DECISION

of the First Board of Appeal

of 8 July 2019

In case R 2430/2018-1

Gamma Entertainment
3300 Cote-Vertu Suite 406 Montreal Quebec  H4R 2B7 Canada	Applicant / Appellant

represented by Wolfgang Probstmeier, Lynarstraße 1, 14193 Berlin, Germany

APPEAL relating to European Union trade mark application No 17 900 719

The First Board of Appeal

composed of Th. M. Margellos as a single Member having regard to Article 165(2) and (5) EUTMR, Article 36 EUTMDR and Article 7 of the Decision of the Presidium on the organisation of the Boards of Appeal as currently in force

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 15 May 2018, Gamma Entertainment (‘the applicant’) sought to register the word mark

ADULT TIME

for the following list of goods and services:

Class 9 - Multimedia goods, namely DVD containing movies, in the field of adult entertainment for promotional distribution and sale;

Class 38 - Other multimedia materials namely, video on demand transmission services; video streaming services via the Internet featuring adult entertainment;

Class 41 - Entertainment services, namely providing a website offering adult entertainment; entertainment services, namely providing a website offering photographs, videos namely movies and related film clips for streaming and downloading.

2. The applicant maintained its request for registration notwithstanding the objections raised by the examiner.

3. On 11 October 2018, the examiner took a decision (‘the contested decision’) entirely refusing the trade mark applied for, under Article 7(1)(b) and (c), in conjunction with Article 7(2), EUTMR. The decision was based on the following main findings:

• In the present case, the objectionable goods covered by the mark applied for are everyday consumption/mass consumption goods and are mainly aimed at a professional public. In view of the nature of the goods in question, the awareness of the relevant public will be that of an especially well-informed and particularly observant and circumspect public. Moreover, since the mark is composed of English words, the relevant public with reference to whom the absolute ground for refusal must be examined is the English-speaking consumer in the Union (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 27/11/2003, T-348/02, Quick, EU:T:2003:318, § 30).

Article 7(1)(c) EUTMR

• The words ‘ADULT TIME’, considering the kinds of goods and services concerned that are namely for ‘adults’, immediately inform consumers without further reflection that the goods and services applied for are goods and services conceived for an adult public or audience. Therefore, the mark conveys obvious and direct information regarding the kind, quality and intended purpose of the goods and services in question. Moreover, the sign is descriptive of a certain characteristic of the goods, even if it describes a quite generic characteristic that, in principle, could be associated with many types of goods and services.

Article 7(1)(b) EUTMR

• As the mark has a clear descriptive character with respect to all the goods and services applied for, the impact of the mark on the target public will be mainly descriptive by nature, thus blurring the impression that the mark may indicate a commercial origin.

4. On 11 December 2018, the applicant filed an appeal against the contested decision, requesting that the decision be entirely set aside. The statement of grounds of the appeal was received on 6 February 2019.

Grounds of appeal

5. The arguments raised in the statement of grounds may be summarised as follows:

• It is not unusual to use English terms for a mark in all countries of the EU. Therefore it is not only the English-speaking consumer whose view determines if the mark has any distinctive character.

• The relevant public will know that the word ‘ADULT’ not only means a person over the age of 18. With reference to the word ‘TIME’, the term ‘ADULT’ is also known in the pornographic industry, i.e. adult entertainment.

• Indeed, one of the English meanings of the term ‘ADULT’ is ‘adult films, magazines and books show[ing] naked people and sexual acts and are not for children’.

• Contrary to the examiner’s finding, the mark ‘ADULT TIME’ has its own distinctive character and the relevant public will easily capture what it stands for.

Reasons

6. All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.

7. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible.

8. Article 7(1)(c) EUTMR provides that signs shall not be registered as EU trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, 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. Article 7(2) EUTMR provides that this shall apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

9. According to case-law, Article 7(1)(c) EUTMR prevents the signs or indications referred to therein from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim in the public interest, which requires that such signs or indications may be freely used by all (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 31).

10. Furthermore, signs or indications which may serve, in trade, to designate characteristics of the goods or service in respect of which registration is sought are, by virtue of Article 7(1)(c) EUTMR, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired the goods or service designated by the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 30; 27/02/2002, T-219/00, Ellos, EU:T:2002:44, § 28).

11. For a sign to fall in the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned to perceive immediately, without further thought, a description of the goods or services in question or one of their characteristics (20/07/2004, T-311/02, Limo, EU:T:2004:245, § 30).

12. Therefore, the mark may only be assessed, first, in relation to the understanding of the mark by the relevant public and, second, in relation to the goods or services concerned (30/11/2004, T-173/03, Nurseryroom, EU:T:2004:347, § 26; 27/02/2002, T-34/00, EU:T:2002:41, § 38).

Relevant public

13. The Board does not concur with the contested decision in the fact that the relevant public is mainly a professional public who is especially well-informed and particularly observant and circumspect. In view of the nature of the goods and services in question, the Board is of the opinion, that the public at stake is the public at large. Moreover, the relevant public’s level of awareness will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect.

