Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 22/01/2020

Richard A. Buchel

13, Avenue du Maréchal Joffre

F-83120 Plan de La Tour

FRANCIA

Application No:	18 081 215
Your reference:	RB/YB/UEFA
Trade mark:	LIVE IT. FOR REAL.
Mark type:	Word mark
Applicant:	Union des Associations Européennes de Football (UEFA) Route de Genève 46 CH-1260 Nyon 2 SUIZA

The Office raised an objection on 03/07/2019 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.

Upon request of 03/09/2019, the Office extended on 04/09/2019 the time limit for submitting observations till 03/11/2019¹.

The applicant submitted its observations on 04/11/2019, which may be summarised as follows:

1. Distinctive character

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.

1. Distinctive character

General remarks

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).

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).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

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).

Applicant’s remarks

Although the Office correctly identifies the criteria established by the case-law for assessing the distinctive character of a mark, it fails to follow that case-law in its assessment of the case. In performing its analysis, the Office has completely disregarded the particular presentation and overall impression provided by the mark as a whole, deciding instead to wrongly analyze its various constituent parts.

The sign "Live It. For Real." consists of two pairs of one-syllable words each followed by a full stop with a clear structure and pattern to the overall mark when considered as a whole. Its’ rhythmic nature lends itself to the mark being instantly memorable and easily memorised.

The first pair of words comprises the words "Live" and "It". The word "live" is an intransitive verb, and by its very nature it has no object. Therefore, the combination with the pronoun "it" is in stark contrast to accepted rules of grammar and provides no information as to what the command refers. This explains why the examiner resorts to citing the idiom "live it up" in order to artificially argue in favour of the hypothetically laudatory nature of the sign.

The second pair of words combines "For" and "Real", which is used in informal

parlance as an alternative to the adverb 'truly' or' genuinely'. The full stops used to separate "Live It" and "For Real." create the desired rhythm and pace. Full stops are used for emphasis or dramatic effect, for example, in text messages or social media posts, creating a pause between the relevant words and therefore adding impact. In that context, the sign "Live It. For Real." is a clever and imaginative creation, coined by the applicant, which encapsulates the relevant message in a strong, punchy, thought-provoking language and grammatical structure.

A sign can be perceived by the relevant public both as a promotional formula and as a powerful shorthand to indicate commercial origin. Even though the examiner bases the refusal on Article 7(1)(b) EUTMR (i.e. the sign being perceived as a promotional slogan), the reasoning given that the sign would "highlight positive aspects of the services in question" implies a descriptive meaning in the sense of Article 7(1)(c) EUTMR rather than a promotional statement. The Office has assessed the distinctive character of the sign by carrying out solely an incorrect analysis of its descriptive character under Article 7(1)(c) EUTMR. To the extent this provision was not invoked in the Office´s notice, it constitutes an error in law.

The fact that the examiner cannot appear to decide whether "LIVE" is a verb or an adjective is an additional indication of its conceptual ambiguity. The definitions given by the Office have been 'mixed and matched' to accommodate the purported definition of the sign. It is clear that in the context of the sign applied for 'live' can only be interpreted as a verb.

Given that the meaning of "Live It. For Real." is unclear for the objected services, the applicant fails to see what promotional message it could contain. The activity of 'living' as such is neutral and may result both in favourable and unfavourable results, so there is nothing laudatory or promotional about the mark, which remains vague and impenetrable. The expression "Live It, For Real." triggers a cognitive process in the minds of the public concerned, who will be unable to establish an immediate semantic connection between the services at issue and the sign at issue. The sign applied for does not draw the consumer's attention to a particularly advantageous offer and does not constitute a promotional formula or slogan aimed at highlighting the positive qualities of the services concerned. Considering that the objected services relate or are associated with the event ticketing industry, specifically in connection with sport, it is not possible to assess the distinctive character of the sign at issue without considering the context of those services, as this context provides a significant interpretative aid as to how consumers will perceive the contested sign. The Office has failed to take into account the likely types of use of the sign applied for, particularly in the digital environment, which in the light of the current customs in the event ticketing industry can be practically significant.

In conclusion, the findings contained in the Office´s notice lack solid justification for its’ findings that the sign applied lacks the necessary level of distinctiveness to benefit from trade mark protection. Such findings rest on mere conjecture as they are not based on objective and verifiable facts.

Office´s comments

As the applicant rightly points out, the distinctive character of a trade mark must be assessed, first, by reference to the goods or services in respect of which registration of the sign is sought and, second, by reference to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (judgment of 27/11/2003, T-348/02, ‘Quick’, §29).

Therefore, the sign ‘LIVE IT. FOR REAL.’’ is to be assessed in relation to the services at issue which for the sake of good order are:

Class 35 Sales representative services in the field of tickets for sporting events; information, consultancy and advisory services relating to all of the aforesaid services.

