Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 19/06/2018

TRADEMARKROOM LIMITED

4 Brunswick Place

Southampton, Hampshire SO15 2AN

REINO UNIDO

Application No:	017871507
Your reference:	TMR/JC/ES/PRESSPLAY
Trade mark:	PRESSPLAY
Mark type:	Word mark
Applicant:	Pressplay Media and Entertainment Ltd Unit 3, Sundon Business Park, Dencora Way Luton Luton LU3 3HP UNITED KINGDOM

The Office raised an objection on 19/03/2018 pursuant to Article 7(1)(b)(c) 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 17/05/2018 which may be summarised as follows:

1. The applicant does not agree that the sign ‘PRESSPLAY’ is purely descriptive for the goods in Class 9 in respect of which registration is sought or that that the mark is devoid of distinctive character.

2. The applicant explains that the relevant consumer, while they would be aware of the instructional message ‘press play’ would not recognise applicant’s sign as purely facilitating this instructional message.

Pursuant to Article 94 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 when examining each of those grounds for refusal may or even must reflect different considerations according to the ground for refusal in question (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 55; 16/09/2004, C-329/02 P, SAT.2, EU:C: 2004:532, § 25).

Under Article 7(1)(c) EUTMR, ‘trademarks 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 trademarks 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).

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).

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods in respect of which registration is sought is itself descriptive of the characteristics of those goods for the purposes of Article 7(1)(c), unless there is a perceptible difference between the neologism or the word and the mere sum of its parts. That assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts (see judgment of the CFI of 12 January 2005 in Joined Cases T-367/02 to T-369/02 Wieland-Werke/OHIM, SnTEM, SnPUR, SnMIX, ECR II-47, paragraph 32). In that connection, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (see judgment of the CFI of 30 November 2004 in Case T-173/03 Anne Geddes/OHIM, NURSERYROOM, ECR II-4165, paragraph 21). In the case at hand, as said, it has been found that the coupling of two meaningful elements does not result in a fanciful term. On the contrary, it is considered that the new expression still retains the meanings of its two constituent parts and conveys a sense which is logical and easily perceptible by anyone.

The sign can also possess more meanings. 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.)

The applicant argues that the mark ‘PRESSPLAY’ cannot be descriptive of the goods to which the objection was raised, which are ‘all in the nature of software that enables a client to press the correct button‘.

Therefore, the sign in question is devoid of any distinctive character within the meaning of Article 7(1)(b) and Article 7(2) EUTMR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 17 871 507 is hereby rejected for the following goods:

Class 9 Software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information over the Internet or other communications networks; Computer software; Downloadable computer software; Downloadable computer software for transmitting, streaming, and downloading music, video, and audiovisual content.

The application may proceed for the remaining goods and services.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 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.

Zuzana KAUFMANNOVA