OPPOSITION No B 2 518 317

OPPOSITION DIVISION

OPPOSITION No B 2 518 317

Murka Limited, Trident Chambers, P.O. Box 146, Road Town (Tortola), British Virgin Islands (opponent), represented by P.E. Enterprise, S.L., Gran Via 81, planta 5°, Dpto. 9, 48011 Bilbao (Vizcaya), Spain (professional representative)

a g a i n s t

Hollywood Casinos LLC, 825 Berkshire Boulevard, Wyomissing, Pennsylvania 19610

United States of America (applicant), represented by Marks & Clerk LLP, Atholl Exchange, 6 Canning Street, Edinburgh EH3 8EG, United Kingdom (professional representative).

On 02/06/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 518 317 is partially upheld, namely for the following contested goods and services:

Class 9: Computer software and computer programs relating to gaming, gambling, betting and casino services; computer software downloadable from or distributed via the internet relating to gaming, gambling, betting and casino services; electronic publications provided by electronic mail all relating gaming, gambling, betting and casino services; interactive computer systems relating to gaming, gambling, betting and casino services; discount cards and encoded cards relating to casino, gaming, gambling and betting services; loyalty cards, cards for use in connection with promotions relating to gaming, gambling, betting and casino services.

Class 41: Entertainment services; interactive entertainment services; casino services; gaming services; gambling services; betting services; organisation, production and presentation of contests, tournaments, competitions, games of skill, games of chance, games of skill and chance, casino and card games, poker games, card rooms; provision of the aforesaid services in electronic, computerised, online and/or interactive form; provision of all the aforesaid entertainment services online via a website; provision of on-line electronic publications; electronic newsletters distributed via the Internet and electronic mail; multi-player card rooms provided by means of the Internet; provision of the aforesaid services on-line from a computer database, from the Internet via a global computer network by any other means of communication; nightclub services.

2. European Union trade mark application No 13 699 401 is rejected for all the above goods and services. It may proceed for the remaining services, namely:

Class 43: Hotel services; provision of food and drink; restaurant services; bar services; catering services; temporary accommodation; provision of accommodation and facilities for meetings; rental of meeting rooms; provision of accommodation and facilities for functions; hiring of rooms for functions; reservation services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 699 401. The opposition is based on European Union trade mark registration No 11 130 788. The opponent invoked Article 8(1)(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 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; computer game software; computer game programs; electronic game programs; interactive video game programs; computer software platforms for social networking; computer software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information in the fields of virtual communities, electronic gaming, entertainment, and general interest via the Internet or other communications networks with third parties; magnetic encoded gift cards; downloadable electronic games via the Internet and other electronic media; computer software relating to games, gaming, gambling, casino, bingo, instant win, lottery and betting activities; computer software to enable searching, browsing and retrieving information, sites, and other resources available on global computer networks for others.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; entertainment services, namely, providing online computer and electronic games, enhancements within online computer and electronic games; entertainment services, namely, providing online reviews of computer games, and providing of information relating to computer games; entertainment services, namely, providing virtual environments in which users can interact through social games for recreational, leisure or entertainment purposes; providing online, non-downloadable computer games made available from a computer database via the internet computer network or other electronic media; providing online, downloadable and non-downloadable computer games on a global computer network or via wireless electronic communication devices namely mobile handsets, PDAs, cellular telephones, handheld computers; casino services; betting services; gambling services; entertainment services; competitions; lottery services; bingo services; slot machine services; electronic game, quiz and competition services provided by means of the Internet or on-line from a computer network or database, mobile telephone and television; provision of online electronic publications; consultancy, information and advisory services relating to all the aforesaid services.

Class 42: Software development, design, maintenance, software programming, engineering, research and writing in the field of computer and video games; computer and video games development; creation of computer graphics; computer game design; design and development services in relation to computer and video games and interactive entertainment products; advisory and consultancy services relating to computer and video games software.

Class 45: Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals; online social networking services; providing on-line computer databases and online searchable databases in the field of social networking; providing information regarding social networking via the Internet.

The contested goods and services are the following:

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 opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under 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 goods in Class 9

Computer software is identically included in both lists of goods and services.

The contested computer programs relating to gaming, gambling, betting and casino services; interactive computer systems relating to gaming, gambling, betting and casino services are included in the broad category of the opponent’s computer game programs. Therefore, they are identical.

The contested computer software downloadable from or distributed via the internet relating to gaming, gambling, betting and casino services are included in the broad category of the opponent’s computer game software. Therefore, they are identical.

The contested electronic publications provided by electronic mail all relating gaming, gambling, betting and casino services are similar to the opponent’s computer software, as they may have the same producers, end users and distribution channels. Furthermore, they are complementary.

The contested discount cards and encoded cards relating to casino, gaming, gambling and betting services; loyalty cards, cards for use in connection with promotions relating to gaming, gambling, betting and casino services are similar to the opponent’s magnetic encoded gift cards. They have the same nature and the same purpose, that is, of storing numerical information so it can be exchanged at a later date for a product or service. These goods are also likely to have the same distribution channels and producers. Furthermore, they may also target the same public.

Contested services in Class 41

The contested entertainment services; casino services; betting services; gambling services; provision of the aforesaid services in electronic, computerised, online and/or interactive form; provision of all the aforesaid entertainment services online via a website; provision of on-line electronic publications; provision of the aforesaid services on-line from a computer database, from the Internet via a global computer network by any other means of communication are identically included in both lists of goods and services.

