Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 26/08/2020

CARPMAELS & RANSFORD LLP

One Southampton Row

City of London, London WC1B 5HA

UNITED KINGDOM

Application No:	018056708
Your reference:	T042465EM
Trade mark:	HD SPORT SUITE
Mark type:	Word mark
Applicant:	Interactive Sports Technologies Inc. 51 Citation Drive Vaughan Ontario L4K 2Y8 CANADA

The Office raised an objection on 20/05/2019 pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for is not eligible for registration, for the reasons set out in the attached letter, which forms an integral part of this decision.

On 19/07/2019 the applicant requested an extension of the time limit to submit observations in reply and the Office granted an extension of the time limit to reply by a further two months.

The applicant submitted its observations on 12/09/2019. No further observations have been submitted. The applicant’s observations may be summarized as follows:

1. The applicant submits an amendment of the specification in order to waive the objection of the Office based on the definition of ‘suite’ as relating to software, whereby ‘computer software’ and ‘computer games’ are deleted from the list of goods claimed and merely maintains ‘simulators’ in the list.

2. The Office has spliced together the three descriptive verbal elements but has not presented evidence of use of the combined meaning of those terms. For example, there is no evidence of ‘sports suite’ found on the internet.

3. There is no direct link between the goods claimed, as amended, (‘simulators’) and the meaning of the sign, since there is no relationship between a simulator and software. Simulators evoke ‘flight simulators’ which are machines where you sit in.

In accordance with Article 49 EUTMR, the Applicant may, at any time, partially withdraw the list of goods and/or services from the application. Such restriction must be made expressly and unconditionally (see to that effect: ‘The Guidelines’1). Further, in order to be effective, the restriction must meet the requirements of classification under Rule 2 EUTMIR.

In the present case, the amendment of the list of services in Class 42 is compliant with the aforementioned requirements and thus it has been implemented.

The application thus proceeds as follows:

Class 9 Simulators.

With the deletion of ‘computer software’ and ‘computer games’, the objection on absolute grounds for refusal raised in our notification of 20/05/2019, is partially waived for these terms.

The Office maintains however the absolute grounds for refusal under Article 7(1)(b), (c) and 7(2) EUTMR for the remaining ‘simulators’, for the reasons explained in the above notification (attached) and which are partly reproduced below.

In the present case, the relevant consumers would perceive the sign as providing information that the simulators are for playing a set (‘SUITE’) of sport games in high-definition (‘HD SPORT’).

Pursuant to 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.

‘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 refusal of a trade mark as being descriptive is already justified if, for the public addressed, there is a sufficiently direct and specific relationship between the word mark applied for and the goods or services claimed (27.02.2002, T-106/00, ‘Streamserve’, EU:T:2002:43). Further, in accordance with Article 7(1)(c) EUTMR, in order to reject a trade mark, it is not necessary whether or not the words are used in their descriptive sense in trade. It is sufficient if it is capable of being used as such.

For the purpose of Article 7(1)(c) EUTMR, it is necessary to consider, on the basis of a given meaning of the sign in question, whether, from the point of view of the intended public, there is a sufficiently direct and specific association between the sign and the categories of goods in respect of which registration is sought (20/03/2002, T-356/00, ‘Carcard’, EU:T:2002:80). A sign’s descriptiveness can only be assessed by reference to the goods or services concerned and to the way in which it is understood by a specific intended public (quoted judgment).

The absolute grounds for refusal of a lack of distinctive character and the characteristics of descriptive and usual indications each have their own scope of application and are neither mutually dependent nor mutually exclusive. Even though the existence of just one ground for refusal is enough, they can also be examined cumulatively. Interpreting the case-law by the Courts, it can be concluded that the sign must be refused registration under Article 7(1)(b) EUTMR if, on the basis of its most obvious meaning in relation to the goods or services in question, it is devoid of distinctive character.

A word mark which is descriptive of characteristics of the goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) EUTMR. A mark may be devoid of (any) distinctive character in relation to goods or services for reasons other than the fact that it may be descriptive (12/02/2004, C-363/99, ‘Postkantoor’, EU:C:2004:86).

The marks referred to in Article 7(1)(b) are, in particular, those which 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).

