OPPOSITION Nо B 2 950 544

 

Sony Interactive Entertainment Europe Limited, 10 Great Marlborough Street, W1F 7LP London, United Kingdom (opponent), represented by Boult Wade, S.L., Avda. de Europa, 26 Edif. Ática 5, Planta 2, 28224 Pozuelo de Alarcón, Madrid, Spain (professional representative) 

 

a g a i n s t

 

Roberto Dutescu Aka Dutesco, 220 Pine Avenue West # 210, H2w1r9 Montreal, Canada (applicant), represented by White & Case Llp, Valentinskamp 70 / Emporio, 20355 Hamburg, Germany (professional representative).

On 15/03/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.  Opposition No B 2 950 544 is partially upheld, namely for the following contested goods and services:

Class 9: All goods in this Class.

Class 18: All goods in this Class.

Class 21: All goods in this Class.

Class 25: All goods in this Class.

Class 28: All goods in this Class.

Class 38: All services in this Class.

Class 41: All services in this Class.

2.	European Union trade mark application No 16 762 411 is rejected for all the above goods and services. It may proceed for the remaining contested goods in Classes 14 and 16.

 

3.	Each party bears its own costs.

 

REASONS

 

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 762 411 I'M WILD (word mark). The opposition is based on, inter alia,  EUTM registration No 13 166 319, WiLD (word mark) and EUTM registration No 15 357 841 for the figurative mark . 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 EUTM registrations  No 13 166 319 and No 15 357 841.

 

a) The goods and services

 

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

 

EUTM registration No 13 166 319

Class 9: Computer game software and video game software; downloadable, interactive computer and video game programs via mobile computer terminals or via the internet; downloadable computer game software; all of the aforesaid  in relation to an action game delivered via the PlayStation games network or played on PlayStation games consoles, that is not the purpose of earning money or gambling; none of the aforesaid in relation to casinos, gambling games and games of chance.

Class 28: Handheld computer games; hand-held electronic video games; hand-held units for playing electronic games; computer and video game consoles; controllers and peripherals for computer games and video games and computer games and video game consoles; bags and cases adapted for the aforementioned goods; all of the aforesaid in relation to an action game delivered via the PlayStation games network or played on PlayStation games consoles, that is not the purpose of earning money or gambling; none of the aforesaid in relation to casinos, gambling games and games of chance.

Class 41: Provision of computer and video games programs from a computer database or via the Internet; all of the aforesaid in relation to an action game delivered via the PlayStation games network or played on PlayStation games consoles, that is not the purpose of earning money or gambling; none of the aforesaid in relation to casinos, gambling games and games of chance.

EUTM registration No 15 357 841

Class 18: Bags; baggage; luggage; purses; wallets; umbrellas.

Class 21: Household and kitchen utensils; cooking utensils; glassware; earthenware; porcelain; mugs; coffee cups.

Class 28: Toys, games and playthings.

The contested goods and services are the following:

 

Class 9: CDs; DVDs; USB drives; Pre-recorded CDs featuring children's songs; DVDs featuring films about horses; pre-recorded USB drives featuring music; Software; Computer application software for mobile phones; Software for use in viewing interactive video, music and photographic experiences; Computer game software for personal computers and home video game consoles.

Class 14: Jewellery; Clocks; Watches.

Class 16: Printed matter; Photographs; Blank journal books; Colouring books; Blank journals, notepads, books about photography, architecture and design; Posters and prints; Post cards; Stickers; Stationery; Pencil and pen sets.

Class 18: Umbrella; Backpacks; Tote bags; All-purpose carrying bags.

Class 21: Household and kitchen utensils; Household and kitchen utensils, namely, plates, cups, vases, serving trays, bowls, beverage glassware and mugs.

Class 25: Clothing; Footwear; Headgear; T-shirts; Long sleeved shirts; Hooded sweatshirts; Socks; Hats; Ties; Scarves.

Class 28: Toys and playthings; Toys for adults and children; Jigsaw puzzles; Manipulative puzzles; Stuffed toy animals; Toy animals; Balls for games; Bath toys.

Class 38: Broadcasting of television programmes.

Class 41: Cultural activities; Educational activities; Entertainment; Museum and entertainment services; Conducting photographic exhibitions. 

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 in Class 21 to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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.

