OPPOSITION No B 2 579 103

Tickk Contests Limited, 6th Floor, 94 Wigmore Street, London W1U 3RF, United Kingdom (opponent), represented by Fieldfisher LLP, Riverbank House 2 Swan Lane, London EC4R 3TT, United Kingdom (professional representative)

a g a i n s t

Tikk Limited, 39 Langton Road, Bristol BS4 4ER, United Kingdom (applicant)

On 17/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 579 103 is partially upheld, namely for the following contested goods and services:

Class 9: Sound, video and data recording and reproducing apparatus; computer software; computer software development tools; computer software for use as an application programming interface (API) for computer software which facilitates online services for social networking, data retrieval, upload, download, access and management of information; computer software to enable uploading, downloading, accessing, posting, displaying, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computers, mobile devices and communication networks; computer software for determining user location; computer software for mapping; computer software for tracking; computer games; video games; sound and video recordings; downloadable publications.

Class 38: Providing access to computer, electronic and online databases; telecommunications services, namely electronic transmission of data, messages and information; providing online forums for communication on topics of general interest; providing online communications links which transfer website users to other web pages; providing online chat rooms and electronic bulletin boards; audio, text and video broadcasting services over computer or other communication networks; providing forums [chat rooms] for social networking; information services related to the aforesaid services, all of the aforesaid services also being provided online from a computer database or the Internet.

Class 41: Publishing and publication services; information services relating to news, education, training, entertainment, recreation, leisure, sport, the arts, conferences, exhibitions, competitions, contests, carnivals, pageants, displays, shows, programmes and performances; providing computer, electronic and online databases for educational and recreational use in the field of entertainment and in the fields of social and community interest groups; providing a website featuring user-generated content for entertainment, training, education, news and publishing purposes; publication of electronic journals, newsletters and blogs; non-downloadable publications; information services related to the aforesaid services, all of the aforesaid services also being provided online from a computer database or the Internet.

2. European Union trade mark application No 13 844 105 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and/or EUTMIR shall be understood as references to the regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 844 105 for the word mark ‘TIKK’. The opposition is based on European Union trade mark registration No 12 011 318 for the word mark ‘TICKK’ as well as on non-registered trade marks for the sign ‘TICKK’ in the Netherlands, Estonia, Czech Republic, Denmark, Poland, Hungary, United Kingdom, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Austria, Belgium, Germany, Latvia, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland. The opponent invoked Article 8(1)(b), Article 8(4) and (5) 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.

1. The goods and services

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

Class 9: Computer software; computer hardware; downloadable computer software; computer game software; computer application software for mobile phones; downloadable mobile phone applications; mobile phone applications to enable consumers to enter competitions and contests; electronic game software for mobile phones and handheld electronic devices; computer game programs downloadable via the Internet; interactive multimedia software for playing games; downloadable ring tones and graphics for mobile phones; downloadable electronic publications; downloadable image files; downloadable wallpapers for computers and/or mobile phones; downloadable screensavers for computers and/or mobile phones; downloadable video recordings; downloadable musical sound recordings; none of the aforesaid goods being online games in relation to museums and culture.

Class 38: Telecommunications; mobile telephone services; message sending; instant messaging services; electronic transmission of data; transmission of videos, movies, pictures, images, text, photos, games, user-generated content, audio content, and information via communications networks and the Internet; telecommunication services for connecting social network users with businesses; providing access to electronic games on the Internet; information, advisory, management and consultancy services relating to all the aforesaid; none of the aforesaid services being online games in relation to museums and culture.

Class 41: Education; provision of training; entertainment; sporting and cultural activities; organising competitions; organising, arranging, and conducting games and competitions on the Internet; provision of games and competitions on the Internet; provision of competitions via mobile phone networks; online game services; game services provided online from a computer network or mobile phone network; games services provided via computer networks and global communication networks; providing information about computer games, video games and similar games products on the Internet; information, advisory, management and consultancy services relating to all the aforesaid; none of the aforesaid services being online games in relation to museums and culture.