Article 7(1)(b) EUTMR is intended to preclude registration of trade marks which are devoid of distinctive character which alone renders them capable of fulfilling that essential function (16/09/2004, C-329/02 P, ‘SAT.2’, EU:C:2004:532). The finding that a sign is devoid of distinctiveness within the meaning of Article 7(1)(b) EUTMR is not conditioned by a finding that the term concerned is commonly used (12/02/2004, C-265/00, ‘Biomild’ EU:C:2004:87).

As the mark is composed of an English word, its descriptive character must be assessed by reference to the English-speaking public, in accordance with Article 7(2) EUTMR.

The applicant contends that ‘simulators’ are not related to software and thus, cannot be related to the verbal element in the sign ‘SUITE’. However, the term ‘SUITE’ is indeed apt to refer to ‘simulators’. The applicant maintains that a ‘simulator’ is a machine where someone can sit in. Nonetheless, it is not unreasonable to presume that a simulator may also be software-related, be it referring to a kind of software that a physical simulator uses, be it independent software for simulation meant to be used with a computer or other device. The definition provided in our previous notice relates to software in the sense of a package or bundle of computer programmes. Therefore, the descriptive character and the lack of distinctiveness of the sign ‘HD SPORT SUITE’ remain applicable in respect of the goods applied for, as amended.

The Office considers that the relevant public are both specialists and the public at large, who will immediately draw a direct link between the sign assessed as a whole, when seen in connection with simulators, and the definitions provided by the Office in its previous notice, and therefore an objection should be maintained for ‘simulators’ in accordance with Article 7(1)(b) and (c) EUTMR, as explained in our previous notice (attached).

The Office refers to settled case-law which establishes 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. 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)

Moreover, since the trade mark 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 mark’s individual components in turn (19/09/2001, T-118/00, EU:T:2001:226, ‘Tablette carrée blanche, tachetée de vert, and vert pâle’, paragraph 59).

Hence, for the purposes of assessing the significance of an expression formed by several words, it may be necessary to determine the meaning of those elements and then the expression as a whole (08/02/2011, T-157/08, ‘INSULATE FOR LIFE’, EU:T:2011:33, § 50). In the present case, the combination of the verbal elements ‘HD SPORT SUITE’ is grammatically correct according to English language rules and is clearly and directly comprehensible as a whole. The mere combination of descriptive elements itself remains descriptive unless because of the unusual nature of the combination, the term concerned creates an overall 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 (12/02/2004, C-265/00, ‘Biomild’, EU:C:2004:87, § 39 and 43). Merely bringing a number of descriptive elements together without introducing any unusual variation, in particular as to syntax or meaning, cannot result in anything other than a mark that is descriptive as a whole (12/02/2004, C-265/00, ‘Biomild’, EU:C:2004:87, § 39).

In the present case, there is nothing in this combination that would create an impression sufficiently far removed from that produced by the mere combination of meanings lent by the verbal elements ‘HD’, ‘SPORT’ and ‘SUITE’, with the result that the expression is more than the sum of those three terms (26/01/2017, T-119/16, ‘RHYTHMVIEW’, EU: T: 2017: 38, § 24).

Finally, an internet search dated 18/11/2019 has revealed that, indeed, the term ‘suite’ is commonly used in the relevant market of ‘simulators’, including for flight simulators, and that ‘simulators’ are not only ‘contraptions that you sit in’, as alleged by the applicant, but may also relate to software, either relating to a kind of software that a physical/hardware simulator uses, or referring to independent software for simulation techniques which is meant to be used with a computer or other device. In relation to this, an internet search dated 18/11/2019 which was indicated in our previous notice (attached), has confirmed this understanding and consequently we refer to the results therein extracted from the Internet.

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods or services of one undertaking from those of other undertakings.

It derives from all the foregoing that the applicant has not succeeded in convincing the Office that the sign ‘HD SPORT SUITE’ is not descriptive and lacks distinctive character in respect of the goods claimed in class 9, namely, simulators, and that it will be perceived by the relevant average consumers as pointing to the commercial origin of the goods concerned. The absolute ground for refusal under Article 7(1)(b) and (c) EUTMR precludes the registration of the sign ‘HD SPORT SUITE’ as a trade mark, at least in the English-speaking territories of the European Union (Article 7(2) EUTMR), that is, the United Kingdom, Ireland and Malta.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 18 056 708 is hereby rejected for all the goods claimed, as amended.

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.

María Mónica TARAZONA RUÁ