JUDGMENT OF THE GENERAL COURT (Second Chamber)
26 October 2022 (*)
(EU trade mark – Application for EU figurative mark GAME TOURNAMENTS – Absolute grounds for refusal – Lack of distinctive character – Article 7(1)(b) of Regulation (EU) 2017/1001 – Descriptive character – Article 7(1)(c) of Regulation 2017/1001 – No distinctive character acquired through use – Article 7(3) of Regulation 2017/1001 – Obligation to state reasons – Article 94(1) of Regulation 2017/1001 – Right to be heard – Equal treatment – Principle of sound administration)
In Case T‑776/21,
Gameageventures LLP, established in Folkestone (United Kingdom), represented by S. Santos Rodríguez, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl, acting as Agent,
defendant,
THE GENERAL COURT (Second Chamber),
composed, at the time of the deliberations, of V. Tomljenović, President, F. Schalin and I. Nõmm (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its action based on Article 263 TFEU, the applicant, Gameageventures LLP, seeks annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 5 October 2021 (Case R 211/2021‑5) (‘the contested decision’).
Background to the dispute
2 On 9 March 2020, the applicant filed an application for registration of an EU trade mark with EUIPO, pursuant to Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
3 Registration as a mark was sought for the following figurative sign:
4 The goods and services in respect of which registration was sought are in Classes 9, 25, 35, 38, 41 and 42 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, which include the following goods and services:
– Class 9: ‘Video games software; computer games entertainment software; computer games programs downloaded via the internet (software); computer programs for playing games; mobile application software; simulation software for use in digital computers; software and applications for mobile devices; game programs for arcade video game machines; hardware and software, in particular for casino and amusement arcade games, for gaming machines, slot machines, video lottery gaming machines, with or without prize pay-outs and/or for gaming via telecommunications networks and/or the internet; gambling software; computer memory devices; computer keyboards; headphones; mouse pads; computer gaming accessories and equipment, namely gaming laptops, gaming processors, gaming keyboards, gaming mouse pads, gaming headphones, gaming microphones, virtual reality headsets, gaming mouse pads’.
– Class 35: ‘Rental of advertising time on communication media; layout services for advertising purposes; organisation of exhibitions for commercial or advertising purposes; telemarketing services; television advertising; online advertising on a computer network; provision of an online marketplace for buyers and sellers of goods and services; organisation of trade fairs for commercial or advertising purposes; sponsorship search; promotion of goods and services through sponsorship of sports events’.
– Class 38: ‘Providing online forums and internet chatrooms; radio broadcasting; streaming of data; streaming of games shows and tournaments, teleconferencing services; television broadcasting; video-on-demand transmission; wireless broadcasting; videoconferencing services, providing access to databases; network transmission of sounds, images, signals and data; transfer of data by telecommunication; electronic network communications; providing access to computer networks allowing access to gaming, gambling and betting information and services via internet, other networks or communications channels; Providing access to portals on the internet; data transmission services over telecommunications networks; telephone services; providing access to telecommunication networks; providing telecommunications connections to a global computer network or databases’.
– Class 41: ‘Provision of online information available in the field of computer games entertainment; providing information to game players about the ranking of their scores of games through the websites; providing information online relating to computer games and computer enhancements for games; providing online information on computer and video game strategies; entertainment services; entertainment services provided online from a computer database or the internet organisation of sports competitions; organisation of competitions (education or entertainment); organisation of sports competitions; organisation of shows (impresario services); presentation of variety shows; presentation of live performances; production of radio and television programmes; production of shows; television entertainment; provision of training; organisation of e‑sporting events; conduction of e‑sporting events; conduction of e‑sporting activities; providing e‑sports facilities; organisation of contests, games and competitions; sport camp services; providing online entertainment in the nature of game competitions and fantasy sports leagues; training services provided via simulators, coaching (training), game services provided online from a computer network; electronic game services and competitions provided by means of the internet; providing interactive multi-player computer games via the internet and electronic communication networks; providing facilities for game shows, games equipment rental; organisation of lotteries; lottery services; betting services; online gaming services; services related to gambling; casinos; gaming; gambling services; sporting and cultural activities; operating online internet casinos and betting platforms; conducting lotteries for others;
– Class 42: ‘Software development; information technology (IT) consultancy; providing information on computer technology and programming via a web site; industrial design; web site design consultancy; cloud computing; computer system analysis; computer system design; telecommunications technology consultancy; leasing of computer software; Software as a service (SaaS); Platform as a service (PaaS)’.
5 By decision of 3 December 2020, the examiner partially rejected the application for registration for all of the goods mentioned in paragraph 4 above, on the basis of Article 7(1)(b) and (c) of Regulation 2017/1001, read in conjunction with Article 7(2) thereof. The goods in Class 25, namely various items of clothing and footwear, were not rejected.
6 On 1 February 2021, the applicant filed a notice of appeal with EUIPO, under Articles 66 to 71 of Regulation 2017/1001, against the examiner’s decision.
7 By the contested decision, the Fifth Board of Appeal of EUIPO dismissed the applicant’s appeal in its entirety on the three grounds set out below.
