04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/2006, C‑25/05 P, Bonbonverpackung, EU:C:2006:422, § 75; and 18/06/2002, C‑299/99, Remington, EU:C:2002:377, § 63).

As the mark is in English, the relevant consumers are the average and professional consumers in the native English-speaking Member States, namely the United Kingdom, Ireland and Malta, and in the Member States where English is well understood, namely Cyprus, Denmark, Finland, the Netherlands and Sweden (09/12/2010, T-307/09, Naturally active, EU:T:2010:509, § 26 and 27 and 22/05/2012, T-60/11, Suisse Premium, EU:T:2012:252, § 50).

The goods and services under objection are:

Class 9 Downloadable computer game software for multi-media smart phones; Downloadable computer game software for network communications apparatuses; Downloadable computer game software for portable media players; Downloadable computer game software for wireless mobile devices; Electronic game software for wireless devices; Portable media players; Computer game software for personal computers, home video game consoles, and arcade-based video game consoles; Video game software; computer games; memory devices for computer game equipment; computer game programmes and computer game software; Computer programmes and computer software for interactive games; electronic game cartridges, discs and cassettes; computer game and video game cartridges, discs and cassettes; cards, discs and memory carriers, all pre-recorded with electronic, computer and video games; sound, video and data recordings; magnetic data media; compact discs, video discs, DVD's, CD ROMs; downloadable electronic publications; parts and fittings for all the aforesaid goods.

Class 28 Computer and video games apparatus.

Class 41 Game services provided on-line from a computer network; Organization of computer game competitions; Arranging and conducting live, interactive gaming tournaments featuring video games; Live events, including fan gatherings and conferences, and organized video game competitions such as e-sports; Entertainment services; electronic, computer and video games services; arranging, conducting and presenting competitions, contests and games; providing interactive multiplayer games services for games played over computer networks and global communications networks; providing computer games and video games which can be accessed, played and downloaded over computer networks and global communications networks; provision, production, development, composition, presentation, distribution, syndication and networking of entertainment, films, audio and video recordings, compact discs, CD ROMs, DVDs and programs; publication of games; providing electronic publications; provision of information relating to all the aforesaid services.

Class 42 Computer development and design services for computer game software; Software as a service (SaaS) services featuring software for computer games; Software as a service (SaaS) services, namely, hosting software for use by others for use in computer gaming; Computer programming; Updating of computer software; Rental of computer software; Maintenance of computer software; Graphic arts design; Computer services; writing, designing, developing, production of computer software, computer programmes and computer games; providing information and advice in relation to the aforesaid services.

When assessing in a particular case whether distinctive character has been acquired through use, account must be taken of factors such as, inter alia, the market share held by the mark, the intensity, geographical scope and duration of the use of the mark and the amount invested by the undertaking in promoting the mark. Proof that distinctive character has been acquired may, in particular, be found in statements made by chambers of commerce and industry or other trade and professional associations or in the results of surveys (see judgment of 10/11/2004, T-396/02, ‘Shape of sweet’, EU:T:2004:329, § 56-59). With these criteria in mind, it is obvious that the submitted evidence of use fails to show that the mark has acquired distinctiveness.

Since the applicant refers partly to the same evidence that has been already reviewed by the Office and the Boards of Appeal, it is sufficient to refer to the conclusions made previously.

As regards the attachments 1-11, it is sufficient to repeat the following:

“77. Most of the evidence refers to the company Epic Games, Inc. rather than to the mark ‘EPIC GAMES’ (e.g. attachments 1 – 7, 9 and 11). These documents elaborate on the history and the activities of the company, and confirm, inter alia, that the applicant is a video game developer and is involved in the goods and services for which the mark is applied for. Even if the reference to the company were to be considered as use of the mark applied for (which is more likely to be the case for the services concerned than for the goods), it does not follow from this evidence that a sufficient portion of consumers perceive the sign ‘EPIC GAMES’ as an indication of origin.

78. Attachments 8 and 10, containing a list of video games created by the applicant, merely seem to confirm the descriptive nature of the mark applied for, since from the images and game names shown in the documents it can be derived that they concern computer games that feature a lot of action or in which heroic deeds are performed.

(14/03/2016, R 971/2015-2, EPIC GAMES).

As regards the attachment 12 (reference to the applicant’s website), the Office has no information whatsoever as to what part of the relevant public in the Member States concerned was exposed to the website (see, 20/01/2015, R 1752/2014-4, SOCIAL.COM, § 19).