The restriction of goods and services in the list of the earlier EUTM No 13 166 319 all of the aforesaid  in relation to an action game delivered via the PlayStation games network or played on PlayStation games consoles, that is not the purpose of earning money or gambling; none of the aforesaid in relation to casinos, gambling games and games of chance has been taken into account in below comparison even if it hasn’t been directly quoted in it. This limitation doesn’t affect in essence the nature of the opponent’s goods and services.

Contested goods in Class 9

The contested  software as a broader category includes  the opponent’s computer game software and video game software of the earlier mark EUTM No 13 166 319. 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 software for use in viewing interactive video, music and photographic experiences; computer game software for personal computers and home video game consoles overlap with the opponent’s Computer game software and video game software of the earlier mark EUTM No 13 166 319. Therefore, they are identical.

The contested computer application software for mobile phones can have the same purpose, namely to enable the user to play a game, albeit on different types of electronic device as the opponent's downloadable interactive computer and video game programs via mobile computer terminals or via the internet of the earlier mark EUTM No 13 166 319, despite the fact that these goods are distributed through different channels. All being programs, these goods coincide in nature, too. Furthermore, they can originate from the same producers which can develop software for different kinds of platforms (computers, consoles or mobile phones). Therefore, these goods are considered similar

The contested pre-recorded CDs featuring children's songs; DVDs featuring films about horses; pre-recorded USB drives featuring music; CDs; DVDs; USB drives are similar to the opponent’s interactive computer programs of the earlier mark EUTM No 13 166 319 as they can coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

Contested goods in Classes 14 and 16

The contested goods in Classes 14 are jewellery; clocks; watches whereas the opponent’s goods and services are game programs in Class 9, goods made of leather and imitation of leather and umbrellas in Class 18, household-related goods in Class 21, games and playthings in Class 28 and services in Class 41, that include mainly services consisting of all forms of education or training, services having the basic aim of the entertainment, amusement or recreation of people, as well as the presentation of works of visual art or literature to the public for cultural or educational purposes. The providers and purposes of these goods and services do not coincide with those of the contested goods, as referred to above. They are found in different channels of distribution, target a different public and have a different method of use. Therefore, they are considered to be dissimilar. The same conclusion applies to the contested goods in Class 16, which refer to printed matter and various stationery items. The purpose and nature of the applicant’s goods and the opponent’s goods and services are different, they are directed at different consumers, originate from different companies, are neither in competition nor are complementary.

Contested goods in Class 18

The contested umbrellas are identically mentioned in the opponent’s list of the earlier EUTM registration No 15 357 841.

The contested backpacks; tote bags; all-purpose carrying bags are included in or overlap with a broad category of the opponent’s Bags. Therefore, they are identical.

Contested goods in Class 21

The contested household and kitchen utensils are identically mentioned in the opponent’s list of the earlier EUTM registration No 15 357 841.

The contested plates, cups, vases, serving trays, bowls, beverage glassware and mugs are included in a broad category of the opponent’s household and kitchen utensils of the earlier EUTM registration No 15 357 841. Consequently, these goods are identical.

Contested goods in Class 25

All the contested goods in this Class are similar to the opponent’s Bags in Class 18 of the earlier EUTM registration No 15 357 841. They can coincide in producer, relevant public and distribution channels.

Contested goods in Class 28

The contested Toys and playthings are identically included in the opponent’s EUTM registration No 15 357 841.

The remaining contested Toys for adults and children; Jigsaw puzzles; Manipulative puzzles; Stuffed toy animals; Toy animals; Balls for games; Bath toys are included in a broad category of the opponent’s Toys, games and playthings of the earlier EUTM registration No 15 357 841. Therefore, they are identical.

Contested services in Class 38

The contested services in this class encompass broadcasting of television programmes. Telecommunications services are those that allow people to communicate with one another by remote means. The contested services are considered similar to the opponent’s downloadable, interactive computer programs via mobile computer terminals or via the internet of EUTM registration No 13 166 319. In recent years the boundary between telecommunications equipment and IT hardware, as well as software, has become blurred as a result of the growth of the internet and its increasing role in the transfer of telecommunications data. Equipment used for telecommunications purposes, such as modems, mobile phones, landline telephones, answering machines, fax machines, pagers, routers, etc., is also considered to cover the telecommunications control software that must be in place to successfully support telecommunications operations. Any software that provides the ability to perform telecommunications operations can be considered telecommunications control software. Therefore, the opponent’s downloadable, interactive computer programs via mobile computer terminals or via the internet of the earlier EUTM registration No 13 166 319 and the contested services in this class have the same purpose. Although their nature is different, their purpose and distribution channels are the same (12/11/2008, T-242/07, Q2web, EU:T:2008:488, § 24-26). Furthermore, they are complementary.

