Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 29/07/2019

LANE IP LIMITED

The Forum, St Paul’s

33 Gutter Lane

London EC2V 8AS

REINO UNIDO

Application No:	018019405
Your reference:	0406.0978
Trade mark:	PERFECT PLAY
Mark type:	Word mark
Applicant:	CHELSEA FOOTBALL CLUB LIMITED Stamford Bridge Grounds Fulham Road London SW6 1HS REINO UNIDO

The Office raised an objection on 08/03/2019 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 08/05/2019, which may be summarised as follows:

1. The mark is unique and distinctive in relation to all of the goods and services covered by the mark and that it has the minimum level distinctiveness required in order to function as a trade mark for the applied goods and services.

2. The examiner has not provided any evidence to show that the term PERFECT PLAY is commonly used in general parlance let alone in relation to the objected goods and services. The definition the Office has provided for the word “perfect” is just one out of many.

3. The Office has accepted similar kinds of marks before, such as “PERFECT START”, “PERFECT WEAR” and “PERFECT VISION”. The marks referred to must be regarded as having been registered lawfully and the Applicant is entitled to rely on their acceptance in the application of the principle of equal treatment.

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 notions on Articles 7(1)(b)

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

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).

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).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

As to the applicant’s arguments

1. The distinctiveness of the mark

The Office found that the applied trade mark is non-distinctive for part of the goods and services as it considers the mark to be an inspirational statement, not a sign of origin.

The applicant argues the distinctiveness should be assessed in relation to the goods and services for which registration is sought and in relation to the perception of the relevant public. In his reply the applicant states that consumers would not refer to downloadable electronic publications”, “ticket agency services”, or “providing an interactive website containing sports and football information” with the phrase PERFECT PLAY. The Office is not convinced by this as all of these services may be related to sports or cultural activities, in which case the mark is not distinctive for the goods and services. As the applicant has not provided any specific arguments for the other goods and services the Office holds its original view that the mark is non-distinctive for all of the goods and services.

In his reply the applicant notes that the mark is not descriptive. The Office does not and did not argue that the mark would be descriptive. Even when the mark is not descriptive it does not change the fact that the mark may be non-distinctive. 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 (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25). Due to this the applicant’s finding that the mark must be acceptable and distinctive if it is non-descriptive is inaccurate. Descriptive marks express what the goods and services are. Thus they are automatically non-distinctive as they cannot separate the products from the products of other market players. However, even if the mark is not descriptive it may be non-distinctive if it does not enable the customer to repeat the experience of the purchase. As it is stated in the case law to which the applicant refers to “…the term would still be objectionable under Article 7(1)(b) EUTMR on the ground that it will be perceived by the relevant public as only providing information on the nature of the goods and/or services concerned and not as indicating their origin” (12/07/2012, T-470/09, Medi, EU:T:2012:369, par. 22). The applicant refers to the example cases from the EUIPO Guidelines for Examination, namely the marks MEDI and ECO PRO. The Office considers that they are not comparable to the mark at hand. Both of them are abbreviations for words which are commonly used for certain goods and services in the relevant market sector. PERFECT PLAY on the other hand is a phrase which despite not being used commonly as such for the goods and services applied for only promotes the goods. Because of this the reasoning for rejecting the marks MEDI and ECO PRO is not applicable in this case. After assessing the mark the Office finds that mark PERFECT PLAY” does not indicate the origin of the goods and services. The mark is just an inspirational statement highlighting the positive aspects of the goods and services and does not make it possible for the relevant public to perceive the commercial origin of the goods and services.

