Judgement of the General Court, 14 January 2016.  Case: T-318/15 Zitro IP Sàrl vs OHIM.

Descriptive character.  Article 71)(c), and 2, of Regulation (EC) Nº 207/2009: “the registration of 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 will be refused registration”.  Zitro IP Sàrl submitted an application for the registration of a community trade mark, for the following figurative sign:

The goods, for which registration was sought, relevant to the judgement, are those of games of chance/gambling and betting (included in Classes 9, 28 and 41 of the Nice classification).

The examiner rejected the application for registration for the goods and services in question, in application of Article 7(1)(b) and (c), and 2, of Regulation Nº 207/2009 as, according to him/her, the trade mark requested indicates to the English speaking consumer of the European Union that such goods and services are related to games of chance/gambling whose earnings are tripled.  Consequently, the examiner found that the trade mark applied for is made up of an expression that, despite some stylised elements, transmits to the consumer obvious and direct information regarding the kind or purpose of the goods and services in question, and also lacks distinctive character.

Zitro IP Sàrl filed an appeal before OHIM against the examiner’s earlier decision and the Appeal Chamber of the OHIM dismissed this, and against this decision an appeal was made to the General Court.

The Judgement of the General Court dismissed the appeal in its entirety, for the following reasons:

With regard to the distinctive character of the trade mark, the General Court notes that the case law, Article 7(1)(c), of Regulation Nº 207/2009 prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.  That provision thus pursues an aim that is in the public interest, which requires that such signs or indications may be freely used by all.

Moreover, it adds that the signs and the indications which may serve in trade to designate characteristics of the goods or service for which registration is sought, must be considered, according to Article 7(1)(c ) of Regulation Nº 207/2009, as incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience, if this proves to be positive, or to choose something else, if it proves to be negative.

Lastly, with regard to the verbal element of the mark applied for, the General Court concludes that it must be noted that the terms “triple bonus” are immediately understandable for English-speaking consumers, and would be understood in the sense that the games that are the object of the goods and services in question could generate tripled earnings or advantages.  Therefore, there is a clear link between the dominant semantic content of the trade mark applied for, namely “triple bonus”, that means “earnings multiplied by three”, and the goods and services concerned, and, contrary to what Zitro IP Sàrl claims this meaning is relevant in assessing the descriptive nature of the requested trade mark, as this unequivocally and directly describes one of the characteristics of the goods and services concerned that, for its nature and purpose, are related to games, especially games of chance/gambling.

On those grounds the General Court, in accordance with settled case law, concluded that a trade mark that is descriptive of the characteristics of the goods and services in the sense of Article 7(1)(c) of Regulation Nº 207/2009 is, as a consequence necessarily devoid of any distinctive character to the same goods or services for the purposes of Article7(1)(b) of the mentioned Regulation, and therefore the appeal must be dismissed in its entirety.