8 First, the Board of Appeal noted that account had to be taken of the English-speaking part of the European Union or the part of the European Union which has sufficient knowledge of the English language. Next, it found that the level of attention of the relevant public varied from below average to high in respect of the general public and that it was higher than average with regard to the professional public. Furthermore, it found that the word element ‘game tournaments’ was understood by the relevant public to denote ‘gaming competitions’ and ‘tournaments of games or matches’. Moreover, it established, in essence, that there was a sufficiently specific and direct relationship between the sign and each of the goods and services at issue. Lastly, it found that the figurative features did not divert from the meaning of the word element. Taking the view that the sign simply informed the relevant public about the subject matter to which the goods and services related, the Board of Appeal found that it was descriptive for the purposes of Article 7(1)(c) of Regulation 2017/1001, read in conjunction with Article 7(2) thereof. It also made clear that the previous registrations with EUIPO, relied on by the applicant, could not alter that finding.
9 Secondly, the Board of Appeal found that the mark applied for was also devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001. It considered that, since the mark applied for conveyed a purely descriptive and informative message, it was incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods and services concerned.
10 Thirdly, the Board of Appeal found that the evidence adduced by the applicant was insufficient to demonstrate the degree of recognition of the mark applied for in the relevant countries in order to establish distinctiveness acquired through use. Consequently, it held that that mark could likewise not benefit from the exception to the absolute grounds for refusal set out in Article 7(3) of Regulation 2017/1001.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs, including those incurred in the proceedings before the Board of Appeal.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 In support of its action the applicant relies, in essence, on five pleas in law. The first relates to the obligation to state reasons and the right to be heard, the second to Article 7(1)(c) of Regulation 2017/1001, the third to Article 7(1)(b) thereof, the fourth to Article 7(3) thereof and the fifth to the principles of equal treatment and sound administration.
14 It is appropriate to begin the examination of the action by analysing the second plea.
The second plea in law, alleging infringement of Article 7(1)(c) of Regulation 2017/1001
15 Article 7(1)(c) of Regulation 2017/1001 provides that 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.
16 Those signs or indications are deemed incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services (judgments of 27 February 2002, Eurocool Logistik v OHIM (EUROCOOL), T‑34/00, EU:T:2002:41, paragraph 37, and of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 30).
17 By prohibiting the registration of such signs and indications as trade marks, Article 7(1)(c) of Regulation 2017/1001 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 (see judgment of 23 October 2003, OHIM v Wrigley, C‑191/01 P, EU:C:2003:579, paragraph 31 and the case-law cited).
18 Further, in order for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation 2017/1001, there must be a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the relevant public immediately, and without further thought, to perceive a description of the goods and services in question or of one of their characteristics (see judgments of 12 January 2005, Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM), T‑334/03, EU:T:2005:4, paragraph 25 and the case-law cited, and of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraph 25 and the case-law cited).
19 Therefore, the descriptiveness of a sign cannot be assessed other than by reference to the goods or services concerned, on the one hand, and by reference to the understanding which the relevant public has of it, on the other (see judgment of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 37 and the case-law cited).
20 The issue of whether, as the applicant claims, the Board of Appeal infringed Article 7(1)(c) of Regulation 2017/1001 must be examined in the light of those considerations.
The relevant public
21 As regards the relevant public, first, the applicant submits that the Board of Appeal erred in taking the view that the goods and services at issue were directed not only at the professional public but also at the general public. It claims that, since the goods and services target only a small percentage of the population, it cannot be said that they target the general public. In particular, the applicant submits that those goods and services relate to betting and gambling and so are directed only at persons over the age of 18, that they relate to e‑sports and so are directed at young people who are familiar with those kinds of goods, or that they are directed at people who play computer games. Secondly, the applicant criticises the Board of Appeal on the ground that it did not take into account the non-English-speaking public, in particular the Portuguese public, whose language is derived from Latin, and, therefore, failed to take account of the fact that that public will associate the word ‘tournaments’ with jousts between knights in the Middle Ages rather than with ‘competitions’.
22 EUIPO disputes those arguments.
23 First, as regards the alleged error of assessment on the part of the Board of Appeal as to the inclusion of the general public, it should be borne in mind that, according to the case-law, the fact that the relevant public is specialised cannot have a decisive influence on the legal criteria used to assess whether a sign is descriptive. According to the case-law, the level of attention of the relevant public is not decisive in assessing whether a mark is caught by the grounds for refusal set out in Article 7(1)(b) of Regulation 2017/1001 or in Article 7(1)(c) thereof. Thus, according to that case-law, the principle that, in order to assess whether or not a mark has any distinctive character, the overall impression given by it must be considered might be undermined if the distinctiveness threshold of a sign depended generally on the degree of specialisation of the relevant public. That consideration also applies to the assessment as to whether a sign is descriptive (see judgment of 20 October 2021, Standardkessel Baumgarte Holding v EUIPO (Standardkessel), T‑617/20, not published, EU:T:2021:708, paragraph 33 and the case-law cited).
24 Thus the accurate determination of the relevant public will not, in this instance, have a decisive effect on the assessment as to whether the sign is descriptive. Even if the accurate determination of the relevant public were essential, the applicant’s arguments would not suffice to call into question the Board of Appeal’s assessment. According to the case-law, it is not sufficient for an applicant to assert that, in a particular sector, consumers are particularly attentive to marks; the applicant must substantiate that claim by way of facts and evidence (see judgment of 18 January 2017, Wieromiejczyk v EUIPO (Tasty Puff), T‑64/16, not published, EU:T:2017:13, paragraph 18 and the case-law cited).
25 In the present case, the applicant has not provided any evidence in support of its challenge. Therefore, apart from the fact that the applicant’s arguments regarding the definition of the relevant public are ineffective in the present case, they are, in any event, unfounded, since they are not substantiated by evidence, with the result that they cannot call into question the Board of Appeal’s assessment in that regard.