According to the applicant the consumers do not refer to the goods or services with the phrase PERFECT PLAY and that the sales personnel would not understand what the consumer is looking for if they asked for perfect play. The Office does not share this view. PERFECT PLAY has a clear meaning for consumers, who will perceive it not as unusual but as a meaningful expression. It clearly conveys obvious and direct information about the quality of the contested goods and services. Even if the combination of the words in question could be regarded as novel, it will be understood by the relevant English-speaking public; the mark is not imaginative, metaphorical or unusual, as it is no more than the sum of its parts and consists exclusively of the simple and clear juxtaposition of two immediately identifiable words. The combination of the two words does not contain any additional element capable of giving it distinctive character. As for the unusual syntactic structure and deliberate alliteration the Office finds these elements do not suffice to make the mark as a whole distinctive. The relevant public will establish a direct and specific link between the trade mark and the goods as such.

The applicant argues that the phrase cannot be inspirational as it does not meet the definition for the word “inspirational”. The applicant has provided two definitions for the word “inspirational” without reference to the original source. The word inspirational can also be defined as “of, relating to, or tending to arouse inspiration; inspiring” (information extracted from Collins Dictionary on 22/07/2019, https://www.collinsdictionary.com/dictionary/english/inspirational). As the phrase does meet this definition the Office is not convinced by the applicant’s arguments.

The Office does not agree with the argument that the consumers are required to go through several logical steps to make a connection between the mark and the goods and services. This combination of words, when viewed alongside the goods in question, is a simple laudatory reference to the quality of those goods. As the applicant agrees, the word “play” is commonly used in relation to football and computer games, and the foregoing word “perfect” merely highlights the positive aspects of the goods and services, namely that the consumers may achieve or enjoy an excellent performance in sports, e-sports, or games. The same reasoning also applies to theatrical productions in which case the phrase merely acclaims consummate merit in the dramatic arts.

Even though the applicant argues that perfection is a subjective concept the Office finds that people do have some kind of mutual consensus of the underlining meaning of the word. This is supported by dictionary references which are accepted as a general definition for the word. The Office agrees that people may have diverging interpretations for the word. However, the underlining idea of excellence in all respects remains the same. Due to this the Office does not share the view that PERFECT PLAY would be paradoxical.

The applicant provides many references to case law regarding the purpose and application of Article 7(1)(b). The Office acknowledges these arguments; however, they do not change the outcome of the case at hand.

Based on these findings the Office finds the mark to be non-distinctive.

2. The mark is not used by the general public for the goods and services at hand

As regards the applicant’s argument that the consumers do not use the phrase in relation to the goods and services ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

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 the Board of Appeal is not obliged to give examples of practical experience and can 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 (15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19). It is also not necessary that the signs and indications composing the mark are actually in use at the time of the application for registration. It is sufficient 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.

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

3. Previous registrations in EUIPO

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 European Union trade mark are 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).

Of the argument that the Office has accepted a number of other marks containing the word “perfect”, it should be borne in mind that decisions taken by examiners in relation to those marks are not in issue in these proceedings. 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 marks to which the applicant refers to differ from the applied mark as their other word element is completely different from the case at hand. They have also been applied for different goods. When it comes to the trade mark “PERFECT VISION” overcoming the objection on absolute grounds after the applicant’s arguments the Office does not find the mark at hand to be acceptable by analogy to this case. This is due to the fact that the marks only share the word “perfect”, while the other words “play” and “vision” are completely different, and the goods and services for which the registration is sought are different.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 018 019 405 is hereby rejected for the following goods and services:

Class 9

Computer software in the field of sports, football, football training, education, training and telecommunications; Computer game programs; Computer programmes [programs], recorded in the field of sports, football, football training, education, training and telecommunications; Computer programs [downloadable software] in the field of sports, football, football training, education, training and telecommunications; Computer software, recorded in the field of sports, football, football training, education, training and telecommunications; Downloadable image files; Downloadable video files; Downloadable electronic publications; computer software for authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, videos and electronic publications in the field of sports, football, football training, education, training and telecommunications; Downloadable graphics for mobile phones; Application software for mobile phones in the field of sports, football, football training, education, training and telecommunications; software for use with mobile phones in the field of sports, football, football training, education, training and telecommunications; Computer software for recording, playing, uploading and downloading videos in the field of sports, football, football skills, athletics and gymnastics; computer software in the field of sports, football, football skills, athletics and gymnastics; Computer software and computer software applications for football training; downloadable multimedia file containing artwork, text, audio, video, games, and internet web links relating to sports, football and football training; downloadable films and television programs featuring sports, football and football training content provided via a video-on-demand service.