The contested goods and services are the following:

Class 9: Sound, video and data recording and reproducing apparatus; computer software; computer software development tools; computer software for use as an application programming interface (API) for computer software which facilitates online services for social networking, data retrieval, upload, download, access and management of information; computer software to enable uploading, downloading, accessing, posting, displaying, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computers, mobile devices and communication networks; computer software for determining user location; computer software for mapping; computer software for tracking; computer games; video games; sound and video recordings; downloadable publications.

Class 35: Marketing, advertising, publicity and promotion services; market research, analysis and information services; providing tracking and mapping of consumer trends for marketing purposes; providing information services in the field of consumer activity and trends for marketing purposes; dissemination of advertising material; providing commercial information directory services; promoting the goods and services of others via computer and communication networks; information services related to the aforesaid services, all of the aforesaid services also being provided online from a computer database or the Internet.

Class 38: Providing access to computer, electronic and online databases; telecommunications services, namely electronic transmission of data, messages and information; providing online forums for communication on topics of general interest; providing online communications links which transfer website users to other web pages; providing online chat rooms and electronic bulletin boards; audio, text and video broadcasting services over computer or other communication networks; providing forums [chat rooms] for social networking; information services related to the aforesaid services, all of the aforesaid services also being provided online from a computer database or the Internet.

Class 41: Publishing and publication services; information services relating to news, education, training, entertainment, recreation, leisure, sport, the arts, conferences, exhibitions, competitions, contests, carnivals, pageants, displays, shows, programmes and performances; providing computer, electronic and online databases for educational and recreational use in the field of entertainment and in the fields of social and community interest groups; providing a website featuring user-generated content for entertainment, training, education, news and publishing purposes; publication of electronic journals, newsletters and blogs; non-downloadable publications; information services related to the aforesaid services, all of the aforesaid services also being provided online from a computer database or the Internet.

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

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

It should also be noted that the indication all of the aforesaid services also being provided online from a computer database or the Internet at the end of the specifications of the contested services in Classes 35, 38 and 41 does not alter the nature of the preceding services covered (since it only indicates an additional way they are provided) and thus does not affect their degree of similarity with the opponent’s goods and services. Therefore, considering that it would not alter the result of the comparisons and in order to avoid unnecessary repetition, the aforementioned indication will be taken into account but will not be mentioned in the comparisons that follow.

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

The contested computer software includes, as a broader category, the opponent’s computer software none of the aforesaid goods being online games in relation to museums and culture. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested downloadable publications are identically covered by the opponent’s downloadable electronic publications.

The contested sound, video and data recording and reproducing apparatus overlap with the broad category of the opponent’s computer hardware. Therefore, they are identical.

The contested computer software for use as an application programming interface (API) for computer software which facilitates online services for social networking, data retrieval, upload, download, access and management of information; computer software to enable uploading, downloading, accessing, posting, displaying, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computers, mobile devices and communication networks; computer software for determining user location; computer software for mapping; computer software for tracking; computer games are included in, or overlap with, the broad category of the opponent’s computer software none of the aforesaid goods being online games in relation to museums and culture. Therefore, they are identical.

The contested computer software development tools consists of software used to develop computer software and is thus included in, or overlap with, the broad category of the opponent’s computer software none of the aforesaid goods being online games in relation to museums and culture. Therefore, they are identical.

The contested video games overlap with the opponent’s interactive multimedia software for playing games none of the aforesaid goods being online games in relation to museums and culture. Therefore, they are identical.