26 Secondly, as regards the argument alleging failure to take into account the non-English-speaking public, it must be recalled that, under Article 7(2) of Regulation 2017/1001, Article 7(1) of that regulation is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union. Accordingly, the Board of Appeal acted correctly in finding that it was sufficient that the grounds of non-registrability obtain in part of the European Union, as provided for in that regulation. In the present case, since the trade mark consists of words in the English language, the Board of Appeal was right to find that the relevant part of the European Union was the English-speaking public or the part of the European Union which had sufficient knowledge of the English language (see, to that effect, judgment of 23 March 2022, Team Beverage v EUIPO (Beverage Analytics), T‑113/21, not published, EU:T:2022:152, paragraph 24).
27 Therefore, the Board of Appeal did not err in the definition of the relevant public.
Whether there is a sufficiently direct and specific link between the mark and the goods and services at issue
28 The applicant submits that there is no sufficiently direct and specific link between the sign and the goods and services at issue on the ground that the word ‘tournament’ is widely associated with a sport among knights of the Middle Ages. It claims that some services bear no relation to the meaning of the word ‘tournament’.
29 EUIPO disputes the applicant’s arguments.
30 It is necessary to assess whether the Board of Appeal was right to find, in essence, that there was a sufficiently direct and specific relationship between the mark applied for and the goods and services at issue, in order to establish descriptive character for the purposes of Article 7(1)(c) of Regulation 2017/1001.
31 It should be noted at the outset that the mark at issue consists of a combination of two common words in the English language, namely the words ‘game’ and ‘tournaments’, in respect of which it is common ground that they can mean ‘game’ and ‘tournaments’ respectively.
32 According to the Collins Dictionary, the word ‘game’ denotes, inter alia, ‘an activity or sport usually involving skill, knowledge or chance, in which you follow fixed rules and try to win against an opponent or to solve a puzzle’. The word ‘tournament’ means ‘a sports competition in which players who win a match continue to play further matches in the competition until just one person or team is left’.
33 It must also be pointed out that the combination of words ‘game tournaments’ has no particular feature relating to linguistic, syntactic, phonetic or grammatical rules, or any other unusual characteristic. Therefore, the Board of Appeal was right to find, in paragraph 47 of the contested decision, that the mark applied for has the meaning of ‘tournaments of games or matches’ or ‘gaming competitions’. Moreover, the applicant has not disputed such a meaning.
34 Furthermore, according to settled case-law, a sign must be refused registration, in application of Article 7(1)(c) of Regulation 2017/1001, if at least one of its possible meanings designates a characteristic of the goods or services concerned (see judgment of 7 July 2021, Eggy Food v EUIPO (YOUR DAILY PROTEIN), T‑464/20, not published, EU:T:2021:421, paragraph 42 and the case-law cited). The mere fact that the sign applied for may also have another meaning is irrelevant for the purposes of assessing its descriptive character (judgment of 15 May 2018, Wirecard v EUIPO (mycard2go), T‑676/16, not published, EU:T:2018:266, paragraph 34). It follows that the mark may be refused registration if only one of its possible meanings is considered to be descriptive. Therefore, the fact that the mark applied for may have different meanings, such as ‘the [jousts between knights in] the Middle Ages’, which could be descriptive of the goods and services at issue, is irrelevant in that regard.
35 Therefore, it is necessary to assess the link between the meaning ‘gaming tournaments or competitions’ of the sign applied for and the goods and services at issue.
36 First, the goods in Class 9, referred to in paragraph 4 above, may be classified in two categories. They include, on the one hand, software and programs for various computer games and, on the other hand, accessories or equipment necessary to play computer games.
37 It should be explained that, according to the Collins Dictionary, the word ‘game’ is also used as an abbreviation for a ‘computer game’ or a ‘video game’ It is well known that computer games, like other games, may be played in the form of tournaments. Accordingly, the Board of Appeal was right to conclude, in paragraphs 49 and 50 of the contested decision, that the relevant public would directly associate the goods in Class 9 referred to in paragraph 4 above with gaming competitions, since they are either goods which make it possible to play those games or accessories for gaming competitions. It is clear that, without that software or equipment, those games could not function.
38 Secondly, as regards the services in Class 35, referred to in paragraph 4 above, the Board of Appeal found, in paragraphs 51 to 54 of the contested decision, that, in connection with the word element ‘game tournaments’ and in so far as those services may also be directed at the market providing gaming competitions, the relevant public would promptly perceive that they related to gaming competitions for the purposes of communication, information, sales or search for sponsorship. Indeed, the word element ‘game tournaments’ provides sufficient information to the relevant public to allow it to perceive, immediately and without further thought, that the content or the intended purpose of those services is gaming competitions (see, by analogy, judgment of 6 February 2013, Maharishi Foundation v OHIM (MÉDITATION TRANSCENDANTALE), T‑426/11, not published, EU:T:2013:63, paragraph 90).
39 In that context, the applicant argues unsuccessfully that the mark applied for cannot be regarded as descriptive for its online portal game-tournaments.com, on the alleged ground that it is only a website with information on matches and not a website dedicated to the organisation of such events. The applicant’s website provides information exclusively on gaming competitions. Associated with the expression ‘game tournaments’, the sign immediately informs the relevant public of an essential characteristic of that service, namely its content (see, by analogy, judgment of 23 March 2022, Beverage Analytics, T‑113/21, not published, EU:T:2022:152, paragraph 50 and the case-law cited). Therefore, there is also a direct and specific link between the online portal game-tournaments.com and the mark applied for, since that portal provides information on computer gaming tournaments.