Class 41

Education; providing of training; entertainment; Sporting and cultural activities; Amusements; Club services [entertainment]; Coaching [training]; Conducting fitness classes; Education information; Entertainer services; Entertainment information; Game services provided on-line from a computer network; Games equipment rental; Gymnastic instruction; Health club services [health and fitness training]; Organization of competitions [education or entertainment]; Live performances (Presentation of -); Organization of shows [impresario services]; Organization of sports competitions; Personal trainer services [fitness training]; Physical education; Practical training [demonstration]; Providing sports facilities; Recreation facilities (Providing -); Radio entertainment; Recreation facilities (Providing -); Recreation information; Recreation information; Rental of sports equipment, except vehicles; Rental of sports grounds; Rental of stadium facilities; Sport camp services; Television entertainment; Timing of sports events; Ticket agency services [entertainment]; Information relating to sporting events provided on-line from a computer database or the Internet; electronic games services provided by means of the Internet; training services and organisation of competitions and sporting events; arranging and conducting seminars, conferences, exhibitions and symposia relating to football and other sporting activities; officiating at sports contests; provision of sports facilities; entertainment services relating to sport; preparation of entertainment programmes for broadcasting; presentation of live entertainment; football camps; football training; sports refereeing; sports education services; sports-park services; sports club services; presentation of live football matches; training services in the field of football, football techniques and sports; providing online videos, not downloadable in the field of football, football training, football technique and sports; data analysis services relating to sports results, sports personalities, sports and sporting statistics, sports news and sports events; providing an interactive website containing sports and football information.

The application may proceed for the remaining goods and services:

Class 9

Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; data processing equipment, computers, computer terminals, computer peripherals; Audiovisual teaching apparatus; Camcorders; Cameras [photography]; Compact discs [audio-video]; Compact discs [read-only memory]; Computer memory devices; Computer operating programs, recorded; Computer peripheral devices; Electronic notice boards; Teaching apparatus; Time recording apparatus; Video recording apparatus; video reproduction apparatus; video transmitting apparatus; sound, video and data recordings; digital audio and video players with multimedia and interactive functions; film and video editing software; software for use with cameras; desktop and mobile photo and video editing software; Computer software and software applications for use in uploading, downloading, editing, storing, distributing and sharing photographic and video content via global and local computer networks and via mobile devices; Downloadable user generated photos and videos in the field of general interest; computer software for recording, playing, uploading, downloading and comparing videos;

Class 41

Arranging and conducting of conferences, congresses, seminars, symposiums and workshops; Cinema presentations; Club services [education]; Dubbing; Educational examination; Electronic desktop publishing; Film production, other than advertising films; Holiday camp services [entertainment]; Movie studios; Museum facilities (Providing -) [presentation, exhibitions]; News reporters services; Organization of exhibitions for cultural or educational purposes; Photographic reporting; Production of radio and television programmes; Providing on-line electronic publications, not downloadable; Publication of books; Publication of electronic books and journals on-line; Publication of texts, other than publicity texts; Television entertainment; Videotape editing; Videotape film production; Videotaping; production of radio and television programmes, production of videotapes; provision of online electronic publications, publication of electronic books and journals; provision of publications on the Internet; provision of publications; archive library services; preparation of documentary programmes for broadcasting; providing a web site that gives computer users the ability to share photos, videos and video logs; peer-to peer photo and video sharing services; information, advisory and consultancy services relating to all the aforesaid.

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.

Richard THEWLIS