The contested sound recordings include, as a broader category, the opponent’s downloadable musical sound recordings. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested video recordings include, as a broader category, the opponent’s downloadable video recordings. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested services in Class 35

The contested marketing, advertising, publicity and promotion services; market research, analysis and information services; providing tracking and mapping of consumer trends for marketing purposes; providing information services in the field of consumer activity and trends for marketing purposes; dissemination of advertising material; providing commercial information directory services; promoting the goods and services of others via computer and communication networks; information services related to the aforesaid services essentially consist of different advertising services aimed at providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity and market research and analysis which consist of the collection and analysis of information about a particular market to assess the viability of a product or service. The opponent’s goods and services are essentially computer software, computer hardware as well as downloadable publications and video/sound recordings (Class 9), telecommunications services (Class 38) and education, entertainment, sporting and cultural activities (Class 41).

Consequently, the contested services in Class 35 do not have the same nature or purpose as the opponent’s goods or services in Classes 9, 38 and 41; they do not share the same distribution channels and are usually not provided by the same undertakings. Furthermore, they are not in competition with each other or complementary to each other. Therefore, they are dissimilar.

Contested services in Class 38

The contested providing access to computer, electronic and online databases; telecommunications services, namely electronic transmission of data, messages and information; providing online forums for communication on topics of general interest; providing online communications links which transfer website users to other web pages; providing online chat rooms and electronic bulletin boards; audio, text and video broadcasting services over computer or other communication networks; providing forums [chat rooms] for social networking all consist of different telecommunications services none of which are, or relate to, online games. Therefore, the contested services are included in the broad category of the opponent’s telecommunications [none of the aforesaid services being online games in relation to museums and culture]. Therefore, they are identical.

Despite the limitation at the end of the opponent’s services mentioned above, for the same reasons as those outlined in the previous comparison, the contested information services related to the aforesaid services [providing access to computer, electronic and online databases; telecommunications services, namely electronic transmission of data, messages and information; providing online forums for communication on topics of general interest; providing online communications links which transfer website users to other web pages; providing online chat rooms and electronic bulletin boards; audio, text and video broadcasting services over computer or other communication networks; providing forums [chat rooms] for social networking] are identical to the opponent’s information services relating to all the aforesaid [telecommunications].

Contested services in Class 41

The contested information services relating to news, education, training, entertainment, recreation, leisure, sport, the arts, conferences, exhibitions, competitions, contests, carnivals, pageants, displays, shows, programmes and performances; information services related to the aforesaid services are included in, or overlap with, the opponent’s information services relating to all the aforesaid [education; provision of training; entertainment; sporting and cultural activities none of the aforesaid services being online games in relation to museums and culture]. Therefore, they are identical.

The contested providing computer, electronic and online databases for educational and recreational use in the field of entertainment and in the fields of social and community interest groups are included in, or overlap with, the opponent’s services of education and/or entertainment [none of the aforesaid services being online games in relation to museums and culture]. Therefore, they are identical.

The contested information services related to the aforesaid services [providing computer, electronic and online databases for educational and recreational use in the field of entertainment and in the fields of social and community interest groups] are included in, or overlap with, the opponent’s information services relating to all the aforesaid [education and entertainment none of the aforesaid services being online games in relation to museums and culture]. Therefore, they are identical.

The contested providing a website featuring user-generated content for entertainment, training, education, news and publishing purposes; information services related to the aforesaid services overlap with the opponent’s services of entertainment, provision of training and/or education [none of the aforesaid services being online games in relation to museums and culture]. Therefore, they are identical.

The contested information services related to the aforesaid services [providing a website featuring user-generated content for entertainment, training, education, news and publishing purposes] are included in, or overlap with, the opponent’s information services relating to all the aforesaid [entertainment, provision of training and education none of the aforesaid services being online games in relation to museums and culture]. Therefore, they are identical.

The contested non-downloadable publications; information services related to the aforesaid services are similar to the opponent’s services of education since they can share the same distribution channels, target the same relevant public and be provided by the same undertakings. Furthermore, they are complementary.

The contested publishing and publication services; publication of electronic journals, newsletters and blogs; information services related to the aforesaid services are similar to a low degree to the opponent’s services of entertainment none of the aforesaid services being online games in relation to museums and culture since they can share the same distribution channels and are complementary.

2. 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 to varying degrees 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 high, depending on the specialised nature of the goods or services, the frequency of purchase and their price.

