A figurative TM for the representation of a board game board – the Board of Appeal did not play according to the rules

by Axel P Ringelhann

This morning, the General Court decided whether the representation of a game’s board (see depiction) is capable of being a trade mark for goods and services in Classes 9, 16, 28 and 41. For goods in Class 28, 16 the figurative mark lacks distinctive character (see the decisions in German/French T‑429/13; T‑493/13).

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In the case at hand the applicant ‘Schmidt Spiele’ requested that the representation of the well-known board game ‘Mensch ärgere dich nicht’ (which means in English ‘don’t get angry’) be registered as a figurative trade mark. According to Wikipedia the board game (which is called ‘Ludo’ in English and “T’en fais pas” in French) is designed for two to four players. The aim of the game is to race the player’s four tokens from start to finish according to die rolls. The tricky part is that the players can send each other back to the start. That is also probably why one should not ‘get mad’. Like other cross and circle games, Ludo is derived from the Indian game ‘Pachisi’, but simpler. The game and its variants are popular in many countries and are used under various names.

The First Board of Appeal upheld the examiner’s decision. It found that the applicant was unable to prove the acquired distinctiveness in the whole of the EU in order to overcome the lack of distinctive character of the sign applied for (Article 7(3) CTMR). Since the applied trade mark exclusively consists of figurative elements, this would have been necessary. The applicant, however, only provided documents proving that the game – as opposed to the sign as such – has been well-known in Germany since 1914, when the game was first put on the market.

The GC, on the other hand, confirmed the contested decision with regard to the lack of distinctive character (7(1)(b) CTMR) concerning goods in Class 28 (toys, games, playthings) and for card boards in Class 16. It held that the game is particularly popular in German-speaking countries (Germany, Austria, Belgium, and Luxembourg) and well known in countries of Central-Europe such as Hungary, the Czech Republic, Slovakia and Slovenia. The average consumer in these countries would easily recognize the board of the well-known game, even if it is represented in black and white (NB: The applicant applied for the CTM in black and white in order to claim all possible colour combinations).

As for the remaining goods and services the GC referred to the CJEU’s case-law according to which an examination of the grounds for refusal must be carried out in relation to each of the goods or services for which trade mark registration is sought. The GC Court acknowledged that, where the same ground of refusal is given for a category or group of goods or services, the reasoning may be general for all of the goods or services concerned. However, such a power 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. The mere fact that the goods or services concerned are within the same class of the Nice Agreement is not sufficient for a finding that such homogeneity exists, as those classes often contain a large variety of goods and services which are not necessarily interlinked in a sufficiently direct and specific way. In the case at hand the decision held that the majority of the goods and services were not homogenous and sufficiently interlinked. Hence, it annulled the decisions of the First Board of Appeal of OHIM, in so far as it dismissed the applications for the following goods and services:

Class 9: Apparatus for recording, transmission or reproduction of sound or images; Data processing equipment and computers; Sound, music and video recordings; Music , MP3, graphic and video files for wireless communications devices; CD player; Compact discs; DVD player, DVD player; Computer programs [saved] ; Computer programs [downloadable] ; Computer software [saved] ; phonograms;

Class 16: Photographs, images, graphics.

Class 28: toys; Playing cards; Action skill games; Action figures and accessories therefor; Board games; Card games; Multiple activity toys for children; chess-game-set ; Toy figures to collect ; electric action toys; Games of skill; mechanical toys; small toys for party games ; Party games; Games with targets; Toy action figures; Toy buckets and blades as a set ; Toy figures ; Toy Piggy banks ; wind-up toys; Amusement apparatus adapted for use with television receivers only;

Class 41: cultural activities; arranging and conducting of cultural activities and sport events.

As for Article 7(3), since the applicant failed to provide any substantial argument in his plea, the GC confirmed the decision of the Board of Appeal.

Axel P Ringelhann
Assistant Editor, QMJIP