Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 12/09/2018

BALDER IP LAW, S.L.

Paseo de la Castellana 93

E-28046 Madrid

ESPAÑA

Application No:	017899904
Your reference:	EUTM/00507269/BF
Trade mark:	WCOF WORLD CUP OF FIGHTING
Mark type:	Word mark
Applicant:	WORLD CUP OF FIGHTING, LLC 5038 E JUSTICA ST CAVE CREEK (ARIZONA) ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 11/06/2018 pursuant to Article 7(1)(b) and (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 03/08/2018, which may be summarised as follows:

1. One of the term of the sign for which the protection is sought, the combination of letters ‘WCOF’ is not present in dictionaries and the Office has not shown that this acronym is used in trade or that the public knows its “meaning” if it has any.

2. The acronym ‘WCOF’ could equally refer to any other combination of words having these four letters or to nothing at all.

3. The Office cannot argue that this acronym, ‘WCOF’, is explained by the expression ‘WORLD CUP OF FIGHTING’, for the following reasons:

• The applicant’s intention is not relevant.

• The acronym cannot clarify the meaning of the words that follow it and the words that follow the slogan cannot clarify the meaning of the acronym. This is because there is no reason or need for such a clarification, since the purpose of a sign is not to clarify something.

4. Consequently, the word ‘WCOF’ is distinctive per se; it cannot be ‘infected’ by other elements. Therefore, the sign applied for as a whole is distinctive.

5. The applicant’s position is supported by several decisions of the Fourth Board of Appeal.

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.

General remarks on Article 7(1)(c) EUTMR

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).

The applicant’s argument

1. The applicant argues that the combination of letters ‘WCOF’ has no meaning in itself. The Office confirms that it is not present in English dictionaries and is not used in trade.

However, 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).

In this regard, the Office believes that a sign consisting of an independently
non-descriptive acronym that precedes or follows a descriptive combination of words should be objected to as descriptive if it is perceived by the relevant public as merely a word combination combined with an abbreviation of that word combination.

It is not contested that the expression ‘WORLD CUP OF FIGHTING’ is descriptive of the services for which registration is sought, namely various entertainment services in the field of sport.

This expression would be understood by the relevant English-speaking consumer as having the following meaning: an international competition in any combat sport.

Therefore, the expression ‘WORLD CUP OF FIGHTING’ would be perceived by the relevant consumers as providing the information that the services offer entertainment in the form of a worldwide contest of fighting sport.

The combination of letters ‘WCOF’ is composed of the first letter of each of the words making up the expression: ‘WORLD CUP OF FIGHTING’.

An acronym is ‘an abbreviation formed from the initial letters of other words and pronounced as a word (e.g. ASCII, NASA)’ (information extracted from Oxford Dictionaries on 03/09/2018 at https://en.oxforddictionaries.com/definition/acronym).

Consequently, the combination of letters ‘WCOF’, when used together with the expression ‘WORLD CUP OF FIGHTING’ is an obvious and immediately recognisable acronym, for that expression, and the relevant public would when viewing the mark immediately recognise it as such as the letters ‘WCOF’ directly correspond to the initial letter of each word in the expression ‘WORLD CUP OF FIGHTING’ in the correct order.

2. The applicant argues that this acronym could be the acronym of any other word combination having these four letters.

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).

Therefore, even though ‘WCOF’ could have other meanings, it remains nonetheless the acronym of the expression ‘world cup of fighting’.

Moreover, in this case, since the sign as a whole contains the expression and its acronym, the relevant public will interpret ‘WCOF’ in relation to the expression ‘WORLD CUP OF FIGHTING’ and the services for which registration is sought.

Therefore, the fact that this acronym stand for other expressions is irrelevant.

3. In this respect and in response to the applicant's argument that the Office took into account the applicant’s intention, the distinctive character of a trade mark must be assessed by reference to the perception of the consumers of the goods and services covered by the mark ('the relevant public') (22/06/2006, C‑24/05 P, Karamelbonbon, EU:C:2006:421, § 25).

The applicant is mistaken when it submits that its intention was examined by the Office. It is not possible to take into account its intention.

The analysis of the distinctive character of the sign has been carried out solely in relation to the mere perception of the public and the goods and services for which registration is sought.

4. The main question that the Office must answer is what will consumers understand when they see the expression ‘WORLD CUP OF FIGHTING’ associated with its acronym ‘WCOF’, in relation to the services for which registration is sought?

To answer this question, it is necessary to recall that the assessment of the distinctive character of a trade mark made up of several components (a compound mark) cannot be limited to an evaluation of each of its words or components, considered in isolation, but must be based on the overall perception of that mark by the relevant public.

This means that, even if a word, contained in a trade mark is distinctive individually, the Office must nevertheless examine the mark as a whole and confirm that there are no circumstances indicating that the compound trade mark as a whole will be perceived as non-distinctive.

The fact that the lack of distinctiveness of an expression cannot ‘infect’ a distinctive word is irrelevant, because the lack of distinctiveness of a sign is assessed not on the basis of each word separately but on the basis of the sign as a whole.

