Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 15/11/2017

Demetra Srl Unipersonale

Daniela Barlocco

Via A. Saffi 4/1

I-17014 CAIRO MONTENOTTE (SV)

ITALIA

Application No:	016639817
Your reference:
Trade mark:	MY TOWN
Mark type:	Word mark
Applicant:	APPS FACTORY MEDIA LTD 5 Aluf David Street Rishon Lezion 7564045 ISRAEL

The Office raised an objection on 26/05/2017 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that this trade mark is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 17/07/2017, which may be summarised as follows:

1. The goods for which registration is sought are not items of computer game software that players use to build their own virtual towns. The applicant’s computer game software has nothing to do with building cities or towns (Annex 1).

2. The applicant’s computer game software consists of games that offer digital play spaces with various themes, such as a dolls’ house, a school, a cinema, a hospital, etc. No building of towns is involved.

3. The mark ‘MY TOWN’ conveys no clear and direct information regarding the goods in question. There is no link, certainly no direct and specific link, between the mark ‘MY TOWN’ and the applicant’s software. The mark ‘MY TOWN’ certainly does not enable the public to perceive immediately, without further thought, a description of the software.

4. There is not a single town featured in the games; the consumer may use imagination, thought and perception to reach the conclusion that the names of the various games offered in the application are similar to the names of certain places where certain activities are carried out and which may be found in a town, or in fact, in life in general.

5. The mark has been accepted for registration in the United States (Annex 2).

6. The EUIPO has accepted for registration a large number of word marks for software games that arguably create a similar link between the mark and the goods: No 5 343 851 ‘MY GYM’, No 6 616 353 ‘MY SOCCERCLUB’, No 6 978 092 ‘MY AQUARIUM’, No 6 997 795 ‘MY YACHT’, No 8 200 768 ‘MY ZOO’, No 8 856 577 ‘MY CASINO’ and No 9 093 451 ‘MY KINGDOM’ (Annex 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, for the reasons set out below.

Article 7(1)(c) EUTMR – 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).

In the present case, the trade mark applied for consists of the expression ‘MY TOWN’, which means ‘a compactly settled area usually larger than a village but smaller than a city that relates to me’. The first word means ‘of or relating to me or myself especially as possessor, agent, object of an action, or familiar person’ (information extracted from Merriam-Webster English Dictionary on 26/05/2017 at www.merriam-webster.com ). The second word has the following definition: ‘a compactly settled area usually larger than a village but smaller than a city’ (information extracted from Merriam-Webster English Dictionary on 26/05/2017 at www.merriam-webster.com ). The structure of the expression ‘MY TOWN’ does not diverge from the rules of English grammar; rather, it complies with them. Therefore, the relevant consumer will perceive the mark ‘MY TOWN’ not as unusual, but as a meaningful expression.

The public interest underlying Article 7(1)(c) EUTMR is that no exclusive rights should be created in purely descriptive expressions that other traders might wish to use; it is also in the interest of the public that expressions having purely informational value should not be reserved for a single trader (such a mark may, of course, be registered if the applicant can show evidence of acquired distinctiveness).

Registration of a trade mark gives the holder of the mark a monopoly right over the signs or indications of which it is composed, so any signs or indications that are descriptive need to be left free for trade use. Those indications are, by definition, not capable of constituting trade marks.

The mark in question has a clear meaning for consumers, who will perceive it not as unusual, but as a meaningful expression. The mark conveys the idea that all the goods for which registration is sought, namely computer game software; downloadable software in the nature of a mobile application for playing games; downloadable computer game software via a global computer network and wireless devices; video and computer game programs; interactive multimedia computer game programs, are items of computer game software that players use to build their own virtual towns as they play. The mark describes the characteristics of the goods quite unambiguously, by giving consumers relevant information as regards their subject matter.

Even if the goods are not used to build virtual towns or cities, the relevant consumer, when encountering the mark for the first time, will think that the goods are town-building software or are related to building towns, and thus that the mark designates the subject matter of the goods.

The goods for which registration is sought target average consumers. It is clear that the relevant consumers will perceive the combination of words ‘MY TOWN’, in relation to the contested goods, as a meaningful expression referring to the fact that the goods are software games in which the players build their own towns.

The mark applied for, ‘MY TOWN’, thus clearly conveys obvious and direct information about the subject matter of the contested goods. The words that make up the mark applied for will be understood by the relevant English-speaking public because the mark ‘MY TOWN’ is not imaginative, metaphorical or unusual; it is no more than the sum of its parts and consists exclusively of the simple and clear combination of two immediately identifiable words. The combination of words does not contain any additional element capable of giving the mark distinctive character. The relevant public will establish a direct and specific relationship between the trade mark and the goods at issue.