Class 41 Retail services relating to the purchase and sale of tickets for sporting events; computerized online ordering of tickets for sporting events; marketplaces for the sale and purchase of tickets for sporting events; marketplaces facilitating the purchase of complete packages for sporting events; information, consultancy and advisory services relating to all of the aforesaid services.

The contested services relate to purchase and sale of tickets for sporting events, including marketplaces such as online ordering of such tickets.

The assessment of the mark has been carried out exactly in this manner. 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, Tabs (3D), EU:T:2001:226, § 59).

The applicant asserts that the mark can be perceived both as a promotional formula and as a powerful shorthand to indicate commercial origin.

The Office agrees with the applicant that the crucial issue is whether the mark is capable of acting as a badge of origin, regardless of it allegedly being a laudatory slogan or not. In principle, the criteria for assessing distinctiveness are the same for the various categories of marks, although the relevant public’s perception may not necessarily be the same for each of those categories.

The sign applied for is ‘LIVE IT. FOR REAL.’

In line with the definition given in the Office´s notice of grounds for refusal of 03/07/2019, according to Oxford Dictionary,

https://www.lexico.com/definition/live

‘live it’ can mean ‘have an exciting or fulfilling life’ or ‘life live to the full’. Furthermore, this definition can be complemented and confirmed by Oxford English Dictionary

https://www.oed.com/view/Entry/109300?rskey=quBKow&result=3#eid

where ‘live’ as a transitive verb can mean ‘to express something in one´s life’ or ‘to carry out in one´s life the principles of something’ with the following quotation as an example:

1971   B. Sidran Black Talk i. 34   As Charles Parker..has said, ‘Music is your own experience, your thoughts, your wisdom. If you don't live it, it won't come out of your horn.’

The term ‘for real’ meaning ‘genuinely’ or ‘actually going on or happening’ in unison with the afore-mentioned term ‘live it’ is a combination which is instantly comprehensible for the relevant public and the information it contains will be immediately apparent for this relevant public. Consequently, the relevant public

will understand the combination in relation to the services at issue as live life to the fullest upon experiencing and enjoying sports events and matches for real at the stadium, genuinely performed live in contrast with viewing recorded sporting events on digital media or on television.

The applicant asserts that the examiner’s argumentation that the sign highlights positive aspects of the services at issue implies a descriptive meaning in the sense of art. 7(1)(c) EUTMR and that the examiner, therefore, has assessed the distinctive character of the sign by carrying out an – incorrect – analysis of its’ descriptive character under art. 7(1)(c) EUTMR constituting an error in law.

The Office respectfully disagrees with the applicant in that respect. The reason that the sign at issue has an obvious meaning and/or expresses an inspirational statement does not imply that the mark is conveying the kind, quality, intended purpose or other characteristics of the services which might give rise to an objection under art. 7(1)( c) EUTMR. Therefore, the Office maintains its’ position that the sign ‘LIVE IT. FOR REAL.’ is highlighting positive aspects of the services at issue - in casu various ticket retail services and sales representative services in the field of tickets for sports events and sports matches – namely that they inspire you or motivate you to live it [to the full] and experience these sports matches for real, being performed live at stadiums by availing of these services and buying tickets for live sports events.

Therefore, the Office is of the position that no intellectual requirement is required to understand the sign as a promotional, laudatory term or slogan highlighting positive aspects of the services at issue, namely that these services offer you the opportunity to purchase tickets and enjoy to the fullest live sports events actually taking place at the sports stadium as a live performance.

Moreover, the applicant alleges that the sign is clever and imaginative and triggers a cognitive process on the part of the relevant public, as the sign neither draws the consumer's attention to a particularly advantageous offer nor does it constitute a promotional formula or slogan aimed at highlighting the positive qualities of the services concerned.

In line with the above reasoning, it is the Office’s view that the sign at issue is straightforwardly intelligible for the relevant consumer when taken in conjunction with the services applied for and, contrary to the applicant’s allegation, does not involve any cognitive process on behalf of the relevant public to extract a meaning from it.

Furthermore, the fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s services from those of a different commercial origin (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

In line with the above arguments, the Office maintains its position that for the reason that the sign has an obvious laudatory meaning in relation to the services at issue it is devoid of any distinctive character as it is incapable of performing the essential function of a trade mark which is to serve as an indicator of commercial origin within the meaning of art. 7(1)(b) EUTMR and art. 7(2) EUTMR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for EUTM No 18 081 215 - LIVE IT. FOR REAL. is hereby rejected for all the services, namely:

Class 35 Sales representative services in the field of tickets for sporting events; information, consultancy and advisory services relating to all of the aforesaid services.

Class 41 Retail services relating to the purchase and sale of tickets for sporting events; computerized online ordering of tickets for sporting events; marketplaces for the sale and purchase of tickets for sporting events; marketplaces facilitating the purchase of complete packages for sporting events; information, consultancy and advisory services relating to all of the aforesaid services.

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.

Finn PEDERSEN