Refusal of application for a European Union trade mark

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

Alicante, 31/08/2017

EVANTHIA-GLAFKI SKORINI

67 IROON POLITECHNIOU STR.

GR-18536 PIRAEUS

GRECIA

Application No:	16 628 521
Your reference:	PSYCHOMETRIX
Trade mark:	PSYCHOMETRIX
Mark type:	Word mark
Applicant:	SPORTS CHALLENGE SINGLE MEMBER PRIVATE COMPANY 21 km National Road Athens Lamia GR-14568 KRYONERI GRECIA

The Office raised an objection on 11/05/2017 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 03/07/2017, which may be summarised as follows:

1. Descriptiveness

2. 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 waive the objection for the following services:

Class 41 Fitness; entertainment; arranging, conducting and organisation of conferences; consultancy and information services relating to arranging, conducting and organisation of conferences; sports information services; provision of sport facilities; cultural activities; ticket procurement services for sporting events; ticket procurement services for entertainment events; provision of online information in the field of computer games entertainment; Internet games (non-downloadable); entertainment provided via the internet; providing online entertainment in the nature of fantasy sports leagues; entertainment services relating to sport.

The objection is maintained for the remaining services, namely:

Class 41 Sports; education and sports; organisation of sports tournaments; arranging of sports competitions; organisation of sports competitions; organising of football events; organisation of sports events in the field of football; services for the organisation of football events; organisation of football competitions; entertainment in the nature of football games; advisory services relating to the organisation of sporting events; sporting results services; sport camps; sports tuition, coaching and instruction; sports coaching services; sporting activities; sporting services; sporting education services; sporting activities; sports instruction services; educational services relating to sports; coaching services for sporting activities.

Class 44 Psychological counseling services in the field of sports; psychological assessment services.

1. Descriptiveness

General remarks

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).

Applicant´s remarks

The applicant contended that the sign ‘PSYCHOMETRIX’ is not a term that would customarily be used to describe the services applied for, nor is it a generic term and nor does it have a clearly descriptive meaning in relation to the services claimed.

Office´s comments

The Office respectfully disagrees with the applicant that the sign ‘PSYCHOMETRIX’ would not be used to describe the services applied for, that it is not a generic term and that it does not have a clearly descriptive meaning in relation to these services.

The message conveyed by the sign is clear, direct and immediate to the relevant public, namely that the services are organisation of all kind of sports events and competitions; sports tuition, coaching and instruction services, educational services relating to sport, psychological sports counselling services, etc., all having in common or characterised by using psychometrics or psychological measurement methods for the purpose of raising sports performance.

Applicant´s remarks

The applicant contended that the Office has not provided for each of the services at issue a specific and required reasoning to demonstrate how the sign ‘PSYCHOMETRIX’ is descriptive.

Office´s comments

The Office does agree with the applicant that when an objection is raised, the Office must state specifically which ground (or grounds) for refusal apply to the mark in question, for each product or service claimed.

However, it is sufficient that a ground for refusal applies to a single homogenous category of goods and/or services. A homogenous category is considered a group of goods and/or services that have a sufficiently direct and specific link to each other (judgment of 02/04/2009, T-118/06, Ultimate fighting championship, EU:T:2009:100, § 28). Where the same ground or grounds for refusal is/are given for a category or group of goods or services, only general reasoning for all of the goods and/or services concerned may be used (judgment of 15/02/2007, C-239/05, The Kitchen Company, EU:C:2007:99, § 38).

After the Office´s waiver of the objection for the services cited above on pag. one/1 and two/2 of this letter, the category of services objected to is now a homogenous category of services that have a sufficiently direct and specific link to each other, all directly and specifically linked to the use of psychometrics or psychological measurements methods in the field of sport.

Applicant´s remarks

The applicant contended that the relevant public (mainly a public active in various sports fields) would perceive the sign at issue as allusive or suggestive rather than descriptive of the services at issue.

Office´s comments

The Office respectfully maintains its position regarding the direct and clear message of the sign ‘PSYCHOMETRIX’ as mentioned above. The sign is not vague or ambigious in any way, nor does it lend itself to different interpretations, nor will it be perceived as unusual or akin to an allusive and fanciful sign in relation to the services claimed.

2. Distinctive character

General remarks

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).

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).

In addition, in view of the nature of some of the 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 also 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).

Applicant´s remarks

The applicant contended that a mark may be distinctive in relation to certain goods and devoid of distinctive character in relation to other goods. The applicant contended that in this case the Office has failed to state reasons for objection in relation to each of the services claimed for.

Office´s comments

After the Office´s waiver of the objection for the services cited above on pag. one/1 and two/2 of this letter, the Office is of the position that given that the sign ‘PSYCHOMETRIX’ is descriptive in relation to all the services as objected to now, the impact on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

As to the applicant´s contention that the Office has failed to state reasons for objection in relation to each and every one of the services at issue, the Office refers to the case-law cited above (judgment of 02/04/2009, T-118/06, Ultimate fighting championship, EU:T:2009:100, § 28; judgment of 15/02/2007, C-239/05, The Kitchen Company, EU:C:2007:99, § 38) stating that it is sufficient that a ground for refusal applies to a single homogenous category of goods and/or services.

Applicant´s remarks

The applicant contended that the sign ‘PSYCHOMETRIX’ is distinctive enough in relation to all the services claimed as the relevant public will never think that the sign at issue refers to psychological measurement.

Conclusively, the applicant contended that the sign ‘PSYCHOMETRIX’ has the minimum degree of distinctive character which will allow the relevant public to distinguish the services at issue from other similar services from other undertakings/providers.

Office´s comments

The Office still respectfully maintains its position for the afore-mentioned reasons that taken as a whole, the mark ‘PSYCHOMETRIX’ is devoid of any distinctive character and is not capable of distinguishing the services at issue within the meaning of Art. 7(12)(b) EUTMR and Art. 7(2) EUTMR.

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 16 628 521 is hereby rejected for the following services:

Class 41 Sports; education and sports; organisation of sports tournaments; arranging of sports competitions; organisation of sports competitions; organising of football events; organisation of sports events in the field of football; services for the organisation of football events; organisation of football competitions; entertainment in the nature of football games; advisory services relating to the organisation of sporting events; sporting results services; sport camps; sports tuition, coaching and instruction; sports coaching services; sporting activities; sporting services; sporting education services; sporting activities; sports instruction services; Educational services relating to sports; coaching services for sporting activities.

Class 44 Psychological counseling services in the field of sports; psychological assessment services.

The application may proceed for the remaining services, namely:

Class 41 Fitness; entertainment; arranging, conducting and organisation of conferences; consultancy and information services relating to arranging, conducting and organisation of conferences; sports information services; provision of sport facilities; cultural activities; ticket procurement services for sporting events; ticket procurement services for entertainment events; provision of online information in the field of computer games entertainment; Internet games (non-downloadable); entertainment provided via the internet; providing online entertainment in the nature of fantasy sports leagues; entertainment services relating to sport.

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.

Finn PEDERSEN