OPPOSITION No B 2 472 440

Lleyton Hewitt Marketing Pty Ltd, Suite 35, 209 Toorak Road, 3141 South Yarra Victoria, Australia (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 28010 Madrid, Spain (professional representative).

a g a i n s t

Co-Gaming Limited, Block A, Suite 3, 177 Skyway Offices, Marina Street, PTA 9042 Pieta, Malta (applicant), represented by Ian Vella Galea, 3/2, Holstein Apts., J.F. Marks Street, SGN 2210 San Gwann, Malta (professional representative).

On 22/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 472 440 is partially upheld, namely for the following contested services:

Class 38: Telecommunication services.

Class 42: IT service; Design services.

2. Community trade mark application No 12 842 613 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of Community trade mark application No 12 842 613. The opposition is based on international trade mark registration designating the European Union No 964 975. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 9: Eyewear; sunglasses; sunglass cases; spectacle glasses; spectacle frames; spectacle cases; sport glasses (binoculars); sport glasses (eye glasses); sport glasses (protective spectacles); sport glasses (spectacles); spectacle support bands, chains, cords and straps; goggles for swimming; goggles for sports; CDs, DVDs, cassettes, records; CD players; portable DVD players; DVD recorders; portable MP3 players; radios; portable radios; clock-radios; ear phones for radios; single and multiple compact disc holders, cases and covers; audio and video tapes; magnetic data carriers; audio and video recordings; cinematographic films; computer and video games; computer and video game programs and software.

Class 14: Watches, sports watches, wrist watches, watches for sporting use, alarm watches, electronic watches, pocket watches, bracelets and watches combined, time keeping devices, time keeping systems for sports, clocks, alarm clocks, desk clocks, electric clocks, horological and chronometric instruments, and parts and accessories for the aforementioned goods; jewellery, including imitation jewellery and plastic jewellery; jewellery boxes; jewellery cases.

Class 16: Books, magazines, albums, scrapbooks; colouring books, notebooks, address books, date books, autograph books, diaries, calendars, reminder books, guide books, maps; printed matter, photographs, stationery, plastic materials for packaging, posters, placemats, coasters; paper, cardboard and goods made from these materials, not included in other classes; prints, including art prints; stickers, seals and transfers; adhesives for stationery or household purposes; writing instruments, pens and pencils; writing paper, note paper; ring binders and folders; novelties and party products in this class; instructional and teaching material (except apparatus); party hats, decorations, game books, rule books, score cards and score pads; wall and door paper decorations and paper streamers.

Class 25: Clothing, footwear and headgear; mens', womens' and childrens' wear, garments and attire; articles of clothing for athletes and sports participants; articles of sports clothing; sportswear, activewear, leisure wear, social wear, casual wear and streetwear; shirts, tops, polo knit tops, rugby shirts, T-shirts, training shirts, sweatshirts; tracksuits, jumpsuits; jeans, jackets, shorts, slacks; knitwear, pullovers, hooded pullovers, jumpers, cardigans and vests; fashion wear, formal wear and evening wear; outerwear, suits, sports clothes, coats, pants, dresses, skirts, frocks, blouses; swimwear, swimsuits, beachwear, bathing suits and bathing costumes; pyjamas, nightwear, nightshirts and sleeping attire; dressing gowns and bathrobes; underwear and undergarments, lingerie, singlets, boxer shorts, underpants; scarves, ties, bow-ties and bandanas; headbands, armbands, wrist bands and sweat bands; hosiery, stockings and tights; socks; leg warmers; gaiters; braces; belts; rainwear, rain coats, all-weather coats, wind jackets, parkas, oilskins, coveralls; ski wear; gloves; fashion and clothing accessories included in this class; footwear comprising boots, shoes, slippers, sandals, moccasins, sneakers, gym boots, training shoes, sport shoes, tennis shoes, casual shoes and dress shoes; headgear comprising hats, caps, chapeaux, sports caps and hats, baseball caps and hats, balaclavas, visors (hats).

Class 28: Games, toys and playthings; gymnastic and sporting articles; tennis rackets; apparatus for playing the game of tennis; articles for use in playing the game of tennis; grip bands for tennis rackets; head covers for tennis rackets; natural gut strings for tennis rackets; strings for tennis rackets; tennis ball serving machines; tennis ball throwing apparatus; tennis balls; tennis nets; tennis string protectors; sports bags adapted (shaped) for carrying sporting articles; sport bags adapted (shaped) to contain tennis rackets; sports equipment; playing cards; trading cards.

Class 32: Non-alcoholic beverages; non-carbonated fruit flavoured drinks; aerated drinks (non-alcoholic); aerated drinks containing soya based products; alcohol free drinks; bottled fruit drinks; carbonated non-alcoholic drinks; concentrates for use in the preparation of fruit juice drinks; concentrates for use in the preparation of soft drinks; de-alcoholised drinks; frozen concentrated fruit drinks; fruit based drinks; fruit drinks; fruit flavoured non-alcoholic drinks; isotonic drinks (not for medical purposes); sports drinks; electrolyte replacement beverages for sports; liquid mixtures for making soft drinks; low alcohol drinks containing not more than 1.15 (by volume) of alcohol; mixtures of fruit flavoured drinks; non-alcoholic carbonated drinks; non-alcoholic drinks (other than for medical use); non-fermented fruit drinks; non-medicated mineral drinks; partly frozen slush drinks; soft drinks; vegetable drinks; vegetable extracts for use in the preparation of non-alcoholic drinks; beer, ale and porter; dietetic and low calorie forms of all the foregoing goods; concentrates, syrups, powders and other preparations and substances for making all the foregoing goods.