40 Next, regarding the services in Class 38, analysed in paragraph 55 of the contested decision, a distinction may be made between two groups of services. The first group of services, comprising services for the transmission, broadcasting and provision of various forums, may be for the purpose of gaming tournaments, particularly computer gaming tournaments. The second group, comprising services allowing access to the various databases, networks and portals, enable the user to participate in those computer gaming competitions. Therefore, for the relevant public, the services will be directly perceived as indicating that ‘gaming competitions’ are either the subject of those services or facilitating participation in those ‘gaming competitions’.
41 As regards the services in Class 41, as is apparent from paragraphs 56 to 62 of the contested decision, several of them relate to the provision of game competitions, in its most literal sense, such as the ‘organisation of sports competitions’ or ‘computer games’. Therefore, the relevant public will perceive the direct and specific link between the expression ‘game tournaments’ (which means ‘gaming tournaments or competitions’) and the abovementioned services.
42 As regards the services named ‘organisation of lotteries; lottery services’, also in Class 41, the applicant argues in vain that those services have no connection with the word ‘tournament’. It must be remembered that, with regard to trade marks composed of words, descriptiveness must be determined not only in relation to each word taken separately but also in relation to the whole trade mark that they form (judgment of 8 December 2021, Talleres de Escoriaza v EUIPO – Salto Systems (KAAS KEYS AS A SERVICE), T‑294/20, not published, EU:T:2021:867, paragraph 65). However, the view may be taken that the English word ‘game’ is descriptive of lotteries. In that regard, according to the Collins Dictionary, lotteries are by definition games, specifically games of chance. It should be added that, in addition to the traditional lotteries mentioned by the applicant, lotteries are now also organised online and in the form of tournaments, thus corresponding to the meaning ‘gaming tournaments or competitions’ which covers the word element of the sign applied for.
43 The other services in Class 41 have content related to those gaming competitions, providing information on those competitions or facilitating those gaming competitions by supplying equipment adapted for them. In that regard, the word element ‘game tournaments’ may be interpreted by the relevant public as conveying information on the content or theme of those services. Therefore, that word element is capable of immediately informing the relevant public on an essential characteristic of those services, namely their content or topic (see, to that effect, judgment of 23 March 2022, Beverage Analytics, T‑113/21, not published, EU:T:2022:152, paragraph 50 and the case-law cited). Accordingly, all of the services at issue have a direct and specific link with the meaning of the sign applied for, namely ‘gaming tournaments or competitions’.
44 As is apparent from paragraphs 63 to 65 of the contested decision, the services in Class 42, cited in paragraph 4 above, also have a connection with the sign GAME TOURNAMENTS in the context of the present case. As regards software, the public will understand that the subject matter of the software that is offered via those services is the gaming competitions sector. It is undeniable that software is essential for the functioning of certain games, namely computer games, often played in the form of tournaments. Moreover, as the Board of Appeal correctly found, the other services in the class in question are provided for the purposes of enabling or improving conduct or participation in such competitions or of designing objects for those gaming competitions.
45 In the light of the foregoing, it must be held that there is a sufficiently specific and direct link between the sign GAME TOURNAMENTS, meaning ‘gaming tournaments or competitions’, and the goods and services at issue. The sign is therefore descriptive for the purposes of Article 7(1)(c) of Regulation 2017/1001.
The impact of the figurative elements on the relevant public’s perception of the mark applied for
46 The applicant claims that the figurative element placed between the words ‘game’ and ‘tournaments’ has such an impact on the public’s perception that those words are perceived as distinct terms, with a distinct meaning, and that they do not therefore form a unit with that figurative element.
47 EUIPO disputes those arguments.
48 According to the case-law, for the purposes of assessing whether the sign at issue is descriptive, the decisive question is whether, from the point of view of the relevant public, the figurative elements change the meaning of the mark applied for in relation to the goods and services concerned (see, to that effect, judgment of 14 December 2018, Dermatest v EUIPO (ORIGINAL excellent dermatest), T‑803/17, not published, EU:T:2018:973, paragraph 44 and the case-law cited).
49 In the present case, it should be noted that the figurative elements of the sign applied for consist of simple sprigs of laurel positioned on each side of the word elements ‘game tournaments’ and of a hand holding a cup placed between the words ‘game’ and ‘tournaments’. The sprigs of laurel serve only to reinforce the meaning ‘gaming tournaments or competitions’ which covers the mark applied for. Those figurative elements are regarded as banal features, commonly used in relation to sporting competitions, as decorative elements (see, to that effect, judgment of 16 September 2009, Offshore Legends v OHIM – Acteon (OFFSHORE LEGENDS in black and white and OFFSHORE LEGENDS in blue, black and green), T‑305/07 and T‑306/07, not published, EU:T:2009:335, paragraph 84). The same applies to the cup, which is also strongly associated with competitions as a prize presented to the winner.
50 The figurative elements at issue should thus be perceived as enhancing, and not diminishing, the meaning ‘gaming tournaments or competitions’ of the sign applied for. Moreover, given the banal character and the sobriety of the graphical elements used, it must be held that those elements cannot divert the attention of the relevant public from the descriptive message conveyed by the word element ‘game tournaments’ (see, to that effect, judgment of 10 September 2015, Laverana v OHIM (BIO INGRÉDIENTS VÉGÉTAUX PROPRE FABRICATION), T‑30/14, not published, EU:T:2015:622, paragraph 23 and the case-law cited).
