Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 21/03/2018

D YOUNG & CO LLP

120 Holborn

London EC1N 2DY

REINO UNIDO

Application No:	017391608
Your reference:	T310296MJD
Trade mark:	MSPORTSGAMES
Mark type:	Word mark
Applicant:	Playphone, Inc. 100 Mathilda Place, Suite 160 Sunnyvale California 94086 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 15/11/2017 pursuant to Article 7(1)(b) and (c) 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 19/12/2018, which may be summarised as follows.

1. The Office’s objection is unsubstantiated and fallacious. The applicant could not find in the Collins English Dictionary the definition provided by the Office of the prefix ‘M’ as ‘indicating the use of mobile-communications technology’.

2. The Office did not specify the level of attention for the consumer of computer games. According to the applicant the level of attention of the consumer (players participating in game tournaments) is above than average.

3. The sign can be interpreted in various ways such as “MS Ports Games” or “MPS TS games”.

4. The mark must be examined as a whole. ‘MSPORTSGAMES’ is of unusual spelling and construction.

5. The mark possesses the minimum requisite level of distinctiveness and therefore is registrable.

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.

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).

The Office regrets that the applicant could not locate in Collins English Dictionary the meaning of the prefix ‘m’ provided in the objection letter of 15/11/2017. For the applicant’s convenience, the Office submits a snapshot of the online dictionary reference to avoid any possible confusion to the applicant:

Source: https://www.collinsdictionary.com/dictionary/english/m_2

Therefore, the meaning of the online dictionary is identical to the one provided by the Office in its objection letter and thus is well substantiated.

In terms of the argument that the sign can be interpreted in various ways such as “MS Ports Games” or “MPS TS games”, the Office reminds that 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.)

Moreover, descriptiveness must not be assessed in the abstract without reference to the context in which a mark is likely to be used. In particular, reference must be made to the goods and services for which the trade mark will be used. In the present case, the objected goods and services are downloadable computer software for participation in game tournaments on mobile and handheld devices and entertainment services, namely, arranging and conducting of competitions in the field of computer games and therefore, it is highly unlikely that the relevant consumer would perceive the mark as containing information regarding ‘MS port games’ as argued by the applicant.

The applicant disagrees with the applicant that the level of attention for downloadable computer software for participation in game tournaments on mobile and handheld devices is higher than average. Even if the applicant’s arguments were acceptable, the Office finds that a higher level of attention does not mean that that the members belonging to these circles of consumers, although more attentive, will be not able to perceive any descriptive connotation in the sign under examination. In that regard, it must be pointed out that a higher level of attention and awareness by the specialized public at issue does not imply that a sign is less subject to any absolute grounds of refusal. In fact, it can be quite the contrary, components which might be perceived as rather fanciful and distinctive by the public at large, may be perceived immediately as common and non-distinctive by a more aware and attentive public (see, by analogy, 11/10/2011, T‑87/10, Pipeline, EU:T:2011:582, § 27 to 28).

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59).

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts…(12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

This clearly applies to the present case. The sign ‘MSPORTSGAMES’ is a straightforward combination of three descriptive elements, which does not create an impression sufficiently far removed from that produced by the mere combination of the elements of which it is composed to amount to more than the sum of its parts. The term consists exclusively of a meaningful expression easily understood by the relevant public, who will not perceive it as a trade mark, but as a descriptive indication of the characteristics of the goods and services in question, namely the goods applied for enable the participation in sports game tournaments on mobile and handheld devices conveying information about their kind and intended purpose.

The Office finds, contrary to the applicant’s claims, that the sign ‘‘MSPORTSGAMES’ is made up of a grammatically correct combination of common English words, which leads to a meaningful expression that, seen in relation to the goods and services concerned, imparts an immediate and obvious descriptive message.

The ‘absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual or striking’ (judgment of 05/04/2001, T‑87/00, ‘EASYBANK’, paragraph 39). However, in the case in question, the applicant has failed to prove that the sign has a minimum degree of distinctive character and that the consumer would easily recognise the commercial origin of the goods and services in question.

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 17 391 608is hereby rejected for all the goods and services claimed.

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.

Aliki SPANDAGOU