Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)

Alicante, 15/04/2019

TAYLOR WESSING LLP

5 New Street Square

London EC4A 3TW

REINO UNIDO

Application No:	017219924
Your reference:	DT/PokerStars
Trade mark:	POKERSTARS
Mark type:	Word mark
Applicant:	Rational Intellectual Holdings Limited Douglas Bay Complex King Edward Road Onchan IM3 1DZ ISLE OF MAN

The Office raised an objection on 08/02/2018 pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for is partially descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

On 06/04/2018 the applicant requested an extension of the two months’ time limit to submit observations. The request was granted and observations were submitted on 13/06/2018 and they may be summarised as follows:

1. The sign does not immediately indicate to the English-speaking consumer the intended purpose or any other characteristic of the goods and services to which the objection is raised. This is proven by the fact that the Office did not raise an objection at the examination stage but only after receiving 3^rd Party Observations.

2. The word ‘POKERSTARS’ does not have any clear meaning in relation to the goods and services.

3. The sign should be assessed as a whole and not broken down into separate word elements and applying dictionary meanings to each part.

4. Native English speakers would not directly put together the two words into a compound mark that would be descriptive of “celebrated poker players”. These consumers need to do some additional effort in order to reach that conclusion.

5. The term is fanciful and unusual in its context because poker is not a game where prominent players are celebrated and followed by fans. Poker players are not thought of as “stars”.

6. If the expression “star” was to be used in relation to poker players, it would be put as a “star of poker” or, even more likely, a “poker playing star”.

7. Someone who is already famous for other activities but also played poker would be called “poker playing star”, not “pokerstar”. This is proven by the results of an internet search for “star poker players” which show use only in this context (material submitted).

8. An internet search with the expression ‘POKERSTARS’ only returns hits related to the applicant.

9. The link between the goods and services and the sign is not sufficiently direct or specific.

10. The sign is merely vaguely suggestive and therefore unusual to the English-speaking consumer.

11. The sign creates an expression which is sufficiently removed from the meaning stated in the objection. The examples given in the EUIPO guidelines to this respect (GREENSEA, MADRIDEXPORTA, DELI FRIENDS) are analogue to this case.

12. The word ‘POKERSTARS’ possesses more than the minimum degree of distinctive character necessary to function as a trade mark. The unusual elision and the order of the words in the sign render it sufficiently distinctive.

13. The objection letter as well as the 3^rd Party Observations failed to specify clearly why the expression ‘POKERSTARS’ is devoid of any distinctive character.

14. Neither the examiner nor the Observer are native English speakers and they assessed incorrectly the sign based on the individual meaning of the word components taken separately. The sign would be viewed as a whole by the relevant consumer.

15. The Office has made a mistake similar to the one outlined by the Court of Justice in the EUROHYPO case (C-304/06 P, paragraph 41).

16. The objection on lack of distinctive character is based on descriptiveness only. The sign, however, has a sufficient level of creativity to help consumer perceive it as an indicator of a commercial origin. The applicant’s sign is different from the example given in the Guidelines (Medi) since there is no such thing as a ‘POKERSTAR’. The objection on lack of distinctive character has no merit and cannot be proven.

17. When considering the inherent distinctive character of the sign, the Office can take into account evidence showing the actual perception of the sign by the relevant consumer. Material showing use of the sign by third parties since many years as a trade mark has been submitted.

18. No other commercial entities are using the sign in relation to the goods and services in question and the consumer can identify the goods and services as originating from the applicant as opposed to other commercial origins. This shows that the sign is perceived as a distinctive brand.

19. The Office has previously accepted identical signs from the same applicant as inherently distinctive (examples submitted). Furthermore, the applicant makes reference to case law (IPHONE) stating that, as a consequence of the principle of equal treatment, a latter application could not be refused if the Office had accepted the same mark in the past.

20. The applicant submits that the sign has been extensively used in Europe and all over the world and provides information regarding the use to show that, if the sign is not accepted as inherently distinctive, a claim for acquired distinctiveness could and would be made.

21. The Office has previously accepted marks with a STAR suffix based on inherent distinctiveness (examples submitted).The applicant’s sign is not lesser distinctive than those signs.

22. The sign has been accepted as national trade marks in English-speaking territories for identical goods and services.

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.

