Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 15/12/2015

LEWIS SILKIN LLP

5 Chancery Lane

Clifford's Inn

London EC4A 1BL

REINO UNIDO

Application No:	013930102
Your reference:	DCF/90384
Trade mark:	DIRTY DANCING
Mark type:	Word mark
Applicant:	LIONS GATE ENTERTAINMENT INC. Suite 200, 2700 Colorado Avenue Santa Monica, California 90404 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 29/04/2015 pursuant to Article 7(1)(b) and (c) and 7(2) CTMR 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.

After two consecutive extensions of time, the applicant submitted its observations on 29/10/2015, which may be summarised as follows:

1. The mark applied for, ‘DIRTY DANCING’, has no direct and specific relationship with services in for which registration is sought in Class 41. English dictionaries other than the one used by the Office do not show any results for ‘dirty dancing’. The mark applied for has not a descriptive meaning and is not descriptive of the services for which registration is sought.

2. Film titles are protectable as trade marks. The Office has granted registration for other film titles in Class 41:

• CTM No 5 150 263, ‘PETER PAN’;

• CTM No 2 048 957, ‘THE LION KING’;

• CTM No 8 291 643, ‘TOY STORY’;

• CTM No 1 003 813, ‘PHANTOM OF THE OPERA’;

• CTM No 175 380, ‘STAR WARS’; this title also has an entry in Oxford Dictionaries.

Book titles were also accepted for registration in Class 41:

• CTM No 10 186 179, ‘PEPPA PIG’;

• CTM No 1 312 016, ‘DORA THE EXPLORER’;

• CTM No 5 071 899, ‘IN THE NIGHT GARDEN’;

3. In the alternative, the applicant claims that the mark applied for, ‘DIRTY DANCING’, has acquired distinctive character through use according to Article 7(3) CTMR. The evidence submitted can be summarised as follows:

• Witness statement of Rachel Kimbrough (Vice-president Business and Legal Affairs of Lions Gate Entertainment Inc.-the applicant-). It includes information on the use of the sign ‘DIRTY DANCING’ in the form of a film and stage plays and several annexes (RK1 to RK13) containing facts and figures of the film, stage plays, merchandise and prior registrations of the mark ‘DIRTY DANCING’;

• Witness statement of Nicola Pearcey (President of Distribution of Lions Gate International UK Ltd.). It includes annexes (NP1 to NP14) containing facts and figures of the film Dirty Dancing, press mentions and online references in the United Kingdom, the Republic of Ireland and the Republic of Malta;

• Witness statement of Matt Smith (Head of Distribution, Theatrical of Lions Gate UK Ltd.) It includes information on facts and figures of the film Dirty Dancing, its cast and crew and the sales figures made by the film, DVDs, Electronic sell-through (EST) and Video-on-demand (VOD) in annexes MS1 to MS6;

• Witness statement of Michael Lynas (Managing Director of the Ambassador Theatre Group Ltd.). Indicating that the ‘Dirty Dancing’ theatre show has been presented in his company’s venues in the UK; and

• Witness statement of Adam Kenwright (Chief Executive Officer of AKA). Showing the advertising and marketing activities of the stage show and several press reviews in annexes AK1 to AK7.

Pursuant to Article 75 CTMR, 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. Pursuant to Article 7(1)(c) CTMR, 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 services may not be registered.

For a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (judgment of 22/06/2005, T‑19/04, ‘Paperlab’, paragraph 25; and judgment of 14/06/2007, T‑207/06, ‘Europig’, paragraph 27).

The Board of Appeal in its decision of 10/02/2015, R 2252/2014‑4 – ‘Dirty Dancing’, on the issue of the descriptive character of the mark applied for in relation to identical services in Class 41 (the applicant removed education and training related services from its previous application, added organizing parties and substituted provision of […] education accessed via communication and computer networks for provision of […] instruction accessed via communication and computer networks), already subscribed the Office’s assessment:

12 The examiner correctly indicated the lexical English meaning of the mark applied for which is, according to the Oxford English Dictionary online:

‘dirty dancing n. [popularized by Emile Ardolino’s 1987 film of that name] orig. U.S. the action or practice of dancing to popular music in a sexually provocative manner; such a dance itself, esp. one in which couples dance very close together as if simulating sexual intercourse’.

13 The examiner correctly decided that the relevant English-speaking consumer will understand the words ‘dirty dancing’ as a meaningful expression, namely as an action of dancing in a sexually provocative manner, i.e. a generic expression for a specific manner of dancing, this irrespective of whether or not roots or origin may be linked to a movie of 1987.

14 The Board subscribes the assessment of the examiner that with this meaning the mark is descriptive of the objected services in Class 41. These services relate to entertainment, training, education, sporting and cultural activities which can all have as a subject matter the specific manner of dancing. The mark has no element and namely no figurative feature which could make the mark distinctive beyond its obvious descriptive meaning. Due to its descriptive character for the English-speaking public, the mark is not perceived as an indication of origin in at least part of the European Union (emphasis added).