3. The signs

TICKK	TIKK
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 earlier mark is the word mark ‘TICKK’ and the contested sign is the word mark ‘TIKK’.

Even if the word ‘TICK’ exists and may have a meaning in some languages, such as ‘a written mark like a V’, ‘a short sound (of a watch or clock)’ or ‘a small creature which lives on the bodies of people or animals and uses their blood as food’ in, for example, English and the word ‘TIK’ also exists and may have a meaning, such as ‘a dog of female gender’ or ‘only, merely’ in, for example Swedish and Lithuanian respectively, neither of these meanings have any connection to the goods and services concerned and, with the exception of for example Finnish, a double ‘K’ is not generally used in the different languages of the relevant territory (including in English, Swedish or Lithuanian) and will thus be perceived as unusual and striking. Therefore, neither ‘TICKK’ nor ‘TIKK’ is likely to be perceived as a misspelling of the words referred to above but both signs are rather likely to be perceived, at least by a significant part of the relevant public in the European Union, as fanciful, distinctive words without any particular meanings.

Since a non-negligible part of consumers in the European Union will not associate either of the signs with any meaning but will rather perceive them as consisting of fanciful words, and since it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (20/07/2017, T-521/15, Diesel v EUIPO, EU:T:2017:536, § 69), the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public in the relevant territory.

Visually, the signs coincide in the letters ‘TI*KK’ and only differ in the additional letter ‘C’ in the middle of the earlier mark, which does not produce a significant visual difference between the signs overall.

Therefore, the signs are visually similar to at least an above average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the additional ‘C’ in the pronunciation of the earlier mark, ‘TICKK’, will not produce a different sound from that of the pronunciation of the contested sign ‘TIKK’.

Therefore, the signs are aurally identical.

Conceptually, neither of the signs has a meaning for the public under analysis 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.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness because of its reputation but did not file any evidence in order to prove such a claim.

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 has no meaning for any of the goods and services in question from the perspective of the public under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Account should also be taken of the fact that 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

In the present case, the goods and services have been found partially identical or similar to varying degrees and partially dissimilar and the degree of attention of the relevant public may vary from average to high.

The signs have been found visually similar to at least an above average degree, aurally identical and neither of them has a meaning that could help consumers to differentiate the signs and the distinctiveness of the earlier mark is normal.

Considering all the above, bearing in mind the principle of interdependence and imperfect recollection (which also applies to consumers who may display a heightened degree of attention), and the considerable overall similarities between the signs, the Opposition Division finds that there is a likelihood of confusion on the part of the public in the relevant territory that will perceive both signs as consisting of fanciful words without any meaning, even in relation to the services that are only similar to a low degree. Therefore, the relevant public under analysis is likely to believe that the goods and services offered under the contested sign originate from the same undertaking that offers identical or similar (including to a low degree) goods and services under the earlier mark, or by an economically linked undertaking.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 12 011 318. As stated above in section c) of this decision, a likelihood of confusion for only a non-negligible part of the relevant public of the relevant territory 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 or similar to varying degrees to the goods and services 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)(b) EUTMR, the opposition based on this article and directed at these services cannot be successful.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2)(f) EUTMDR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 16/12/2015, the opponent was given two months, commencing after the end of the cooling-off period (which was extended by 22 months at the request of both parties), to submit the abovementioned material. This time limit expired on 04/12/2017.

The opponent did not submit any evidence concerning the reputation of the registered trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

As already mentioned above in relation to Article 8(5) EUTMR, the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence and the opponent’s deadline to submit facts, evidence and arguments in support of its opposition expired on 04/12/2017.

The opponent did not submit any evidence of use in the course of trade of the earlier non-registered trade marks on which the opposition is based in any of the territories claimed.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must also be rejected as unfounded insofar as these grounds are concerned.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some 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

Begoña URIARTE VALIENTE

Sam GYLLING

Sandra IBAÑEZ

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.