OPPOSITION No B 2 969 205

Woop Media, Jász str. 53/A 402, 1135, Budapest, Hungary (opponent), represented by Zsolt Sásdi, Woop Media, Jász str. 53/A 402, 1135, Budapest, Hungary (employee representative)

a g a i n s t

Intellectual Property Consultants Pty Ltd, Suite 1A, 185 Moggill Road, Qld 4068, Taringa, Australia (applicant), represented by Magdaléna Bachratá, Krasovskeho 13, 851 01 Bratislava, Slovakia (professional representative).

On 29/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 969 205 is upheld for all the contested goods and services.

2. European Union trade mark application No 16 844 111 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 844 111 for the word mark ‘Woop Woop’. The opposition is based on French trade mark registration No 3 805 010 for the figurative mark . The opponent invoked Article 8(1)(a) and (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

In the notice of opposition of 04/10/2017, the opponent agreed that the necessary information for the earlier trade mark be imported from the relevant online official database, accessible through TMview, and that this source be used for substantiation purposes without prejudice to its right or obligation to provide any additional information that may be necessary to comply with the substantiation requirements of Article 7(2) and (4) EUTMDR.

The Opposition Division became aware that, according to the TMview database and the official French INPI database, the original French list of goods and services of the earlier mark contained fewer terms than the English translation submitted by the opponent in the notice of opposition.

Moreover, according to the EUIPO Guidelines, ‘where a clearly incorrect translation is detected in the list of goods and services covered by the earlier national or international mark that prevents the Office from carrying out a comparison of goods and services, the opponent may be required under Article 26 EUTMIR to submit a certificate from a sworn or official translator confirming that the translation corresponds to the original; alternatively, in clear-cut cases, the Office may, for the purposes of the decision, replace a clearly incorrect translation of a certain term by a correct translation, adding an explanation to that effect’ (¹).

The opposition is based on, inter alia, the goods and services in Classes 9 and 41. It is clear that the goods and services in these classes on the original list in French are the following:

Class 9: Computer software for social networking, building social networking applications and for allowing data retrieval, upload, download, access and management.

Class 41: Publication of electronic journals and web logs, featuring user generated or specified content; electronic publishing services for others; Entertainment services, namely facilitating interactive and multiplayer and single player game services for games played via computer or communication networks; arranging and conducting contests for video and computer game players; organizing and conducting competitions for entertainment purposes with incentive awards designed to recognize, reward and encourage individuals and groups who are dedicated to personal culture, personal achievement, charitable service, philanthropy, volunteer, public and community and humanitarian activities and creative work product sharing. Meeting services, namely: arranging and conducting meetings of persons desirous of entertaining, cultivating, and / or having fun.

The contested goods and services are the following:

Class 9: Software, hardware and electronic components for use in gaming, gambling and lottery apparatus and equipment, namely, electronic and electromechanical slot machines, fruit machines and portable electronic devices which can be used to play games of skill or chance, namely, mobile phones, smart phones, laptop computers, tablet computers, notebook computers, personal digital assistants, hand-held computers, smart watches and portable media players; software for playing slot and poker games; downloadable software featuring games and entertainment in the field of gaming.

Class 28: Games (included in Class 28); Gaming machines; Slot machines; Poker machines; Games in particular for casino and amusement arcades, for gaming machines, slot machines or video lottery terminals, with or without prize payouts, or games of chance via telecommunications networks and/or the Internet, with or without prize payouts; Games for gambling on gaming machines or machines used for gambling; Apparatus used for playing; Games and gaming apparatus for video lotteries.

Class 41: Operating casinos and gaming casinos, betting offices, bingo halls and/or lottery offices; Operating gaming establishments and arcades and/or online Internet casinos and betting platforms; Entertainment services in respect of gaming and gaming machine rental; Games of chance, with or without prize payouts, via the Internet and via telecommunications networks; Games of chance, with or without prize payouts, for use in telecommunications apparatus; Operating games on the Internet, including online and betting applications for smartphones; On-line games (over the Internet); Provision of entertainment for apps for mobile devices and computers; Gambling services via the Internet.

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 ‘in particular’, used in the applicant’s list of goods in Class 28, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods in Class 9 and the opponent’s list of services in Class 41 to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

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 software for use in gaming, gambling and lottery apparatus and equipment, namely electronic and electromechanical slot machines, fruit machines and portable electronic devices which can be used to play games of skill or chance, namely mobile phones, smart phones, laptop computers, tablet computers, notebook computers, personal digital assistants, hand-held computers, smart watches and portable media players; software for playing slot and poker games; downloadable software featuring games and entertainment in the field of gaming overlaps with the opponent’s computer software for allowing data retrieval, upload, download, access and management. Therefore, they are identical.