Class 41: Coaching (education and training); coaching services for sporting activities; sports coaching; tennis coaching; organisation of sporting competitions; provision of sporting competitions; arranging competitions; arranging sporting events; tennis competitions; social club services (entertainment, sporting and cultural services); sport camp services; sporting activities; sporting information; sporting results services; sports club services; sports consultancy; sports education services; sports information services; sports instruction services; sports officiating; sports refereeing; sports training; sports tuition; fitness and exercise clinics, clubs and salons; physical education; physical health education; body conditioning and maintenance programmes; providing exercise programs; exercise instruction services, training and education; exercise classes; teaching in the field of physical fitness; physical education services; health club (fitness) services; health club services; health club services (exercise); provision of facilities relating to gymnastics, weight training, body building, aerobics and physical exercise; conducting workshops and lectures in the field of exercise and physical conditioning; operation of physical fitness centres; recreational instruction and education services; publication of books, magazines and printed matter; educational, training and instructional information in the fields of tennis, exercise, physical therapy, fitness, body conditioning and flexibility training provided on-line from a computer database or the Internet; rental of tennis courts.

The contested services are the following:

Class 38: Telecommunication services.

Class 42: Science and technology services; IT services; Design services.

As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.

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 services in Class 38

The contested Telecommunication services are similar to the opponent’s software as they have the same purpose. They can coincide in distribution channels. Furthermore they are complementary.

Contested services in Class 42

The contested IT services are similar to the opponent’s software as they can coincide in producer/provider, relevant public and distribution channels. Furthermore they are complementary.

The contested Design services are similar to the opponent’s software as they can coincide in producer/provider, relevant public and distribution channels. Furthermore they are complementary.

The contested Science and technology services are dissimilar to the opponent’s goods and services. They do not have the same nature and they satisfy different needs. The contested services and the opponent’s goods and services do not usually have the same origin; they are usually offered by specialised companies in their corresponding fields. Furthermore, they are generally offered to different consumers through separate distribution channels.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is European Union.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (judgment of 08/09/2008, C‑514/06 P, ‘Armacell’, paragraph 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

Visually, both sign are figurative marks. The earlier mark consists of the stylised letters ‘C’ and ’mon’ and an apostrophe placed at the upper left corner of the letter ‘m’ all represented in dark grey to black colour. The contested sign consists of the verbal element ‘comeon’ in a slightly stylised typeface, followed by an exclamation mark ‘!’ where the first four letters are represented in black, while the last two are represented in green. The signs are similar to the extent that they both contain the letters ‘C*m*on’. However, they differ in the two additional letters ‘o’ and ‘e’, the colours black and green, and in the exclamation mark of the contested sign, which have no counterparts in the earlier mark. The signs further differ in the apostrophe, inserted between the letter ‘C’ and the following ‘m’ in the earlier sign. The typefaces are also different.

Aurally, for the English-speaking public in the relevant territory the pronunciation of the signs is virtually or in any case close to identical, whereas a slight difference in the intonation may be caused by the presence of the exclamation mark in the contested sign.

Conceptually, the English-speaking public in the relevant territory will perceive both signs as signifying the same concept, the contested sign in a formal language and the earlier sign in an informal language and, therefore, the signs are conceptually identical to that extent. Both signs will be perceived as the English phrasal verb ‘come on’, meaning ‘said when encouraging someone to do something or to hurry up or when one feels that someone is wrong or foolish’ (information extracted from the Oxford English Dictionary on 24/11/2015 at http://www.oxforddictionaries.com).

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar to a high degree.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more distinctive than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

4. 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.

Although in the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory, it is highly likely that the average consumer may perceive the earlier mark as an inviting promotional message, encouraging the consumer to buy the respective goods and services. Therefore, the distinctiveness of the earlier mark must be seen as lower than average.

5. 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 services found to be similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to higher than average.

6. Global assessment, other arguments and conclusion

The contested services are partly similar and partly dissimilar to the opponent’s goods and services.

The signs have been found visually similar and aurally close to if not completely identical. A conceptual identity has also been established. The similarities on the three examined levels result in an overall high degree of similarity between the signs.

According to the well-established case law, the average consumer only rarely has the chance to make a direct comparison between different marks, but must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’, paragraph 26).

Bearing in mind the above principle the Opposition Division finds that the visual differences between the signs are not enough to outweigh the significant similarities between them.

Therefore, taking into account all the relevant circumstances of the case, the Opposition Division considers that the similarity between the signs and the similarity between the goods and services may lead consumers, even those with a heightened level of attention, to believe that the services offered under the contested sign and the goods offered under the earlier mark come from the same undertaking or economically-linked undertakings.

The above finding can hardly be influenced by the lower than average distinctiveness of the earlier mark. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Therefore, even in a case involving an earlier mark of weak distinctive character, on the one hand, and a trade mark applied for which is not a complete reproduction of it, on the other, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (judgment of 16/03/2005, T‑112/03, ‘FLEXI AIR/FLEX’, paragraph 61). Bearing in mind the high level of similarity between the signs the Opposition Division finds that despite the lower than average distinctive character of the earlier mark likelihood of confusion still exists on behalf of the English-speaking part of the public.

As stated above in section b) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is partially well founded on the basis of the opponent’s international trade mark registration designating the European Union No 964 975. It follows from the above that the contested trade mark must be rejected for the services found to be similar to the goods of the earlier trade mark.

The rest of the contested services are dissimilar to the opponent’s goods and services. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these services cannot be successful.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, 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 services both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Francesca DINU

Jorge IBOR QUILEZ KELLY

Robert MULAC

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.