OPPOSITION No B 2 796 715

O2 Worldwide Limited, 20 Air Street, London W1B 5AN, United Kingdom (opponent), represented by Stobbs, Building 1000, Cambridge Research Park, Cambridge CB25 9PD, United Kingdom (professional representative)

a g a i n s t

Valas Media Oy, Syvänojantie 221, 31530 Pyöli, Finland (applicant), represented by Fondia Oyj, Lönnrotinkatu 5, 00101 Helsinki, Finland (professional representative).

On 05/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 796 715 is upheld for all the contested goods and services.

2. European Union trade mark application No 15 499 023 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 499 023 for the word mark ‘BUBBLE CLOUD’, namely against all the goods and services in Classes 9 and 41. The opposition is based on of European Union trade mark registration No 15 145 279 for the word mark ‘BUBBLE’. 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.

a) The goods and services

The goods and services on which the opposition is based are, inter alia, 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; apparatus for the transmission of sound and image; telecommunications apparatus; mobile telecommunication apparatus; mobile telecommunications handsets; digital telecommunication apparatus and instruments; digital tablets; computer hardware; computer application software; computer software downloadable from the Internet; recorded computer software; software applications; mobile software applications, downloadable applications for multimedia devices; computer games; computer game software; computer games programs; PDAs (Personal Digital Assistants); pocket PCs; mobile telephones; laptop computers; telecommunications network apparatus; drivers software for telecommunications networks and for telecommunications apparatus; protective clothing; protective helmets; televisions; headphones; global positioning system [GPS] apparatus; satellite navigation devices; computer software recorded onto CD Rom; SD-Cards (secure digital cards); glasses; spectacle glasses; sunglasses; protective glasses and cases therefor; contact lenses; cameras; camera lenses; MP3 players; audio tapes, audio cassettes; audio discs; audio-video tapes; audio-video cassettes; audio-video discs; video tapes; video cassettes; video discs; CDs, DVDs; downloadable electronic publications; downloadable image files; downloadable music files; mouse mats; magnets; mobile telephone covers; mobile telephone cases; hands free kits for phones; magnetic cards; encoded cards; mobile phone application software; software for telecommunication; software for the processing of financial transactions; electronic notice boards; electric batteries; battery chargers; security alarms; security cameras; security warning apparatus; security control apparatus; security surveillance apparatus; computer software for security purposes; computer software for insurance purposes; SIM cards; aerials; alarms; electric cables; chemistry apparatus and instruments; recorded computer operating programs; computer peripheral devices; data processing apparatus; diagnostic apparatus, not for medical purposes; distance measuring apparatus; distance recording apparatus; downloadable ring tones for mobile phones; electronic tags for goods; eyepieces; goggles for sports; magnetic identity cards; intercommunication apparatus; loudspeakers; magnetic data media; mathematical instruments; modems; electric monitoring apparatus; television apparatus; testing apparatus not for medical purposes; telecommunication transmitters; parts and fittings for all the aforesaid goods.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; academies [education]; amusement parks; amusements; arranging and conducting of colloquiums; arranging and conducting of concerts; arranging and conducting of conferences; arranging and conducting of congresses; arranging and conducting of seminars; arranging and conducting of symposiums; arranging and conducting of workshops [training]; arranging of beauty contests; booking of seats for shows; cinema presentations; club services [entertainment or education]; coaching [training]; discotheque services; education information; educational examination; electronic desktop publishing; entertainer services; entertainment information; organisation of fashion shows for entertainment purposes; film production, other than advertising films; gambling; game services provided on-line from a computer network; games equipment rental; health club services [health and fitness training]; holiday camp services [entertainment]; music-halls; news reporters services; organization of shows [impresario services]; organization of sports competitions; party planning [entertainment]; personal trainer services [fitness training]; physical education; practical training [demonstration]; production of music; production of radio and television programmes; production of shows; providing amusement arcade services; providing karaoke services; providing on-line electronic publications, not downloadable; providing sports facilities; publication of books; publication of electronic books and journals on-line; publication of texts, other than publicity texts; radio entertainment; recording studio services; providing recreation facilities; sport camp services; subtitling; television entertainment; theatre productions; ticket agency services [entertainment]; timing of sports events; tuition; interactive entertainment services; electronic games services provided by means of any communications network; entertainment services provided by means of telecommunication networks; information services relating to education, training, entertainment, sporting and cultural activities provided by means of telecommunication networks; provision of news information; television production services; television programming services; television production and television programming services provided by means of Internet protocol technology; provision of musical events; entertainment club services; discotheque services; presentation of live performances; night clubs; rental of music venues and stadiums; casino services; ticket reservations for entertainment, sporting and cultural events; ticket information services for entertainment, sporting and cultural events; ticket agency services for entertainment, sporting and cultural events; provision of on-line computer games; rental of computer games programs; computer amusement services; provision of information, news and commentary in the field of computer games; arranging, organising and conducting computer game competitions; publishing services; providing on-line electronic publications, not downloadable; publication of books; publication of electronic books and journals on-line; publication of texts, other than publicity texts; arranging, organising and conducting of competitions, games and quizzes; arranging, organising and conducting of competitions, games and quizzes for entertainment, recreational, cultural and educational purposes; organisation of awards; conducting of phone-in competitions; issuing of tickets for entertainment events; employment training; information and advisory services relating to the aforesaid; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services relating to the aforesaid services provided over a telecommunications network.