51 Therefore, the figurative elements cannot diminish the descriptive character of the sign GAME TOURNAMENTS in relation to the goods and services at issue, for the purposes of Article 7(1)(c) of Regulation 2017/1001.
52 Furthermore, it should be noted that, in the context of the present plea, the applicant also alleges a failure to state reasons for the contested decision, in so far as the Board of Appeal grouped the goods and services at issue and confined itself to general reasoning. The applicant criticises the Board of Appeal on the ground that it provided the same reasoning for all of the goods and services at issue when assessing whether the sign applied for was descriptive.
53 According to settled case-law, the competent authority may use only general reasoning for all of the goods and services concerned where the same ground for refusal is given for a category or group of goods or services (see judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 30 and the case-law cited). However, the possibility of general reasoning extends only to goods and services which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services (see judgment of 17 May 2017, EUIPO v Deluxe Entertainment Services Group, C‑437/15 P, EU:C:2017:380, paragraph 31 and the case-law cited). Homogeneity of the goods or services is assessed with regard to the actual ground of refusal given in respect of the mark in question (see judgment of 15 December 2016, Intesa Sanpaolo v EUIPO (START UP INITIATIVE), T‑529/15, EU:T:2016:747, paragraph 18 and the case-law cited).
54 In the present case, with regard to the actual ground for refusal, all the goods and services have a common feature, namely that they are linked to gaming tournaments or competitions. In that regard, the goods and services at issue are sufficiently homogeneous to allow the Board of Appeal to limit itself to general reasoning. Consequently, the Board of Appeal was able, without infringing the obligation to state reasons, to limit itself to general reasoning, given that homogeneity.
55 In that context, it must be held that the applicant’s argument based on general reasoning also appears to be directed at the merits of the reasoning. The applicant also expresses its disagreement with the reasons set out in paragraphs 49 to 68 of the contested decision.
56 However, as is apparent from paragraphs 36 to 45 above, the same ground for refusal, namely the descriptive character of the sign in relation to the services and goods at issue, is applicable to all of those goods and services. The complaint consequently has no bearing on the descriptive character of the sign applied for.
57 In the light of the foregoing, it must be held that the Board of Appeal did not err in finding that the mark applied for was descriptive of the goods and services concerned.
58 It follows that the second plea in law must be rejected.
The third plea in law, alleging infringement of Article 7(1)(b) of Regulation 2017/1001
59 In the third plea, the applicant submits that the trade mark is not devoid of distinctive character, since it is not descriptive and is not promotional in nature.
60 EUIPO disputes the applicant’s arguments.
61 Under Article 7(1)(b) of Regulation 2017/1001, trade marks which are devoid of any distinctive character are not to be registered.
62 It is apparent from Article 7(1) of Regulation 2017/1001 that it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign at issue not to be capable of registration as an EU trade mark (order of 13 February 2008, Indorata-Serviços e Gestão v OHIM, C‑212/07 P, not published, EU:C:2008:83, paragraph 27; see also judgment of 21 September 2017, InvoiceAuction B2B v EUIPO (INVOICE AUCTION), T‑789/16, not published, EU:T:2017:638, paragraph 49 and the case-law cited).
63 The descriptive signs referred to in Article 7(1)(c) of Regulation 2017/1001 are also devoid of any distinctive character for the purposes of Article 7(1)(b) of that regulation. Conversely, a sign may be devoid of distinctive character for the purposes of that Article 7(1)(b) for reasons other than the fact that it may be descriptive (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 46).
64 In the present case, in the light of the answer given to the second plea, it must be held that the mark applied for is descriptive with regard to the goods and services referred to in paragraph 4 above and is therefore also caught, in respect of those goods and services, by the ground for refusal of registration set out in Article 7(1)(b) of Regulation 2017/1001.
65 Consequently, the third plea in law must also be rejected.
The fourth plea in law, alleging infringement of Article 7(3) of Regulation 2017/1001
66 Under Article 7(3) of Regulation 2017/1001, the absolute grounds for refusal set out in Article 7(1)(b) to (d) of that regulation do not prevent registration of a mark if that mark has become distinctive in relation to the goods or services for which registration is requested as a consequence of the use which has been made of it.
67 Further, it follows from the unitary character of the EU trade mark that, in order to be accepted for registration, a sign must have distinctive character, inherent or acquired through use, throughout the European Union (judgments of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraph 68, and of 21 April 2015, Louis Vuitton Malletier v OHIM – Nanu-Nana (Representation of a brown and beige chequerboard pattern), T‑359/12, EU:T:2015:215, paragraph 86).
68 Acquisition of distinctive character through use of the mark requires that at least a significant proportion of the relevant public identifies the goods or services concerned as originating from a particular undertaking because of the mark (see judgment of 15 December 2005, BIC v OHIM (Shape of a lighter), T‑262/04, EU:T:2005:463, paragraph 61 and the case-law cited; see also, by analogy, judgment of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraph 52).
69 It is in the light of these considerations that it is necessary to examine whether, as the applicant claims, the Board of Appeal infringed Article 7(3) of Regulation 2017/1001.
70 As a preliminary point, it should be noted that the applicant submitted an application for confidentiality, seeking to have the information produced to prove that the sign had become distinctive, within the meaning of Article 7(3) of Regulation 2017/1001, excluded from public inspection pursuant to Article 114(4) of Regulation 2017/1001.
