Refusal of application for a European Union trade mark

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

Alicante, 21/07/2017

Challengermode AB

Jarlaplan 2

SE-11357 Stockholm

SUECIA

Application No:	016499709
Your reference:
Trade mark:	Challengermode
Mark type:	Word mark
Applicant:	Challengermode AB Jarlaplan 2 SE-11357 Stockholm SUECIA

The Office raised an objection on 31/03/2017 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.

The applicant submitted its observations on 30/05/2017, which may be summarised as follows:

1. The mark is not descriptive, as claimed by the Office. The term, ‘Challengermode’, is not commonly used in the relevant market. Two of the Google search results presented by the Office are from several years old online forums; such forums contain discussions between individuals and do not prove anything regarding generic descriptiveness/non-distinctiveness of a trademark. The last result is actually from a game, but a game of minor popularity. Therefore, a Google search does not prove the descriptiveness of the mark, quite the opposite, a Google search performed by the applicant demonstrates that the trademark use of the applicant itself is dominating when searching for ‘Challengermode’. Consequently, the mark is not descriptive and it is fully capable of distinguishing the goods and services for which registration is sought, and therefore function as a badge of commercial origin.

2. Furthermore, the mark is not a non-distinctive promotional slogan, as claimed by the Office, as even promotional slogans may function as a badge of commercial origin, the mark in question is clearly sufficiently distinctive. No proof has been presented to show the claimed non-distinctiveness of the mark.

3. Several attachments have been submitted in support of the applicants submissions: a copy of the registration of ‘Challengermode’ from the Swedish ‘Bolagsverket’; EUTM No 10 560 225 ‘QUICK PLAY’; a list of best-selling video games; a Google search result from ‘e-sport challengermode’.

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).

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

1.

The Office agrees that internet search results from online forums do not prove the descriptiveness of the trademark on its own. However, the search results were intended to support the argued descriptiveness presented earlier in the L110 objection letter, the Office maintains that this assessment is valid. It is well-known fact that computer games can be played in different modes, and, it is highly likely that, the relevant public will perceive the term ‘Challengermode’ – when encountered in relation to computer games – as a description of a type of mode that the game can be played in. Therefore, the Office also found it relevant to include examples of online forum discussions where users of computer games describe games as having a ‘challangermode’.

Furthermore, 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, emphasis added.)

In addition,

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially.

(12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

Therefore, the Office maintains that, taken as a whole, the expression ‘Challengermode’ immediately informs consumers without further reflection that the goods and services applied for are games that can be played in a challenger mode, and services providing information regarding games with a challenger mode. Consequently, the mark conveys obvious and direct information regarding the kind and subject matter of the goods and services in question. It follows that the link between the words ‘Challengermode’ and the goods and services 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.

2.

As explained above, the Office maintains that the mark is descriptive; therefore, it also maintains that the sign in question is not capable of distinguishing the goods and services 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/services 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 and services for which registration is sought.

3.

As regards the national ‘Bolagsverket’ registration 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).

As regards the applicant’s reference to a registration of 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).

‘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).

In relation to the list submitted by the applicant – naming the most popular computer games in the market – the popularity of a trademark is irrelevant when assessing distinctive character. 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 already argued the mark in question is regarded as descriptive and devoid of distinctive character. In addition, the Office has not claimed that the term is a title of a computer game, but, rather, that it will be perceived as a feature of the computer games applied for (as explained above).

As regards the argument that a Google search show that no other competitors make use of the same combination, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88). In addition, it is important to point out that concerning descriptive or non distinctive marks these shall be barred from registration independently of whether the holder is or is not able to warrantee its exclusive use in the market since, 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 services in respect of which registration is sought’ (judgment of 26/11/2003, T 222/02, ‘ROBOTUNITS’, paragraph 34). In that connection for a trade mark to be refused registration under Article 7(1)(c) EUTMR, is only necessary that the mark may serve as a descriptive indication for the goods in question, as in the present case, thus the fact that the holder is the only one using the mark in trade does not render the mark distinctive neither does it imply that a sign is less subject to absolute grounds for refusal examination. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes (see judgment of 23/10/2003, C-191/01 P, ‘Wrigley’, paragraph 32, emphasis added).

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 16 499 709 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.

Lars Paalgard SOYLAND