Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 03/10/2017

GILBEY LEGAL

43, Boulevard Haussmann

F-75009 Paris

FRANCIA

Application No:	016454605
Your reference:	RM/CC/SZ/20170145
Trade mark:	DK LIVE
Mark type:	Word mark
Applicant:	DraftKings, Inc. 376 Boylston Street, Ste 501 Boston, Massachusetts 02116 ESTADOS UNIDOS (DE AMÉRICA)

1. The Office raised an objection on 21/04/2017, 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.

2. After a two-month extension of time the applicant submitted its observations on 21/08/2017, which may be summarised as follows:

• The word combination ‘DK LIVE’ is unusual and fanciful, and does not convey any sufficiently direct and specific information about the goods and services under objection.

• The public will not perceive the letters “DK” as the international country code for Denmark. The use of an international country code is common in official fields and regulatory affairs, but is uncommon in the field of the sale of computer and mobile applications, and in the provision of sports and entertainment services.

• As regards sporting competitions, the country of the participants is always mentioned in full, i.e. Denmark, which would be abbreviated as “DEN” rather than “DK”. The relevant public will therefore perceive the letters “DK” as an abbreviation of the applicant company name “DraftKings”.

• The country of origin is never mentioned in the sale of software applications and it is not information the consumers are looking for.

• The mere fact that an abbreviation is derived from a descriptive term is not sufficient (judgment of 13/06/2014, T-352/12, Flexi, EU:T:2014:519).

• The term “LIVE” in respect of software applications will be understood in its ordinary meaning, namely “active” and “living”, and not as information that the goods may be used in relation to live performances. Besides, any audio-visual equipment can be used for recorded or live programs and the provision of live broadcastings is therefore not a characteristic of the goods at issue.

• The term ‘DK LIVE’ is not so frequently used that it has lost any capacity to distinguish the goods and services from those of other traders.

3. 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.

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 Office cannot find other than that the mark ‘DK LIVE’ as a whole is descriptive and devoid of any distinctive character in relation to the goods and services applied for.

The goods and services under objection are e.g. “downloadable mobile applications for providing sports and esports programming and information” in class 9, and “providing sports and esports news, information, previews, alerts and replays via wireless and mobile devices” in class 41.

The mark ‘DK LIVE’ must be examined in relation to those services.

The international country code ‘DK’ is well-known among the relevant consumers, not least because it is the country code top-level domain for Denmark, and appears in website names for websites originating in Denmark.

The word ‘LIVE’ is widely used in all kinds of media, including in relation to sports apps to indicate real-time, and live streaming and coverage.

Therefore the mark ‘DK LIVE’ as a whole simply indicates that the goods and services are intended for a Danish-speaking public, and that they relate to the live streaming and coverage of sports events in Denmark and the playing of Danish video games in real time.

The abbreviation ‘DEN‘ may be more generally used in sports to indicate Denmark than ‘DK’, but this does not mean that the relevant consumers would not recognise the abbreviation ‘DK’ as referring to Denmark.

Furthermore, it is not likely that the consumers will perceive ‘DK’ as an abbreviation for the applicant’s company name “DraftKings” as the applicant suggests unless this term would appear in the mark itself, which is not the case.

Whether or not the country of origin is not usually mentioned in the sale of software applications is immaterial. When viewing a country code in relation to any goods and services the consumers will immediately assume that the goods and services originate in or are aimed at consumers in that specific country.

The applicant’s reference to the judgment of 13/06/2014, T-352/12, Flexi, where the General Court found that the mere fact that an abbreviation is derived from a descriptive term is not sufficient is not relevant in this case. The abbreviation ‘DK’ is not derived from another term; it is the actual international country code for Denmark.

Furthermore, the Board of Appeal has confirmed that country codes will be perceived as a reference to the country itself and will be perceived as descriptive as it is an indication of geographical origin (decisions of 10/03/2016, R 1132/2015-1, GB FOODS (fig.), and that it indicates that the goods and services are aimed at and intended for a Danish-speaking market (decision of 25/01/2016, R 93/2015-5, De-Mail).

As for the applicant’s argument that the term ‘DK LIVE’ is not so frequently used that it has lost any capacity to distinguish the goods and services from those of other traders, whether or not the mark is commonly used is not the determining criteria for examining the distinctive character of the signs. It is the indication of a commercial origin which makes a sign distinctive or not (see the decision of 21/10/2005, R 130/2005-2, THE DIFFERENCE IS PERFECTION. IT IS A DIFFERENCE YOU CAN SEE., paragraph 23).

4. 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 16 454 605 is hereby rejected for all the goods and 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.

Anne-Lee KRISTENSEN