71 Under Article 66 of the Rules of Procedure of the General Court, on a reasoned application by a party, made by a separate document, or of its own motion, the Court may omit the name of a party to the dispute or of other persons mentioned in connection with the proceedings, or certain information from those documents relating to a case to which the public has access if there are legitimate reasons for keeping the identity of a person or the information confidential. Given that the applicant neither stated reasons for its request for confidentiality nor made that request by way of a separate document, the application does not satisfy the requirements of that article and must therefore be refused.
72 As regards the question of distinctive character acquired through use, the applicant submits that the mark has acquired a reputation and a distinctive character through use, on the ground that the mark is used on the website which provides information on online computer games and on matches, teams and players and which makes it possible to view them continuously and to find bookmakers offering the best odds. Further, the applicant submits that the website is very popular with a target audience public and asserts that users from 24 Member States are familiar with its name and its logo.
73 EUIPO disputes the applicant’s arguments.
74 In order for registration of a mark to be allowed under Article 7(3) of Regulation 2017/1001, the distinctive character acquired through use of that mark must be demonstrated in the part of the European Union where it was, ab initio, devoid of such character, within the meaning of Article 7(1)(b) to (d) of that regulation. The part of the European Union referred to in Article 7(2) of that regulation may, where appropriate, consist of a single Member State (see, by analogy, judgment of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 83).
75 In the present case, as the relevant public is English-speaking or has a sufficient knowledge of the English language, the parts of the European Union to be taken into account are, first, the Member States of which English is the official language, namely Ireland and Malta. Secondly, it is also necessary to include the countries where it can also be presumed that a significant part of the public has at least a basic knowledge of the English language, such as the Scandinavian countries, the Netherlands, Finland, Cyprus and Portugal (see, to that effect, judgments of 16 January 2014, Aloe Vera of America v OHIM – Detimos (FOREVER), T‑528/11, EU:T:2014:10, paragraph 68, and of 4 March 2015, FSA v OHIM – Motokit Veículos e Acessórios (FSA K-FORCE), T‑558/13, not published, EU:T:2015:135, paragraph 51).
76 In order to assess whether a mark has acquired distinctive character through use, account must be taken of factors such as the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant public which, because of the mark, identifies the product as originating from a particular undertaking, statements from chambers of commerce and industry or other trade and professional associations as well as opinion polls (see, to that effect, judgments of 22 June 2006, Storck v OHIM, C‑25/05 P, EU:C:2006:422, paragraph 75, and of 17 November 2021, Jakober v EUIPO (Shape of a cup), T‑658/20, not published, EU:T:2021:795, paragraph 47 and the case-law cited).
77 The circumstances in which the condition relating to the acquisition of distinctive character through use, required by Article 7(3) of Regulation 2017/1001, may be regarded as satisfied cannot be established solely on the basis of general and abstract data, such as predetermined percentages (see, to that effect, judgment of 4 May 1999, Windsurfing Chiemsee, C‑108/97 and C‑109/97, EU:C:1999:230, paragraph 52).
78 The Court has held that evidence such as statements from professional associations and market studies generally constitutes direct evidence of distinctive character acquired through use. Invoices, advertising expenditure, magazines and catalogues are considered to be secondary evidence which may corroborate direct evidence (judgment of 29 January 2013, Germans Boada v OHIM (Manual tile-cutting machine), T‑25/11, not published, EU:T:2013:40, paragraph 74).
79 In order to prove that a significant proportion of the relevant public identified the goods and services concerned as originating from its undertaking, because of the mark applied for, the applicant submitted the following evidence to EUIPO:
– two written statements;
– evidence of cooperation with a major e‑sports broadcasting operator;
– evidence of the provision of informational and promotional services;
– Google Analytics traffic data for game-tournaments.com, namely the applicant’s website;
– Extracts from the website game-tournaments.com.
80 First of all, as regards the two written statements, they are taken from persons established in Cyprus and in Sweden, the latter being the founder of an e‑sports team in Denmark. The witnesses stress that their statements are based on their knowledge, experience and impressions. They state that the mark applied for has indeed been put to use, since they have been confronted by its use since 2018 and 2019 respectively.
81 However, the mere fact that the sign has been used within the European Union for some time is not sufficient to demonstrate that the public targeted by the goods or services in question perceives it as an indication of commercial origin (see, to that effect, judgment of 11 April 2019, Adapta Color v EUIPO – Coatings Foreign IP (Bio proof ADAPTA), T‑224/17, not published, EU:T:2019:242, paragraph 111 and the case-law cited). Further, even though the witnesses assert that the mark has been used within the European Union, neither specifies the countries in which that use took place. Therefore, the written statements do not demonstrate use of the mark in the relevant part of the European Union by a significant portion of the relevant public.
82 Next, as regards the evidence of cooperation with a major esports broadcasting operator, that evidence consists of, first, a letter of intent between the applicant and an undertaking based in Cyprus, allowing the applicant to broadcast sporting events and, second, certificates of appreciation for two of those sporting events. That evidence therefore refers only to a single collaboration agreement of one year’s duration and in no way demonstrates that the mark applied for has acquired any distinctive character in consequence of its use.
83 Furthermore, the evidence of the provision of informational and promotional services consists of a sponsorship agreement, an information provision and licence agreement and a set-off agreement between the applicant and an undertaking established outside the European Union. That evidence shows that the applicant provides promotional and informational services, for that undertaking in particular. However, no mention is made in those documents of the countries concerned or of the relevant public. Nor did the applicant explain in the application what the connection was between those documents and the distinctive character acquired through its use.
