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

(Article 7 EUTMR)

Alicante, 29/03/2018

MARCH & ASOCIADOS

Passeig de Gràcia, 103, 7ª Planta

E-08008 Barcelona

ESPAÑA

Application No:	017496522
Your reference:	BMC16665
Trade mark:	RULES OF SURVIVAL
Mark type:	Word mark
Applicant:	Hong Kong NETEASE Interactive Entertainment Limited 1/F, Xiu Ping Commercial BLDG, 104 Jervois ST. Sheung Wan HONG KONG REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 27/11/2017 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 which is an integral part of this decision.

The applicant submitted its observations on 21/01/2018 which may be summarised as follows.

The trade mark is not descriptive or devoid of distinctive character because:

1. The trade mark consists of the original combination of three independent words that draws the attention of the consumer and is a sufficiently original and capricious combination that is not too long and so will be easily retained and remembered.

2. The relevant consumer, whether or not they understand the words, will not understand them to describe an ‘entertainment game or service related to survival techniques’.

3. There is no indication, apart from the words ‘RULES OF SURVIVAL’ of the kind, type or quality of the goods and services (board game, group game, online game…) nor is it indicated that the game will contain a series of survival techniques or the rules of the game.

4. There is no connection that makes the requested trademark descriptive of the business origin of the products but rather the denomination makes the sign distinctive with respect to the products it intends to protect.

5. The Office’s interpretation of the sign as an "indicator of the subject matter of a game or entertainment service providing online games (and related) about survival techniques" not only exceeds the reading that can be made by the consumer, either specialized or not, but it does not coincide with the products that are requested (example, animated cartoons).

6. The goods and services objected to do not, in fact, incorporate survival rules or techniques. The trade mark would be descriptive were it to include ‘computer online games to survive or ‘online games with rules of survival’ which is not the case.

7. The applicant refers to marks that have already been registered by the Office.

- A list of registered trade marks in Classes 9 and 41 are listed (with different words and meanings) and the applicant is of the opinion that its mark should also be allowed to proceed to register.

- A list of registered trade marks in Classes 9 and 41 are listed that either contain the verbal element ‘RULES’ or ‘SURVI’ and the applicant requests that its mark ‘RULES OF SURVIVAL’ be allowed to proceed to register in the same way.

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 for all the goods and services applied for:

Class 9 Computer game software; Computer game discs; Downloadable computer game programs; Computer game software downloadable from a global computer network; Electronic game software for wireless devices; Interactive multimedia computer game programs; Recorded computer game programs; Electronic game software for handheld electronic devices; Virtual reality game software; Augmented reality software for use in mobile devices; Augmented reality software; Electronic game software for mobile phones; Animated cartoons.

Class 41 Entertainment services, namely, providing on-line computer games; Providing interactive multi-player computer games via the internet and electronic communication networks; Providing information on-line relating to computer games and computer enhancements for games; Electronic games services provided by means of the internet; Organization of competitions [education or entertainment]; Providing on-line electronic publications, not downloadable; Game services provided online from a computer network; Game services provided by means of communications by computer terminals or mobile telephone; Providing online entertainment in the nature of game shows; Information relating to computer gaming entertainment provided online from a computer database or a global communication network.

General remarks on Article 7(1)(c) EUTMR

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).

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially.

(12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

Observations of the applicant

1. The trade mark consists of the original combination of three independent words that draws the attention of the consumer and is a sufficiently original and capricious combination that is not too long and so will be easily retained and remembered.

The Office does not concur with the applicant’s view in this respect. The combination of the three words ‘RULES OF SURVIVAL’, gives a descriptive and clearly understandable message to the relevant English-speaking consumer when faced with such a sign on the goods and services in question. It will be seen as an indication of the subject matter of those goods and services which all relate to games that will have rules to follow in order to survive, or in order to win.

It is increasingly common that the purpose of computer games, both on and offline, is to ‘survive’ in order to win. In fact survival games are a subgenre of action video games and an internet search for ‘survival games’ gives many hits that show survival games from many different competitors (see annex 1). All such games have a characteristic in common, that is they all have rules to follow in order to survive, or, in other words, rules of survival.

Even in other less sophisticated games and competitions, the concept of the survivor being the winner is nothing new and rules for survival are also an integral part of such games.

Therefore, the relevant consumers would perceive the sign as providing information about the subject matter of the goods and services in question or indeed, a characteristic of the goods and services, namely the rules for survival.

2. The relevant consumer, whether or not they understand the words, will not understand them to describe an ‘entertainment game or service related to survival techniques’.

