OPPOSITION No B 2 665 753

Hipercor, S.A., Calle Hermosilla, 112, 28009 Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 - 1º izda, 28010 Madrid, Spain (professional representative)

a g a i n s t

Everywear Games Oy, Mannerheimintie 12 B, 00100 Helsinki, Finland (applicant), represented by Lexia Attorneys LTD, Lönnrotinkatu 11, 6th floor, 00120 Helsinki, Finland (professional representative).

On 15/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 665 753 is upheld for all the contested goods and services.

2. European Union trade mark application No 14 904 106 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 EUTMIR should 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 14 904 106, ‘TIME UNIT’. The opposition is based on, inter alia, European Union trade mark registration No 14 766 04,  . 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 14 766 604,  .

1. The goods and services

The goods 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; Fire-extinguishing apparatus.

Class 16: Paper; Printed matter; Bookbinding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus).

Class 28: Games and playthings; Gymnastic and sporting articles not included in other classes; Decorations for Christmas trees.

The contested goods and services are the following:

Class 9: Computer games programs [software]; Video game programs in the form of computer programs recorded on data carriers; Computer game application software; Computer game programs downloaded via the Internet; Computer game software that permits games to be played; Game programs and software for smart phones and mobile devices; Online software for gaming.

Class 28: Construction sets and building blocks, both as toys; Board games; Electronic games; Parlour games; Card games; Stuffed toys; Ring games; Portable games with liquid crystal displays; Toys; Jigsaw puzzles; Gaming machines for gambling; Arcade video game machines.

Class 41: Game services provided on-line from a computer network; Providing interactive multi-player computer games via the internet and electronic communication networks; Arranging and conducting competitions for video gamers and computer game players.

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.

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 games programs [software]; video game programs in the form of computer programs recorded on data carriers; computer game application software; computer game programs downloaded via the Internet; computer game software that permits games to be played; game programs and software for smart phones and mobile devices; online software for gaming are similar to the opponent’s games and playthings. The latter category includes an array of objects intended to amuse for recreational purposes as well as for entertainment or educational purposes. The contested goods cover various kinds of computer game software which are used for entertainment, recreational and/or educational purposes. Aside for coinciding in purpose, they are aimed at the same target audience. Moreover, they may well emanate from the same producers, be distributed via the same channels and be used in a competitive or complementary manner.

Contested goods in Class 28

The contested toys and the opponent’s playthings are synonyms, therefore these goods are identical.

The contested construction sets and building blocks, both as toys; stuffed toys are included in the broad category of, or overlap with, the opponent’s playthings. Therefore, they are identical.

The very general concept of ‘games’ covers many types of games, including ‘games of chance’. Therefore, the contested board games; electronic games; parlour games; card games; ring games; portable games with liquid crystal displays; jigsaw puzzles; gaming machines for gambling; arcade video game machines are included in the broad category of, or overlap with, the opponent’s games and playthings. Therefore, they are identical.

Contested services in Class 41

There is a clear connection between the contested game services provided on-line from a computer network; providing interactive multi-player computer games via the internet and electronic communication networks; arranging and conducting competitions for video gamers and computer game players and the opponent’s games. It is not uncommon that the manufacturers of e.g. electronic games, specific gaming machines and apparatus also provide the rental, downloading and ancillary advice in relation to these goods. Moreover, in order to provide the abovementioned services it is indispensable to use the opponent’s games. Therefore, the relevant public would perceive the relevant goods and services as having a common commercial origin. Furthermore, gambling and betting have become a large industry which has expanded largely over the last couple of years. Nowadays, it is not uncommon that the betting and gambling companies arrange online gaming contests, professional online gambling competitions etc. Considering this, although services and goods in general have a different nature, these goods and services are similar to a low degree.

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 various degrees are directed at the public at large. The degree of attention is average.

3. The signs

	TIME UNIT
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.

The common element ‘UNIT’ is not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Czech- and Slovak-speaking parts of the public that do not understand English.

The earlier mark is a figurative mark, consisting of the verbal element ‘unit’ in white stylised lower case letters, inside a black rectangle.

The contested sign is a word mark, ‘TIME UNIT’, in upper case letters. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case letters is irrelevant.

The element ‘UNIT’ in both marks has no meaning for the relevant public and is, therefore, distinctive.

The element ‘TIME’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

As regards the earlier sign, it is composed of a distinctive verbal element and a less distinctive figurative element (the rectangle) of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative element.

The verbal element ‘unit’ in the earlier sign is the dominant element as it is the most eye-catching.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the verbal element ‘UNIT’, which is distinctive, as described above. However, they differ in the additional distinctive verbal element ‘TIME’ of the contested sign and in the figurative elements of the earlier mark including the stylisation of the letters.

Therefore, the signs are visually 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 letters ‛UNIT’, which are present identically in both signs and distinctive. The pronunciation differs in the sound of the distinctive letters ‛TIME’ of the contested mark, which have no counterparts in the earlier sign.

Therefore, the signs aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

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. 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, despite the presence of the less distinctive element in the mark (the rectangle) as stated above in section c) of this decision.

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the goods and services are partly identical and partly similar to various degrees. They are directed at the public at large with an average degree of attention.

The signs are visually and aurally similar to an average degree, to the extent that they coincide in the distinctive verbal element ‘UNIT’. The conceptual aspect does not influence the assessment of the similarity of the signs.

Taking into account all the circumstances of the case, the differences between the marks are not sufficient to counterbalance the similarity between them. The relevant public could be mistaken regarding the origin of the goods and services that are identical or similar to various degrees.

Account is 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).

It is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the Czech- and Slovak-speaking parts of the public that do not understand English. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 766 604. It follows that the contested trade mark must be rejected for all the contested goods and services, even for those similar to only a low degree. The high similarity between the signs outweighs the low similarity between these goods and services.

As the earlier right, European Union trade mark registration No 14 766 604 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Michal KRUK

Lena FRANKENBERG GLANTZ

Loreto URRACA LUQUE

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.