OPPOSITION No B 2 667 882

La Française des Jeux, 126 rue Galliéni, 92100 Boulogne Billancourt, France (opponent), represented by Cabinet Bouchara - Avocats, 17, rue du Colisée, 75008 Paris, France (professional representative)

a g a i n s t

Bubblecrack S.L., Paseo de las Delicias, número 30, 2º planta, Madrid, Spain (applicant), represented by Protectia Patentes y Marcas S.L., C/ Arte 21, 2ºA, 28033 Madrid, Spain (professional representative).

On 25/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 667 882 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 782 015. The opposition is based on French trade mark registration No 134 020 546. The opponent invoked Article 8(1)(b) EUTMR.

At the moment of filing the notice of opposition, the earlier mark on which the opposition is based was an application for registration, filed on 17/07/2013. However, the publication date of this registration was 22/04/2016, according to the substantiation evidence submitted by the opponent on 21/07/2016.

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

In the notice of opposition, the opponent indicated that the opposition is based on parts of the goods and services covered by the earlier mark namely:

Class 9: Computer programs recorded game, Electronics and digital gaming, gambling or chance, lotteries. Computer games, gaming, gambling, paris or prognoses.

Class 28: Toys and games, gambling, knowledge, skill, money, predictions and lottery.

Class 41: Entertainment, lotteries, lottery organization services, contests in entertainment, gambling, money, paris and prognosis; game services provided online (from a computer network). Gambling services.

However, in the evidence submitted for substantiation purposes the translation of the trade mark registration certificate shows slightly different wording from that used in the notice of opposition. The Opposition Division will rely on the list of goods and services as included in the notice of opposition, whilst the translation submitted subsequently will be used for interpreting the list of goods and services, insofar as it is considered appropriate and does not extend the basis of opposition.

The contested goods and services are the following:

Class 9: Computer software applications, downloadable; Software.

Class 28: Sports games.

Class 41: Wagering services; Organisation of sporting events.

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 applications, downloadable; software include, as broader categories, or overlap with, the opponent’s computer programs recorded game [computer game programs recorded] in Class 9. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 28

The contested sports games are included in the broader category of the opponent’s games in Class 28. Therefore, they are identical.

Contested services in Class 41

The contested wagering services overlap with the opponent’s gambling services in Class 41 as it is impossible to clearly separate these categories that include betting on the result of a horse race, football match, or other event. Therefore, they are considered identical.

The contested organisation of sporting events has the same general purpose as the opponent’s entertainment in Class 41, in the sense that they provide amusement or pastime. Furthermore, these services are of interest to the same public and are offered through the same distribution channels. Therefore, they are similar.

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 are directed at the public at large. The degree of attention is considered to be, on the whole, average.

3. The signs

	Goal&Go
Earlier trade mark	Contested sign

The relevant territory is France.

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin.

The earlier mark comprises the stylised depiction of the word ‘GOAL’ in a dynamic manner, against a colourful football stadium backdrop. Next to the verbal element, an exclamation mark is depicted in which the dot looks like a football.

The contested sign is composed of the words ‘GOAL’ and ‘GO’ conjoined by an ampersand that will be understood by the relevant public as ‘and’ (‘et’ in French). For the part of the relevant public that understands the English meaning of the basic word ‘GO’ which indicates, inter alia, movement and mobility, the combined element ‘&GO’ can vaguely point to the idea that something is compatible with, or apt for mobile use. Insofar as the contested goods and services can be accessed on a mobile communication platform, the distinctiveness of ‘&GO’ is weak. As regards the rest of the relevant public (the one that does not understand English), although the word ‘GO’ is included in French dictionaries, for instance www.larousse.fr, as referring to a strategy game that is popular in the Far East, it can be reasonably assumed that for the average consumer the word ‘GO’ will lack any specific semantic content. To that extent, the combined element ‘&GO’ is fanciful and its distinctiveness is average.

The word ‘GOAL’ of the earlier mark will be associated with a ‘goalkeeper’ since this term is commonly and interchangeably used with the French expression ‘gardien de but’. The figurative elements in the earlier mark evoke the game of football, thus putting the message conveyed by the verbal element in this particular context and at the same time reinforcing it. The contested sign, on the other hand, is not limited to a particular sport. Therefore, in addition to the football-related concepts, the English-speaking part of the public may perceive the word ‘GOAL’ as referring to the scoring of points by getting the ball into the goal, especially since this English word is widely used in the relevant market sector (decision of 06/02/2013, R 1406/2011-2 - ‘GOALZ’ (fig.) / ‘GOAL’; § 24).

The relevant goods and services of both marks are directly or potentially related to team sports involving the scoring of goals and in which a goalkeeper is one of the key figures, for instance football- or hockey-themed games, be them computer-based or board games, entertainment services in the nature of betting on the result of a football or hockey match, organisation of matches etc. Therefore, each component of the earlier mark and the term ‘GOAL’ in the contested sign are allusive to the kind or other objective characteristics of the goods and services at issue. It follows that, taken individually, their distinctiveness is weak.

Turning now to the dominant elements of the signs, it has to be noted that the combined element ‘GOAL!’ is the most eye-catching element of the earlier mark by virtue of its size, graphical features and central position in the foreground. On the other hand, since the contested sign is a word mark, it has no dominant elements by definition.

