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

(Article 7 EUTMR)

Alicante, 19/06/2019

TAYLOR WESSING LLP

5 New Street Square

London EC4A 3TW

REINO UNIDO

Application No:	017936722
Your reference:	ILY5.UUEU2
Trade mark:	Bubble Shooter
Mark type:	Figurative mark
Applicant:	Ilyon Dynamics Ltd Lev Haaretz Industrial Zone POB 731 Rosh Haayin 4810602 ISRAEL

The Office raised an objection on 27/08/2018 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 26/10/2018, which may be summarised as follows.

1. The applicant argues that the contested goods and services are mainly addressed to the general public though they can also target the specialised consumers with specific professional knowledge or expertise in gaming field. In any event, the fact that consumer particular attention when purchasing some of the goods and services, does not mean that the threshold for the sign to be considered descriptive or non-distinctive must be to a certain extent higher. Therefore, the applicant disagrees with the Office’s conclusion that the relevant consumers would perceive the sign as providing information that the goal/subject of gaming software, programs, publications applied for as well as various gaming services is to shoot structures that are round like a bubble. When the sign is affixed to a computer gaming hardware and computer peripheral, it will immediately inform consumers that this equipment is intended to be used in a computer game the goal of which is to shoot bubbles.

2. The applicant further argues that the sign in question is a figurative mark made up of the words ‘BUBBLE’, ‘SHOOTER’ and figurative elements: the four half shaped ball device elements all coloured differently. In addition the words ‘BUBBLE’ and ‘SHOOTER’ are also stylised. However, the Office has unnecessarily focused on the assessment of the verbal elements of the sign independently, rather than focusing on the relevant public’s perception of the sign as applied for (combination of the words ’BUBBLE SHOOTER’ and the figurative and stylised elements). Furthermore, the coloured balls in the sign are not actually bubbles as bubbles are necessarily see-through and normally without any colour, whereas the balls in the sign are solid and strongly coloured.

3. The applicant claims that the Office should have supported its findings with persuasive evidence (such as internet searches) that the relevant public may perceive the sign applied for as describing the internet purpose of the goods or services in question. However, the Office has provided no evidence to substantiate the claim that the sign is descriptive. As regards the use of the sign, the applicant provides a list of those entitled to use the sign in question (Exhibit 1). In addition, the applicant also provides a list of unauthorised websites, which were taken down by the applicant.

4. The applicant asserts that the threshold of distinctiveness is not high and a minimum degree of distinctiveness is sufficient to render a sign registrable. In addition, if there is a possible reasonable scenario where a sign ‘BUBBLE SHOOTER’ would be distinctive, then it should be allowed for registration.

5. The applicant submits that the objection under Article 7(1)(b) EUTMR was based solely on the descriptiveness of the sign. Therefore, if the objection under Article 7(1)(c) EUTMR falls away, so must the objection under Article 7(1)(b) EUTMR.

6. The applicant also argues that although the words ‘BUBBLE’ and ‘SHOOTER’ are everyday English words, the combination does not have any direct or specific meaning in respect of the contested goods and/or services. The Office has limited the assessment to the separate meanings of the words rather than assessing their combination. The consumer would not use the words ‘BUBBLE’ or ‘SHOOTER’ to designate a game, even if the premise of the game was to shoot bubbles. In addition, even if the term ‘SHOOTER’ was descriptive of actual shooting games, it is at most suggestive in the present case as applicant’s games are puzzle games. The applicant explains that puzzle games are genre of video game that emphasise puzzle/problem solving while shooting games have different characteristics.

7. The applicant notes that the Office has accepted a number of similar marks, such as: EUTM 17 589 871 ‘BUBBLE SHOOTER GENIUS’, EUTM 17 593 203 ’BUBBLE SHOOTER LEGEND’, EUTM 719 179 ‘THE BUBBLE FACTORY’, EUTM 1 041 125 ‘BUBBLE ISLAND’, EUTM 1 073 863 ‘BUBBLE POPP’, etc.

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)(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.

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 distinctive character and descriptiveness of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T 348/02, Quick, EU:T:2003:318, § 29).

The applicant argues that the relevant consumer in this case is general public though the goods and services can also target the specialised consumers with specific professional knowledge or expertise in gaming field. The Office does not question this finding; in addition, as correctly indicated by the applicant, even if the goods and services in question were partially directed at professional consumers, the distinctiveness threshold is not to be considered higher.

The applicant claims that the Office has limited the assessment to the separate meanings of the words rather than assessing their combination. It must be pointed out that 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 each of the trade mark’s individual features (09/07/2003, T 234/01, Orange und Grau, EU:T:2003:202, § 32). Following the above, in a sign containing two verbal elements the Office must identify the meaning of those elements and subsequently assess their combination.

Therefore, the Office has established that the word ‘BUBBLE’, contained in the sign, has the following meaning a structure that is round like a bubble (information extracted from Macmillan dictionary on 27/08/2018), while the word ‘SHOOTER’ indicates a person or thing that shoots (information extracted from Collins dictionary on 27/08/2018). Based on these meanings the Office concluded that the relevant English-speaking consumer would understand the sign as having the following meaning: a person or thing that shoots structures round like a bubble.

Considering the above, it is maintained that in the present case, the relevant consumers would perceive the sign as providing information that the goal/subject of gaming software, programs, publications applied for as well as various gaming services is to shoot structures that are round like a bubble. When the sign is affixed to a computer gaming hardware and computer peripheral, it will immediately inform consumers that this equipment is intended to be used in a computer game the goal of which is to shoot bubbles.

