Refusal of application for a European Union trade mark

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

Alicante, 05/12/2016

FILEMOT TECHNOLOGY LAW LTD

25 Southampton Buildings

London WC2A 1AL

REINO UNIDO

Application No:	015501422
Your reference:	R4749-00065
Trade mark:	REALISTIC GAMES
Mark type:	Word mark
Applicant:	REALISTIC GAMES LIMITED 8th Floor North, Reading Bridge House, Reading Bridge, George Street Reading RG1 8LS REINO UNIDO

The Office raised an objection on 22/06/2016 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 02/08/2016, which may be summarised as follows:

1. The relevant public for goods in Classes 42 and 45 is the professional public.

2. The mark is not descriptive.

3. The mark is not devoid of distinctive character.

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.

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.

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.)

After further consideration the Office agrees with the applicant that the services in Classes 42 and 45 also target the professional public. The relevant consumers are therefore both average consumers and the professional public.

The fact that part of the mark, namely ‘realistic’, is used on the applicant’s website in a figurative form and that the applicant intends to use the mark as an indication of commercial origin does not influence the assessment of the mark. The mark is assessed as the word mark ‘REALISTIC GAMES’, based on the Articles in the European Union Trade Mark Regulation, and how the applicant intends to use the mark is not taken into account.

The applicant argues that the relevant consumers are not interested in real-life games, but prefer escapism games.

There are different types of games, from simple arcade games such as Tetris¹ to detailed real-life games such as Grand Theft Auto.² The games target consumers with different preferences and interests.

However, when exposed to the word mark ‘REALISTIC GAMES’, the relevant consumers will immediately and without further thought presume that the services applied for relate to games with life-like/realistic graphics and story-lines.

‘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 mark explicitly describes the characteristics of the services, namely that the services provided are software, licences and supporting services for real-life games. The mark applied for therefore does not fulfil the criteria to act as an indication of commercial origin for the services in question.

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 15 501 422 is hereby rejected for the following services:

Class 41 Casino services; Casino, gaming and gambling services; Interactive entertainment services; Game services provided by means of communications by computer terminals or mobile telephone; Entertainment services; Amusement services; Gaming services; Provision of online information in the field of computer games entertainment; Gambling services; Gambling; Entertainment.

Class 42 Providing computer games and computer games software as a service; Providing information and advice in the field of computer games software and computer games software development; Providing installation and maintenance of computer games software for use on gaming machines; Computer programming and implementation of games software; Design, development and creation of computer games hardware and software; Design and development of computer games software for use on PCs, smart phones, tablets, interactive televisions and gaming machines; Consultancy services in relation to computer games and computer games software technology; Consultancy services in relation to the operational aspect of computer games and computer games software; Consultancy services in relation to user experiences and interfaces of computer games and computer games software; Consultancy services in relation to distribution channels and websites of computer games and computer games software; Consultancy, advice and development services in relation to computer games and computer games software.

Class 45 Software licensing; Copyright licensing; Licensing services; Computer software licensing; Licensing of software; Licensing of computer games; Licensing of computer programs; Licensing of computer software.

The application may proceed for the remaining services, namely:

Class 42 Server hosting.

Class 45 Licensing of databases; Licensing of trademarks.

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.

Anja Pernille LIGUNA