OPPOSITION No B 2 958 422

Alloy Digital, LLC, 151 West 26th Street, 11th Floor, 10001, New York, United States of America (opponent), represented by Marks & Clerk LLP, 40 Torphichen Street, EH3 8JB, Edinburgh, United Kingdom (professional representative)

a g a i n s t

Mouldy Toof Studios Limited, Castleview House, Calder Island Way, Calder Island, WF2 7AW, Wakefiled, West Yorkshire, United Kingdom (applicant), represented by Julian Ward, Lee & THompson LLP 4 Gee's Court, St. Christopher's Place, Marylebone, W1U 1JD, London, United Kingdom (professional representative).

On 26/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 958 422 is upheld for all the contested goods.

2. European Union trade mark application No 16 802 811 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 of European Union trade mark application No 16 802 811 for the word mark ‘The Escapists 2’. The opposition is based on European Union trade mark registration No 8 631 418 for the word mark ‘THE ESCAPIST’. 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.

1. The goods and services

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

Class 9: Computer and video game software; computer games programmes downloaded via the internet.

Class 41: Providing an online magazine in the field of computer and video games; electronic library services for the supply of electronic information, including archive information, in the form of electronic texts, audio and/or video information and data, games and amusements; publishing of reviews.

The contested goods are the following:

Class 9: Video games cartridges; video games software; software programs for video games; video games programs [computer software]; games (cartridges for video -) [software]; pre-recorded video tapes featuring games; video games on disc [computer software]; audiovisual headsets for playing video games; programmed video games contained on cartridges [software]; computer programs for video and computer games; games software for use with video game consoles; downloadable interactive entertainment software for playing video games; video games [computer games] in the form of computer programs recorded on data carriers; joysticks for use with computers, other than for video games.

Class 28: Hand held video games; joysticks for video games; hand-held electronic video games; interactive gaming chairs for video games; hand held units for playing video games; bags specially adapted for handheld video games; protective carrying cases specially adapted for handheld video games.

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 for video and computer games; video games software; software programs for video games; video games programs [computer software]; games (cartridges for video -) [software]; video games on disc [computer software]; programmed video games contained on cartridges [software]; games software for use with video game consoles; downloadable interactive entertainment software for playing video games; video games [computer games] in the form of computer programs recorded on data carriers; video games cartridges are identical to the earlier computer and video game software, either because they are identically contained in both lists (including synonyms) or because the earlier goods include, are included in, or overlap with, the contested goods.

The contested pre-recorded video tapes featuring games; audiovisual headsets for playing video games; joysticks for use with computers, other than for video games and the earlier computer and video game software have a different nature. However, they coincide in distribution channels, relevant public and producer. Consequently, these goods are similar.

Contested goods in Class 28

The contested hand held video games; joysticks for video games; hand-held electronic video games; interactive gaming chairs for video games; hand held units for playing video games; bags specially adapted for handheld video games; protective carrying cases specially adapted for handheld video games are similar to the earlier computer and video game software because they coincide in distribution channels, relevant public and producer.

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 found to be identical or similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

THE ESCAPIST	The Escapists 2
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 verbal elements of both signs are 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 non-English-speaking part of the public such as the Italian and the Spanish-speaking part of the public.

Both marks in dispute are word marks. Word marks are marks consisting of letters, numbers and other standard typographic characters (e.g. ‘+’, ‘@’, ‘!’) reproduced in standard typeface. This means that they do not claim any particular figurative element or appearance. Where both marks are registered as word marks, the typeface actually used by the office concerned in the official publication is immaterial. Differences in the use of lower- or upper-case letters are, in general, immaterial.

The elements ‘THE ESCAPIST’ and ‘The Escapists’ has no meaning for the relevant public and are, therefore, distinctive. The number ‘2’ makes reference to the cardinal number two, which is not related, per se, to any of the goods covered by the marks in dispute and must be considered also distinctive.

Visually and aurally, the signs coincide in the letters “THE ESCAPIST”, which form the whole of the earlier mark and the first part of the contested sign. However, they differ in the last letter ‘s’ of the word ‘Escapists’ and in the number ‘2’ of the contested sign.

Therefore, the signs are visually and aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the contested sign’s element ‘2’ as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods in class 9 covered by the earlier right and the goods in classes 9 and 28 covered by the contested application have been found partly identical and partly similar. The signs are similar to a high degree from a visual perspective and in view of the fact that the earlier mark ‘THE ESCAPIST’ is fully incorporated in the contested sign. The only differences between the marks, which will rather go unnoticed, are constituted by the last letter ‘s’ of the word ‘Escapists’ and the number ‘2’ of the contested sign.

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).

Also, 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).

As the goods in classes 9 and 28 are identical and similar and due to the absence of any dominant or non‑distinctive elements in the signs and in view of the coincidence in the elements ‘THE ESCAPIST ’, a likelihood of confusion exists.

Indeed, it is conceivable that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark ‘THE ESCAPIST’, configured in a different way according to the type of goods 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 at least but not necessarily only, on the non English-speaking part of the public such as the Italian or Spanish-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 8 631 418.

It follows that the contested trade mark must be rejected for all the contested 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.

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

Riccardo RAPONI

Andrea VALISA

Aldo BLASI

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.