Refusal of application for a European Union trade mark

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

Alicante, 22/08/2017

Locke Lord (UK) LLP

201 Bishopsgate

London EC2M 3AB

REINO UNIDO

Application No:	16 358 202
Your reference:	1007873.00001
Trade mark:	TOPPLAY
Mark type:	Word mark
Applicant:	TopPlay, LLC 925 La Brea Avenue Los Angeles California 90038 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised a partial objection on 24/02/2017 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.

Upon request from the applicant, the Office extended on 06/04/2017 the time limit for submitting observations till 29/06/2017.

The applicant submitted its observations on 27/06/2017, which may be summarised as follows:

1. Descriptiveness

2. Distinctive character

3. Similar marks registered by the Office

4. Similar marks registered by national offices

5. Request for amendment of the list of goods

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.

1. Descriptiveness

General remarks

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).

Applicant´s remarks

The applicant contended that when searching for the term ´TOPPLAY´ in various English dictionaries (Oxford Dictionary, Collins Dictionary, Cambridge Dictionary, and Merriam-Webster Dictionary), no results nor any definitions are found in any of these dictionaries. Moreover, the applicant contended that this supports the applicant's submission that the sign ´TOPPLAY´ is a new, unique term with no meaning in the English language but introduced by the applicant only. Finally, the applicant contended that the relevant public does not use the applicant's mark in everyday parlance to refer to the objectionable goods but only to refer to the applicant's goods or products, namely a new mobile app designed for sharing and rating video clips of sport games.

Office's comments

The Office acknowledges the fact that the compound ´TOPPLAY´ in one word is not to be found in the current English dictionaries. However, for a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if 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).

Furthermore, with reference to the Office's Guidelines in the context of

Combination of words the Office would like to point out that as a general rule, a mere combination of elements, each of which is descriptive of characteristics of the goods or services themselves, remains descriptive of those characteristics. Merely bringing those elements together without introducing unusual variations, in particular as to syntax or meaning, cannot result in anything other than a descriptive sign. In relation to the objectionable goods, the Office maintains its position that the relevant public will simply perceive the sign ´TOPPLAY´ as descriptive for mobile phone software applications in general making it possible to share and rate your favorite top play sports games.

Applicant's remarks

The applicant contended that the examiner takes each individual component of the sign ´TOPPLAY´, i.e. ´TOP´ and ´PLAY´, and examines it in minutiae which is contrary to established case-law by the European Court of Justice which states that the assessment of a mark must be based on the overall perception of the mark as a whole by the relevant public. Moreover, the applicant contended that it is artificial to analyse the individual components of the mark separately.

Office's comments

The Office does agree with the applicant that since the trade mark at issue is made up of several components (a compound mark), 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).

Applicant´s remarks

The applicant referred to the following previous decisions of the Office where the signs have been found merely to be suggestive and not directly designating to the essential characteristics of the goods and services at issue:

EUTM 508 424 (decision of 11/11/1999, R 176/1999-1, ‘PICTURE PLUS’); EUTM 716 597 (decision of 22/11/2000, R 278/2000-1, ‘ULTRAPLUS’); EUTM

1 575 521 (12/01/2005, T-334/03, ‘EUROPREMIUM’); EUTM 4 509 808 (02/11/2008, T-67/07, ‘FUN’); EUTM 052 571 (decision of 22/09/1998, R 36/1998-2, ‘OILGEAR’).

The applicant conclusively submitted that the sign ´TOPPLAY´ should similarly, and at the very most, be recognized as merely suggestive and/or allusive in relation to the goods at issue and that the examiner has failed to demonstrate that the sign ´TOPPLAY´ is directly descriptive in relation to the goods at issue.

The Office has taken note of the afore-mentioned decisions as raised by the applicant. However, the Office does not find the cited decisions comparable to the current case with the sign ´TOPPLAY´ in relation to the goods at issue in Class 9, namely various mobile software for creating, uploading, sharing, rating and distributing images, videos and other media content. The Office still maintains its position that the sign ´TOPPLAY´ conveys obvious and direct information about the quality and intended purpose of the goods at issue, namely to provide the relevant public with the possibility to create, share and rate the top plays, typically within sport, on the social media in the form of images, video and other media content.

2. Distinctive character

General remarks

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).

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).

Applicant's remarks

With reference to EU case-law (19/06/2014, Joined cases C-217/13 and C-218/13, §47) the applicant contended that marks such as the current sign ´TOPPLAY´ where individual elements are combined to create a new distinctive mark should not be assessed in the context of stricter criteria than normal.

Office´s comments

The Office does agree with the applicant that the criteria for assessing distinctiveness should be the same for the various categories of marks.

However, although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (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).