The contested goods and services are the following:

Class 9: Computer programs and computer game programs; Downloadable computer programs and computer game programs; Data storage media; Game software, to be played on a television receiver; Films, television films and animated films with soundtracks.

Class 41 Electronic game services; Provision of on-line computer games; Providing online information in the field of computer games; Provision of games by means of computer-based systems; Providing entertainment information relating to computer games via a data network; Entertainment services in the form of the development of films, animations, animated films and television programmes.

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 programs and computer game programs; downloadable computer programs and computer game programs; data storage media; game software, to be played on a television receiver are identical to the opponent’s goods in the same class, either because they are identically contained in both lists (including synonyms) or because the applicant’s goods include, are included in, or overlap with, the opponent’s computer software downloadable from the Internet; recorded computer software; computer games; computer game software; computer games program, computer software; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media.

The contested films, television films and animated films with soundtracks are similar to the opponent’s entertainment services provided by means of telecommunication networks in Class 41. Albeit the difference in nature, they share the same purpose of entertainment. Consequently, they also have the same public. Moreover, they could coincide in their origins, as it is becoming more and more common for streaming platforms (that provide on-line access to entertainment content such as films) also to produce their own products (such as movies, TV series or comedy shows).

Contested services in Class 41

The contested electronic game services; provision of on-line computer games; provision of games by means of computer-based systems; providing online information in the field of computer games; providing entertainment information relating to computer games via a data network are identical to the opponent’s services in the same class, either because they are identically contained in both lists (including synonyms) or because the applicant’s services are included in, or overlap with, the opponent’s provision of on-line computer games; electronic games services provided by means of any communications network, provision of information, news and commentary in the field of computer games.

Likewise, the contested entertainment services in the form of the development of films, animations, animated films and television programmes are considered identical to the opponent’s services in the same class, either because they are identically contained in both lists (including synonyms) or because the applicant’s services are included in, or overlap with, the opponent’s entertainment; film production, other than advertising films; production of television programmes.

b) 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 service found to be identical or similar are directed at the public at large.

The degree of attention may vary from average to higher than average, depending on the specialised nature of the goods and their price.

c) The signs

BUBBLE	BUBBLE CLOUD
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 ‘BUBBLE’ means in English ‘a ball of gas that appears in a liquid, or a ball formed of air surrounded by liquid that floats in the air’ (Cambridge Dictionary, extracted from https://dictionary.cambridge.org/dictionary/english/bubble on 04/04/2019). The applicant claims that this element has a low degree of distinctiveness as it alludes to the theme of the games, presumably belonging to the popular genre of bubble shooter games. In the view of the applicant, this should significantly impact the assessment of likelihood of confusion. In this respect, the Opposition Division notes that regardless of the level of distinctiveness of the coinciding element ‘BUBBLE’ from the perspective of the English speaking public, the non-English-speaking public will find this element distinctive and meaningless. Therefore, the issue of the presumably diminished level of distinctiveness of the word ‘BUBBLE’ will not come up, if the examination is focused on the non-English-speaking part of the public, such as the French and German consumers that do not speak English as their second language. Consequently, the Opposition Division finds it appropriate to focus on this part of the public.