Contested services in Class 41

The contested Entertainment; Entertainment services refer to the action of providing or being provided with amusement or enjoyment. The contested services, being a broad category of services, include the opponent’s Provision of computer and video games programs from a computer database or via the Internet of the earlier EUTM registration No 13 166 319. As the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested Educational activities also include educational services related to games. These services are similar to the opponent’s Provision of computer and video games programs from a computer database or via the Internet of the earlier EUTM registration No 13 166 319. Indeed, these services can be complementary and can be provided by the same undertakings. Furthermore, they target the same public and can be distributed through the same channels.

The contested Cultural activities; Museum; Conducting photographic exhibitions are similar to the opponent’s Provision of computer and video games programs from a computer database or via the Internet of the earlier EUTM registration No 13 166 319. These services can have the same purpose and be directed at the same relevant public through the same distribution channels.

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 services found to be identical or similar are directed at the public at large. The degree of attention of the relevant public is normal since neither the goods nor the services can be expected to be more expensive, sophisticated or otherwise requiring a higher attentiveness for other reasons.

c) The signs

 

ER No 1. WiLD ER No 2.	I'M WILD
Earlier trade marks	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 1) and the contested sign are word marks, ‘WilD’ and ‘I’M WILD’ respectively, whereas earlier mark 2) is a figurative mark. This figurative mark consists of a fanciful complex figurative element and the verbal element ‘WiLD’, which is depicted in a rather standard typeface except for the fact that three of the letters (‘W*LD’) are in upper case and the letter ‘i’ is in lower case.

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.

As regards the common element of the marks ‘WiLD’, it will be understood by the English-speaking part of the public as referring to something that is growing or produced without human aid or care but also as passionately eager or enthusiastic (information extracted from Merriam-Webster dictionary on 16/02/2021 at: https://www.merriam-webster.com/dictionary/wild). This word will not be understood by the whole public in the European Union (03/05/2019, R 1376/2018-5, INTIMEA WILD APPLE HYGIEIA (fig.) / intima (fig.) et al., § 57). However bearing in mind the relevant goods and services and notwithstanding whether or not it is understood as the element ‘WILD’ is not descriptive, allusive or otherwise weak for the relevant goods and services it is normally distinctive in both earlier marks in relation to them.

As to the contested sign, the English-speaking public will instantly perceive in the verbal element ‘I’M’ an abbreviation for the expression ‘I am’. The Opposition Division agrees with the applicant that the order of words in English sentences is very important, however cannot share the applicant´s view that the expression ‘I’M WILD’ does not constitute a sentence in the English language. A change in word order may often result in a change of meaning. Many other languages use inflection, a change in the form of words, to show how the parts of a sentence function. English has very few inflections, so the place that a word occupies in a sentence, its syntax, is the most important feature. Most sentences have a subject, and then something that is said about the subject, which is usually the rest of the sentence. This divides the sentence into the subject and the predicate. Therefore, in the expression ‘I am’, the subject is the person that the sentence is about. That person is "I".
The predicate is the action taken by the subject. In this case the action is being something, namely "am wild". Therefore "am" is the predicate. The expression as a whole ‘I’M WILD’ may be perceived by the English-speaking public as a somewhat laudatory message referring to a person who is passionately eager, or enthusiastic as it intends to express a customer’s positive attitude towards the goods and services at issue. As analysed above, the subject of the sentence refers to anyone who expresses it, whereas the adjective ‘WILD’ plays role of a relevant identifier in the expression ‘I’M WILD’. The common term ‘WILD’ has no straightforward meaning in relation to the goods and services in question and will be the one on which the relevant public will focus when encountering the contested sign.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as the public in Ireland and Malta.

As regards earlier mark 2) the figurative element is fanciful and distinctive. There is no dominant element in the marks at issue.