As regards the applicant’s argument that other English dictionaries do not show any meaning for ‘DIRTY DANCING’, it is settled case-law that for a trade mark to be refused registration under Article 7(1)(c) CTMR, 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 (judgment of 23/10/2003, C‑191/01 P, ‘Doublemint’, paragraph 32, emphasis added).

By analogy, at least one of the dictionaries the English-speaking consumer may use and probably one of the most reputed, the Oxford English Dictionary, shows a meaning that designates a characteristic of the services applied for.

2. As regards the applicant’s argument that other film and book titles have been considered distinctive for identical services, the Office notes that each case has to be judged on its own merits and that the registrability of a sign as a Community trade mark must be assessed solely on the basis of the CTMR as interpreted by the Community trade mark courts and not on the basis of a previous practice of the Office, national offices or national courts:

‘decisions concerning registration of a sign as a Community 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 Community trade mark must be assessed solely on the basis of the CTMR, as interpreted by the Community judicature, and not on the basis of previous Office practice (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47; and judgment of 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, paragraph 35).

However, the Office would add that having reviewed and analysed the earlier CTMs that the applicant cited it is clear that none of these earlier marks, irrespective of the similarities between the services of concern, are on an equal footing with the expression ‘DIRTY DANCING’. None of these earlier marks are directly descriptive of any kind of entertainment or cultural activity, for example ‘Peter Pan’ or ‘The Lion King’ are not dance styles or the action of performing an entertainment activity in a certain manner. Moreover, although ‘Star Wars’ appears in Oxford English Dictionary, its definition does not describe any entertainment service or cultural activity, it refers to a defence strategy developed in 1980s and named after a popular science-fiction film. In the event that ‘Star Wars’ had been applied for defence systems or defence services it would have been objected to.

Furthermore, ‘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’ (judgment of 27/02/2002, T‑106/00, ‘Streamserve’, paragraph 67).

3. Pursuant to Article 7(3) CTMR, Article 7(1)(b) and (c) CTMR shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it. It follows from Article 7(2) CTMR that the applicant must prove acquired distinctiveness, at the time of filing of the mark applied for, for all parts of the European Union in which there is an absolute ground for refusal, a part of the European Union being understood as one or more Member States (judgment of 07/09/2006, C‑108/05, ‘Europolis’, paragraph 28; and judgment of 30/03/2000, T‑91/99, ‘Options’, paragraph ).

In the case at hand the objection was raised with reference to the English-speaking part of the European Union with a focus on the Member States in which their official language or one of their official languages is English: the United Kingdom, the Republic of Ireland and the Republic of Malta.

Having due regard to the Boards of Appeal decision of 10/02/2015, R 2252/2014‑4 – ‘Dirty Dancing’, paragraph 20 et seq. The material provided by the applicant must convince the Office first of all that the mark has been used as a trade mark for services in Class 41. Moreover, this use must have taken place in the English-speaking part of the European Union, at least in the United Kingdom, Ireland and Malta. Only when these two conditions are satisfied, the further claim that the mark ‘DIRTY DANCING’ has indeed become distinctive in consequence of such use can be examined.

Despite the volume of material furnished by the applicant, the Office finds that it has failed to prove that the expression ‘DIRTY DANCING’ has been used as a trade mark for the relevant services in Class 41, which according to the Nice Classification, covers services intended to entertain or to engage attention.

The essential function of a trade mark is to identify the commercial origin of goods and services, thus enabling the consumer who purchases them to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition.

An examination of the documents submitted leaves no doubt that in 1987 a film Dirty Dancing was released and became a global success. This is confirmed among others by the facts and figures provided by the applicant within the annexes RK1 (total income of the film); MS1 to MS6 (sales of DVD, EST and VOD); RK8 (Google results); RK9, NP5 to NP8 and AK1 (internet websites: American film Institute, Wikipedia); and NP1 to NP4 (press mentions and awards and recognitions).

It is not disputed that ‘DIRTY DANCING’ is the title of a well-reputed classic film, it is not disputed that the film soundtrack, the awards it achieved and several other facts such as its dialogue quotes, have become popular, well-known and worldwide famous. It is not disputed that from the film, a stage play has been released; however, it is disputed that the words ‘DIRTY DANCING’ have acquired distinctive character through use for all the services applied for.

The evidence, however, does not show that the expression ‘DIRTY DANCING’ indicates the commercial origin of the film, or the stage play as a spin-off of it, but rather its artistic origin. Even if the reviews and press articles that the film ‘DIRTY DANCING’ or the stage play had generated are capable of showing the commercial success of both in the relevant Member States, the fact remains that they cannot show that the sign in question is used as an indicator of commercial origin for the relevant services in Class 41.

