Decision on the inherent distinctiveness of an application for a

European Union trade mark (Article 7 EUTMR)

Alicante, 22/10/2019

DEHNS

St Bride's House

10 Salisbury Square

London EC4Y 8JD

REINO UNIDO

Application No:	017528514
Your reference:	21.14.M112430
Trade mark:	PERFECT PAIRS
Mark type:	Word mark
Applicant:	Netco Ltd UO195 Jalan Merdeka Federal Territory of Labuan 87007 MALASIA

The Office raised a partial objection on 26/04/2019 pursuant to Article 7(1)(b) and (c) EUTMR 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 30/08/2019 which may be summarised as follows.

• The trade mark applied for is inherently distinctive, is not merely descriptive, and is capable of discharging the essential function of a trade mark.

• The average consumer is part of a specialist public (either professional licensees of online gambling services, or consumers thereof) and is likely to pay a higher than average degree of attention. When they see a game referred to in capital letters, they will perceive it to have trade mark significance.

• The evidence provided by the Office is either irrelevant, inadmissible, or in fact serves to support the Applicant’s case.

• The natural dictionary meanings of “perfect” and “pairs” do not describe any relevant characteristics of online gaming or gambling services: Online gambling services have no size or shape; they cannot fall within the dictionary definition of “pair” relied upon by the Office. Online gambling service are normally acquired singularly or one at a time rather than in pairs. The connection to playing cards is too vague and indeterminate for the reference to “pairs” to be considered descriptive. At most, it is allusive to the outcome of the side bet, but that assumes prior knowledge of the rules.

• The average consumer would not perceive the sign as an indication of the kind or nature of the services in question, since “perfect pairs” does not describe any kind of entertainment or gambling service. There is therefore no sufficiently direct and specific relationship between the sign and the services in respect of which registration is sought. At most, “Perfect Pairs” denotes one of the proprietary games that an online casino may offer. It would be entirely circular to conclude that because the Mark designates a distinctive game which may be played in a casino, it is descriptive of casino services generally.

• The average consumer would not perceive the sign as an indication of the intended purpose of the services in question: “Perfect pairs” does not offer any description of the function or result of using online gambling services. The “pairs” which are said to be “perfect” are indeterminate, unspecified and unclear; there is no obvious connection with the services themselves, or how they are to be used. The sign alludes to the player’s aim of obtaining the correct combinations of cards and it is too vague to describe the rules or identify any of the innumerable pairs which are desirable outcomes in the game.

• The sign denotes a particular, proprietary side bet. Like other such side bets, it is perceived and acted upon by the average consumer as a designation of origin and an indication that the particular rules of that game will apply. The sign employs an alliteration to emphasise that it is a brand rather than a nondistinctive slogan or statement. The sign creates conceptual intrigue by alluding to the objective of the game without specifically identifying its rules, possible outcomes or mechanism of operation. The sign, as an expression in English, “perfect pairs” would not make conceptual sense. The semantic juxtaposition reinforces the distinctiveness of the term.

• The sign does not convey any “customer service statement” – there is no conceivable link between “PERFECT PAIRS” and the standard of the entertainment or online gambling service that the consumer might expect to receive. The Mark does not convey a “value statement” – it makes no reference to value and would not be understood by the average consumer to do so. The Mark is not a slogan or epithet, but rather the name of a game. The Mark is not an “inspirational or motivational statement” – it is not a statement at all, still less one that would be perceived as inspiring or motivating the consumer.

• The notion of a “perfect pair” is in any event too abstract to be acted upon. The average consumer would not use “perfect” to describe a “pair” in any normal context relating to online gambling services. Indeed, the use of that adjective only serves to signal that this combination of words is not a normal feature of a sentence, but serves a distinctive role. This effect is enhanced by the clearly alliterative effect of “Perfect Pairs” as a combination of words. Moreover, this finding is inconsistent with the evidence of how the sector concerned in fact perceives the Mark: it is clear from that evidence that both end consumers and professional licensees, upon first encountering the Mark, intrinsically regard it as distinctive of a particular proprietary game. The sign designates the trade origin of that game and conveys to the average consumer that they may place a particular side bet licensed from Netco.

• Since being launched in 2006, the online exploitation of Perfect Pairs has been exclusively licensed to Progressive Games Partners LLC, who in turn sub-licenses the right to make available the Perfect Pairs game under and by reference to the Mark to hundreds of third party licensees.

