Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 19/04/2018

KILBURN & STRODE LLP

Lacon London

84 Theobalds Road

London WC1X 8NL

UNITED KINGDOM

Application No:	017244401
Your reference:	T113826EM/REP/ARN/de
Trade mark:	PLAY LIKE A CHAMP
Mark type:	Word mark
Applicant:	TCC Global N.V. World Trade Centre, Zuidplein 84 NL-1077XV Amsterdam NETHERLANDS

The Office issued a provisional refusal on 10 October 2017, pursuant to Article 7(1)(b) and 7(2) EUTMR, for the reasons set out in the attached letter.

After being granted an extension of the time limit the applicant submitted its observations on 12 February 2018, which may be summarised as follows:

1. The Office cannot apply stricter criteria when assessing the distinctiveness of a mark. The applicant submits that at least the minimum level of distinctiveness has been met for PLAY LIKE A CHAMP to function as a trade mark.

2. The average consumer would not see PLAY LIKE A CHAMP as a laudatory slogan, as it does not convey a value statement in relation to the applicant's goods and services.

3. This mark is applied for in relation to a range of goods and services in Classes 9, 16, 28 and 41. The applicant does not see how these goods and services are linked with playing in a competition and winning.

4. The applicant requests that the refusal is overturned and that the application is allowed to proceed to publication.

Pursuant to Article 94 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the holder has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has decided to waive the objection for the following goods because they do, as the applicant rightly observed, not involve contenders or playing:

Class 9

Software for use in advertising; computer e-commerce software; computer software for use in connection with affinity programmes and loyalty programmes; computer software for use in connection with sales and promotional incentive schemes; magnets; radios; mobile telephone fascias; stands for telephones; calculators; refrigerator magnets; Lenses, clips, parts and accessories for all the aforesaid goods; mouse mats; protective knee pads, protective elbow pads; egg timers.

Class 16

bookbinding material; photographs; stationery; plastic materials for packaging not included in other classes; paint brushes; printing blocks; posters; cards; postcards; greetings cards; invitations; photograph albums; prints; paper coasters; book ends; height charts; crayons; transfers; stamps; embroidery, sewing and knitting patterns; postage stamps; paper tablemats; bunting (paper); folders; albums; sticker albums; stickers.

The objection is maintained for the remaining goods and services, namely:

Class 9

Computer software; software applications; computer programmes (downloadable software); sound, image and data transmission, recording and reproducing apparatus; computers; computer software; computer games programmes; computer game cartridges; computer game discs; video games; video game cartridges; games cartridges for use with electronic games apparatus; sound and video recordings; DVDs, CDs, records, discs, tapes, cassettes, cartridges, cards and other carriers, all bearing or for use in bearing sound recordings, video recordings, data, images, games, graphics, text, programs or information; magnetic data carriers; downloadable electronic publications provided on-line from databases or the Internet; interactive compact discs and CD-ROMs; cases and holders for CDs, records, discs, tapes, cassettes and cartridges; mobile telephones; walkie-talkies; data recordings including audio, video, still and moving images and text; downloadable electronic publications; electronic instructional and teaching apparatus and instruments.

Class 16

Printed matter; printed publications; magazines; books; trading cards.

Class 28

Playing cards; bath toys and games; toys, cast toy vehicles; toy sets (miniature); toys, games and doll accessories for children; toys, games, playthings; board games; electronic games; magic tricks; soft toys; plush toys; toy and novelty face masks; toy musical boxes; toy musical instruments; toy models; puzzles; kites; play balloons; flippers; floats and inflatable toys for play purposes; playing cards; puppets; plastic toys; bath toys; developmental toys; wheeled toys; scooters and tricycles [toys]; sit on rides; costumes being children's playthings; indoor and outdoor games, party games, board games, cardboard games, educational games, puzzles, jigsaw puzzles, games of skill, wooden games, dominoes, construction toys; soft toys, puppets; targets and darts; PVC balls, leather balls, metallised inflatable helium balloons, punchballs; inflatable toys, games and playthings for the beach; toy figurines; stacking toys.