Furthermore, the Office would like to point out that in the case-law referred to above by the applicant (19/06/2014, Joined cases C-217/13 and C-218/13, §47), the issue was a preliminary ruling from the Bundespatentgericht, inter alia, regarding the question whether a contourless colour mark had acquired a distinctive character through use.

Applicant's remarks

The applicant contended that the sign ´TOPPLAY´ is a conjunction of verbal elements in a distinctive and unusual way, departing from recognised and usual grammar rules. Therefore, the applicant concluded that the sign forms a new word ´TOPPLAY´ which clearly demonstrates the minimum degree of distinctive character to overcome Art. 7(1)(b) EUTMR.

Office's comments

The Office does agree with the applicant that the sign ´TOPPLAY´ is a conjunction of the verbal elements ´TOP´ and ´PLAY´. However, the Office finds that this conjunction follows simple grammar rules and use in normal parlance, namely the adjective ´TOP´ meaning highest rank in achievement, in the attributive position of the following noun ´PLAY´, meaning the action of a game such as a football play, perceived as a whole as top ranking of a play or a game. Moreover, the Office also finds this observation of common use of the sign in the relevant market confirmed by the various internet searches provided in the Notice of Grounds for Refusal of 24/02/2017.

Therefore, the Office maintains its position that the sign ´TOPPLAY´ is devoid of any distinctive character and is not capable of distinguishing the goods for which registration is sought within the meaning of Art. 7(1)(b) and Art. 7(2) EUTMR.

3. Similar marks registered by the Office

The applicant referred to that at the time of the filling of the current sign, several similar marks were registered with the Office as follows:

EUTM DENOMINATION

• 11 510 195

• 12 153 425 STOP PLAYING. START GAMING

• 12 710 083

• 16 346 603 NEVER STOP PLAYING

Office´s comments

As to the registrations cited above, the Office would like to point out that in the case of EUTM 12 153 425, STOP PLAYING. START GAMING., the mark was refused for all goods in Class 9, 28 and 38, and partially refused for goods in Class 42. Subsequently, this decision was confirmed by the Board of Appeal with decision of 22/09/2014, R 984/2014-4.

In the case of EUTM 16 346 603, NEVER STOP PLAYING, this mark was registered for ice cream and frozen confectionery in Class 30 in relation to which goods the Office considers the sign to be non-descriptive and with sufficient distinctive character.

As to the remaining registrations 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).

In addition, it is clear that the market, the perception of the consumers and, moreover, the practice of the Office could have changed during this period. The Court of Justice is also aware of this market and practice evolution and has stated that that the 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).

4. Similar marks registered by national offices

The applicant referred to its similar trade mark which was registered, respectively filed with following national offices under following numbers:

• United Kingdom – UKIPO UK00003212630

• United States – USPTO 87138079

• IP Australia 1825752

• Canada – CIPO 1822672-00 (filing date)

As regards the national decisions referred to by the applicant, according to 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).

5. Request for amendment of the list of goods

Applicant´s remarks

The applicant informed that in case the Office does not accept the applicant´s submissions in relation to the objectionable goods, the applicant is willing to amend the list of goods as follows:

Class 9 Computer application software for mobile phones, namely, software for creating, uploading, sharing, rating and distributing images, videos and other media content; downloadable mobile application for creating, uploading, sharing, rating and distributing images, videos and other media content; downloadable software;. in the nature of a mobile application for creating, uploading, sharing, rating and distributing images, videos and other media content.

Office´s comments

Article 43(1) and (2) EUTMR allows for the amendment of an application. This

includes the amendment of the list of goods and services provided that ‘such a

correction does not substantially change the trade mark or extend the list of

goods and services’.

Since an amendment cannot extend the list of goods and services, it must be in

the nature of a restriction or deletion of some of the terms originally contained

in the application. Once such amendments (deletions) have been received (and

later accepted) by the Office, the deleted terms cannot be re-introduced, nor

can the remaining list of goods and services be extended.

The Office has taken note of the applicant´s suggestion for an amendment of

the list of goods. However, as the suggested amendment constitutes an

extension of the current list of goods by removing the determination of the

scope of the list of goods (…….namely…….for…….in the nature of…..), the

Office cannot comply with the request.

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 16 358 202 is hereby rejected for the following goods:

Class 9 Computer application software for mobile phones, namely, software for creating, uploading, sharing, rating and distributing images, videos and other media content; downloadable mobile application for creating, uploading, sharing, rating and distributing images, videos and other media content; downloadable software in the nature of a mobile application for creating, uploading, sharing, rating and distributing images, videos and other media content.

The application may proceed for the remaining goods, namely:

Class 9 Headphones; mobile telephone accessories, namely, adhesive wallets and card holders for affixation to mobile telephones.

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.

Finn PEDERSEN