As regards the attachment 13 (a copy of US registration No 2 527 709 ‘EPIC GAMES’ registered by the applicant), it is sufficient to state that this evidence cannot constitute any proof that the above mentioned relevant public perceives the sign applied for as a mark that indicates the commercial origin of the goods and services (see also the reasoning in 14/03/2016, R 971/2015-2, EPIC GAMES, § 81-84).

As regards the Affidavit of John T. Farnsworth, Vice president Director of Operations of Epic Games, Inc., the Addendums A-L, the 12 statements by professionals within the relevant industries and the CD-ROMs 1-5, the Office states the following.

It is evident that the applicant’s games, Unreal, Gears of War and Infinity Blade have been very successful and have been big sellers throughout the world judging from the figures and other evidence given (Affidavit, Addendum A and CD-ROMs 1 and 4). Also the applicant’s Unreal Engine has gained considerable popularity (Addendums B-D, CD-ROM 4). Although, from the games, only the Infinity Blade seems to have had sales in all the relevant Member States according to the sales figures in CD-ROM 1.

The submitted marketing material (CD-ROM 2) shows that:

The first Unreal games (1999-2005) have had the following figurative mark on their marketing material:

The games Gears of War (2006), Unreal Tournament 3 (2007), Gears of War 2 (2008), Shadow Complex (2009), Gears of War 3 (2011), Gears of War Judgement (2013) have had the following figurative mark on their marketing material:

The game Bulletstorm (2011) has had the following figurative mark on their marketing material:

The games Infinity Blade 3 (2013) and Unreal Tournament (2014) have had the following figurative mark on their marketing material:

The games Infinity Blade (2010), Infinity Blade 2 (2011) and Paragon (2016) have had the following figurative mark on their marketing material:

.

It can be concluded that various forms of the figurative mark ‘EPIC GAMES’ appear on the marketing material. Only in few cases it is depicted in the identical form as the mark applied for. However, in accordance with Article 15(1)(a) EUTMR, minor amendments to the sign that do not alter its distinctive character may be allowed (decisions of 15/01/2010, R 735/2009-2, PLAYNOW; and 09/02/2010, R 1291/2009-2, EUROFLORIST). At least the first sign depicted above seems to have more than just minor amendments.

As far as can be discerned form the submitted marketing material (mainly CD-ROM 2), the different games are sold mainly under the signs Unreal, Gears of War, Shadow Complex, Infinity Blade, Bulletstorm and Paragon. Also the Unreal Engine is sold/distributed mainly under the Unreal Engine sign.

It must be also noted that the size of the various ‘EPIC GAMES’ signs is rather small on the marketing material compared to the other signs.

It is possible to prove acquired distinctiveness of a sign that has been used together with other trade marks (judgment of 28/10/2009, T-137/08, Green/Yellow, EU:T:2009:417, § 27), provided that the relevant consumer attributes to the sign in question the function of identification (judgments of 07/07/2005, C-353/03, Have a break, EU:C:2005:432; 30/09/2009, T-75/08, ! (fig.), EU:T:2009:374, § 43; and 28/10/2009, T-137/08, Green/Yellow, EU:T:2009:417, § 46).

The Court further ruled that although the trade mark for which registration is sought may have been used as part of a registered trade mark or in conjunction with such a mark, the fact remains that, for the purposes of the registration of the mark itself, the trade mark applicant must prove that mark alone, as opposed to any other trade mark which may also be present, identifies the particular undertaking from which the goods originate (judgment of 16/09/2015, C-215/14, Kit Kat four finger chocolate-coated wafer, ECLI:EU:C:2015:604, § 66). See also in this respect, judgments of 24/02/2016 in T-411/14, Shape of a bottle (3D), EU:T:2016:94, § 76; 16/03/2016 in T-363/15, Laatikon Muoto (3D), §51.

Moreover, the Court has held on numerous occasions that advertising material on which a sign that is devoid of any distinctive character always appears with other marks which, by contrast, do have such distinctive character does not constitute proof that the public perceives the sign applied for as a mark that indicates the commercial origin of the goods. For instance, the Court considered that the use of the sign ‘Gifflar’ (which indicates a kind of bread in Swedish) on the packaging of pastries, together with the trade mark Pågen, was made in a descriptive context, not as a badge of origin (judgment of 09/07/2014, T-520/12, Gifflar, EU:T:2014:620, § 44-45).