1. The sign is descriptive of some of the goods and services, as specified in the objection letter. The meaning of the compound word ‘POKERSTARS’ indicates what the goods are intended for (to be used by prominent poker players or designed for them or having top class poker players as the subject matter, when it comes to electronic publications and pre-recorded CD’s, DVD’s and discs). In relation to the services, it indicates their intended use, or the subject matter of the news and information services. The fact that the Office firstly accepted the sign in the ex-officio examination process cannot be seen as an indication of the acceptability of the sign. The reason behind the provision for third parties to send observations regarding the registrability of a sign is exactly to be able to correct any faulty assessment with the assistance of other third party actors that might have a deeper and better knowledge of the specific market sector. The objection raised as a consequence of the observations received by a third party are therefore fully valid and not less accurate than an objection raised at the stage of examination of a EUTM application.

2. As explained above and also in the objection letter, the sign ‘POKERSTARS’ has a clear and direct meaning in relation to the goods and services in question. The relevant consumer will immediately understand the sign merely as a descriptor of the intended use or subject matter of the goods and services to which the objection is raised.

3. The sign has at all times been assessed as a whole. The two different word elements were given separate dictionary meanings in the objection letter only to illustrate the meaning of the sign which, in this particular case, is not more than the sum of the two parts; ‘POKER’ and ‘STARS’ which would be seen as meaning prominent poker players. The two words fit together in a logical way and the relevant consumer would therefore not understand any other meaning from the sign.

4. The noun ‘STAR’ is commonly used to indicate a person who is famous in a particular field. Therefore, the term ‘POKERSTAR’, although written without any space, would be understood by native English speakers as meaning ‘someone who is a prominent poker player’. It might not be the only way to refer to a person with these characteristics, but it is clearly understandable in this sense and consumers would therefore see it as a descriptor, rather than as a distinctive term. There is no additional effort needed in order to reach this conclusion, particularly since the terms fit together in a logical way.

5. The term ‘STAR’ is used in relation to poker players, as can be seen from the below internet extracts found on 15/04/2019. It would be understood with the meaning of a celebrated poker player. A ‘star’ is someone who is very successful or skilful at something and could refer to playing poker as well as to many other activities. Articles, adverts and information about online poker playing are increasing in media and some successful players are present in digital media and communication channels:

https://www.youtube.com/watch?v=oXASMvaYW9s

https://upswingpoker.com/ali-imsirovic-rising-poker-star/

These extracts prove that prominent poker players are considered stars. It therefore follows that the expression ‘POKERSTARS’ simply describes the intended use or subject matter of the goods and services to which an objection has been raised.

6. As shown in the above paragraph, the term ‘STAR’ is used for prominent poker players using the same syntax as in the applicant’s sign, although the two words are written together. It would therefore be immediately understood by the relevant consumer in this context.

7. There is a difference between the expression ‘poker playing star’ and ‘pokerstar’ in the sense that the first expression could refer to someone who is a star in an area different from poker, but plays poker. A ‘pokerstar’ would unequivocally describe a person who is very good at playing poker. Both expressions are equally valid, but for different purposes. The internet extracts submitted by the applicant show use of the first term but does not prove that the second term is not being used. In any case, the expression at issue here is the term ‘POKERSTARS’ and, as shown in previous paragraphs, this term would be understood as a prominent poker player and would be descriptive in relation to the goods and services.

8. The fact that the term ‘POKERSTARS’ only returns hits related to the applicant is not really relevant to the matter of the question; whether the expression is a descriptive term for the indicated goods and services. Internet searches are not using objective criteria and could be influenced by economic interests more than being a factual and impartial way of presenting the hits. The term ‘POKERSTARS’ is connected to the applicant’s activities but this does not mean that the term is inherently distinctive and non-descriptive. The concepts of inherent and acquired distinctiveness must be carefully separated.

9. As explained above in paragraph 1), the link between the goods and services and the sign can be clearly established. The computer software, programs and platforms are intended for prominent poker players or persons who intend to become one. The video games, electronic games, CDs, DVDs and discs are for high level poker players or featuring top level poker players. The electronic publications feature poker stars as the subject matter. Sunglasses, sport glasses, goggles and eyewear are an accessory with growing importance in relation to playing poker. These items and their cases and holders as well as games and gaming equipment in class 28 could be specifically designed for or by poker stars. The gaming services, organisation of tournaments, competitions and events are directed to the best poker players. The news, consultancy, advisory and information services relate to the gaming services offered, which are therefore directed to the best poker players. The electronic publications and online newsletters have prominent poker players as the subject matter.

10. The sign is descriptive of some of the goods and services. It is not merely suggestive but has a clear meaning in relation to these goods and services and will be understood as a descriptor of them. It will not be seen as an unusual term which produces doubts regarding its meaning.

11. The meaning of the sign is what was stated in the objection letter and further specified here above. It has a straight-forward meaning which the consumer will link immediately to the goods and services. The examples taken from the EUIPO guidelines on examination are not applicable to the present case. The two words ‘POKER’ and ‘STARS’ clearly fit together and is a mere combination of descriptive elements that remain descriptive as a whole. They do not consist of an unusual combination in relation to these goods and services.