Moreover, the acquired distinctiveness has not to be proven in the abstract but in relation to specific goods and services, in the case at hand the services in Class 41. In trade mark law the success of a film title is not sufficient for the establishment of acquired distinctiveness through use in relation to specific goods and services. The evidence provided does not show that the applicant has acquired distinctiveness for the expression ‘DIRTY DANCING’ applied for in relation to ‘entertainment; cultural activities’ and the more detailed services falling within these broader categories ‘entertainment services in the form of motion pictures, stage plays; entertainment and instruction by means of or relating to the internet, radio or television; production, presentation, on-line distribution, syndication, networking and rental of computer games, interactive entertainment, motion pictures, stage plays, TV programs, interactive compact discs, CD-ROMs, high definition optical discs, optical discs; publication, including on line publication, printed formats, sound recordings, video recordings, data, images, games, graphics, text, programs or information; exhibition services for entertainment purposes; organization, production and presentation of shows, stage plays, competitions, contests, games, concerts and events including karaoke and sing-a-long events; provision of karaoke services; provision of entertainment and instruction accessed via communication and computer networks; provision of games accessed via communication and computer networks; provision of information relating to any of the aforesaid services, rental and distribution of programs, motion pictures, images, music, games, text and recordings; information and advisory services related to all the aforesaid services’.

Although the production of films and stage plays are entertainment services and cultural activities, as reasoned above the mere fact that the film or the play as such bears the name ‘DIRTY DANCING’ does not prove that the applicant has rendered entertainment services or cultural activities under the trade mark ‘DIRTY DANCING’, i.e. offered services to entertain or to engage the public’s attention under this name, irrespective of how successful the film or the stage play has been.

Moreover, the evidence does not show concrete turnover or advertising figures. Global figures are not sufficient to draw conclusions for individual Member States.

Also, there are scarce references about the stage play in the Republic of Ireland and in the Republic of Malta. Namely, for Ireland, the dates of the stage tour and Irish press reviews of the show (annexes RK5, NP2 and AK6). And for Malta, a press review about the film Dirty Dancing; a printout about a show based in the film performed by the Yada Dance Company which is not related to the applicant (annexes NP3 and NP14); a printout of a Maltese website which announces the sale and shipment of tickets for the stage play in London that redirects to a UK‑based ticketing website which does not show the use of the mark applied for in respect of the services for which registration is sought (annexes NP3 and AK3); and a printout of a Maltese on-line book shop (agendamalta.com) that offers three books based on the film (annex NP13). Furthermore, most of the references to Ireland and Malta reproduce the significantly stylised figurative version of the mark ‘DIRTY DANCING’.

As regards the applicant’s argument about the relative small population of these Member States, it is of no relevance for the current proceedings. In the case of proving the acquisition of distinctive character through use, ‘it follows that a mark can be registered under Article 7(3) of Regulation No 40/94 only if evidence is provided that it has acquired, through the use which has been made of it, distinctive character in the part of the Community in which it did not, ab initio, have such character for the purposes of Article 7(1)(b). The part of the Community referred to in Article 7(2) may be comprised of a single Member State’ (judgment of 22/06/2006, C‑25/05 P, ‘Storck’, paragraph 83, emphasis added).

Regarding the placement of the mark ‘DIRTY DANCING’ in several items of merchandise, that use does not prove the acquisition of distinctive character in respect of the services effectively applied for. In addition, the mark on those items differs significantly from the one applied for due to its stylisation.

To conclude with the analysis of the submitted evidence, regarding the applicant’s other ‘Dirty Dancing’ registered trade marks (annexes RK10 and RK11), the Office notes that CTM No 13 309 695, ‘DIRTY DANCING’, is registered for different goods and services and it comes from the division of the CTMA No 12 036 265, ‘DIRTY DANCING’, which was refused for identical services in Class 41 and the refusal was confirmed by the Board of Appeal (decision of 10/02/2015, R 2252/2014‑4 – ‘Dirty Dancing’).

In the case of the other registered Community trade marks, they show a significant stylisation which contributes to their distinctiveness.

Moreover, in the case of national word marks, according to case-law, the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system. Consequently, the registrability of a sign as a Community mark must be assessed by reference only to the relevant Community rules. Accordingly, the Office and, if appropriate, the Community judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated (judgment of 27/02/2002, T‑106/00, ‘Streamserve’, paragraph 47).

In addition, ‘references to national registrations conferred by Member States which do not have English as their language, where the sign may well be distinctive without necessarily being so throughout the Community, cannot be accepted as relevant in this case’ (judgment of 03/07/2003, T‑122/01, ‘Best Buy’, paragraph 40). This is the case, for example, of Spain.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 13 930 102, ‘DIRTY DANCING’, is hereby rejected for all the services claimed.

According to Article 59 CTMR, you have a right to appeal this decision. According to Article 60 CTMR, notice of appeal must be filed in writing with the Office within two months of the date of notification of this decision. 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 800 has been paid.

Octavio MONGE GONZALVO