Class 41

Entertainment; education; training; organising, conducting and providing workshops, courses, seminars and conferences; providing information in the field of education and entertainment; publication of texts and books including online publishing; providing online electronic publications (not downloadable); organisation of competitions; publication of texts, images, computer games and electronic newspapers accessible via databases or a global computer network, video production, film production, audio production, production of animated cartoons, production of sound recordings, production of radio and television programmes, presentation of musical performances, films, movies, cartoons and live performances, film distribution, distribution of animations, provision of games, all of the aforesaid provided via computer networks and global communication networks film, video, audio-visual and music production; presentation of live performances; organisation of exhibitions for cultural or educational purposes; information, consultancy, advisory and training services relating to the aforesaid.

Under Article 7(1)(b) EUTMR, ‘trademarks 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). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T 320/03, Live richly, EU:T:2005:325, § 65).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C 517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T 138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C 456/01 P & C 457/01 P, Tabs, EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T 194/01, Soap device, EU:T:2003:53, § 42 and 03/12/2003, T 305/02, Bottle, EU:T:2003:328, § 34).

A sign, such as a slogan or information of a promotional nature, 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’ (05/12/2002, T 130/01, Real People, Real Solutions, EU:T:2002:301, § 20 and 03/07/2003, T 122/01, Best Buy, EU:T:2003:183, § 21).

In terms of language, since the slogan applied for is in English, the relevant public for the assessment is the English-speaking public, in other words primarily the public in the United Kingdom, Ireland and Malta (see Article 7(2) EUTMR).

The applicant submits that the average consumer would not see PLAY LIKE A CHAMP as a laudatory slogan, as it does not convey a value statement in relation to the Applicant's goods and services. Further, registration of a mark that, in part, serves as a slogan is not excluded, and stricter criteria cannot be applied to these marks, only a minimal level of distinctiveness is required (Judgments of 4/10/01, C-517/99 Merz & Krell and 21/10/04, C-64/02 P Erpo Mobelwerk).

The Office agrees with the applicant that a mark that serves as a slogan cannot be subject to stricter criteria than applicable to other marks.

However, a mark must be recognised as having distinctiveness if, apart from its promotional function, it may be perceived immediately as an indication of the commercial origin of the goods or services in question (25/03/2014, T-539/11, Leistung aus Leidenschaft, EU:T:2014:154, § 29).

In this case the Office did not apply any stricter criteria and did not consider this mark lacking distinctive character because it was a slogan but because it was considered to be perceived by the relevant public as a mere promotional formula in connection to the objected to goods and services.

The applicant further submitted that ‘PLAY LIKE A CHAMP’ is applied for in relation to a range of goods and services in Classes 9, 16, 28 and 41. The applicant does not see how these goods and services are linked with playing in a competition and winning

Distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the relevant public’s perception of the mark (21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 34).

The goods and services for which registration is sought are addressed to both the average consumer and a professional public as they are everyday consumption goods and specialised goods and since the applied-for sign consists of English words, the relevant public is primarily the English-speaking public of the European Union. The level of attentiveness of the relevant public will be from average to high.

The applied-for is mark composed of the expression PLAY LIKE A CHAMP. The term CHAMP is informal short for champion¹, ‘someone who has won the first prize in a competition, contest, or fight’. There are a number of possible meanings that can be ascribed to these words individually however the definition of ‘PLAY LIKE A CHAMPION’ is given as ‘Encouraging or motivating phrase offered to a disgruntled or pessimistic person. Taken from the sacred sign located above the tunnel leading out of the home locker room of the Notre Dame Fighting Irish football team’; "Dude, I'm not sure about this exam.", "Hey... no excuses... play like a champion." ²

The expression as such is meaningful and grammatically correct. The combination of the words does not introduce any feature that would make the sign, as a whole, capable of distinguishing the applicant’s goods or services from those of other undertakings.

The goods in Class 3 include ‘Computer software; computer games programmes; sound and video recordings; DVDs, CDs; magnetic data carriers; downloadable electronic publications, etc. The goods in class 16 goods include ‘printed publications; magazines and books’ and class 28 includes Playing cards; toys, games, playthings, etc. and Class 41 includes ‘entertainment and education; publication of media; organisation of competitions, etc’.

All these goods and services are or can be used to spend time doing enjoyable things, such as using toys and taking part in games or playful education. The expression ‘PLAY LIKE A CHAMP’ in relation to these goods and services simply highlights the positive aspects of the goods and services in question, namely that the relevant consumer is able to partake in a game or challenge with the strength or determination of a winner or give his or her best.

