Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 05/12/2018

Grünecker Patent- und Rechtsanwälte PartG mbB

Leopoldstr. 4

80802 München

ALEMANIA

Application No:	017928812
Your reference:	EW36879AFKDisa
Trade mark:	MAKE PLAY DISCOVER
Mark type:	Figurative mark
Applicant:	Nintendo Co., Ltd. 11-1 Hokotate-cho, Kamitoba Minami-ku, Kyoto-shi, Kyoto 601-8501 JAPÓN

The Office raised an objection on 07/08/2018 pursuant to Article 7(1)(b) and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 27/09/2018, which may be summarised as follows:

1. The sign is fanciful. The consumers will not perceive it as three separate terms merely describing the purpose of the goods but rather as a unitary mark. The sign is grammatically incomplete because it consists of three verbs placed next to each other without a noun as a reference word. It therefore requires interpretation.

2. The EUIPO has registered similar expressions in the past. The similar marks mentioned by the applicant are all word marks while the present sign is a figurative mark.

3. The device element (a rectangle in a combination of three colours) alone (without the word elements) is distinctive and could be registered as a trade mark (in line with the Office’s Guidelines, Part B, Section 4, Chapter 3, paragraph 14.2). The EUIPO has in the past registered a relatively descriptive combination of words with a blue and green device element in the background. In the present case, the Office has not given enough weight to the device element and the colour combination therein.

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)(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).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

1. The Office disagrees with the applicant’s argument that the sign is fanciful.

1. While it is true that, for the purposes of assessing distinctive character, the mark must be considered as a whole, 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).

The sign consists of three separate verbs in the imperative mood. The fact that there is no noun in the sign does not make the sign distinctive. A trade mark is perceived not in isolation but as applied to goods or services. Therefore, contrary to the applicant’s argument, the absence of a noun will not require interpretation because the relevant consumer will make a direct link with the relevant goods and services, namely, that goods and services such as tablet computers, smartphones, paper, paper crafts materials, games, toys or related entertainment or educational services enable one to make things, play with things and discover things.

The expression ‘MAKE PLAY DISCOVER’ does not deviate structurally from English grammar rules, but conforms to them. The juxtaposition of the words in the mark is not exceptional or original. The message conveyed by the sign applied for is clear, direct and immediate. It is not in any way imprecise or open to obviously different interpretations. Nor is it allusive or suggestive. In addition, the use of expressions in short imperative slogans or incomplete phrases is typical in advertising and sales promotion.

The Office draws attention to a Board of Appeal decision (24/03/2010, R 1396/2009-1, PLAY.SHARE.TOUCH). The verbal structure of the sign in that case is similar to that in the present case. According to paragraphs 21 and 31,

… there is nothing syntactically unusual about the structure of the sign applied for. It does not divert from English word composition rules but rather complies with them. Therefore, it will not be perceived as unusual by the relevant consumers.

[…]

… the use of verbs in the imperative is customary in the field of advertising. Therefore, it reinforces the fact that, at first sight, that mark will be perceived as a promotional message inciting the relevant consumers to use the goods in question or informing him them about the desired effect of using them (see judgment of 15 September 2009 in Case T‑471/07, Wella AG v OHIM (‘Tame it’) [2009] ECR publication pending, at paragraph 32).

Paragraph 32 states that: ‘… the fact that three verbs are used together does not confer distinctive character on the trade mark …’

The Office maintains that the mark does not give any indication of commercial origin other than a banal message about the purpose of the goods and services in question.

2. 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).

The Office points out that some of the marks mentioned by the applicant were accepted only partially (EUTM No 16 509 358) or after a limitation requested by the applicant (EUTM No 13 341 491). In addition, some of the marks were registered more than 10 years ago. It must be noted that Office practice has evolved over the years.

3. As regards the applicant’s argument that the Office has not given enough weight to the device element, the Office maintains that the three colours applied to the background of the three words merely highlight the three options available. These elements do not possess any feature regarding the way in which they are combined that allows the mark to fulfil its essential function in relation to the goods and services for which protection is sought.

The Office does not concur with the applicant’s view that the device element alone could be registered as a trade mark. Each case must be assessed on its own. The Office draws attention to a Board of Appeal decision (03/09/2015, R 2745/2014‑1, Device of five horizontally arranged circles in different colours (fig.)) in which basic geometrical shapes in different colours were refused. According to paragraph 23 of that decision, ‘… The alignment of simple geometric shapes in various colours, which is not capable, at first glance, of conveying a brand message, will therefore not be perceived as an indication of origin of the contested services …’

The present case is, however, not a colour mark and the applicant’s arguments in relation to colour marks are irrelevant.

The question in the present case is whether, in relation to the goods and services concerned, the figurative element changes the meaning of the sign from the perspective of the relevant consumers.

The figurative element is an elementary, geometric shape (a rectangle in a combination of three colours) that has no special features that might catch the consumer’s attention or would be unusual in any way. Colours in general possess little inherent capacity for communicating specific information, especially since they are commonly and widely used.

As regards the figurativeness of the word elements, in general word elements appearing in basic/standard typeface, lettering or handwritten-style typefaces — with or without different font styles (bold, italics) — are not registrable. In the present case, the typeface used for the words ‘MAKE PLAY DISCOVER’ is a basic typeface and does not add distinctiveness to the sign.

Consequently, the figurative elements do not change the meaning of the sign in relation to the goods and services concerned, nor do they have any features that would trigger a cognitive process in the minds of the relevant public or require an interpretative effort.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 17 928 812 is 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.

Stanislava MIKULOVA