Refusal of application for a European Union trade mark

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

Alicante, 14/02/2017

UBISOFT ENTERTAINMENT, Société Anonyme

Marc Muraccini

28, rue Armand Carrel

F-93108 Montreuil sous Bois

FRANCIA

Application No:	015703903
Your reference:	JustSing
Trade mark:	JUST SING
Mark type:	Word mark
Applicant:	UBISOFT ENTERTAINMENT, Société Anonyme 107, Avenue Henri Fréville F-35207 Rennes cedex FRANCIA

The Office raised an objection on 17/08/2016 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 19/12/2016, which may be summarised as follows:

1. The Applicant does not agree that there is sufficient homogeneity between the categories of goods to justify a general reasoning.

2. The office has ignored alternative meanings of the verb “to sing”. At worst, the mark is suggestive for the relevant public.

3. Similar marks have been registered.

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 waive the objection in respect of the following goods and services:

Class 9: Apparatus for recording, transmission, reception, reproduction and processing of sound and images; Magnetic, optical, numerical and electronic data carriers; Magnetic, optical and numerical discs; Computer programs; Digital personal organiser; computer memories; Printed circuits; Computers; Computer peripheral devices, namely screens, keyboards, mice, consoles and control levers, readers of magnetic, optical and digital disks and diskettes; Telephone and telecommunications apparatus; Recorded computer programs; Games software; Computer software (recorded programs); Software for playing video games, computer games and on-line games; Software incorporating computer games; Computer software for video and audio games; Computer software on mobile telephones and electronic tablets; audio visual games on computer hardware platforms; Magnetic, optical and digital media for computer programs; CD-ROMs; Compact discs; Software featuring music and motion picture sound tracks; Exposed cinematographic films; Mouse mats; Parts and fittings for all the aforesaid.

Class 28: Games and playthings; Apparatus for electronic games (other than those adapted for use with television receivers only); Action figures and accessories therefor, scale models of figurines, table games, dolls, accessories for dolls, clothing for dolls, automatic games apparatus other than coin-operated, and those adapted for use with television receivers only; Toys, automatic coin-operated games, playing cards; Electronic game consoles; Game apparatus for use with television receivers only; Teaching materials in the form of games.

Class 41: Entertainment; Sporting and cultural activities; Organisation of competitions relating to video games, education and/or entertainment; Arranging and conducting of colloquiums, conferences and congresses, organization of exhibitions for cultural or educational purposes; Organisation of exhibitions in the field of entertainment; Publishing of entertainment, educational and instructional texts; Publication of magazines, publication of newspapers, publishing of books, publishing of newspapers, publishing of magazines; Providing computer and telecommunications technology training; information on online computer games and other online entertainment; Games offered online (on a computer network); providing games by mobile telephone communication; Provision of games by or for use on cellular telephones; Production of films, shows, movie studios, film rental, rental of video and sound recordings; Recordings for cinema, television, DVD, compact discs; Entertainment services in the nature of an amusement park attraction, namely, a themed area; Amusement park and theme park services; Operating fairground rides and funfair services; Organisation of shows, leisure services; production of radio, television, film and television entertainment programmes, creation of images, sounds or words, recording of sounds (recording studios) or images (filming) on magnetic data carriers, professional consultancy relating to entertainment.

The objection is maintained in respect of the following goods and services:

Class 9: Multimedia and interactive software; Electronic publications, downloadable;

Class 41: Education; Tuition; Providing of training;

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 Office based its objection on the primary dictionary definitions of the individual word elements making up the mark. The definitions come from Collins English Dictionary, a primary objective source of the English language as spoken and perceived. The combined objective definitions make perfect sense together in the context of the goods. There is no perceptible difference between the meanings supplied and the meaning perceived. The mark is entirely made up of terms which describe an essential characteristic of the objected goods and services. The average consumer will immediately perceive the data carriers Multimedia and interactive software; Electronic publications, downloadable; together with the Education; Tuition; and Providing of training services as being directly related to singing. The sheer proliferation of publications and training and tuition services which feature singing means that this mark will be seen as a straightforward description, distinguishing it from other marks registered by the Office in relation activities other than singing. It is irrelevant that “sing” has alternative meanings. Given the proliferation of publications and courses on singing, the average consumer will only see the obvious permutation. In any event:

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).

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

The term “JUST SING” conveys a “sufficiently direct and specific” message about the content of the Multimedia and interactive software; Electronic publications, downloadable; Education; Tuition; Providing of training; (judgment of 20/07/2004, T‑311/02, ‘LIMO’, paragraph 30).Contrary to the applicant’s statement, this descriptive meaning will immediately, and without any further thought, be grasped by the average English-speaking consumer. Therefore, the mark is neither an unusual combination, nor is it allusive. It is a basic word combination, entirely obvious and meaningful and as such cannot in any way be shown to be memorable.

According to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (judgment of 19/09/2002, C‑104/00 P, ‘DKV’, paragraph 21). This is clearly applicable to the present case.

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 15 703 903 is hereby rejected for

Class 9 Multimedia and interactive software; Electronic publications, downloadable;

Class 42 Education; Tuition; Providing of training;

The rest of the goods and services are acceptable.

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.

Keeva DOHERTY