Refusal of application for a European Union trade mark

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

Alicante, 13/09/2017

FILEMOT TECHNOLOGY LAW LTD

25 Southampton Buildings

London WC2A 1AL

REINO UNIDO

Application No:	016668816
Your reference:	R4749-00119
Trade mark:	GAME CHANGER
Mark type:	Word mark
Applicant:	REALISTIC GAMES LIMITED 8th Floor North, Reading Bridge House, Reading Bridge, George Street Reading RG1 8LS REINO UNIDO

The Office raised an objection on 15/05/2017 pursuant to Article 7(1)(b) and 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.

Following a request for a 2 month extension of time, the applicant submitted its observations on 14/08/2017. These may be summarised as follows:

1. The Office is incorrect in its assessment that the professional public would be a relevant consumer of the services applied for.

2. Although the objection is supported by the usual dictionary definitions of the individual terms, this is not an objection that the mark is descriptive and has any meaningful connotation of any characteristic of the requested services. The fact that the expression ‘GAME CHANGER’ is known in the English language does not follow that the mark is devoid of distinctive character. Many such phrases are capable of functioning as trademarks in respect of specific goods and services.

3. There is no suggestion that the phrase is commonly used in the applicant’s field of activity, and it is not immediately apparent how the mark as a whole, would have inherent meaning to promote the specific services of the applicant. This is because the underlying composite hyphenated phrase is typically used in a critical context and not a promotional or laudatory one. In the circumstance, the marks would be seen as two words functioning as a trademark.

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 pursuant to Article 7(1)(b)EUTMR.

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’ (judgment of 27/02/2002, T-79/00,

‘LITE’, paragraph 26).

A sign ´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’ (judgment of 05/12/2002, T-130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 20 and judgment of 03/07/2003, T-122/01, ‘BEST BUY’, paragraph 21).

The applicant has argued that the Office is incorrect in its assessment that the professional public would be a relevant consumer of the services applied for. In response the Office would advise that the services applied for in Class 41 ‘Gambling; Gambling services; Casino services; Online gambling services; Online casino services’ are extremely broad in scope and would therefore encompass services intended for use by both amateur and professional gamblers. The Office’s assessment of the relevant consumer of the services applied for is therefore correct.

In its submissions the applicant has argued that although the objection is supported by the usual dictionary definitions of the individual terms, this is not an objection that the mark is descriptive and has any meaningful connotation of any characteristic of the requested services. The fact that the expression ‘GAME CHANGER’ is known in the English language does not follow that the mark is devoid of distinctive character. Many such phrases are capable of functioning as trademarks in respect of specific goods and services.

The applicant further argues that there is no suggestion that the phrase is commonly used in the applicant’s field of activity, and it is not immediately apparent how the mark as a whole, would have inherent meaning to promote the specific services of the applicant. This is because the underlying composite hyphenated phrase is typically used in a critical context and not a promotional or laudatory one. In the circumstance, the marks would be seen as two words functioning as a trademark.

The Office has noted the applicant’s submissions. However, it must be advised that, when assessing a mark, the Office must consider it, not in its strictest grammatical sense, but how it would represent itself to the relevant public who are to look at it in relation to the goods or services for which registration is being sought, and form an opinion of what it connotes.

The Office remains of the opinion that when taken as a whole, the subject mark ‘GAME CHANGER’ consist exclusively of a meaningful expression which will be easily understood by the relevant public, who will not perceive it as a trade mark but as promotional or advertising information indicating to the consumer the positive aspects of the services concerned, and as such, a characteristic of the services related to their market value.

As stated in the notification of 15/05/2017, the expression ‘GAME CHANGER’ is a promotional laudatory message, the function of which is to communicate an customer service statement. The term transmits the message that the services provided will affect the game of chance outcome, and it is considered highly improbable that the relevant public would fail to grasp the signs promotional laudatory message.

Taken as a whole, the meaning of the expression ‘GAME CHANGER’ is clear to any English-speaking consumer who will immediately and without the need for analytical effort establish a direct and specific link between the mark and the services in respect of which registration is sought. It is, therefore, the Office’s view that the expression ‘GAME CHANGER’ is readily intelligible when taken in conjunction with the objectionable services applied for and viewed by the relevant consumer.

The applicant’s argument that the sign does not directly indicate a characteristic of the services offered is irrelevant. For a finding that there is no distinctive character, it is sufficient to note that the semantic content of the word mark in question indicates to the consumer a characteristic of the product relating to its market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the services (see judgment of 30/06/2004, T-281/02, ‘Mehr für Ihr Geld’, paragraph 31).

Furthermore, there is nothing in the expression ‘GAME CHANGER’ that might, beyond its obvious promotional meaning, enable the relevant public to memorise it easily and instantly as a distinctive mark for the services concerned. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its promotional sense. The expression applied for does not constitute a play on words and is not imaginative, surprising or unexpected. It is just an ordinary advertising message that possesses no particular resonance. It does not even have certain originality and resonance which makes it easy to remember (see decision of 23/06/2011, in R 1967/2010-2 – ‘INNOVATION FOR THE REAL WORLD’, paragraph 26).

The above findings do not contradict the relevant case law on which the applicant relies. The Office stresses that the sign applied for is not rejected merely because it is a promotional slogan, but rather because it is a banal slogan with a clear and unambiguous laudatory meaning. The case law on which the applicant relies cannot and should not be read as suggesting that any promotional phrase, however descriptive or banal, can now be registered as a trade mark, merely because it is presented in the form of an advertising slogan (see decision of 23/06/2011, R 1967/2010-2 – ‘INNOVATION FOR THE REAL WORLD’, paragraph 27).

Consequently, taken as a whole, the sign applied for – ‘GAME CHANGER’ – is devoid of any distinctive character and is not capable of distinguishing the services for which registration is sought within the meaning of Article 7(1)(b) EUTMR and Article 7(2) EUTMR.

The application for European Union trade mark No 016668816 is hereby rejected

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.

Mladen Stamenov