On the other hand, the second element of the contested sign, ‘CLOUD’, has become widely used in relation to computing to denote a network of remote servers hosted on the Internet for storing, managing and processing data in place of local servers or personal computers. This term will be understood by the vast majority of the relevant public, especially those consumers with at least basic IT knowledge (e.g. DUDEN, https://www.duden.de/suchen/dudenonline/cloud; 16/11/2018, R 686/2018-4, Altura Cloud (fig.) v. Antura § 25; 23/04/2018, 14 964C, GFI Cloud v. GFI; 09/04/2018, B 258 74 37, 4D v. 4D Cloud). Therefore, this verbal element has a clear and direct link to the contested goods and most of the contested services as they all could be either accessed or rendered via the Internet (cloud computing). In such case, the Opposition Division is of the view that this element is non-distinctive for all the goods and the following services: electronic game services; provision of on-line computer games; providing online information in the field of computer games; provision of games by means of computer-based systems; providing entertainment information relating to computer games via a data network.

However, the abovementioned verbal element ‘CLOUD’ has no direct connection to the entertainment services in the form of the development of films, animations, animated films and television programmes. Therefore, with regard to these services it must be considered distinctive.

Visually and aurally (irrespective of the different pronunciation rules in different parts of the relevant territory), the signs coincide in the verbal element ‘BUBBLE’, that is the entire earlier mark is reproduced at the beginning of the contested mark. The marks differ in the additional word ‘CLOUD’ at the end of the contested mark, which has no counterpart in the earlier mark.

It must be borne in mind that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

In this case, the signs coincide in their distinctive beginnings. With regard to the goods and services for which the word ‘CLOUD’ was found non-distinctive, the signs are considered highly similar.

As for the remaining services (for which the verbal element ‘CLOUD’ is not considered to lack distinctiveness), the degree of similarity between the signs is still above average due to their identical, distinctive beginnings.

Conceptually, neither of the signs has a meaning as a whole. However, the verbal element ‘CLOUD’ will be associated with the meaning explained above. With regard to the goods and services for which the abovementioned meaning is non-distinctive, this element will not help to differentiate the marks at issue, as the concept it evokes will not help the consumers to identify the origin of the goods and services. In such case, the attention of the relevant public will be attracted by the additional fanciful verbal element, which has no meaning. Therefore, with regard to those goods and services, a conceptual comparison is not possible, and so the conceptual aspect does not influence the assessment of the similarity of the signs.

However, with regard to the remaining services, the element ‘CLOUD’ evokes a concept that cannot be considered non-distinctive and which is not present in the earlier mark, therefore, the signs under comparison must be considered not similar.

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

d) 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.

e) Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, with reference to the perception which the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18 and 19; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 16).

As stated above, the entire earlier mark is reproduced at the beginning of the contested mark as its distinctive element. All of the goods and services under comparison are either identical or similar. In the view of the Opposition Division, regardless if the additional element ‘CLOUD’ is considered distinctive or not, the consumers might believe that the marks under comparison come from the same or economically linked undertakings. It must be borne in mind that it is a common practice for manufacturers and service providers to make variations in their trade marks, for example by adding verbal or figurative elements to them to endow the trade mark with a new, modern image. Therefore, the Opposition Division finds that the relevant consumer may perceive the contested sign as a sub-brand as both marks have a distinctive element ‘BUBBLE’ in common (see, by analogy, 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 German- and French-speaking part of the public. 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 15 145 279. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Renata COTTRELL

Marta Maria CHYLIŃSKA

Tu Nhi VAN

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.