Visually, the signs coincide in the element ‘GOAL’. However, account must be taken of the fact that this element is weak for the goods and services at issue. The signs differ in the contested sign’s combined element ‘&GO’ which is weak for a part of the public, and the earlier mark’s figurative elements, also weak in the context of the goods and services.

The opponent argues that the verbal element of the earlier mark is more important than its figurative elements and invokes case-law to support its assertions. Whilst the Opposition Division accepts that this is indeed the general principle, each case has to be assessed on its merits. Moreover, the assessment of the similarity of signs must be based on their overall impressions by weighing in the impact of their elements, in line with the case-law quoted above.

In addition, the opponent invokes case-law according to which consumers place a greater emphasis upon and pay more attention to the beginnings of signs vis-à-vis their endings. In that regard, the Opposition Division notes that, while, generally, the beginning of words has a greater impact on the consumer, the specific circumstances of the case may allow a different conclusion to be drawn (07/05/2009, T‑185/07, CK Creaciones Kennya, EU:T:2009:147, § 45). In the present case, the verbal elements have different lengths and structures. The earlier mark, depicting a football stadium, has a completely different get-up from that of the contested sign which lacks any figurative elements whatsoever.

Therefore, the signs are similar to an average degree for the part of the public who perceives the combined element ‘&GO’ of the contested sign as weak. For the rest of the public, this differentiating element has an average degree of distinctiveness, and the signs are similar to a low degree.

Aurally, the pronunciations of the signs coincide in the sounds of the word ‛GOAL’, however, its weak distinctiveness has to be borne in mind. The exclamation mark of the earlier mark may influence its intonation. Thus, at least for a part of the public, ‘GOAL’ in the earlier mark will sound like a cheer, whereas in the contested sign this word will be pronounced with no such excitement. Furthermore, the contested sign differs in the sounds of the words ‘et go’ or ‘and go’ depending on whether the public reads the sign in French or English. In any event, they have no counterpart in the earlier mark.

Therefore, the signs are similar to an average degree for the part of the public who perceives the combined element ‘&GO’ of the contested sign as weak. For the rest of the public, this differentiating element has an average degree of distinctiveness, rendering the signs similar to a low degree.

Conceptually, although both signs carry the concept underlying the French word ‘GOAL’, it can account for at most a low degree of similarity between the signs in view of its low distinctiveness.

Whilst the public will, without further reflection, associate the earlier mark with football, the contested sign will not necessarily bring to mind this particular type of sport, as also other team sports have goalkeepers, for instance ice hockey. Furthermore, a part of the public can perceive the contested sign entirely in English, for instance as ‘score points on your mobile platform’. To that extent the signs are conceptually dissimilar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

For the sake of completeness, it is noted that the applicant argues that the contested sign is used in a figurative depiction and submits such a representation. However, the object of the present opposition is the representation of the trade mark application as applied for. Therefore, the applicant’s arguments must be dismissed since the Opposition Division cannot take into any other representation of a mark other than the one applied for.

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. Considering what has been stated above in section c) of this decision, the overall distinctiveness of the earlier mark rests solely on the specific combination of the otherwise weak elements. Therefore, the distinctiveness of the earlier mark must be seen as low for all of the goods and services in question.

5. Global assessment, other arguments and conclusion

As shown above, the scope of protection of the earlier mark is limited from the perspective of the public in the relevant territory. Even though the public will discern the word ‘GOAL’ in both signs, it will direct its attention also to the other elements of the signs which are different. The figurative elements of the earlier mark, albeit weak, are readily perceptible and put some distance between the overall impressions of the signs. Moreover, the contested sign cannot be regarded as a mere reproduction of the earlier mark without the figurative elements, since it contains the combined element, ‘&GO’, which will not go unnoticed even where it is perceived as weak.

The opponent argues that the ending of the contested sign, ‘&GO’, merely refers to ‘the start button’ and is thus unable to counteract the similarities due to the reproduction of the earlier mark in the contested sign. Such a scenario is highly unlikely in the light of the conclusions drawn from the comparison of signs.

All in all, the tenuous similarities between the signs are outweighed by their differences, particularly taking into account the weak distinctive character of the common element, ‘GOAL’, and the low distinctiveness of the earlier mark as a whole.

In the light of the foregoing factors weighed against each other in the context of a global assessment, the Opposition Division finds that the differences between the signs are sufficient to enable the relevant public to safely distinguish between them, despite the fact that the goods and services in question are identical or similar.

The opponent refers to several previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. The cases invoked by the opponent are not relevant to the present proceedings since the signs at issue are not comparable.

However, the Opposition Division notes the opponent’s specific argument that the term ‘GOAL’ has no meaning for any of the goods or services in question and refers to a recent decision of the Office to support this argument. The decision of 16/08/2016, B 2 085 499 referred to by the opponent is not relevant to the present proceedings, since the earlier mark on the basis of which that opposition was upheld was a European Union trade mark, and the assessment of the similarity of signs and distinctiveness of the earlier mark was focused on the Spanish-speaking part of the public in the EU. In the present case, the relevant territory is France, where the public has a different perception of this term. Therefore, the opponent’s arguments must be set aside.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Michele M. BENEDETTI ALOISI

Solveiga BIEZA

Julie GOUTARD

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.

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