The UKIPO considers the descriptiveness of GameZone

[gamezone.jpg]

Welcome Break Group Limited (the Applicant) applied to register the above trade mark in the UK in respect of goods and services in Class 9, 28 and 41.

The UKIPO objected to the application in respect of Class 41 only. This was on the basis that GAMEZONE merely described an area where games could be played and was therefore not distinctive.

The Applicant argued that GAMEZONE is not the established term for describing such an area, with "amusement arcade" or "play area" being more relevant, and that zone should be defined as a large outside area rather than a contained inside space for playing games.

The Applicant also referred to guidance from the Trade Mark Work Manual which states "Marks consisting of the word 'World' in combination with the name of, or a description of, the goods or services will normally be accepted prima facie. Consumers are used to seeing such signs functioning in the market place as indicators of trade origin".

It also argued 'zone' could be seen as analogous to 'world' in this sense.

The decision

The rejection of in relation to Class 41 was upheld based on the application of the following legal principles.

s3(1)(c) of the UK Trade Marks Act 1994

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, the time of production of goods or of rendering of services, or any other characteristic of goods or services shall not be registered.

In assessing whether a sign is devoid of distinctive character, it must be assessed through the eyes of the relevant consumer. With regards to the services in Class 41, the relevant consumer was found to include the general public.

It was held that the general public would be unlikely to conduct a thorough mental analysis of the sign and would apply the normal rules of English grammar. In this case, this would lead them to interpret the words as nothing more than an indication of the services being provided.

The circumstances in which the mark would be presented was found to be important here as it removed the possibility of any interpretation of a zone as a wide outside space as had been argued.

Another important consideration was that, even if it was not currently, the mark had the potential to be used as a descriptive indicator in the future.

While it was accepted that "play area" or "amusement arcade" might currently be the chosen phrase to describe the area in question, the fact GAMEZONE had the capacity to serve as a descriptor was enough for it to be rejected.

The submission that the combined use of the terms 'game' and 'zone' and the use of colour was sufficient to make the mark distinctive was also rejected.

In Spambuster, it was stated that for a stylistic element to elevate descriptive words it must "include something additional to the word" rather than merely presenting the worlds differently, as was the case with GAMEZONE.

s3(1)(b) of the UK Trade Marks Act 1994

Trade marks which are devoid of any distinctive character are not registerable.

It was held that GAMEZONE was not capable of carrying out the essential function of a trade mark without the relevant public being educated into seeing it as such.

Given the descriptive nature of the mark, the average consumer would not consider the services being offered as specific to a single provider as it was a direct association with the services themselves.

The application was therefore rejected.

Case Ref: 0/494/19

Matthew Neat