Consequently, the expression cannot be regarded as appropriate for the purpose of identifying the commercial origin of the goods which it designates and, therefore, of performing the essential function of a trade mark. It will simply and solely be perceived as a promotional laudatory message.

The applicant claims the relevant consumer would not see ‘PLAY LIKE A CHAMP’ as a laudatory slogan, as it as it does not convey a value statement in relation to the applicant's goods and services. However, the meaning of the expression ‘PLAY LIKE A CHAMP’ is clear and obvious. The relevant consumer when confronted with the mark for the goods at issue will only see the expression as an inspirational and motivational statement, highlighting a positive aspect of the goods.

In the Office’s assessment the sign ‘PLAY LIKE A CHAMP’ does not contain any imaginative, surprising or unexpected element so as to confer on it, in the minds of the relevant public, distinctive character. The expression has an understandable meaning and the way in which the words are used does not depart from English grammar rules. Accordingly, the sign applied for is devoid of elements which could, apart from its promotional function, enable the average consumer concerned easily and immediately to memorise it as a trade mark for the goods referred to (21.01.2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 44, 45 and 56 to 59). The sign has no distinctiveness, since it is endowed with no function to indicate commercial origin (see 19.09.2002, C-104/00 P, Companyline, EU:C:2002:506, § 20).

The Office stresses that the sign is not to be rejected merely because it is a promotional slogan, but rather because it is a banal slogan, with a clear and unambiguous laudatory meaning and because it is perceived as an banal motivational statement.

In the present case, it has become apparent that the application was caught by the grounds for refusal set out in Article 7(1)(b) EUTMR because of the goods and services in respect of which registration was sought and because of the way in which the sign would be perceived by the relevant consumer.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for European Union trade mark No 17244401 - PLAY LIKE A CHAMP is hereby rejected for the objected to goods and services, namely:

Class 9

Computer software; software applications; computer programmes (downloadable software); sound, image and data transmission, recording and reproducing apparatus; computers; computer software; computer games programmes; computer game cartridges; computer game discs; video games; video game cartridges; games cartridges for use with electronic games apparatus; sound and video recordings; DVDs, CDs, records, discs, tapes, cassettes, cartridges, cards and other carriers, all bearing or for use in bearing sound recordings, video recordings, data, images, games, graphics, text, programs or information; magnetic data carriers; downloadable electronic publications provided on-line from databases or the Internet; interactive compact discs and CD-ROMs; cases and holders for CDs, records, discs, tapes, cassettes and cartridges; mobile telephones; walkie-talkies; data recordings including audio, video, still and moving images and text; downloadable electronic publications; electronic instructional and teaching apparatus and instruments.

Class 16

Printed matter; printed publications; magazines; books; trading cards.

Class 28

Playing cards; bath toys and games; toys, cast toy vehicles; toy sets (miniature); toys, games and doll accessories for children; toys, games, playthings; board games; electronic games; magic tricks; soft toys; plush toys; toy and novelty face masks; toy musical boxes; toy musical instruments; toy models; puzzles; kites; play balloons; flippers; floats and inflatable toys for play purposes; playing cards; puppets; plastic toys; bath toys; developmental toys; wheeled toys; scooters and tricycles [toys]; sit on rides; costumes being children's playthings; indoor and outdoor games, party games, board games, cardboard games, educational games, puzzles, jigsaw puzzles, games of skill, wooden games, dominoes, construction toys; soft toys, puppets; targets and darts; PVC balls, leather balls, metallised inflatable helium balloons, punchballs; inflatable toys, games and playthings for the beach; toy figurines; stacking toys.

Class 41

Entertainment; education; training; organising, conducting and providing workshops, courses, seminars and conferences; providing information in the field of education and entertainment; publication of texts and books including online publishing; providing online electronic publications (not downloadable); organisation of competitions; publication of texts, images, computer games and electronic newspapers accessible via databases or a global computer network, video production, film production, audio production, production of animated cartoons, production of sound recordings, production of radio and television programmes, presentation of musical performances, films, movies, cartoons and live performances, film distribution, distribution of animations, provision of games, all of the aforesaid provided via computer networks and global communication networks film, video, audio-visual and music production; presentation of live performances; organisation of exhibitions for cultural or educational purposes; information, consultancy, advisory and training services relating to the aforesaid.

The application may proceed for the remaining goods.

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.

Steven STAM