Therefore, the question that the Office must answer is not if the word element ‘WCOF’ is registrable per se but if a sign composed of a descriptive expression and an element formed of the initials of each word of this expression would be understood in relation to the services for which registration is sought.

In general, if a mark is composed of at least one element that is distinctive alone, the trade mark as a whole will be distinctive.

However, an expression can have a meaning that is greater than the sum of its parts, and an element that is so vague that it could be registered alone may be made specific by the expression that contains it. Therefore, such expressions might lack distinctiveness even if one of their elements can be considered distinctive in isolation.

In the present case, as shown above, the choice of the letters ‘WCOF’ is not arbitrary. This element is composed of the first letter of each word of the subsequent expression, in the same order, to form an acronym.

The sign is a grammatically correct English expression accompanied by its acronym.

The element ‘WCOF’ has no other meaning known by the relevant public.

Therefore, the relevant public will see the sign only as composed of expression and its acronym side by side. There is no reason to believe that the relevant public will perceive this word ‘WCOF’, in the context of the sign and services for which registration is sought, as anything other than the acronym of the expression ‘world cup of fighting’. The applicant has not submitted any persuasive argument or evidence to the contrary.

An acronym is defined by English dictionaries (e.g. Oxford Dictionaries online, https://en.oxforddictionaries.com/definition/acronym) as an abbreviation of an expression. Consequently, if it is recognised as such by the relevant public, as is the case here, it has the same meaning as the expression it stands for. It does not change the meaning of the sign as a whole or its perception by the relevant public. On the contrary, it reinforces the descriptive perception of the sign, which is composed of the same expression repeated in two different grammatical forms but having the same meaning.

Furthermore, it is not uncommon for trade mark owners to use abbreviations or acronyms containing the first letter of each word or the main consonants of their mark, so the consumer has been educated to see initials as a substitute for or accompaniment of marks (28/01/2016, R 1711/2015-2, HTS HYDRAULIC TILTING SYSTEM).

It is also a common practice to put an expression together with its acronym in a text the first time the acronym is used, to explain its meaning.

Consequently, there is nothing striking or surprising using the acronym of a descriptive phrase together with that expression.

Therefore, the sign applied for ‘WCOF WORLD CUP OF FIGHTING’ would be understood by the relevant English-speaking consumer as having the following meaning: an international competition in any combat sport. The meaning is repeated in full and in the form of an acronym.

5. The Office is aware of the decisions of the Fourth Board of Appeal that contest the present analysis.

Nonetheless, the guidelines of the Office state clearly that:

signs consisting of an independently non-descriptive acronym that precedes or follows a descriptive word combination should be objected to as descriptive if it is perceived by the relevant public as merely a word combined with an abbreviation of that word combination, for example “Multi Markets Fund MMF”. This is because the acronym and word combination together are intended to clarify each other and to draw attention to the fact that they are linked. (Guidelines for examination of European Union trade marks, Part B, Section 4, Chapter 4, paragraph 2.4).

This practice of the Office is based on a judgment of the European Court of Justice (15/03/2012, C-90/11 & C-91/11, Strigl & Securvita, EU:C:2012:147, § 32, 34, 40).

Moreover, this position had been confirmed by recent decisions of board of appeal (07/05/2018, R 2617/2017-2, INTELLIGENT MANAGEMENT (I'M) ; 28/01/2016, R 1711/2015-2, HTS HYDRAULIC TILTING SYSTEM).

Furthermore, 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).

Consequently, the Office maintains that relevant consumers would perceive the sign ‘WCOF WORLD CUP OF FIGHTING’ as providing the information that the services offer entertainment in the form of a worldwide contest in combat sport.

Therefore, the sign describes the kind and intended purpose of the services for which registration is sought, and is devoid of any distinctive character, and is not capable of distinguishing the services to which an objection has been raised within the meaning of Article 7(1)(b) and (c) 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 17 899 904 is hereby rejected for the following services:

Class 41 Entertainment services in the nature of live mixed martial arts (mma) events; entertainment services in the nature of arranging and conducting mixed martial arts (mma), martial arts, boxing and kickboxing style competitions; entertainment services in the nature of live mixed martial arts (mma) events and tournaments; entertainment services in the nature of organizing and conducting an array of athletic events rendered live and recorded for the purpose of distribution through broadcast media; entertainment services in the nature of professional athletes competing in mixed martial arts (mma), martial arts, boxing and kickboxing; entertainment services in the nature of personal appearances by mixed martial arts (mma), martial arts, boxing and kickboxing professionals; entertainment services in the nature of providing a web site featuring photographic, video and prose presentations featuring mixed martial arts (mma), martial arts, boxing and kickboxing; entertainment services in the nature of presentation of mixed martial arts (mma), martial arts, boxing and kickboxing events; entertainment in the nature of competitions in the field of mixed martial arts, martial arts, boxing, and kickboxing; providing classes, workshops, seminars and camps in the field of fitness, exercise, boxing, kick boxing, martial arts and mixed martial arts (mma).

The application may proceed for the remaining goods.

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.

Brice LAUGIER