The Office is of the view that the combination ‘BUBBLE SHOOTER’ does not have any unusual or ambiguous character, in the light of English linguistic rules on syntax, grammar, phonetics and/or semantics, that would lead the relevant public to make an association of a different kind. There are no mental steps required to deduce the meaning of the words ‘BUBBLE SHOOTER’. On the contrary, the applicant failed to reason precisely what in the combination of the words ‘BUBBLE’ and ‘SHOOTER’ creates certain originality, imaginativeness and resonance that would make it memorable.

When assessing the sign as a whole, contrary to the applicant’s argumentation, the Office did take into account the figurative elements and the stylisation of the sign. The sign is composed of the verbal elements ‘BUBBLE SHOOTER’ depicted in different colours (red and blue) in a slightly stylised font and four round elements in different colours (blue, green, pink and yellow).

As to the verbal elements (their font and colours) they do not cause any surprise effect or a mental process of such a nature that they may be perceived as more than a merely decorative feature. In addition, it is rather common in the field of gaming to use various colours that give the impression of being animated and attract the attention of the consumer.

As regards the four round figurative elements in different colours, the Office is of the view that the figurative elements would be seen merely as a means of enhancing the message given by the descriptive text contained in the mark, and not as an identifier regarding the commercial origin of the mark. The applicant argues that the coloured balls in the sign are not actually bubbles as bubbles are necessarily see-through and normally without any colour, whereas the balls in the sign are solid and strongly coloured. However, as indicated in the Office’s objection letter dated 27/08/2018, a bubble may be defined as a structure that is round like a bubble. Therefore, in particular taking into account the meaning of the verbal elements of the sign, it is reasonable to consider that consumers would perceive the figurative elements sign as a representation of bubbles.

Thus, the relevant public, when seeing the applicant’s sign as a whole, will immediately perceive a meaningful, descriptive indication of the kind, intended purpose and subject matter of the goods and services in question. Neither the font and colours of the lettering nor the figurative elements are sufficient to divert the consumer’s attention from the descriptive and non-distinctive verbal elements ‘BUBBLE SHOOTER’ in the sign and will not add the required level of distinctiveness for the mark applied for to be perceived as being distinctive.

Given that it is maintained that the mark has a clear descriptive meaning in relation to the goods 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.

The applicant claims that the sign can at most be suggestive as the applicant’s games are not shooting games but puzzle games. As regards this argument, the Office points out that the assessment of the sign was made with regard to the specific goods and services for which the protection of the sign is sought (taking into account the precise wording). In the present case the goods and services in Classes 9 and 28 are:

Class 9 Downloadable computer game programs; Computer game programmes downloadable via the internet; computer game software for use on mobile and cellular phones; computer game software; computer games; downloadable computer games; recorded computer programmes; computer game programs; games software; computer peripherals; computer games hardware; computer games software supplied from the Internet; interactive software; downloadable publications.

Class 41

Entertainment services; online entertainment services; online gaming services; game services provided on-line from a computer network; non-downloadable internet games; arcade game services; single player video game services; puzzle video game services; entertainment services, namely, providing an on-line computer game; entertainment services, namely, conducting contests online, and organizing, planning and executing entertainment and games events between computer game players and interest groups via a website.

Therefore regardless of what is the actual product of the applicant, the assessment of the sign must be made and was made taking into account the above-mentioned list of goods in Class 9 and the services in Class 28. In the Office’s view there is a sufficiently close link between the meaning of the sign and the goods and services for the mark to fall within the scope of the prohibition laid down in Article 7(1)(c) EUTMR. This is also valid for services, such as puzzle video game services; a problem solving, which is the purpose of these games, can be based on shooting/eliminating bubbles.

The applicant also argues that the Office should have supported its findings with persuasive evidence (such as internet searches) that the relevant public may perceive the sign applied for as describing the internet purpose of the goods or services in question.

As regards the argument that it is up to the Office to show that other similar signs are used in the market, 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 goods which are likely to be known by anyone and are in particular known by the consumers of those goods… In such a case, the Board of Appeal is not obliged to give examples of such practical experience (15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19).

In addition, it must also be mentioned that 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. (23/10/2003, C 191/01 P, Doublemint, EU:C:2003:579, § 32).

Therefore, as indicated above in this decision, the Office has supported its findings with the examination of each of the mark’s individual components in turn relying and supporting those findings with dictionary entries. Subsequently, the sign was assessed as a whole, taking into account whether or not the combination itself is descriptive and whether or not the figurative elements and the stylisation of the sign adds at least a minimum degree of distinctive character. On this regard it must be noted that, as correctly mentioned by the applicant, a minimum degree of distinctiveness would be sufficient to render a sign registrable. However, as assessed above, in the present case the Office did not find that the sign in question would have at least a minimum degree of distinctive character necessary.

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).

However, for the sake of completeness it must be noted that the European Union trade marks referred to by the applicant contain different/additional verbal elements and therefore the overall impression created by them will not necessarily be exactly the same as in case at hand.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for EUTM No 17 936 722 is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b) and (c) in specify the relevant territory for the following goods and services:

Class 9 Downloadable computer game programs; Computer game programmes downloadable via the internet; computer game software for use on mobile and cellular phones; computer game software; computer games; downloadable computer games; recorded computer programmes; computer game programs; games software; computer peripherals; computer games hardware; computer games software supplied from the Internet; interactive software; downloadable publications.

Class 41

Entertainment services; online entertainment services; online gaming services; game services provided on-line from a computer network; non-downloadable internet games; arcade game services; single player video game services; puzzle video game services; entertainment services, namely, providing an on-line computer game; entertainment services, namely, conducting contests online, and organizing, planning and executing entertainment and games events between computer game players and interest groups via a website.

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.

Sandra KASPERIŪNAITĖ