Refusal of application for a European Union trade mark

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

Alicante, 19/07/2016

IGT Austria GmbH

Armin Herlitz

Seering 13-14

A-8141 Premstätten

AUSTRIA

Application No:	015046311
Your reference:	81095128
Trade mark:	SUPER RICH
Mark type:	Word mark
Applicant:	IGT, a Nevada Corporation 9295 Prototype Drive Reno, Nevada 89521-8986 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 18/03/2016 pursuant to Article 7(1)(b) and (c) EUTMR 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.

The applicant submitted its observations on 17/05/2016, which may be summarised as follows:

1. Both components of the mark, ‘SUPER’ and ‘RICH’ are very common in the gaming industry. Not only the applicant, but also its competitors own registered trade marks containing the words in question for similar, gaming related goods and services. The applicant mentions ten EUTMs containing either the word ‘SUPER’ or the word ‘RICH’, among which its earlier applications, namely EUTM No 12 483 301 ‘STINKIN’ RICH’ and EUTM No 12 900 544 ‘FLIPPIN’ RICH’ were registered by the Office without any objections. The applicant tries to establish a series of marks, with ‘SUPER RICH’ being one subsequent application with the same structure. In case of rejecting the objected application after registering the similar earlier EUTMs, there would be no consistency in the ruling of the Office.

2. The Office cannot reject the mark by just using an interpretation which is convenient for its approach, but it has to take more possibilities into account. For example, the element ‘RICH’ could also be interpreted as the short form of Richard, which renders the mark neither descriptive, nor conveying any meaning with respect to the goods and services applied for.

3. Article 7(1)(c) EUTMR does not apply to terms that are only suggestive or allusive as regards certain characteristics of the goods and services. The mark in question does not inform customers that they will become outstandingly rich, it just suggests that there is a possibility to become rich, which is one possible outcome of the game.

4. The fact that a mark could be considered as a promotional formula, does not automatically excludes its distinctiveness.

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.

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).

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, 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).

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).

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

It is also 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).

However, for the sake of completeness, the Office notes that only two of the ten examples mentioned by the applicant, namely EUTM No 12 483 301 ‘STINKIN’ RICH’ and EUTM No 12 900 544 ‘FLIPPIN’ RICH’ bear a similar meaning as the mark at issue, referring to ‘(being) outstandingly rich.’ Nonetheless, those cases cannot be treated identically, since both terms STINKIN’ and FLIPPIN’ are indicated differently than the actual words ‘STINKING’ and ‘FLIPPING’. Moreover, these words together with the word ‘RICH’ are only used in slang, and are not commonly used to describe any characteristics of goods or services in general. The word ‘SUPER’ on the contrary, is commonly and widely used to enhance the amount, size or a positive feature of things (see point 4).

2. Regarding the applicant’s reference to other possible interpretations of the meaning of the term ‘SUPER RICH’, especially because of the multiple meanings of the word element ‘RICH’, it must be pointed out that 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).

In the present case, one of the meanings of the objected mark as a whole is ‘(being) outstandingly wealthy’, which is one of the main purposes of gambling, and consequently, of the goods and services concerned also.

3. It is true 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 (judgment 31/01/2001, T-135/99, Cine Action, EU:T:2001:30, § 29).

However, a sign must be refused as descriptive if it has a meaning which is immediately perceived by the relevant public as providing information about the goods and services applied for. This is the case where the sign provides information about, among other things, 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 (judgments of 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 (judgment of 26/10/2000, T-345/99, Trustedlink, EU:T:2000:246, § 35).

In the case at hand, the goods and services at issue are used and designed typically for the reason to give a chance to the relevant public to become very rich, and/or to facilitate this process, as it was explained in the original objection. Therefore, the Office maintains that even for a partially professional public, the mark conveys obvious and direct information regarding the intended purpose of the goods or of rendering of the service in question.

4. If a mark is descriptive, it is also non-distinctive. However, in the present case, as it was pointed out in the original objection, the expression ‘SUPER RICH’ may be perceived also as a simple promotional laudatory message, the function of which is to communicate a value statement, namely that by purchasing the goods and by rendering the services in question, the consumers will be given the chance of being outstandingly wealthy. It should be noted that the promise of this chance on the applicant’s side and the expectation of the desirable result on the consumer’s side is already a feature of gambling related products and services, which in this case simply means a game promising a higher prize (including the connected services, such as its availability online).

It should be also pointed out that in view of the nature of some of the goods and services in question, even if the awareness of part of the relevant public is high, given the relatively high technical level and cost of the services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 24).

It must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

In the present case, the Office maintains that there is nothing about the expression ‘SUPER RICH’ that might, beyond its obvious promotional laudatory meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods and services in question (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 28). This is especially the case where, as the applicant himself stated, the components of the mark in question are very common in the gaming industry.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 15 046 311 ‘SUPER RICH’ 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.

Volker Timo MENSING