The Office considers that it is highly unlikely that, without substantial use, consumers would perceive the mark applied for as a badge of origin distinguishing the applicant’s goods from those of its competitors.

A word sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned. Therefore, it is not necessary for the Office to refuse such a registration that the sign in question actually be in use in a way that is descriptive; it suffices that it could be used for such purposes (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32). Nor is there a requirement that the expression must be listed in dictionaries for it to be refused protection pursuant to Article 7(1)(c) EUTMR. It should be recalled that it suffices that the mark applied for describes the subject matter of the goods concerned, as in present case, for the mark to fall foul of Article 7(1)(c) EUTMR.

Article 7(1)(b) EUTMR – general remarks

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).

It is settled case-law that ‘a sign’s distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign’ (09/10/2002, T‑360/00, UltraPlus, EU:T:2002:244, § 43).

Assessment of the distinctive character of the mark

A mark’s distinctiveness can be assessed only, first, in relation to the goods or services for which registration is sought and, second, in relation to the perception of the relevant part of the public.

As set out in the notice of absolute grounds for refusal, the sign at issue, ‘MY TOWN’, is devoid of any distinctive character, as consumers will fail to perceive it as an indication of trade origin but instead will understand that the goods are items of computer game software that players use to build their own virtual towns as they play.

The mark is composed of the verbal elements ‘MY TOWN, written in standard upper case characters. The goods to which an objection has been raised and for which registration is sought, namely computer game software; downloadable software in the nature of a mobile application for playing games; downloadable computer game software via a global computer network and wireless devices; video and computer game programs; interactive multimedia computer game programs, are specialised goods and they target average consumers. In view of the nature of the goods in question, the degree of attention of the relevant public will be rather high.

A mark that, as in the present case, would simply be seen as a descriptive expression cannot guarantee the identity of the origin of the goods under the mark to consumers or end users by enabling them, without any potential for confusion, to distinguish those goods from others that have a different origin. Therefore, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods, thus enabling the consumer who acquires them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 20).

The English-speaking part of the public and other consumers in the EU who understand English will see the mark not as a badge of the trade origin of the goods at issue but, rather, as a descriptive expression with a clear meaning.

There is nothing in the mark that might, beyond its obvious, direct and descriptive meaning, enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods concerned. The relevant public cannot, in the absence of prior knowledge, perceive it in any way other than in its descriptive sense. The mark applied for does not constitute a play on words and is not imaginative, surprising or unexpected. It is merely an ordinary indication with a descriptive meaning and, when applied to a variety of goods, the relevant consumer will immediately be given an indication of the characteristics of such goods (i.e. their subject matter).

The Office agrees with the applicant that trade marks that are merely suggestive or that require further interpretation must not be refused registration. However, the sign ‘MY TOWN’ cannot be perceived as anything other than an indication of the characteristics of the goods in question. The message expressed by the sign applied for is clear, direct and immediately obvious to the relevant public. It is not vague in any way, it does not lend itself to different interpretations and it is not imprecise or akin to an ‘evocative’ sign. The expression is not sufficiently unusual to require a significant measure of interpretation, thought or analysis by the relevant consumer.

As regards the USPTO decision referred to by the applicant (No 87 274 303), 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 (12/02/2009, C‑39/08 and C‑43/08, Volks.Handy, EU:C:2009:91, § 17-19; 13/02/2008, C‑212/07 P, Hairtransfer, EU:C:2008:83, § 44; 05/12/2000, T‑32/00, Electronica, EU:T:2000:283, § 47). Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant European Union rules. Accordingly, the Office is 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 (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43 § 47).

In the present case, the decision cited originates not from a national office in a Member State but from outside the European Union, in a jurisdiction with different conditions for the registration of trade marks.

As regards the applicant’s argument that similar marks (No 5 343 851 ‘MY GYM’, No 6 616 353 ‘MY SOCCERCLUB’, No 6 978 092 ‘MY AQUARIUM’, No 6 997 795 ‘MY YACHT’, No 8 200 768 ‘MY ZOO’, No 8 856 577 ‘MY CASINO’ and No 9 093 451 ‘MY KINGDOM’) 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; 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 any event, the previously registered trade marks referred to by the applicant contain different word elements from those in the present application.

The English-speaking part of the public and other consumers in the EU who understand English will see the mark not as a badge of the trade origin of the goods at issue but, rather, as a descriptive expression with a clear meaning.

Finally, the applicant did not claim that its mark had acquired distinctive character through genuine use. Since the mark applied for will be perceived by the relevant public as purely descriptive and non-distinctive, it will not be able to fulfil the primary function of a trade mark, which is to distinguish the applicant’s goods from those of competitors, and it will not be recognised by the public as an indication of the commercial origin of the goods. Therefore, it is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 19; 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 86).

Conclusion

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 16 639 817 is hereby rejected for all the goods 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.

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