The contested hardware and electronic components for use in gaming, gambling and lottery apparatus and equipment, namely electronic and electromechanical slot machines, fruit machines and portable electronic devices which can be used to play games of skill or chance, namely mobile phones, smart phones, laptop computers, tablet computers, notebook computers, personal digital assistants, hand-held computers, smart watches and portable media players are considered similar, to at least a low degree, to the opponent’s computer software for allowing data retrieval, upload, download, access and management, as they usually have the same producers, relevant public and distribution channels. Furthermore, they are complementary.

Contested goods in Class 28

The contested games (included in Class 28) comprise video games and arcade games.

Therefore, the contested games (included in Class 28); gaming machines; slot machines; poker machines; games in particular for casino and amusement arcades, for gaming machines, slot machines or video lottery terminals, with or without prize payouts, or games of chance via telecommunications networks and/or the internet, with or without prize payouts; games for gambling on gaming machines or machines used for gambling; apparatus used for playing; games and gaming apparatus for video lotteries are similar to the opponent’s entertainment services, namely facilitating interactive and multiplayer and single player game services for games played via computer or communication networks in Class 41, as these goods and services have the same purpose, and they usually have the same producers, relevant public and distribution channels.

Contested services in Class 41

The contested operating online internet casinos and betting platforms; entertainment services in respect of gaming; games of chance, with or without prize payouts, via the internet and via telecommunications networks; games of chance, with or without prize payouts, for use in telecommunications apparatus; operating games on the internet, including online and betting applications for smartphones; on-line games (over the internet); provision of entertainment for apps for mobile devices and computers; gambling services via the internet are included in, or overlap with, the opponent’s entertainment services, namely facilitating interactive and multiplayer and single player game services for games played via computer or communication networks. Therefore, they are identical.

The contested operating casinos and gaming casinos, betting offices, bingo halls and/or lottery offices; operating gaming establishments and arcades are considered similar to the opponent’s entertainment services, namely facilitating interactive and multiplayer and single player game services for games played via computer or communication networks, as they have the same purpose and nature in a broad sense (provision of games for entertainment). Moreover, they target the same public and are in competition.

The contested entertainment services in respect of gaming machine rental are similar to the opponent’s entertainment services, namely facilitating interactive and multiplayer and single player game services for games played via computer or communication networks, as they have the same purpose. Moreover, they target the same public and are in competition.

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 both a specialist public and the general public.

The degree of attention of the relevant public may vary from average to high, depending on the price, degree of technical sophistication and frequency of purchase of the goods and services.

3. The signs

	Woop Woop
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).

The earlier mark is a figurative mark composed of one verbal element, ‘WOOP’, written in fairly standard black upper case characters. The element ‘WOOP’ has no meaning for the relevant public and is therefore of average distinctiveness.

The figurative elements of the earlier mark are limited to the minimal stylisation of the characters ‘WOOP’ and have no distinctive character. The earlier mark is composed of a single indivisible element and therefore has no element that could be considered clearly more dominant than other elements.

The contested sign is a word mark, composed of two identical elements, ‘Woop Woop’. In the case of a word mark, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether a word mark is in upper or lower case letters, or a combination thereof. Moreover, as the contested sign is a word mark, it has no elements that could be considered more dominant (visually eye-catching) than other elements.

As in the earlier mark, the element ‘Woop’, that is repeated in the contested sign, has no meaning for the relevant public it is therefore of average distinctiveness.

Visually and aurally, the signs coincide in (the sound of) the distinctive verbal element ‘WOOP’. Taking into account that the figurative elements of the earlier mark are barely perceptible and have no distinctive character, the only difference between the signs is that the (sound of the) element ‘WOOP’ is repeated in the contested sign.

Therefore, the signs are visually and aurally highly similar.

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.

5. Global assessment, other arguments and conclusion

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.

The goods and services are partly identical and partly similar to various degrees. The degree of attention of the relevant public varies from average to high. The signs are visually and aurally highly similar and the conceptual aspect does not influence the assessment of their similarity. The earlier mark is inherently distinctive to an average degree, which affords it a normal scope of protection under Article 8(1)(b) EUTMR.

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).

The repetition of the element ‘WOOP’ in the contested sign does not introduce a striking difference in the perception of the signs. On the contrary, the relevant public will perceive the contested sign as a variation of the earlier mark and will assume that the goods and services come from the same undertaking.

Taking into account the high degree of visual and aural similarity between the signs, there is a likelihood of confusion on the part of the relevant public, even for the goods that are similar to a low degree, and even for the goods and services in relation to which the target public would display a high degree of attention.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 3 805 010. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Catherine MEDINA

Anna ZIÓŁKOWSKA

Begoña URIARTE VALIENTE

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.