We are only concerned with the English-speaking part of the public in this case, given that the words that compose the mark are English words. If the combination is considered descriptive or non-distinctive for the average English-speaking consumer, that is enough for the mark to be refused registration pursuant to Article 7(2) EUTMR. Contrary to what the applicant claims, it is considered that the relevant public will, given the natural meaning of the words and the goods and services in question, understand them to describe goods or services related to survival techniques or games in which survival techniques are necessary.

3. There is no indication, apart from the words ‘RULES OF SURVIVAL’ of the kind, type or quality of the goods and services (board game, group game, online game…) nor is it indicated that the game will contain a series of survival techniques or the rules of the game.

The Office does not refer to ‘kind, type or quality’ but rather to the subject matter of the goods and services in question as has been explained above. The combination ‘RULES OF SURVIVAL’ on the goods and services in question is enough in itself to indicate that they will contain survival techniques or rules for survival.

All of the goods in Class 9 are electronic games or software, VR or cartoons that can be used in such games. The services in Class 41 are entertainment services relating to games or competitions or online publications or information that may contain the rules of the game, or the ‘RULES OF SURVIVAL’.

Therefore, the mark may be seen as descriptive for the subject matter or a characteristic of the goods and services in question.

4. There is no connection that makes the requested trademark descriptive of the business origin of the products but rather the denomination makes the sign distinctive with respect to the products it intends to protect.

If the mark were to denote business origin or trade origin, then it would be acceptable as it would be capable of distinguishing the goods and services of the applicant from those of other undertakings. However, this is not the case with the mark in question, ‘RULES OF SURVIVAL’, which, contrary to the view of the applicant, does not make the sign distinctive with respect to the goods it is applied for. The connection between the goods and services and the mark is clear. The consumer will have no doubt when faced with such a sign on the relevant goods and services that it refers to the subject matter of the games in question, or to the simple characteristic of the rules of the game, the ‘rules of survival’ that all these games will have.

5. The Office’s interpretation of the sign as an "indicator of the subject matter of a game or entertainment service providing online games (and related) about survival techniques" not only exceeds the reading that can be made by the consumer, either specialized or not, but it does not coincide with the products that are requested (example, animated cartoons).

6. The goods and services objected to do not, in fact, incorporate survival rules or techniques. The trade mark would be descriptive were it to include ‘computer online games to survive or ‘online games with rules of survival’ which is not the case.

Whether or not the applicant’s goods actually include survival rules is irrelevant. The fact that the relevant consumer can understand this to be the case is sufficient to find the mark descriptive. The applicant admits that if specification were to include ‘computer online games to survive or ‘online games with rules of survival’, then it would be descriptive. The Office points out that the broad categories of goods and services indicated in the specification include the subgenre of survival games that includes ‘computer games to survive’ and ‘online games with rules for survival’, and therefore the mark is objectionable for those goods and services.

7. The applicant refers to marks that have already been registered by the Office.

As regards the applicant’s argument that a number of similar registrations 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).

In any case the Office makes the following remarks in relation to the list of marks presented:

• A list of registered trade marks in Classes 9 and 41 are listed (with different words and meanings) and the applicant is of the opinion that its mark should also be allowed to proceed to register.

It is not clear how this list can be ‘extrapolated perfectly’ to the mark ‘RULES OF SURVIVAL’ as is claimed by the applicant. The only connection is that the list also refers to the names of computer games and that they contain verbal elements. The fact that the names contain words such as ‘duty’ ‘thrones’, ‘war’, ‘battle’, etc., none of which appear in the present mark, does not lead to the conclusion that the applicant’s mark should also be allowed to access the register. No reasoning is given by the applicant so this claim must be set aside.

• A list of registered trade marks in Classes 9 and 41 are listed that either contain the verbal element ‘RULES’ or ‘SURVI’ and the applicant requests that its mark ‘RULES OF SURVIVAL’ be allowed to proceed to register in the same way.

The applicant refers to two groups of trade mark, one containing the verbal element ‘RULES’ and the other containing ‘SURVI’ both of which also appear in ‘RULES OF SURVIVAL’. The applicant does not understand how these marks have been accepted while ‘RULES OF SURVIVAL’ has not.

The Office points out that the mere fact that marks have been accepted in the past that contain one of the verbal elements, or part thereof, of ‘RULES OF SURVIVAL’ does not imply that the present mark is eligible for registration.

It is concluded, that ‘RULES OF SURVIVAL’, taken as a whole, is descriptive and devoid of any distinctive character for the reasons outlined above and in the attached letter, and is not capable of distinguishing the goods and services to which an objection has been raised within the meaning of Article 7(1)(b) and (c) and Article 7(2) EUTMR.

Therefore, 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 17 496 522 is hereby rejected.

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.

Lynn BURTCHAELL

Annex 1 (internet search for ‘survival games’ 29/03/2018)