Refusal of application for a European Union trade mark

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

Alicante, 16/05/2017

CMS HASCHE SIGLE PARTNERSCHAFT VON RECHTSANWÄLTEN UND STEUERBERATERN mbB

Stadthausbrücke 1-3

D-20355 Hamburg

ALEMANIA

Application No:	015782519
Your reference:	2016/12719_IR/ip
Trade mark:	MyLotto24
Mark type:	Word mark
Applicant:	MYLOTTO24 LIMITED 20-22 Bedford Row London WC1R 4JS REINO UNIDO

The Office raised an objection on 16/09/2016 pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR because it found that the trade mark applied for ‘MyLotto24’ is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 16/01/2017, which may be summarised as follows:

1. Since the sign is a compound mark the components of the mark should not be treated separately.

2. The association between the sign and the services is not direct and specific, rather the association is vague.

3. The sign is not descriptive for the services applied for in Classes 35, 36, 38 and 41 respectively.

4. The sign MyLotto24/Lotto24 has already been registered in several countries.

5. There are registered trade marks consisting the components of the sign ‘My’, ‘Lotto’ and ‘24’ for the similar services before the Office.

6. The applicant submits attachments regarding prize draw information of different companies and trade mark registration documents for the signs MyLotto24 and Lotto24.

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).

‘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).

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59). As stated in the previous letter of the Office, the words ‘My’, ‘Lotto’ and the numeral ‘24’ separately and the combination of them as ‘MyLotto24’ are easily understandable by the relevant public regarding the characteristics of the services in question namely, services being rendered for personal lottery which is available day and night. It is obvious that the message conveyed by the sign ‘MyLotto24’ is direct and objective, contrary to what is argued by the applicant in its observation.

As it is argued by the applicant, the examination has to be based on an overall perception of the trade mark by the relevant public. As a general rule, the mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics within the meaning of Article 7(1)(c) EUTMR. Merely bringing those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned. (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 40, 41; 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 99, 100; similarly 16/09/2004, C-329/02 P, SAT.2, EU:C:2004:532; 15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 29).

Furthermore, from a syntactical point of view, the absence of a space or punctuation between the three component parts of the sign applied for has no bearing whatsoever on the ability of the consumer to recognise them separately within the whole. An English speaker would not struggle to identify three obvious English terms within the whole term. This is because the three parts of the term are instantly recognisable as English words.

The word ‘My’ means ‘of or belonging to me; of or relating to myself; which I have, hold, or

possess’ and the word ‘Lotto’ means ‘a lottery’. Moreover, the numeral ‘24’ usually represents ‘24-hour’. Certainly, the minimal visual difference that is created by the lack of a space between the words is not enough to confer on the sign a level of distinctiveness which would transcend the clear and unambiguous semantic meaning and allow it to function as a trade mark. Therefore, in the present case, the meaning of the combination ‘MyLotto24’ is not more than the meaning of the words and the numeral separately. There is nothing unusual for the combination ‘MyLotto24’ as to syntax or meaning considering the words alone and it will be understood as a meaningful expression referring to the own lottery which is available all day and all night.

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, emphasis added.)

Moreover, as pointed out above, the sign in question need not already be known as a descriptive indication; it is enough if it can reasonably be expected to be understood as such in the future. Therefore, it is irrelevant whether or not the sign at issue is commonly used in the sector concerned (21/10/2004, C‑64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 46).

As regards the argument that the word ‘Lotto’ has no relation to the advertising, promotion and marketing services, it is settled case-law that: ‘the formulation “may serve” in Article 7(1)(c) EUTMR shows that a sign or indication must be refused registration if it may serve in trade to designate the characteristics of the goods, without its being necessary to show that the sign or indication is actually used or needed by the trade in question’ (16/06/1999, R 216/1998-1, DOUBLEMINT, § 12).

The Office is still of the view that the sign ‘MyLotto24’ is descriptive of the kind and the intended purpose of the services in question. The meaning of the sign is obvious and direct to the average consumer. There is nothing vague or in need of interpretation in this obviously meaningful statement. As it was stated in the previous letter of the Office, prefixing the possessive pronoun ‘My’ does not change the descriptive content of the following word/numeral in any way. In general, the possessive pronoun ‘My’ is intended to address the consumer directly and expresses the fact that the consumer will find an offer that is especially relevant to him (see 10/01/2014, R 2216/2013-4, MEINFERNBUS.DE, § 13; 05/08/2015, R 2018/2014-1, MYTIRE, § 35). Moreover, the numeral ‘24’ usually represents the continuous characteristics of the services rendered. Considering all these facts and taking into account the association of the sign with the services in question, the Office does not change its position regarding the objection.

Contrary to what is argued by the applicant, in case the descriptive meaning of a sign for the services applied for registration, mere applying of these services in general terms such as advertising or telecommunication services does not preclude the application of Article 7(1)(c) EUTMR. Furthermore, both prize draws and lotteries can be counted under game of chances and it is considered that the average consumers are not in the habit of differentiate these game of chances. Moreover, since the prefix ‘My’ connotates the personalized services, it is not surprising that the consumers have personal accounts for playing game of chances including lotteries and keep some money for which they could need financial advisory services. For these reasons, the arguments of the applicant regarding lack of association between the sing and the services in question should be rejected.

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).

Contrary to the applicant’s arguments in its observations, 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, which is clearly applicable to the present case.

The applicant argues that the sign has been found acceptable and registered in a number of countries.

As regards the national decisions referred to by the applicant, according to case-law:

the European Union 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 European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union 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.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 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 Union, cannot be accepted as relevant in this case’ (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 40).

The applicant argues that there are numerous registered trade marks which are consisting the components of the sign, namely ‘My’, ‘Lotto’ and ‘24’.

As regards the applicant’s argument that a number of similar registrations have been accepted by 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 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).

Moreover, it is settled case-law that the Office must, when examining an application for registration of a European Union trade mark, take into account the decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not. However, the way in which the principles of equal treatment and sound administration are applied must be consistent with the principle of legality. Consequently, an applicant who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (15/11/2016, R 509/2016-1, AirFloss (fig.), § 31).

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 15 782 519 – MyLotto24 is hereby rejected for all the 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.

Kubilay ÖZDEMIR