• The sign enjoys extensive trade mark protection around the world, including in Australia, New Zealand, Canada, South Africa and the USA, including in Class 41. There is also an existing EUTM for goods in Class 28.

• The Applicant reserves the right to file further evidence and submissions in support of its subsidiary claim to acquired distinctiveness under Article 7(3) EUTMR.

Decision

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.

In the present case, the Office does not reintroduce arguments which have already been discussed, but builds on those arguments and, in this refusal, addresses the arguments of the applicant in its observations of 30/08/2019.

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 services or of rendering of the service, or other characteristics of the services 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 services in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

The relevant public

Regarding the services to which an objection has been raised, the Office considers that they both belong to a highly specialised market sector in the field of gaming and are used by the average consumer. It must be held that the fact that the part of the relevant public is specialist or has a higher degree of attention cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Even if the degree of attention of the relevant public (general and professional) is higher than average, it does not necessarily follow that a weaker distinctive character of a sign is sufficient to render a sign registrable (12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48). In view of the nature of the services in question, even if the awareness of part of the relevant public is high, given the fact that they are related to gambling it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T-130/01, Real People, Real Solutions, EU:T:2002:301, § 24).

On the descriptive character of the trade mark applied for

As already explained in the enclosed notice of grounds for refusal, the trade mark applied for consists of the words ‘PERFECT’ and ‘PAIRS’. Furthermore, since the term ‘PERFECT PAIRS’ consists of English words, the relevant public in relation to which the absolute grounds for refusal are to be examined is the English-speaking public within the Union (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 27/11/2003, T-348/02, Quick, EU:T:2003:318, § 30). Taken as a whole, the term ‘PERFECT PAIRS’ immediately informs English-speaking consumers without further reflection that it means perfect pairs and therefore, that the services applied for are different kinds of gaming services, namely black jack in the variation of perfect pairs which can be played both online/offline and onsite.

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 structure of the sign in question does not diverge from English grammar rules but rather complies with them. Therefore, the relevant consumers would perceive the sign as providing information about the kind, nature or intended purpose of different kinds of gaming services that offer black jack in the variation of perfect pairs in Class 41.

Since the sign 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 trade mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59). For 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’ (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 31). 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). In the same sense, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (30/11/2004, T‑173/03, Nurseryroom, EU:T:2004:347, § 21).

In the present case, the term ‘PERFECT PAIRS’ considered as a whole, does not require any additional mental effort in order to lead the relevant public to the perception of describing the gaming services at issue as playing black jack in the variation of perfect pairs. Therefore, the sign conveys obvious and direct information regarding the intended purpose, nature or kind of the services in question. The sign does not have any unusual or ambiguous character, in the light of English linguistic rules of phonetics and/or semantics, that would lead the relevant public, which is, as mentioned above, reasonably well informed and reasonably observant and circumspect, to make an association of a different kind.

As regards the argument that insufficient evidence was provided, the Court has confirmed that where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer services which are likely to be known by anyone and are in particular known by the consumers of those services. In such a case, the Board of Appeal is not obliged to give examples of such practical experience. (15/03/2006, T-129/04, Shape of a plastic bottle, EU:T:2006:84, § 19). The Operations Department applies the same standard.

In the case of word marks, it should also be noted that they are protected as such and that upper or lower case is therefore irrelevant. (08/09/2005, Joined Cases T-178/03 and T-179/03, DigiFilm/DigiFilmMaker, EU:T:2005:303, § 30).

It follows that the link between the words ‘PERFECT PAIRS’ and the services referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR. Given that the mark has a clear descriptive meaning in relation to the services applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

On the non-distinctive character of the trade mark

As explained in the enclosed letter, and according to the case-law of the Court of Justice, the fact that a sign is descriptive of a characteristic of the goods or services leads to the conclusion that the sign is devoid of distinctive character (19/09/2002, C-104/00 P, Companyline, EU:C:2002:506, § 21). 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’ (05/04/2001, T‑87/00, Easybank, EU:T:2001:119, § 39). This is clearly applicable to the present case, as has been demonstrated above. Given that the sign has a clearly descriptive meaning in relation to the services applied for, the impact of the sign on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the sign could indicate a trade origin.

The sign for which protection is sought would simply be seen in the relevant market sector as a laudatory expression, the function of which is to communicate a customer service statement, a value statement or an inspirational or motivational statement. Moreover, in the present case, the relevant public will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed, which merely serves to highlight positive aspects of the services in Class 41 in question, namely that they promise to provide black jack in the variation of perfect pairs. These gaming services can be provided both on site and online.