12. As stated above, the sign is descriptive and therefore also devoid of any distinctive character. The impression or understanding of the sign by the relevant consumer restrains to the mere sum of the meaning of its two word components. There are no additional elements that could provide the sign with anything further to this meaning and it therefore does not reach a minimum degree of distinctive character necessary in order to be accepted as an inherently distinctive sign. The omitting of the space is not enough to elude the descriptive character in this case. The order of the words is grammatically correct and does not raise any question or doubt about its meaning in the consumer’s mind. The sign will be directly understood as a descriptive term and it is therefore also devoid of any distinctive character and must be refused in accordance with Article 7(1)(b) and (c) EUTMR.

13. The objection letter specified that the sign was devoid of any distinctive character as a consequence of being descriptive. This is valid reasoning and provides a legal basis for a refusal on this ground. The third party observations have no legal obligation to provide specific and detailed reasoning for the opinion of non-registrability of a certain sign. That obligation applies only to the Office when issuing objection notice or refusal.

14. The sign has been assessed in collaboration with native English speakers. The result of the assessment has been transformed into an objection raised by a specific examiner and reflects the view of the Office as a whole and not only that of one examiner. All third party observations are thoroughly assessed by experts in the field of absolute grounds and an objection raised as a consequence of the observations is not the result of one personal opinion without any legal basis. The relevant consumer would see the sign as a whole as descriptive in the way that was stated in the objection notice and further specified here above.

15. As to the EUROHYPO case referred to by the applicant; the Office has performed an analysis as to the distinctive character of the sign during the examination phase. The sign was found to be devoid of any distinctive character as well as descriptive and an objection was raised based on Articles 7(1)(b) and (c) EUTMR.

16. The Office fails to find anything creative or out of the ordinary in the sign that is purely descriptive. The relevant consumer will not perceive it as distinctive or in any way capable of indicating a particular commercial origin. The expression ‘POKERSTARS’ has a clear meaning and this reduces the signs degree of distinctive character to nothing. The sign has to be refused not only in accordance with Article 7(1)(c) but also with Article 7(1)(b) EUTMR.

17. The evidence submitted shows the use of the sign. It does not however provide any relevant information as to the inherent capacity of the sign to function as a trade mark. For this, the perception of the sign by the relevant consumer has to be considered in a prima facie context, when the consumer faces the particular sign for the first time. The assessment made by the Office after receiving the third party observations were conducted from this point of view and did not consider the acquired distinctive character since any such feature would have to be examined under a claim put forward by the applicant.

18. As to the argument raised by the applicant that no other traders make use of the sign in question; 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).

The inherent capacity of a sign to serve as a trade identifier cannot be derived from the fact that no other traders are using the sign. What needs to be considered is how the sign will be perceived by the relevant consumer when seeing it for the first time. Since the relevant consumer in the case of the applicant’s sign would perceive it as merely descriptive of the goods and services, no trade mark character would be perceived from the sign under these circumstances.

19. As regards the applicant’s argument that a number of identical registrations from the same applicant 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).

‘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).

Additionally, some of the registered marks indicated by the applicant are in fact not identical to the present case since there are differences in the signs or in the list of goods and services.

Furthermore, the applicant refers to the IPHONE case, saying that the sign should be accepted since it has already been found acceptable in the past. The principle of equal treatment is an important legal basis to enhance consistency in the Office’s decisions. However, what has to be kept in mind is that the practice might change over time, as does the market reality and the use of languages and meanings of words and expressions. Therefore, signs deemed acceptable at a certain moment might become objectionable with a clear legal basis at a later stage if a new application is filed for the same sign. It can therefore not be concluded that a previous assessment of a sign should have a full impact in the examination on absolute grounds some years later.

20. As explained in the objection notice and further developed in this decision, the sign is partially descriptive and devoid of any distinctive character. Any distinctiveness acquired as a consequence of the use made of it has to be considered under a clear and unambiguous claim of acquired distinctiveness under Article 7(3) EUTMR. The applicant was requested by letter of 11/10/2018 to clarify whether a principal or subsidiary claim under this article had been made. From the applicant’s reply of 07/12/2018, the claim has been established as being subsidiary and this decision therefore only refers to the inherent capacity of the sign to be registered as a EU trade mark.

21. Regarding the examples submitted on previous signs with a ‘STAR’ suffix, the Office makes reference to paragraph 19) here above. The previous cases have to be analysed based on their own merits and it is not possible to draw any parallel to the present case due to different mark components and different goods and services.