The contested interactive entertainment services; gaming services; organisation, production and presentation of contests, tournaments, competitions, games of skill, games of chance, games of skill and chance, casino and card games, poker games, card rooms; provision of the aforesaid services in electronic, computerised, online and/or interactive form; provision of all the aforesaid entertainment services online via a website; provision of the aforesaid services on-line from a computer database, from the Internet via a global computer network by any other means of communication; nightclub services are included in the broad category of the opponent’s entertainment services. Therefore, they are identical.

The contested electronic newsletters distributed via the Internet and electronic mail; provision of the aforesaid services on-line from a computer database, from the Internet via a global computer network by any other means of communication are included in the broad category of the opponent’s provision of on-line electronic publications. Therefore, they are identical.

The contested multi-player card rooms provided by means of the Internet; provision of the aforesaid services on-line from a computer database, from the Internet via a global computer network by any other means of communication are included in the broad category of the opponent’s providing online, non-downloadable computer games made available from a computer database via the internet computer network or other electronic media. Therefore, they are identical.

Contested services in Class 43

The contested hotel services; provision of food and drink; restaurant services; bar services; catering services; temporary accommodation; provision of accommodation and facilities for meetings; rental of meeting rooms; provision of accommodation and facilities for functions; hiring of rooms for functions; reservation services are dissimilar to all the opponent’s goods and services in Classes 9, 41, 42 and 45.

Although hotels, restaurants and bars can provide on-site entertainment and sporting and cultural activities, they are not offered separately or on their own. The contested services involve the provision of accommodation, facilities, food and drinks. The entertainment services are designed to amuse, divert or relax people. Consequently, the contested services are not provided by the same undertakings nor distributed through the same channels as the opponent’s goods and services. Furthermore, the services cannot be considered complementary, since they do not have an interdependent relationship; hotels, bars and restaurants do not necessarily need entertainment services to exist and vice versa, although the services may target the same public.

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 and services found to be identical or similar are directed at the public at large. The degree of attention is average.

The signs

SLOTS JOURNEY

HOLLYWOOD SLOTS

Earlier trade mark

Contested sign

The relevant territory is the European Union.

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 European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union 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 (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 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 French- and Spanish-speaking parts of the relevant public.

The marks are word marks consisting of the verbal elements ‘SLOTS JOURNEY’, in the case of the earlier mark, and ‘HOLLYWOOD SLOTS’, in the case of the contested sign. In the case of word marks, it is irrelevant whether they are written in lower or upper case.

The earlier mark has no elements that could be considered clearly more distinctive than other elements.

The element ‘HOLLYWOOD’ of the contested sign will be associated with the suburb of Los Angeles renowned for being the centre of the American film industry. Bearing in mind that the relevant goods and services are all entertainment-related, this element is weaker than average for these goods and services, as it suggests that they consist of or include contents inspired by the Hollywood film industry. The verbal element ‘SLOTS’ is therefore more distinctive, because it is meaningless for the relevant public.

The marks have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the verbal element ‘SLOTS’, which is at the beginning of the earlier mark. However, they differ in the verbal element ‘JOURNEY’ in the earlier mark and the verbal element ‘HOLLYWOOD’ in the contested sign (the latter will be recognised by the public as a reference to the centre of the American film industry). Given that this latter verbal element has a lower than average distinctive character and considering that the element ‘SLOTS’ has an independent and distinctive role in both marks, the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the verbal element ‘SLOTS’, present identically in both signs, which has an independent and distinctive role. The pronunciation differs in the sound of the additional verbal elements ‘HOLLYWOOD’ (which is of lower than average distinctiveness) of the contested sign and ‘JOURNEY’ of the earlier mark. Therefore, the signs are similar to an average degree.

Conceptually, while the public in the relevant territory will perceive the word ‘HOLLYWOOD’ of the contested sign as a reference to the centre of the American film industry, the other sign lacks any meaning. The elements ‘JOURNEY’ and ‘SLOTS’ have no meaning for the relevant public. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 and services 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

The goods and services are identical, similar and dissimilar.

The signs are visually and aurally similar to an average degree on account of the coinciding verbal element ‘SLOTS’, which has an independent and distinctive role in both signs. The signs differ in the additional words ‘JOURNEY’ of the earlier mark and ‘HOLLYWOOD’ of the contested sign.

As explained in section c) of the decision, the word ‘HOLLYWOOD’ of the contested sign will be recognised by the public as a reference to the famous cinema mecca in the United States. Therefore, it has a lower than average degree of distinctiveness for the goods and services in question, which are or could involve entertainment-related activities or content.

Furthermore, the earlier mark enjoys an average degree of distinctiveness per se in relation to the relevant goods and services.

Although the average consumer of the category of goods and services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). In the present case, it is very likely that the differences between the marks will be perceived by the public as corresponding to different commercial representations of the same undertaking.

In view of the foregoing, and taking into account all the relevant circumstances of the case, including the principle of interdependence between the relevant factors, namely that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and/or the services and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17), and given the clear similarity between the signs resulting from the fact that the first element of the earlier mark is entirely reproduced as the more distinctive element of the contested sign, the Opposition Division concludes that there is a likelihood of confusion on the part of the relevant public.

In its observations, the applicant argues that the existence of several trade marks including the verbal element ‘SLOTS’ proves that the signs can coexist. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘SLOTS’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French- and Spanish-speaking parts of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical and similar to those of the earlier trade mark.

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.

COSTS

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Gueorgui IVANOV

Sandra IBAÑEZ

Gailė SAKALAITĖ

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.

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