Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 13/03/2020

INNOVATE LEGAL SERVICES LIMITED

107 Fleet Street

London EC4A 2AB

REINO UNIDO

Application No:	018081705
Your reference:	TM329
Trade mark:	SANDBOX VR
Mark type:	Word mark
Applicant:	Glo Big Boss Limited Unit No. 1-8, Level 10, Tower 1, Kowloon Commerce Center, No. 51 Kwai Cheong Road Kwai Chung, N.T. REGIÓN ADMINISTRATIVA ESPECIAL DE HONG KONG DE LA REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 12/07/2019 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.

On 09/09/2019, the applicant requested an extension of the time limit, which was granted by the Office.

On 18/11/2019, the final version of the list of goods was confirmed to the applicant. The Office takes the changes and the accepted version of the list of goods and services into account. The amendment made has no impact on this decision.

The applicant submitted its observations on 18/11/2019, which may be summarised as follows.

1. With regard to descriptiveness, ‘Article 7(1)(c) EUTMR prohibits registration of 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 services, or other characteristics of the goods or service, from registration.’

2. ‘The Applicant does not stop others from using the word ‘SANDBOX.’ ‘VR’ is a non-dominant, insignificant element of the mark in its overall perception.

3. The definition of the word ‘SANDBOX’ provided by the Office is inaccurate, as it does not apply to the list of goods for which protection is sought. ‘The Application is essentially for the environments and the software that functions to integrate and produce the augmented environments. These environments are not within the definition as they are not environment without fixed objectives. The Applicant’s software produces fixed environments that once generated can be used for recreational, leisure or entertainment … Consumers will not immediately link the client’s mark with the dictionary meaning … These goods are not computer software which a player plays on devices.’

The definition is not applicable to apparatus and software for the recording, transmission or reproduction of sound and/or images for the purpose of generating virtual and augmented environments in which users can interact for recreational, leisure or entertainment purposes and adapted for use in playing interactive games and equipment, accessories and wearable computer peripherals. There is no direct link between the mark and these goods and it is not directly descriptive. It does not inform the relevant consumers of the kind or purpose or any other characteristic of the goods. The applicant’s products are not ‘sandbox games’. The virtual reality environments provided by the applicant are predefined, with fixed objectives and game sequences. Some press articles are provided to illustrate the applicant’s products.

4. The general public ‘… will likely perceive the word ‘sandbox’ as a child’s sandbox where sand is freely played with’. Therefore, they will not consider the mark descriptive for the goods for which protection is sought. Regarding the specialised public ‘who is aware of this computer science term of ‘Sandbox’, these are specialised groups of technically aware software programmers or those involved in computer security. Therefore this specialised group will not consider SANDBOX VR to be descriptive of the goods in the Application as the product is within fixed parameters which is the totally opposite of what is defined.’

5. As the mark is not descriptive, it possesses distinctive character.

6. The applicant provides examples of registered EUTMs that contain the word ‘SANDBOX’ for goods in Class 9, e.g. EUTM No 7 004 336 ‘NSPACE SANDBOX’ and EUTM No 17 064 924 ‘GRID SANDBOX’.

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.

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).

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 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 service in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

The Office will now address the applicant’s arguments.

Firstly, following Office practice and established case-law, a sign must be refused as descriptive if it has a meaning that is immediately perceived by the relevant public as providing information about the goods and services for which protection is sought. This is the case where the sign provides information about, inter alia, the quantity, quality, characteristics, purpose, kind and/or size of the goods or services. The relationship between the term and the goods and services must be sufficiently direct and specific (20/07/2004, T‑311/02, Limo, EU:T:2004:245, § 30; 30/11/2004, T‑173/03, Nurseryroom, EU:T:2004:347, § 20), as well as concrete, direct and understood without further reflection (26/10/2000, T‑345/99, Trustedlink, EU:T:2000:246, § 35). If a mark is descriptive, it is also non-distinctive.

The public interest underlying Article 7(1)(c) EUTMR is that exclusive rights should not exist for purely descriptive terms that other traders might wish to use as well.

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 Office acknowledges the applicant’s first argument and the argument that the applicant does not stop others from using the word ‘SANDBOX’. Nevertheless, and in view of the abovementioned case-law, the elements of the mark at issue, and the mark as a whole, ‘SANDBOX VR’, were examined by the Office. The mark was examined in relation to the goods in question and the perception of the relevant public and was found to be descriptive and, therefore, non-distinctive.

