Decision on Opposition No B 2 801 390 page: 2 of 7
interdependent. These factors include the similarity of the signs, the similarity of the
goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs, and the relevant public.
The opposition is based on more than one earlier trade mark. The Opposition
Division finds it appropriate to first examine the opposition in relation to the
opponent’s European Union trade mark registration No 12 687 695.
a) The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Computer and video game programs and software; downloadable computer
and video game programs and software; downloadable digital materials, namely, ring
tones, wallpapers, screensavers, digital music files, and graphics, videos, films,
multimedia files, live action programs, motion pictures, and animation in the field of
video games and computer games, all delivered via global computer networks and
wireless networks; pre-recorded digital media featuring computer games and video
games, ring tones, wallpapers, screensavers, digital music files, and graphics,
videos, films, multimedia files, live action programs, motion pictures, and animation in
the field of video games and computer games.
Class 41: Entertainment services, namely, providing online games, providing a
website featuring computer games and video games, and news, information, tips,
hints, contests, computer interface themes, enhancements, audio-visual content,
music, films, videos, television programs, animated series, and other multimedia
materials in the field of computer games and video games; providing information,
news and commentary in the field of computer games and video games.
The contested goods and services are the following:
Class 9: Computer game software; Computer game discs; Downloadable computer
game programs; Computer game software downloadable from a global computer
network; Electronic games software for wireless devices; Interactive multimedia
computer game programs; Recorded computer game programs; electronic game
software for hand-held electronic devices.
Class 41: Entertainment services, namely, providing on-line computer games;
Providing computer games that may be accessed via a global computer network;
Providing information on-line relating to computer games and computer
enhancements for games; Electronic games services provided by means of the
internet; Organization of competitions [education or entertainment]; Providing on-line
electronic publications, not downloadable; providing on-line entertainment in the
nature of game shows; Game services provided on-line from a computer network or
mobile phone network; Game services provided by means of communications by
computer terminals or cellular phone; Information relating to computer gaming
entertainment provided on-line from a computer database or a global communication
An interpretation of the wording of the list of goods and services is required to
determine the scope of protection of these goods and services.
The term ‘namely’, used in the both lists of goods and services to show the
relationship of individual goods and services to a broader category, is exclusive and
restricts the scope of protection only to the goods and services specifically listed.