Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 12/07/2016

IGT Austria GmbH

Armin Herlitz

Seering 13-14

A-8141 Premstätten

AUSTRIA

Application No:	015046022
Your reference:	81096885
Trade mark:	TRIPLE BUCKS
Mark type:	Word mark
Applicant:	IGT, a Nevada Corporation 9295 Prototype Drive Reno, Nevada 89521-8986 ESTADOS UNIDOS (DE AMÉRICA)

1. The Office raised an objection on 24/03/2016 pursuant to Article 7(1)(b) EUTMR 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.

2. The applicant submitted its observations on 20/05/2016, which may be summarised as follows:

• The applicant strongly denies that the mark is devoid of any distinctive character and directs the Office´s attention to the fact that the applicant already owns a number of EUTMs beginning with the word TRIPLE (TRIPLE DIAMOND, TRIPLE BIG WHEEL, TRIPLE DOUBLE DIAMOND).

• It cannot be disregarded that the applicant is trying to establish a series of marks, all of which start with the word TRIPLE. It is settled case law that consumers tend to give more attention to the beginning of a mark than to its end. Consumers will already be familiar with the applicant´s older marks and will immediately link the new mark to the existing series of marks. It is pointed out that the all three older marks were registered without any objections.

• When rejecting the current application after registering the similar earlier marks, there is no consistency in the ruling of the Office. The applicant refers to another similar case of an affiliate company where the Office registered the first seven applications in a series but raised an objection against one of them.

• The applicant holds that the mark TRIPLE BUCKS does not inform customers about the possible and desirable outcome of purpose of the goods and services, it just suggests that this might be the outcome. Given the very nature of the gambling business, the mark can never describe the outcome of a game; one has to play a game in order to see who will win and who will lose. Therefore, the mark can only suggest one possible outcome of the game.

• The applicant refers to relevant case law in support of its arguments.

3. Pursuant to Article 75 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.

As already pointed out in the Notice of grounds for refusal:

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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).

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 Office maintains that the mark TRIPLE BUCKS lacks distinctive character in relation to games and gaming services. It is a simple and clear statement that will be understood as the possibility to triple the amount of money gambled. Even if BUCKS is an American expression, it will immediately be understood as referring to money among English-speaking consumer in the EU.

As a whole, the mark TRIPLE BUCKS does not enable the relevant public to memorize the sign easily and instantly as a distinctive trade mark for the goods and services at hand.

It may be that the applicant is trying to establish a series of mark beginning with the word TRIPLE. However, the distinctive character of each individual mark must be assessed separately. The earlier marks TRIPLE DIAMOND, TRIPLE BIG WHEEL and TRIPLE DOUBLE DIAMOND all display distinctive character while TRIPLE BUCKS only informs consumers of a treble profit.

Please note that the applicant´s EUTM application nr. 010302859 “TRIPLE BONUS SPIN ROULETTE” has also been refused registration.

Moreover, no proof have been submitted to demonstrate that consumers actually are familiar with the applicant´s older marks and will immediately link the new mark to the existing series of marks.

Also, 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; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35).

‘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’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

The Office always strives for consistency. Insofar as a certain inconsistency would have occurred in some other cases, a person who files an application for registration of a sign as a trade mark cannot rely, to his/her advantage and in order to secure an identical decision, on a possibly unlawful act committed with respect to another mark to the benefit of someone else (10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 76 and case-law cited therein).

As regards the claim that the mark is only suggestive of a possible outcome, there are of course no guarantees that the use of the applicant’s goods and services will result in a triple win. However, when seeing the mark in relation to the goods and services applied for, the consumer will perceive it as obvious information about the outcome if he/she wins – triplicating the money that was gambled. It is the aim of the game and a desirable outcome. As such it lacks distinctive character.

A sign which is imaginative, original, unusual and fanciful is far more likely to be able to do the job of distinguishing the goods or services of a specific undertaking than a sign which in banal and commonplace. In particular, when a sign contains information about the goods or services in relation to which it is to be used, it may none the less qualify for registration if that information is presented in an original or imaginative manner. No such techniques are present in the sign and the mark does not contain any element whatsoever that would make it distinctive.

4. For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 15046022 is hereby rejected for all the goods and services claimed.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 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.

Cecilia ALIN