84 Further, the Google Analytics data on the game-tournaments.com traffic show that thousands of users in Denmark, Finland, Ireland, the Netherlands, Portugal and Sweden visited the applicant’s website between 1 January 2018 and 29 February 2020. It should be noted that Cyprus and Malta are not mentioned there. In that regard, the Board of Appeal rightly pointed out, with regard to the number of residents in those countries, that the number of users represented only 0.1% of the general public in the countries mentioned.
85 Finally, the applicant also provided extracts from the game-tournaments.com website. Although the mark applied for appears on the various pages of the website, it is not obvious, since it occupies only a small area and is positioned only in the corner of the website pages, that by its mere presence it contributes to any distinctive character of that mark among the relevant public. The applicant merely describes the content of its website but does not explain how the website in question confers distinctive character on the mark applied for.
86 It must be noted that those limited samples, which do not cover all the relevant countries, are not representative of the whole of the relevant public in the part of the European Union where the sign is considered to be devoid of distinctive character. Moreover, given its nature, the evidence provided by the applicant is insufficient to demonstrate that distinctive character has been acquired through the use of the mark applied for.
87 It follows from the foregoing that none of the evidence provided by the applicant is capable of calling into question the Board of Appeal’s finding that the evidence produced is not sufficient to prove that a significant portion of the relevant public is able, because of the mark applied for, to identify the goods and services concerned as originating from a particular undertaking.
88 Accordingly, the fourth plea in law must be rejected.
The first plea in law, alleging breach of the obligation to state reasons and of the right to be heard
89 In the first plea, the applicant submits, first, that the Board of Appeal infringed the obligation to state reasons laid down in Article 94(1) of Regulation 2017/1001, in particular by not justifying the refusal to register the mark applied for in respect of certain specific goods and services in Classes 9, 41 and 42 covered by that mark, and, second, that the Board of Appeal failed to have regard to its right to be heard in relation to the refusal to register the mark applied for in part on the basis of Article 7(1)(b) of Regulation 2017/1001.
90 EUIPO disputes the applicant’s arguments.
The obligation to state reasons
91 As set out in the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based. That obligation has the same scope as that which derives from the second paragraph of Article 296 TFEU, which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question, without it being necessary for that reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets those requirements must, nonetheless, be assessed with regard, not only to its wording, but also to its context and to all the legal rules governing the matter in question (see judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 65 and the case-law cited).
92 According to the case-law, when refusing registration of a trade mark, the Board of Appeal is required to state in its decision its conclusion for each of the goods and services specified in the application for registration, regardless of the manner in which that application was formulated (see judgment of 2 April 2009, Zuffa v OHIM (ULTIMATE FIGHTING CHAMPIONSHIP), T‑118/06, EU:T:2009:100, paragraph 27 and the case-law cited).
93 The applicant claims that the contested decision does not state the reasons for refusing to register the mark applied for in respect of some of the goods and services covered by that application for registration. More specifically, it states that some of the goods and services affected by the partial refusal to register the mark applied for, namely the ‘software, in particular for casino and amusement arcade games, for gaming machines, slot machines, video lottery gaming machines, with or without prize pay-outs and/or gaming via telecommunications networks and/or the internet’ in Class 9, the ‘sport camp services; sporting and cultural activities’ in Class 41 and the ‘computer system design’ services in Class 42 are not mentioned in the relevant paragraphs of the contested decision (namely in paragraphs 49 to 65).
94 In the present case, it should be noted that all of the contested goods and services are cited in the contested decision. Admittedly, it is true that some goods and services are not expressly mentioned in the analysis grouping the goods and services in the corresponding classes. However, where a decision has been adopted in a context with which the person concerned is familiar, it may be reasoned in a summary manner. Moreover, the Boards of Appeal cannot be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review (see judgment of 29 May 2018, Sata v EUIPO – Zhejiang Rongpeng Air Tools (2000), T‑301/17, not published, EU:T:2018:311, paragraph 67 and the case-law cited).
95 Further, the question as to whether a statement of reasons satisfies those requirements is to be assessed by reference not only to its wording but also to its context and to the whole body of legal rules governing the matter in question. Thus, when EUIPO refuses registration of a sign as an EU trade mark, it must, in order to state the reasons for its decision, indicate the ground for refusal, absolute or relative, which precludes that registration and the provision from which that ground is drawn, and set out the facts which it found to be proved and which, in its view, justify application of the provision relied on (see, to that effect, judgment of 27 January 2021, Turk Hava Yollari v EUIPO – Sky (skylife), T‑382/19, not published, EU:T:2021:45, paragraph 22 and the case-law cited). Such a statement of reasons is, in principle, sufficient to satisfy the requirements referred to in paragraph 91 above (see judgment of 19 December 2019, Nosio v EUIPO (BIANCOFINO), T‑54/19, not published, EU:T:2019:893, paragraph 17 and the case-law cited).
96 In the present case, it is apparent from paragraphs 71 to 74 of the contested decision that the Board of Appeal drew a conclusion, preceded by a detailed analysis, in respect of all the goods and services in question as regards the application of Article 7(1)(c) of Regulation 2017/1001. Next, in paragraphs 86 to 95 of the contested decision, the Board of Appeal examined the application of Article 7(1)(b) of Regulation 2017/1001. Lastly, in paragraphs 96 to 113 of the contested decision, the Board of Appeal set out the reasons why it took the view that Article 7(3) of Regulation 2017/1001 could not apply in the present case. Those grounds, presented with precision and clarity, allowed the applicant to know the reasons for the rejection of the application for registration of the mark applied for and to challenge them substantively. Therefore, they are sufficient to satisfy the requirement to state reasons referred to in the first sentence of Article 94(1) of Regulation 2017/1001.