Visually and aurally, the signs coincide in the verbal element ‘WILD’, which constitutes the only element of the earlier mark No 1 and clearly perceptible verbal element in the earlier mark No 2. Furthermore, it is also, semantically a very relevant element of the contested sign, whose distinctive character in both signs has been established. Therefore, although mentioned in the final position in the contested sign, the verbal element ‘WILD’ of the contested sign will attract considerable attention of the relevant public. The signs differ in the elements ‘I’M’ of the contested sign and the figurative element of the earlier mark No 2 (only visually). In this regard, it is important to note that 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; 19/12/2011, R 233/2011‑4, BEST TONE (FIG. MARK) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, JUMBO (FIG. MARK) / DEVICE OF AN ELEPHANT (FIG. MARK), § 59).

Taking into account the fact that the letter ‘i’ is in lower-case letters in the earlier mark No 1, it must be recalled that the protection that results from the registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that mark (29/03/2012, T‑369/10, Beatle, EU:T:2012:177, § 42). Therefore, earlier mark 1) could also be used with an upper-case letter ‘i’ and the contested sign could be used with a mix of upper- and lower-case letters. To that extent, this difference is insignificant.

Considering that the term most significant element of the marks at issue is the same and bearing in mind that it is the sole verbal element of the earlier marks, the Opposition Division considers that the signs are visually and aurally similar to an average degree.

Conceptually, the public in the relevant territory will perceive the words contained in the signs according to the abovementioned meanings. Although the relevant public will understand the beginning of the contested sign ‘I’M’ it will be also aware of the semantic content of the word term ‘WILD’, which constitutes the only verbal element of the earlier marks and gives a meaning to the contested sign as the element ‘I’M’, as such, is rather vague. The term ‘WILD’ is inherently distinctive in relation to the goods and services in question. Bearing in mind the above-mentioned and the fact that the relevant public will perceive the contested sign as a whole, the conceptual similarity between the signs is slightly lower than average.

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 marks

 

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

 

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks have 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 marks must be seen as normal.

a) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The contested goods and services are partly identical, partly similar and partly dissimilar to the opponent’s goods and services. They are directed at the public at large, that will display an average degree of attention towards them.

The inherent distinctiveness of the earlier marks is normal.

In general terms, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30; 12/07/2006, T-97/05, Marcorossi, EU:T:2006:203, § 39; 22/06/2005, T-34/04, Turkish Power, EU:T:2005:248, § 43).

The signs under comparison are visually and aurally similar to an average degree on account of the common and distinctive word ‘WILD’. As analysed above, the signs are conceptually similar to a lower than average degree.

The fact that a given sign includes additional elements, such as in the case at hand, the elements ‘I’M’ of the contested sign and the figurative elements of one of the earlier marks does not outweigh the strong similarities resulting from the coinciding distinctive term ‘WILD’. The figurative components of the earlier mark No. 2 were considered to be less relevant for the consumers as they usually focus more on the verbal elements.

As a rule, when one of the conflicting trade marks or a part thereof is reproduced in the other mark as a distinctive element, the signs will be found similar, which, together with other factors, may lead to a likelihood of confusion.

Account is also 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).

Furthermore, Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

Indeed, in the present case, the relevant consumers may legitimately believe that the contested trade mark is a new brand line or a recent promotional service of the earlier marks ‘WILD’ because it is a common market practice for brands to identify a new version or a new sub-brand through the use of additional verbal elements in combination with the main (‘house’) brand. In fact, consumers may legitimately believe that the commercial slogan ‘I’M WILD’ belongs to the opponent’s company, which provides identical and similar goods and services to the opponent’s goods and services and uses the brand to make a play on words and a promotional message. Hence, given this link, a likelihood of association is likely and this, along with the visual and aural similarities, outweighs the lower degree of conceptual similarity between the signs.

Considering all the above, it is concluded that the differences between the signs are not sufficient to counteract the similarity resulting from the distinctive element ‘WILD’ and, therefore, there is a likelihood of confusion, in the form of a likelihood of association, for the English-speaking part of the public, such as the pubic in Ireland and Malta. 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 partially well founded on the basis of the European Union trade mark registrations No 13 166 319 and No 15 357 841 and it follows that the contested trade mark must be rejected for those goods and services which have been found identical and similar to various degrees to the goods and services of the earlier marks.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

 

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

 

The opponent has also based its opposition on the following earlier trade mark:

 

 

EUTM registration No 14 462 634 for the figurative mark  .

 

Since this mark is identical to the one which has been compared and cover a narrower scope of goods and services, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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

 

 

Beatrix STELTER

Monika CISZEWSKA

Katarzyna ZANIECKA

 

 

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.