CANCELLATION No 44 670 C (INVALIDITY)

DLTB Bremer Toto und Lotto GmbH, 1-1, Schwachhauser Heerstraße 111-115, 28 211 Bremen, Germany (applicant), represented by CBH Rechtsanwälte Cornelius Bartenbach Haessemann & Partnerschaft von Rechtsanwälten MbB, Bismarckstr. 11-13, 50 672 Köln, Germany (professional representative).

a g a i n s t

Play UK Internet N.V., Heelsumstraat 51, E-Commerce Park, P.O. Box 422, Curacao (EUTM proprietor), represented by Nikita Cuschieri, 61 Topaz Apt 1 Triq is-Sirk, SWQ3212 Swieqi, Malta (professional representative).

On 10/12/2020, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No  18 102 523 ’PlayHugeLottos’ (word mark) (the EUTM). The request is directed against all the services covered by the EUTM, namely:

Class 35: Advertising, marketing and promotional services.

Class 41: Online gaming services.

The applicant invoked Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b) and (c) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant claims that the contested mark is an expression that only consists of descriptive words, namely ‘play’, ‘huge’ and ‘lottos’, which are composed in a usual way and understood by the English speaking public as a request or invitation to participate in a lottery with high winnings, hence as a promotional information relating to the services in question. The expression is also fully descriptive not only for the gaming services in class 41, but also for the services in class 35, meaning nothing more than advertising and conducting lotteries with huge winning opportunities. The mark therefore provides a direct information regarding the kind and intended purpose of the services at issue. The mark does not contain any memorable element, it is not seen and understood as an indication of origin from a particular undertaking.

Given that the terms are very simple words and that the word ‘Lotto’ is used in numerous EU countries with identical meaning, the trade mark is easily understandable not only for the English speaking public, but for the public throughout the European Union (BoA Decision of 11/10/2018, R 199/2018 – 1, Lotto MAX attached to this end). The internal capitalisation of the mark is a customary form of presentation in advertising and cannot establish distinctive character of the mark.

The EUTM proprietor did not submit any observations on the cancellation claim raised by the applicant.

On 24/09/2020 the parties were informed that the adversarial part of the proceedings was closed and that the Office would rule on the application for invalidity on the basis of the evidence brought before it.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 59(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non‑registrability obtain in only part of the Union.

As regards the assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings. However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing on 01/08/2019 (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

Descriptiveness – Article 7(1)(c) EUTMR

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, Wrigley, 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).

Regarding Article 7(1)(c) EUTMR, the contested EUTM is, in the opinion of the applicant, to be regarded as descriptive, meaning nothing more than advertising and conducting lotteries with huge winning opportunities. Therefore, the mark provides a direct information regarding the kind and intended purpose of the services at issue.

After a thorough examination of the applicant’s arguments, and despite the fact that the EUTM proprietor did not take any stance on the cancellation claim, the Cancellation Division is not of the opinion that the contested EUTM would be perceived as descriptive, for the following reasons:

The assessment of descriptiveness must be made with reference to the goods and services for which protection is sought and with reference to the perception by the relevant public. While it is not disputed that there are games of chance including lotteries with high winnings (jackpots), it remains to be seen whether, from the viewpoint of the relevant public, there is a sufficiently direct and specific descriptive link between the expression ‘PlayHugeLottos’ and the services the contested mark protects.

In the present case the relevant public is the English speaking consumer, as the contested EUTM consists of words of the English language. Indeed, consumers of games of chance are familiar with the fact that there is variety of lottery games, which can be played almost on a daily basis, and which offer different winnings in terms of prizes. However, the Cancellation Division fails to see a sufficiently direct and specific descriptive link between the expression ‘PlayHugeLottos’ and the registered services in classes 35 and 41. The expression, despite being composed of words which may have their individual meanings in the gaming field, is rather an unusual combination, which is not liable to provide any specific information about these services, such as the quality, purpose or any other concrete characteristics. In this respect it is referred to established case law according to which for a trade mark that consists of a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) EUTMR, ‘it is not sufficient that each of its components may be found to be descriptive. The word or itself must be found to be so’ (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 31).

As regards the descriptive meaning claimed by the applicant, the Cancellation Division maintains that ‘Huge Lottos’ as such does not mean anything in concrete. There may be lotteries with ‘huge’ winnings, but a lottery game itself cannot be huge. In this regard it is important to clarify that Article 7(1)(c) EUTMR does not apply to those terms that are only suggestive or allusive as regards certain characteristics of the goods and/or services. Sometimes this is also referred to as vague or indirect references to the goods and/or services (31/01/2001, T-135/99, Cine Action, EU:T:2001:30, § 29).

In light of the above observations, the reasoning provided by the applicant is based on the use and understanding by the relevant consumer of individual components of the mark, namely ‘play’ , huge’ and ‘lottos’ in the sector of gaming. However, and as regards certain characteristics of the services at hand, the expression on its own is only a vague term with no exact meaning when it comes to specific characteristics of provision of advertising, marketing or online gaming services.

Consequently, the Cancellation Division holds that contested EUTM has not been registered contrary to Article 7(1)(c) EUTMR in relation to the registered services.

Lack of distinctiveness – Article 7(1)(b) EUTMR

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).

The Court of Justice has ruled that it is inappropriate to apply to slogans stricter criteria than those applicable to other types of signs when assessing their distinctive character (12/07/12, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460 and case-law cited).

Advertising slogans are objectionable under Article 7(1)(b) EUTMR when the relevant public only perceives them as a mere promotional formula. However, they are deemed to be distinctive if, apart from their promotional function, the public perceives them as an indication of the commercial origin of the goods or services in question.

In the present case, whilst it is evident that the terms ‘play’, ‘huge’ and ‘lottos’ may be used in the relevant sector, it has not been sufficiently demonstrated by the applicant that it would be understood by the relevant consumer in the sense of a promotional formula or statement. As already held above, ‘PlayHugeLottos’ will not be clearly understood as referring to particular characteristics of the services at hand. It is not clear either from the submissions of the applicant that the public would perceive ‘play huge lottos’ as a message extolling the qualities of the services. In conclusion, the way the mark is constructed does not lead itself directly to that understanding. The contested EUTM cannot be seen as a slogan with as a message to the consumer that would be plain, direct and unambiguous.

Therefore, the applicant failed to submit, substantiate or prove its claim that the mark is devoid of distinctive character under Article 7(1)(b) EUTMR in relation to the registered goods.

Conclusion

In the light of the above, the Cancellation Division concludes that the application for declaration of invalidity based on Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b) and (c) EUTMR has to be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

Anne-Lee KRISTENSEN

Robert MULAC

Michaela SIMANDLOVA

According to Article 67 EUTMR, any party adversely affected by this decision has 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.