EUTM application for TV NOW remanded by EU Board of Appeal on absolute grounds

In a recent decision (R 1397-2022-5), the Fifth Board of Appeal (the Board) of the European Union Intellectual Property Office (EUIPO) took the unusual step of suspending an opposition appeal so as to remand the trade mark application to the Examiner for an examination on the basis of absolute grounds of refusal.  

Background

In June 2012, RTL interactive GmbH (RTL) a German media company, filed an application (the Application) to register the following figurative mark (the Mark) as an EU trade mark (EUTM) in a wide range of classes, including classes 9, 10, 16, 18, 21, 24, 25, 28, 34, 35, 38, and 41:

In October 2012, Sky UK Limited (Sky), a British broadcaster, filed an opposition (the Opposition) against the Application, which it later limited to all classes filed for except for classes 10 (condoms) and 34 (tobacco products and matches). 

The Opposition was based on Article 8(1)(b) of the EU Trade Mark Regulation 2017/1001 (EUTMR), namely that that the mark applied for shall not be registered if it is identical or similar to an earlier trade mark registered in respect of identical/similar goods and services, and there exists a likelihood of confusion. 

Sky relied upon and a number of earlier UK and EU trade mark (EUTM) registrations, including for the following figurative marks: 

 

The EUIPO's Opposition Division partially upheld the Opposition for a large number of the goods and services applied for, on the basis that there was a likelihood of confusion. 

RTL appealed to the Board (the Appeal). 

The Board's ruling

Interestingly, the Board decided, of its own accord, that before examining the Appeal it was appropriate to raise the question of the registrability of the Mark as an EUTM in relation to the goods applied for. 

Article 45(3) EUTMR

The Board noted that it is necessary as part of the EUTM examination process, for reasons of legal certainty and sound administration, to ensure that trade marks whose use could successfully be challenged before the courts in the EU are not registered as EUTMs (Libertel, C-104/1). 

Whereas the Opposition Division and the Boards of Appeal do not have competence to examine absolute grounds of refusal in opposition proceedings (Conforflex, T-10/03), the possibility of re-opening the examination of absolute grounds for refusal on the EUIPO's own initiative, at any time before the registration of an EUTM, is expressly foreseen by Article 45(3) EUTMR, in conjunction with Article 30 of the EU Commission Delegated Regulation 2018/625 (EUTMDR).

Pursuant to Article 30(2) EUTMDR, where a decision of the Opposition Division is subject to an appeal, the Board of Appeal has the ability to suspend the appeal proceedings and remit the contested mark to the examiner, where it considers that an absolute ground for refusal shall apply to some or all of the services listed in the EUTM application.

Article 7(1) EUTMR

The Board then went through an assessment of whether the Mark was devoid of distinctive character pursuant to Article 7(1)(b) EUTMR. As a reminder, in order for a trade mark to possess distinctive character for the purposes of Article 7(1)(b), it must serve to identify the goods or services in respect of which registration is sought as originating from a particular undertaking, and therefore distinguish those goods from those of other undertakings (Promed, T-30/20). 

In assessing the relevant public, the Board found that, given the Mark's verbal elements are constituted by English words (TV and NOW), the assessment of registrability should be based on the English-speaking part of the public of the EU, which includes (at the very least) Ireland and Malta, where English is the official language, but also (given that 'NOW' is a basic English word), those countries where the general public has a basic understanding of the English language, namely the Scandinavian countries, the Netherlands, Finland and Cyprus. 

Moving to the assessment of the Mark itself, the Board noted that, in order to assess whether it has any distinctive character, the Board would have to consider the overall impression given by the Mark (Pure Beauty, T-270/21). In respect of the verbal elements, the Board found that the relevant public would understand the meaning of ‘NOW’ as referring to ‘immediate’ or ‘today’, and therefore the combination ‘TV NOW’, which respects the rules of English syntax and grammar, has the basic meaning of ‘television at the present moment’.

As for the figurative element, namely the black banner behind the word 'TV', the Board found that its sole function is to emphasise the information given by the non-distinctive text contained within the sign (i.e. the word 'TV'), particularly given that its black, white and dark grey colours are not striking. The typeface of the verbal elements was found to be of 'no consequence' as they are not capable of changing the consumer's understanding of the Mark. 

Interestingly, the Board also referred to several quotes from RTL's own statement of grounds which supported the conclusion that the verbal elements 'TV NOW' are non-distinctive (e.g. when RTL argued that the Opposition Division had wrongly focused on a comparison of elements of the signs which are 'merely descriptive'). 

 

In light of this, the Board considered that the Mark might fall within the scope of absolute grounds of refusal pursuant to Article 7(1)(b) EUTMR, and remanded the Application to the Examiner accordingly, suspending the appeal.

Kat wants TV... now!

Comment

This decision serves as a reminder to trade mark practitioners that the absolute grounds of refusal can still be relevant up and until the very moment that a mark is registered as an EUTM, and so there is a careful balance to be found in one's submissions in opposition proceedings, to avoid relying too heavily on the descriptiveness of elements of one's mark when defending an opposition. 

For marks which do contain descriptive elements, it may be helpful to have built up acquired distinctiveness through use before attempting registration.