Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 13/02/2018

Astrid Vroom

Cobden Road Old School Mews 3

Sevenoaks Kent TN133UB

REINO UNIDO

Application No:	017527813
Your reference:
Trade mark:	Casino Patience
Mark type:	Word mark
Applicant:	Astrid Vroom Cobden Road Old School Mews 3 Sevenoaks Kent TN133UB REINO UNIDO

The Office raised an objection on 06/12/2017 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 11/12/2017, which may be summarised as follows.

1. Patience is not offered anywhere in Europe as a casino or online game. Moreover, patience is a game which in principle is offered for free and does not involve any element of betting.

2. According to the applicant, even if the words ‘Patience’ and ‘Casino’ are not distinctive enough, the combination of the two words is.

3. The applicant is considering disclaiming exclusive right to the elements of the sign which are non-distinctive, pursuant to Article 38(2) CTMR.

4. The Office had previously allowed registration of similar marks containing the word ‘Casino’.

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.

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 services’ 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 (judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 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.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 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’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

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

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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).

As to the applicant’s arguments

1. Patience is not offered anywhere in Europe as a casino or online game. Moreover, patience is a game which in principle is offered for free and does not involve any element of betting.

The above applicant’s argument is not a valid contention in favour of the registration of the sign at issue.

It must be observed that … the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) [EUTMR], does not depend on there being a real, current or serious need to leave a sign or indication free (see judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 39). Accordingly, for the absolute grounds for refusal to apply, third parties, and more particularly its competitors, do not need to use the sign at issue to designate the goods to which the application relates.

In order for the Office to refuse to register a trade mark 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 (see judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 32, emphasis added).

In other words, according to case-law the distinctive character must be assessed by means of a prognostic decision and without regard to the use made by the applicant or its competitors.

2. According to the applicant, even if the words ‘Patience’ and ‘Casino’ are not distinctive enough, the combination of the two words is.

The Office agrees with the applicant that when a trade mark that consists of a neologism or a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) EUTMR, ‘it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so’ (judgment of 12/01/2005, joined cases T‑367/02, T‑368/02 and T‑369/02, ‘SnTEM’, paragraph 31).

However, when assessing the distinctive character of a trade mark consisting of a combination of elements, the mark needs to be considered as a whole. However, that does not preclude prior examination of the trade mark’s individual features (09/07/2003, T‑234/01, Orange und Grau, EU:T:2003:202, § 32 and 19/09/2001, T‑118/00, ‘Tablette carrée blanche, tachetée de vert, and vert pâle’, paragraph 59).

With regard to the present case, the Office considers that it correctly assessed the trade mark and sufficiently justified the objection raised according to the above guidelines. Following thorough examination, the Office established that the word combination ‘Casino Patience’ will not enable the relevant public to distinguish the goods covered by the application from those of a different commercial origin (see, to that effect, judgment C‑304/06 P, ‘Eurohypo’ paragraph 69).

This is due to the fact that the relevant English-, French- and German-speaking public, confronted with the sign ‘CASINO PATIENCE’ in the context of Internet gaming software in class 9, will recognize immediately and without further reflection that the Internet Gaming Software is intended for playing patience in a virtual casino.

As a general rule, a mere combination of elements, each of which is descriptive of characteristics of the goods or services themselves, remains descriptive of those characteristics¹. Merely bringing those elements together without introducing unusual variations, in particular as to syntax or meaning, cannot result in anything other than a descriptive sign.

However, if due to the unusual nature of the combination in relation to the goods or services a combination creates an impression that is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, that combination will be considered more than the sum of its parts (judgment of 12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 39 and 43). These notions, ‘unusual nature of the combination’, ‘impression sufficiently far removed’ and ‘more than the sum of its parts’ have to be interpreted as meaning that Article 7(1)(c) EUTMR does not apply when the way in which the two descriptive elements are combined is in itself fanciful.

In the present case, due to the impression produced by the mark in connection with the relevant goods, the sign ‘Casino Patience’ is not sufficiently indirect to endow the mark with the minimum level of inherent distinctiveness required under Article 7(1)(b) EUTMR. The Office therefore considers that it is highly unlikely that, without a substantial use, the consumer could perceive it as a badge of origin to distinguish the applicant’s goods beyond the strictly descriptive information conveyed.

3. The applicant is considering disclaiming exclusive right to the elements of the sign which are non-distinctive, pursuant to Article 38(2) CTMR.

With regard to this argument, it should be noted that pursuant to Regulation No 2015/2424 amending Regulation No 207/2009 on the Community trade mark, after 23/03/2016 it is no longer possible to file a disclaimer to indicate that protection is not requested for a specific element of a mark.

4. The Office had previously allowed registration of similar marks containing the word ‘Casino’.

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 a fact that the Office should endeavour to apply a consistent practice in examining trade marks in relation to absolute grounds for refusal. However, apart from the fact that registration practices develop over time, it is unfortunately inevitable that doubtful trade marks are sometimes registered.

‘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).

Nevertheless, and by way of clarification, in order for previous registrations to be considered analogous to the present case, it is not enough to simply show that they contain either one, or both, of the component parts of the sign applied for, because the sign has been objected to when viewed as a whole and not because of the meanings of its individual component parts. The previous registrations cited by the applicant are all sufficiently dissimilar to the present application for them to be dismissed as arguments in favour of the registration of the previous sign.

According to the settled case-law, there is a clear overlap between the scope of grounds for refusal set out in Article 7(1)(b) to (d) EUTMR. In particular, a word mark which is descriptive of characteristics of goods or services within the meaning of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) of the regulation (see 12/06/2007, T‑190/05 „TWIST & POUR”, paragraph 39). The above is clearly applicable to the present case.

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 017527813 is hereby rejected for all the goods 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.

Anna MAKOWSKA

Attachment: Notice of 06/12/2017 of absolute grounds for refusal