97 Furthermore, the applicant had not disputed that the goods and services allegedly omitted, referred to in paragraph 93 above, belong to more general categories, as mentioned in paragraphs 28 to 39 of the contested decision. The ‘software, in particular for casino and amusement arcade games, for gaming machines, slot machines, video lottery gaming machines, with or without prize pay-outs and/or for gaming via telecommunications networks and/or the internet’ form part of broader categories, namely the ‘software’, ‘games programs’ and ‘gambling software’ in Class 9. As regards the ‘sport camp services’ and the ‘sporting and cultural activities’, they form part of the ‘organisation of e-sporting events’ and ‘sport camp services’ included in Class 41. Lastly, the contested services included in Class 42 form part of the category headed ‘computer system design’. Consequently, the Board of Appeal was able to present those grounds in summary form in respect of the categories mentioned above in this paragraph as well as for all the goods and services in question. In stating the reasons for its decision with sufficient clarity and precision, the applicant was able to know the grounds for refusal in respect of all the goods and services at issue.
98 In the light of the foregoing, the Board of Appeal did not infringe the obligation to state reasons referred to in the first sentence of Article 94(1) of Regulation 2017/1001.
The right to be heard
99 In the second part, as regards the alleged infringement of the right to be heard in that the Board of Appeal did not give the applicant the opportunity to present any comments on a ground for partial refusal, it should be borne in mind that, in the context of EU trade mark law, Article 94(1) of Regulation 2017/1001 enshrines the general principle of protection of the rights of the defence, also laid down in Article 41(2)(a) of the Charter of Fundamental Rights of the European Union. According to that principle, a person whose interests are appreciably affected by a decision addressed to him or her by a public authority must be given the opportunity effectively to make his or her point of view known (see judgment of 26 March 2020, Armani v EUIPO – Asunción (GIORGIO ARMANI le Sac 11), T‑653/18, not published, EU:T:2020:121, paragraph 25 and the case-law cited).
100 However, the right to be heard extends to all the factual and legal material which forms the basis for the decision and not to the final position which the authority intends to adopt (see, to that effect, judgment of 20 October 2021, Square v EUIPO ($ Cash App), T‑211/20, not published, EU:T:2021:712, paragraph 34).
101 In the present case, it must be stated that the applicant was able to submit its observations on two occasions before EUIPO on the ground for partial refusal of the mark on the basis of Article 7(1)(b) of Regulation 2017/1001. It is clear from the file relating to the proceedings before EUIPO that the existence of an absolute ground for refusal, on the basis of Article 7(1)(b) of that regulation, was mentioned both in EUIPO’s notification of a provisional refusal of 15 May 2020 and in the examiner’s decision of 3 December 2020.
102 In that regard, the applicant relies in vain on the argument that there is inconsistency between the examiner’s decision and that of the Board of Appeal in that the former found that the sign was devoid of any distinctive character because of its descriptive meaning, whereas the latter took the view that the sign was also incapable of performing the essential function of a trade mark. The examiner expressly stated in the notification of a provisional refusal of 15 May 2020 that the sign ‘was incapable of performing the essential function of a trade mark, namely that of distinguishing the goods or services of one undertaking from those of other undertakings’. The applicant is therefore wrong in alleging an infringement of its right to be heard on that ground for refusal.
103 In the light of the foregoing considerations, the first plea in law must be rejected.
The fifth plea in law, alleging infringement of the principles of equal treatment and of sound administration
104 In the fifth plea, the applicant submits that the Board of Appeal infringed the principles of equal treatment and of sound administration by refusing to register the mark applied for, whereas other marks containing the word elements ‘game’ or ‘tournaments’ had been accepted for registration.
105 EUIPO disputes the applicant’s arguments.
106 According to the case-law, the decisions concerning registration of a sign as an EU trade mark that EUIPO is led to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous administrative practice (judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).
107 In the present case, it should be noted that the previous decisions relied on by the applicant were adopted by the EUIPO examiners. It is sufficient to note that neither the Board of Appeal nor the Court can be bound by the decisions adopted by those examiners. In particular, it would be contrary to the Board of Appeal’s purpose, as defined in Articles 66 to 71 of Regulation 2017/1001, for its competence to be restricted to the requirement to comply with the decisions of the first-instance adjudicating bodies of EUIPO (judgment of 9 March 2022, Telefónica Germany v EUIPO (LOOP), T‑132/21, not published, EU:T:2022:124, paragraph 113).
108 Moreover, it is apparent from the examination of the other pleas in law carried out above that the Board of Appeal acted correctly, on the basis of a full examination and taking into account the perception of the relevant public, in finding that the mark applied for was caught by the absolute grounds for refusal set out in Article 7(1)(b) and (c) of Regulation 2017/1001, with the result that the applicant cannot validly rely, for the purposes of casting doubt on that finding, on previous decisions of EUIPO.
109 Having regard to those considerations, the fifth plea in law must be rejected and, accordingly, the action must be dismissed in its entirety.
Costs
110 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Gameageventures LLP to pay the costs.
Delivered in open court in Luxembourg on 26 October 2022.