NETWIN | Decision 2444829 - Stichting de Nationale Sporttotalisator v. NETWIN GAME
Date Published: Oct 11, 2017
OPPOSITION No B 2 444 829
Lotto bv, Laan van Hoornwijck 55, 2289 DG Rijswijk, The Netherlands (opponent), represented by Markeys, Voortsweg 131, 7523 CD Enschede, The Netherlands (professional representative)
a g a i n s t
Netwin Game, Calle Velazquez 53, 2do, Izquierda, 28001 Madrid, Spain (applicant), represented by Carbray Abogados, Ronda Sant Pere 33, pral 3º-4º, 08010 Barcelona, Spain (professional representative).
On 20/03/2017, the Opposition Division takes the following
1. Opposition No B 2 444 829 is partially upheld, namely for the following contested goods:
Class 28: Games and playthings; board games; electronic games; role playing games.
2. European Union trade mark application No 13 217 989 is rejected for all the above goods. It may proceed for the remaining services.
3. Each party bears its own costs.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 217 989.The opposition is based on Benelux trade mark registration No 961 177. The opponent invoked Article 8(1)(a) and (b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are 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 goods and services
The goods and services on which the opposition is based are the following:
Class 28: Games and playthings.
Class 35: Advertising; business management.
Class 41: Organizing games of chance, gambling and implementation thereof, these services also provided via the internet.
The contested goods and services are the following:
Class 28: Games and playthings; board games; electronic games; role playing games.
Class 41: Providing of training; tuition in business; providing training courses on business management; professional training services; training services relating to business management.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested goods in Class 28
The contested games and playthings are identically contained in both lists of goods (including synonyms).
The contested board games; electronic games; role playing games are included in the broad category of the opponent’s games. Therefore, they are identical.
Contested services in Class 41
The contested providing of training; tuition in business; providing training courses on business management; professional training services; training services relating to business management share no points of contact with the opponent’s goods and services in Classes 28, 35 and 41. Even if the subject matter of the applicant’s training services relating to business management is actually one of the services covered by the earlier mark, namely business management services in Class 35, these services are usually not provided by the same or associated companies.
The opponent’s business management in Class 35 includes mainly services rendered by persons or organizations with the principal objectives of helping in the working or management of a commercial undertaking or helping in the management of the business affairs or commercial function of an industrial or commercial enterprise. In addition it includes services rendered by advertising establishments. On the contrary, training, including training focused on business matters, is an educational activity which, contrary to business management and the other services in Class 35, is tailored to take into account not only the business needs of the company, but also the individual profile and needs of the trainees. It therefore requires specific methods and skills in the fields of communication and transfer of knowledge. Whereas it is common for business managers and consultants to identify the training needs implied by a specific business strategy, the design and implementation of training programmes demand specific skills, and they are generally operated through specialized providers.
The same is valid for the remaining goods and services, which also have different origin. Neither have these goods and services the same nature or intended purpose. Moreover, the goods and services now under comparison are not in competition or complementary to each other. For these reasons, they are dissimilar.
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods found to be identical are directed at the public at large.
The degree of attention is considered to be average.
- The signs
Earlier trade mark
The relevant territory is Benelux.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The unitary character of the Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (see by analogy, 07/09/2006, C-108/05, Europolis, EU:C:2006:530).
In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on French-speaking part of the relevant public.
The earlier mark is a word mark consisting of the word ‘Nedwin’, and the contested sign is a figurative mark composed of the word ‘Netwin’ in lower case letters except the first letter ‘N’ and with a dice above the letter ‘i’. The word ‘Netwin’ of the contested sign is underlined with a bold line and placed in frame made from simple line with round edges.
Both word elements ‘Nedwin’ (the earlier mark) and ‘Netwin’ (the contested sign) have no meaning for the relevant public and are, therefore, distinctive.
As regards the contested sign, it is composed of a distinctive verbal element ‘Netwin’ and less distinctive figurative elements such as the underline, framing, and barely perceptible dice placed above the letter ‘i’, that can be even disregarded by the consumers. All of these figurative elements are of a purely decorative nature. Therefore, the verbal element ‘Netwin’ is more distinctive than the figurative elements; consequently it is the most distinctive element of the contested sign.
Visually, the signs coincide in their beginnings ‘Ne- ’, as well as, in their endings ‘-win’. However, they differ in their third letters ‘d’ (the earlier mark), and ‘t’ (the contested sign) respectively. The signs differ also in the additional figurative elements of the contested sign such as the underline, framing, and barely notable dice placed above the letter ‘i’, which will not be noticeable by most of the consumers at first sight.
For what concerns the contested sign, account must be taken on the fact that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).
Therefore, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound of five out of six letters ‛Ne/*win’, present identically in both signs. The pronunciation differs only in the sound of the third letter of each mark, the letter ‘d’ (the earlier mark), and the letter ‘t’ (the contested sign).
As a result, the signs are aurally highly similar.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29).
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
The goods and services covered by the marks in dispute have been found partly identical (goods in Class 28) and partly dissimilar (services in Class 41). The level of attention is expected to be average. Also the distinctiveness of the earlier mark is normal.
The signs are meaningless for the part of the relevant public on which the examination has been focused, namely the French-speaking part of the relevant public. Hence the conceptual aspect is irrelevant in this case.
The trade marks ‘Nedwin’/’Netwin’ are visually and aurally highly similar since they coincide in almost the entirety of their verbal elements, that is in the letter sequence ‘Ne*win’. Apart from the third letter ‘d’, all the remaining six letters of the earlier mark are present in the contested sign in the same order which, as already mentioned, means that the earlier word mark is almost entirely reproduced in the contested sign. Furthermore, the sounds of the differing letters in the signs ‘d’/’t’ are quite similar, and therefore this aural difference is not that easily perceptible. Moreover, the word element ‘Netwin’ is the most distinctive element of the contested sign since the remaining figurative elements of the contested sign are of only decorative nature. On principle, as already explained in section c) of the present decision, they will not be capable of deflecting the consumer’s attention from the coinciding verbal elements of both marks.
In view of the fact that the signs are highly similar and the goods are identical, the Opposition Division considers that there is a likelihood of confusion for the French-speaking part of the relevant public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the Benelux is sufficient to reject the contested application.
It follows from the above that the contested trade mark must be rejected for all the goods found to be identical to those of the earlier Benelux trade mark No 961 177.
The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.
For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the signs and the goods and services are obviously not identical.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.