[Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 20/10/2017

HGF LIMITED

1 City Walk

Leeds, Leeds LS11 9DX

REINO UNIDO

Application No:	016383416
Your reference:	JML/T240799EP
Trade mark:	PLAY TO WIN
Mark type:	Figurative mark
Applicant:	Logitech International S.A. Les Châtagnis CH-1143 Apples SUIZA

The Office raised an objection on 24/02/2017 pursuant to Article 7(1)(b) and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 21/08/2017, which may be summarised as follows:

1. The Office has provided dictionary meanings for each word of the mark, and subsequently denied registration for all the goods in question. In the process it has overlooked that this phrase, as a whole, is perfectly distinctive for the goods in question. The relevant public would not perceive any connection between ‘PLAY TO WIN’ and the goods at issue. The mark is not descriptive, and the consumer would have to perform several mental steps to understand the meaning put forward by the Office, and connected it to the relevant goods. Furthermore, most of the goods are not even commonly used to play games. The mark has no laudatory meaning, and, considering that even promotional messages may function as trademarks, the mark in question clearly possesses the necessary distinctive character.

2. The ambiguous and memorable verbal part is also combined with a striking visual appearance, namely a particular font and the word ‘PLAY’ written in blue colour. This clearly confirms that the mark as a whole is distinctive, and will function as a badge of commercial origin.

3. The Office has also registered a wide variety of comparable trade marks, all incorporating the word ‘PLAY’, for goods in Classes 9 and 28. Consequently, as these marks are registered, and none of them are more distinctive than the present one, the latter should also be registered.

Pursuant to Article 94 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)(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).

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).

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).

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).

In response to the applicant’s submissions, the Office states the following:

1.

As regards the dictionary definitions used, it is standard practice for the Office to demonstrate the meaning of all words within a mark. This is also the case in the present objection; the Office has explained the meaning of each word to clearly communicate the reason for the objection to the mark as a whole. Furthermore, 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).

The Office agrees that the mark is not descriptive, and has therefore only raised an objection under Article 7(1)(b).

The expression ‘PLAY TO WIN’ is made up of three normal and easily recognisable words, constituting a message that will be immediately understood by the English-speaking consumer, which merely serves to communicate a positive statement in relation to the goods (being either video/computer games or equipment to use with such games), namely that the user is encouraged to play and succeed in the games (21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 45; and 12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 34).

The distinctive character of a trade mark must always be assessed in relation to the goods or services in respect of which registration of the sign is sought (27/11/2003, T-348/02, Quick, EU:T:2003:318, § 29). It is true that some the goods, such as ‘computer peripheral devices, namely, keyboards, data processing mice, trackballs for moving the cursor and wireless electronic controls, all for use with electronic apparatus for consumers’, may be used for other purposes than playing computer games, however, this does not change that fact that they can be used for this purpose. Consequently, the Office maintains that it is highly likely that ‘PLAY TO WIN’ will be perceived only as a laudatory message, and not a trade indicator, when encountered on the goods in question.

Therefore, the Office maintains that the sign in question is not capable of distinguishing the goods for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) EUTMR. Only a minimum degree of distinctive character suffices for the absolute ground for refusal set out in that Article not to apply. However, in the present case, the required minimum degree of distinctive character could not be established. It is clear from the case-law of the Court of Justice in relation to Article 7(1)(b) EUTMR that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings and, therefore, being able to fulfil the essential function of a trade mark. From the impression produced by the mark, the connection between the relevant goods and the mark is not sufficiently indirect to endow the mark with the minimum degree of inherent distinctiveness required under Article 7(1)(b) EUTMR (see also 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 99). The Office considers, therefore, that it is highly unlikely that, without substantial use, the consumer would perceive the mark as a badge of origin distinguishing the goods for which registration is sought.

2.

Regarding the figurative elements, the Office disagrees and maintains that these are not sufficiently distinctive to render the mark as a whole distinctive. The sign consists of text in a standard typeface, the first word is blue and the last two are black. The mark does not have any other figurative or stylised elements, therefore the public’s attention will focus on the meaning of the verbal element ‘PLAY TO WIN’, a mental effort on the part of the consumers will not be required to understand its meaning in relation to the goods for which registration is sought. Therefore, the Office maintains that these stylised elements are so minimal in nature that they do not endow the trade mark applied for as a whole with any distinctive character. Those elements do not possess any feature, as regards the way in which they are combined, that allows the mark to fulfil its essential function in relation to the goods and services covered by the trade mark application (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 74).

3.

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).

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 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).

The fact that several registered marks incorporate the word ‘PLAY’ can have no decisive impact on this decision. When encountering the mark applied for, the consumer will perceive something different from the cited marks, as all the cited marks combine the coinciding word with other words making them different from the mark applied for. Each mark must be assessed solely on its own merits, and how these merits relate to settled case law and practice must be the decisive factor when assessing distinctiveness, as explained above, the Office concludes that the mark is devoid of the necessary distinctive character under Article 7(1)(b) EUTMR

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 16 383 416 is hereby rejected for all the goods claimed.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 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.

Lars Paalgard SOYLAND