The Office disagrees with the applicant’s argument that the element ‘VR’ is insignificant in the overall perception of the mark. This word mark is composed of two verbal elements. The Office demonstrated in its letter of 12/07/2019 that both verbal elements have a meaning in relation to the goods and that the mark as a whole is also meaningful. Therefore, the second verbal element is as important as the first one.

Regarding the applicant’s next arguments, the Office demonstrated in its letter of 12/07/2019 that the mark applied for will be perceived as descriptive and non-distinctive by the relevant public:

In the present case, the relevant consumers would perceive the sign as providing information that goods in Class 9 (virtual reality and augmented reality software for use in mobile devices for integrating electronic data with real world environments for the purpose of generating virtual and augmented environments in which users can interact for recreational, leisure or entertainment purposes, apparatus and software for recording, transmission or reproduction of sound and/or images for the purpose of generating virtual and augmented environments in which users can interact for recreational, leisure or entertainment purposes and adapted for use in playing interactive games, virtual reality equipment and accessories, namely, virtual reality headsets, earphones, haptic vests, handheld virtual reality controllers and props for use with multimedia virtual reality content, wearable computer peripherals for playing interactive games, none of the foregoing related to yoga, fitness, exercise, music, nutrition, or health) are software, hardware, equipment, peripherals and accessories for the generation, execution and playing of virtual reality video game in which players can move freely through a virtual environment without fixed objectives. Therefore, the sign describes the kind and intended purpose of the goods in question.

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, 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).

The applicant provided information on the company and its products, but failed to provide evidence that the mark would be perceived as distinctive and that the relevant public will not perceive the mark as descriptive.

The Office examined the mark applied for only on its own merits, namely its intrinsic distinctive character, based on the information provided in the application form. Therefore, the information provided in the reply to the Office’s letter of 12/07/2019 on the products provided and created by the applicant and their specifications is not relevant for the examination of the absolute grounds for refusal of a trade mark.

Furthermore, in relation to the perception of the relevant consumers, 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, emphasis added.)

Bearing in mind the above, and the fact that the relevant consumers (though part of the general public) are considered to be well informed, observant and circumspect, it is unlikely that they will perceive the goods in Class 9 for which protection is sought as a child’s sandbox. Even though the mark may be perceived as fanciful by at least part of the professional, specialised public (i.e. programmers of security software, which have nothing to do with games and their accessories), the general public and the remaining professionals will perceive it as descriptive for the goods in question and therefore the mark must be refused.

The Office demonstrated that the mark will be perceived as descriptive for all of the different goods. Office practice and case-law are clear about directly linked and/or auxiliary goods, which are also objectionable.

An objection also applies for those goods and services that are directly linked to those for which the descriptive meaning pertains. Furthermore, if the descriptive meaning applies to an activity involving the use of several goods or services mentioned separately in the specification, then the objection applies for all of them (see judgment of 20/03/2002, T‑355/00, Tele Aid, EU:T:2002:79, for a number of goods and services offered in conjunction with, or applied in, remote assistance to car drivers).

It is possible to claim goods and services as what can be referred to as auxiliary goods or services in the sense that they are meant to be used with, or support the use of, the main goods or services. Typically, this covers paper and instruction manuals for the goods to which they belong or which are packed with them, advertisement and repair. In these cases, the auxiliary goods are by definition intended to be used and sold together with the main product (e.g. vehicles and instruction manuals). It follows that if the EUTM is found to be descriptive of the main goods, logically it is also descriptive of the auxiliary goods, which are so closely related.

As the Office has demonstrated that the mark is descriptive, it therefore also lacks distinctive character.

According to the case-law of the European courts, a word mark that is descriptive of characteristics of 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 for the purposes of Article 7(1)(b) EUTMR (12/06/2007, T‑190/05, Twist & Pour, EU:T:2007:171, § 39).

Finally, 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; 09/10/2002, T‑36/01, Glass Pattern, EU:T:2002:245, § 35).

Every sign, like the one at issue, is examined by this Office based on its own merits and characteristics, in light of the current Office practice, and always in compliance with the applicable EUTMR provisions and relevant case-law.

‘SANDBOX VR’, has different verbal elements from, for example, ‘NSPACE SANDBOX’; therefore, they are not comparable. In the same way, it is pointless to compare figurative marks, such as ‘GRID SANDBOX’, with word marks, such as the sign at issue, as the figurative element may result in there being a sufficient degree of distinctiveness, despite a weak verbal element. Again, in this case, the verbal elements are also different.

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 18 081 705 ‘SANDBOX VR’ is hereby rejected for all the goods 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.

Monika TOMCZYNSKA