22. As regards the national decisions 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).

The EU jurisdiction is independent of any other jurisdiction. Furthermore, the practice applied in one trade mark registering Office might be different from other Offices. It is therefore not possible to draw any decisive conclusion from the fact that the applicant’s sign has been registered in English-speaking jurisdictions.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 17 219 924 ‘POKERSTARS’ is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b) and (c) in the English-speaking territory for the following goods and services:

Class 9 Computer software and computer programs in connection with games, card games, games of skill, poker, poker games, casino games, gambling or betting and poker tournaments, competitions, gameshows and events; computer software platforms for social networking in connection with games, card games, games of skill, poker, poker games, casino games, gambling or betting and poker tournaments, competitions, gameshows and events; computer application software in connection with games, card games, games of skill, poker, poker games, casino games, gambling or betting and poker tournaments, competitions, gameshows and events; video games; interactive video games; downloadable electronic games and computer software platforms for social networking that may be accessed via the Internet, electronic mail or portable, mobile, handheld or tablet devices; pre-recorded CDs, DVDs and discs in connection with games, card games, games of skill, poker, poker games, casino games, gambling or betting and poker tournaments, competitions, gameshows and events; parts and fittings for all the aforesaid goods; downloadable electronic publications in connection with games, card games, games of skill, poker, poker games, casino games, gambling or betting and poker tournaments, competitions, gameshows and events; electronic publications distributed via the Internet, electronic mail or portable, mobile, handheld or tablet devices; sunglasses; frames for glasses; sport glasses (eye glasses); goggles for use in sports; sports eyewear; spectacle holders.

Class 28 Games; card games; poker chips; gaming chips; gaming chip sets; chips and dice (gaming equipment); cups for dice; playing cards; cases for playing cards; playing card shuffling devices.

Class 41 Amusement game services; gaming services; gambling services; casino services; card game services; poker game services; the provision of games of skill; organisation, production, and presentation of any of the aforesaid services; organisation, production and presentation of tournaments, competitions, games, gameshows and events; the provision of any of the aforesaid services live or through the medium of television or on-line from a computer database or via the Internet or via portable, mobile, handheld or tablet devices; electronic games services provided by means of the Internet; multi-player card games, card rooms and games of skill provided live or by means of the Internet or via television or via portable, mobile, handheld or tablet devices; organisation, production and presentation of any of the aforesaid services; providing news, consultancy and advisory services relating to any of the aforesaid services; the provision of information relating to amusement games; the provision of information relating to gaming services, gambling services, casino services, card game services, poker game services, tournaments, competitions, games, gameshows and events; the provision of on-line electronic publications; providing electronic newsletters distributed via the Internet, electronic mail or portable, mobile, handheld or tablet devices; organisation, administration and runny of amusement games, gaming services, gambling services, casino services, card game services, poker game services, tournaments, competitions, games, gameshows and events.

The application may proceed for the remaining goods and services.

Class 9 Binoculars; cases adapted for binoculars; bags and cases specially adapted for holding or carrying any portable communications device which is a hand-held or wearable device, any portable computing device such as a smartphone, any piece of computing equipment that can be used in the hand, such as a smartphone or tablet computer and any general-purpose computer contained in a touchscreen panel; carriers for mobile phones; cases for mobile phones; holders adapted for mobile phones; mobile phone covers; mobile phone straps; laptop carrying cases; laptop covers; mouse mats; mouse pads; smart cards; magnetic coded cards; electronic data carrier cards; charge cards; bank cards; credit cards; debit cards; chip cards; stored value cards; payment cards; prepaid cards; cards using magnetic memories and integrated circuit memories; cards containing an integrated circuit chip; data carriers with integrated electronic chips; data carriers with integrated microprocessor chips; pre-paid magnetic cards; encoded chip cards containing programming used for financial applications, loyalty programs, rewards programs and card holder preferences; security encoded cards; cards encoded with security features for authentication purposes; hologram impregnated cards.

Class 25 Clothing; footwear; headgear; sports clothing; sports garments.

Class 28 playthings; soft toys; coin-operated gaming equipment; games relating to sport; sports equipment; balls being sporting articles; bags adapted for carrying sporting articles; bags specially adapted for sports equipment; cases adapted for carrying sporting apparatus; sports gloves.

Class 41 Entertainment services; television entertainment services; providing television programmes; sporting and cultural activities; amusement services; betting services; organisation, production, and presentation of any of the aforesaid services; the provision of information relating to entertainment services, television entertainment services, television programmes, sporting activities, cultural activities, amusement services; the provision of information relating to betting services; organisation, administration and running of entertainment services, television entertainment services, sporting activities, cultural activities, amusement services; organisation, administration and runny of betting services.

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.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Elna ISAKSSON