When assessing the sign ‘PERFECT PAIRS’ as a whole, it cannot be considered an allusive, vague, indeterminate, unspecified or unclear combination open to interpretation creating conceptual intrigue to the extent that it would make the sign distinctive. There is nothing about the term ‘PERFECT PAIRS’ that might, beyond its obvious promotional meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the services designated. Even if the sign were used alone, without any other sign or trade mark, the relevant public could not, in the absence of prior knowledge, perceive it other than in its promotional sense. (05/12/2002, T 130/01, Real People, Real Solutions, EU:T:2002:301, § 28). Contrary to the applicant’s argument, it is highly unlikely that the average consumer, when seeing the expression ‘PERFECT PAIRS’ in relation to the services at issue, would perceive it as an allusive, vague, indeterminate, unspecified or unclear combination open to interpretation creating conceptual intrigue. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant's services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant's services from those of a different commercial origin (15/09/2005, T 320/03, Live richly, EU:T:2005:325, § 84). An artificial and fastidious linguistic analysis would be needed to deem this expression to have no particular meaning or to find that it has any particular originality, whereas the perception of it according to its direct meaning is likely to be automatic.

The Office agrees that a sign must be considered as a whole. However, in the present case it is the whole term that is descriptive and non-distinctive. As already explained, ‘PERFECT PAIRS’ describes characteristics of the services in question. There is nothing surprising or unusual about this term; English speaking consumers must be expected to immediately understand the meaning of a combined noun describing the services at issue. Therefore, the Office maintains that the sign in question is not capable of distinguishing the services for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) EUTMR. Only a minimum degree of distinctive character suffices for the absolute ground for refusal set out in that Article not to apply. However, in the present case, the required minimum degree of distinctive character could not be established. It is clear from the case-law of the Court of Justice in relation to Article 7(1)(b) EUTMR that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings and, therefore, being able to fulfil the essential function of a trade mark. From the impression produced by the mark, the connection between the relevant services and the mark is not sufficiently indirect or allusive to endow the mark with the minimum degree of inherent distinctiveness required under Article 7(1) (b) EUTMR (see also 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 99). The Office considers, therefore, that it is highly unlikely that, without substantial use, the consumer would perceive the mark as a badge of origin distinguishing the services for which registration is sought.

Therefore, the sign applied for is as well ineligible for registration under Article 7(1)(b) and Article 7(2) EUTMR because it is devoid of any distinctive character.

Previous marks accepted by the IPOs of Australia, New Zealand, Canada, South Africa and the USA

The Applicant mentions that the IPOs of Australia, New Zealand, Canada, South Africa and the USA have respectively accepted the applicant’s trade mark applications ‘PERFECT PAIRS’ in class 41.

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).

Moreover, the Applicant alleges that the online exploitation of Perfect Pairs has been exclusively licensed to Progressive Games Partners LLC, who in turn sub-licenses the right to make available the Perfect Pairs game under and by reference to the Mark to hundreds of third party licensees.

The Office cannot find any of these rights claimed having an effect on the question of the inherent distinctiveness or descriptiveness of the application at hand.

Previous marks accepted by the Office

As regards the applicant’s argument that 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, PERFECTID, 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).

The applicant claims that the Office registered EUTM No 2 987 717 ‘PERFECT PAIRS’.

This trade mark, however, differs from the sign at issue, in particular since they do not coincide in their respective goods and services. Therefore, they may have a different overall meaning in relation to the services in question. Furthermore, it should be pointed out that the submitted example of an EUTM registration may have been carried out under different administrative practice standards. Since then, the practice of registration has evolved in accordance with the highest juridical jurisprudence.

Outcome

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for EUTM No 17 528 514 is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b) and (c) in the United Kingdom, Ireland and Malta for the following services:

Class 41 Entertainment services including entertainment services in respect of gaming; provision of online gaming facilities; gaming services provided over a global computer network; online gaming services; online interactive gaming services; providing online games; providing online entertainment services featuring links to online video games via an internet website portal; providing online games and video games; entertainment in the nature of, gambling; casino and gaming services; providing casino and gaming services online or by means of interactive tv systems; games of luck or chance available through computer communications; gambling including online gambling; gambling services including online gambling services.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been 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.

Frank MANTEY