The New Zealand Lotteries Commission applied to the Community Trademark Office to register the trademark TELEBINGO in respect of "games and play things; board games, gaming coupons and gaming tickets" in Class 28; "operating and conducting games of chance, lotteries, raffles, sweepstakes, instant games and prizes competitions" in Class 36; and "entertainment services" in Class 41. The application was rejected by the Examiner on the ground that it was "devoid of any distinctive character", concluding that TELEBINGO "does not do more than describe the goods or services," because the prefix "Tele" forms the name of instruments that operate over a distance, such as telephones and televisions; and the suffix "Bingo" is synonymous with a game.

The Applicant appealed the decision, arguing that TELEBINGO was an invented word with no dictionary meaning, that the mark should be considered registrable as a whole and that there would be no reason for other traders in the field to use the TELEBINGO mark other than for the purpose of associating themselves with the Applicant. The Applicant also submitted evidence of registrations of the trademark in New Zealand and Australia, and a Notice of Allowance in the United States as proof of the registrability of the mark.

On July 13, 1998, the Third Board of Appeal rejected the TELEBINGO mark, holding that the Examiner rejected the application on the wrong statutory ground, but the application should be rejected because it "consist(s) 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 services". The Board further held that each of the components of the mark are descriptive, and that taken as a whole they still described how the goods and services may be offered and the way in which the goods (games) may be played.

Finally, the Board stated that the Examiner may consider trademark registrations in non member countries, provided that the country uses similar standards of absolute grounds for refusal, but that the Examiner in such cases must make his own assessment concerning absolute grounds for refusal.

This decision is important, as, although it was held that the Examiner's refusal was correct, the Board rectified the Examiner's ground for the refusal and also decided on the extent of relevance of foreign registrations to support acceptance of the same mark in the European Union.