14. The mark applied for is an expression made up of basic English words. Since English is widely used across the European Union, the public at large will be deemed to have at least a basic knowledge of English. Therefore, as argued by the applicant, it is the Board’s view that the relevant public with sufficient knowledge to grasp the meaning of the mark applied for can be found throughout the territory of the European Union.

Meaning of the sign applied for

15. The Board concurs with the applicant that ‘ADULT TIME’, apart from the definition outlined in the contested decision, is also known in the pornographic industry. Therefore it gives a clear connotation, meaning something ‘regarded as suitable only for adults, because of being pornographic’ as in the phrase ‘adult films’ referred to by the applicant in its statement of the grounds.

16. Moreover, the Board endorses the applicant’s finding that ‘ADULT TIME’ as a whole, is also known in the pornographic industry, i.e. adult entertainment, thus, as further alleged by the applicant, the relevant public will easily capture what it stands for, especially when being placed or assigned on the goods and services applied for.

Descriptiveness of the sign in relation to the goods and services

17. Next, it has to be assessed whether the relevant public would establish, immediately and without any difficulty, a concrete and direct relationship between the mark and the goods and services at issue.

18. In light of the above definition, in the present case, there is a direct link between the words ‘ADULT TIME’ and the goods and services applied for, which are, in general, multimedia and entertainment related goods and services in Classes 9, 38 and 41.

19. For the relevant consumer, the link is obviously clear and direct to draw the conclusion, and without particular or extended reflection, that the sign provides information about the kind and purpose of the applicant’s goods and services, i.e. ‘multimedia goods, namely DVD containing movies, in the field of adult entertainment for promotional distribution and sale’ in Class 9; ‘other multimedia materials namely, video on demand transmission services; video streaming services via the Internet featuring adult entertainment; entertainment services, namely providing a website offering adult entertainment; entertainment services, namely providing a website offering photographs, videos namely movies and related film clips for streaming and downloading’ in Classes 38 and 41, respectively.

20. In fact, the applicant itself indicates in the list of goods and services that they are in the field of adult entertainment. Although ‘ADULT TIME’ as such does not appear to be defined in any dictionary, in the context of the goods sold under the mark and the services rendered, it sends out an unequivocal message about the subject matter and kinds of goods and services at stake. It clearly conveys to customers that the goods and services provided under ‘ADULT TIME’ contain adult material.

21. Indeed, the sign describes the kinds of the goods offered, namely, ‘DVD containing movies in the field of adult entertainment for promotional distribution and sale’ for a specific consumer, i.e. adults, grown-ups or people who have attained the age of legal majority. It also indicates the characteristics of the content of online multimedia access and entertainment services, namely, by describing that those services are aimed for adults and by purchasing them the relevant public will spend time being entertained by watching adult-only content, i.e. on-line erotic videos or DVD movies.

22. Therefore, mark applied for, as argued by the applicant itself, denominates an erotic subject and so ‘ADULT TIME’ serves, in trade, to designate the kind and intended purpose thereof, namely erotic material which is broadcast, recorded or published, thus, the combination is indeed descriptive.

23. Therefore, contrary to the applicant’s assertion, the mark applied for, conveying the meaning set out above, presents a sufficiently close link with the relevant goods and services (limited the list of goods and services from the application date to adult entertainment), for that mark to fall within the scope of the prohibition laid down in Article 7(1)(c) EUTMR.

Article 7(1)(b) EUTMR

24. It is sufficient for one of the absolute grounds of refusal to apply for the sign not to be registered as a European Union trade mark. Nevertheless, the Board shares the contested decision’s finding that the sign applied for also lacks distinctiveness with respect to the goods and services concerned for the purpose of Article 7(1)(b) EUTMR. As confirmed by the Court, a mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 86; 14/06/2007, T-207/06, Europig, EU:T:2007:179, § 47 and the case-law cited therein).

25. Moreover, the Board notes that consumers who see the sign ‘ADULT TIME’ will perceive it as a promotional expression, indicating that the goods and services provided are of an adult content entertainment-wise. Therefore, it conveys an easily comprehensible invitation to the potential client to take advantage of the qualities of these goods and services, i.e. that they contain erotic content. Indeed, in light of the nature of the contested goods and services, and their purpose, as results from the specification itself, they can all, without exception, be presented in such a promotional manner in order to provide consumers with an incitement to select said goods and services.

26. Furthermore, the meaning of the contested sign, in the sense that it indicates a direct response to consumers’ specific demands gives an added value to them constituting an advantage on the market for these goods and services.

27. Therefore, the mark applied for, taken as a whole, is devoid of any distinctive character as regards the goods and services in question. It is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods and services concerned.

28. For these reasons, the trade mark applied for is also devoid of the distinctive character required, pursuant to Article 7(1)(b) EUTMR, for those goods and services.

29. In light of the above, the appeal is dismissed.

Order

On those grounds,

THE BOARD

hereby:

Dismisses the appeal.

Signed Th. M. Margellos

Registrar: Signed H.Dijkema