Even if the applicant’s games and the Unreal Engine have been popular, the Office is of the opinion that the submitted marketing material does not clearly prove that the applied figurative mark ‘EPIC GAMES’ alone, as opposed to the other signs which have also been present in the marketing material, identifies the particular undertaking from which the goods and services originate.

The applicant shows that its company has received a great number of awards, partnered with many universities and vocational schools, sponsored educational programs and challenges, and participated in game industry conferences (Addendums E-L). All these relate to the applicant’s company and its participation in events, and/or to Unreal Engine, and not to the trade mark applied for. Furthermore, none of these pieces of evidence says anything about the relevant consumers’ perception of the figurative mark “EPIC GAMES” in relation to the goods and services concerned.

As regards the 12 statements provided, they are almost identically worded and assure that “the phrase EPIC GAMES is associated exclusively with the company Epic Games, Inc. and the EPIC GAMES brand immediately identifies Epic’s games, game engines and related goods and services”. There are several statements from the UK, but none in relation to, at least, the native English-speaking member states Ireland and Malta or in relation to the Member States where English is well understood, namely Cyprus, Denmark, Finland, the Netherlands and Sweden. Furthermore, the statements refer to the EUTMA 13372628 (word mark ‘EPIC GAMES’) and not to the figurative mark ‘Epic Games’. Therefore, not much can be concluded from these statements.

The applicant has also provided a compilation of more than 40 references to applicant from independent sources (CD-ROM 3). However, these articles seem to relate to applicant’s company or Unreal Engine, and not to the trade mark applied for. None of the statements says anything about the relevant consumers’ perception of the figurative mark “EPIC GAMES” in relation to the goods and services concerned.

Furthermore, the material regarding the money spent in promotion (CD-ROM 5) shows that the applicant has spent considerable amount of money promoting its products. However, the evidence does not clearly show whether the sign applied for has actually been used in this promotion.

All in all, it is clear that the applicant’s games and the Unreal Engine have been very successful and have been big sellers throughout the world judging from the figures given. However, the evidence provided, when taken as a whole, does not lead to the conclusion that the relevant public recognised the figurative mark ‘EPIC GAMES’ as a designation of origin for the goods and services claimed before its application date. The evidence does show that the words ‘EPIC GAMES’, and in some cases also the figurative mark applied for –

- have been mentioned in this context and that part of the public had been exposed to it, but it does not constitute sufficient proof that the relevant public perceived the sign as an indication of origin.

Generally, there is a lack of evidence that focuses on the perception of the relevant public, such as a market survey.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) and 7 (3) EUTMR, the application for European Union trade mark No 15 988 322 is hereby rejected for the following goods and services:

Class 9 Downloadable computer game software for multi-media smart phones; Downloadable computer game software for network communications apparatuses; Downloadable computer game software for portable media players; Downloadable computer game software for wireless mobile devices; Electronic game software for wireless devices; Portable media players; Computer game software for personal computers, home video game consoles, and arcade-based video game consoles; Video game software; computer games; memory devices for computer game equipment; computer game programmes and computer game software; Computer programmes and computer software for interactive games; electronic game cartridges, discs and cassettes; computer game and video game cartridges, discs and cassettes; cards, discs and memory carriers, all pre-recorded with electronic, computer and video games; sound, video and data recordings; magnetic data media; compact discs, video discs, DVD's, CD ROMs; downloadable electronic publications; parts and fittings for all the aforesaid goods.

Class 28 Computer and video games apparatus.

Class 41 Game services provided on-line from a computer network; Organization of computer game competitions; Arranging and conducting live, interactive gaming tournaments featuring video games; Live events, including fan gatherings and conferences, and organized video game competitions such as e-sports; Entertainment services; electronic, computer and video games services; arranging, conducting and presenting competitions, contests and games; providing interactive multiplayer games services for games played over computer networks and global communications networks; providing computer games and video games which can be accessed, played and downloaded over computer networks and global communications networks; provision, production, development, composition, presentation, distribution, syndication and networking of entertainment, films, audio and video recordings, compact discs, CD ROMs, DVDs and programs; publication of games; providing electronic publications; provision of information relating to all the aforesaid services.

Class 42 Computer development and design services for computer game software; Software as a service (SaaS) services featuring software for computer games; Software as a service (SaaS) services, namely, hosting software for use by others for use in computer gaming; Computer programming; Updating of computer software; Rental of computer software; Maintenance of computer software; Graphic arts design; Computer services; writing, designing, developing, production of computer software, computer programmes and computer games; providing information and advice in relation to the aforesaid services.

The application may proceed for the remaining goods and 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.

Andrew CARTER