OPPOSITION No B 3 001 859

IGT UK Interactive Limited, 3rd Floor 10 Finsbury Square, EC2A 1AF, London, United Kingdom (opponent), represented by Armin Herlitz, Seering 13-14, 8141, Premstätten, Austria (employee representative)

a g a i n s t

Yggdrasil Malta Limited, Level 2 Tagliaferro Business Centre, High Street c/w Gaiety Lane, SLM 1551, Sliema, Malta (applicant), represented by Valea AB, Lilla Bommen 3a, 405 23, Göteborg, Sweden (professional representative).

On 28/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 001 859 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 124 116 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 17 124 116 . The opposition is based on European Union trade mark registration No 12 252 623 for the word mark ‘FISH TANK’. 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, inter alia, the following:

Class 9: Programs for operating electric and electronic apparatus for games, amusement and/or entertainment purposes; Computer software for computer games on the internet and for games on mobile phones; Software for on-line games, wireless and mobile devices; Smart cards; Calculating apparatus in coin-operated machines and parts for the aforesaid goods.

Class 41: Providing on-line computer games; Casino services; Operating a jackpot system involving one or more automatic slot machines, namely a jackpot or prize with a fixed minimum value which increases until the jackpot is won.

The contested goods and services are the following:

Class 9: Computer software platforms; computer databases; computer programs for network management; software platforms for games, gambling and betting; gaming, gambling and betting computer software; gaming, gambling and betting software downloadable to mobile phones, tablets and other electronic devices.

Class 41: Entertainment services provided on-line from a computer database or the Internet, namely, gambling services, on-line gaming services.

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 and opponent’s list of services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

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 Classes 9

The contested gaming, gambling and betting software downloadable to mobile phones, tablets and other electronic devices; gaming, gambling and betting computer software are included in, or at least overlap considerably with, the broad category of the earlier software for on-line games, wireless and mobile devices. Therefore, they are identical.

The contested computer software platforms includes, as a broader category the earlier software for on-line games, wireless and mobile devices. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested software platforms for games, gambling and betting overlap with the earlier software for on-line games, wireless and mobile devices. These categories of goods cannot be clearly separated and, therefore, they are identical.

The contested computer databases; computer programs for network management are highly similar to the earlier software for on-line games, wireless and mobile devices. Although they may have different specific purposes, they have the same nature, being IT products consisting or functioning on the basis of computer programs and data. Furthermore, they normally have the same distribution channels and they originate from the same producers. Also, they often target the same relevant public and they may be complementary.

Contested services in Class 41

The contested entertainment services provided on-line from a computer database or the Internet, namely, gambling services, on-line gaming services are included in, or at least overlap considerably with, the broad category of the earlier providing on-line computer games. Therefore, they are identical.

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 and highly similar are directed at both public at large and business customers with specific professional knowledge or expertise, since the goods and services in question such as online games are purchased and played by the average consumer and at the same time the goods and services such as software for the games are purchased and sold by the business customers.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

FISH TANK
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.

In the present case, for the English-speaking part of the public, the signs consist of meaningful words, as ‘fish tank’ is a container for keeping fish in and the word ‘golden’ refers to something made from gold or, more generally, to something considered very valuable and/or of high quality.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public as it considers that it increases the likelihood of confusion.

The earlier mark ‘FISH TANK’ is inherently distinctive, given that the expression is not related to the goods and services and does not describe or even allude to any of their essential characteristics.

Likewise, for the same reasons, the word element ‘FISH TANK’ of the contested mark is inherently distinctive in relation to the relevant goods and services. The word element ‘GOLDEN’ is a laudatory term, used frequently to indicate the high quality, valuable character and/or high level of something. This element is weak, since it alludes to the high quality of the goods and services in question. The figurative element of the contested sign consists of a brown wood label, on which the word elements are written in colours (the word ‘GOLDEN’ is in gold and the words ‘FISH TANK’ are in blue colours); above it, a goldfish and some sea plants are portrayed. The figurative element is considered inherently distinctive, as it bears no relation to the relevant goods and services.

Nonetheless, it must be noted that 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). Therefore, in the present case, it is relevant to note that the coincidences between the marks are found in their verbal elements. When the relevant public refers to the goods or services in question, they will use the word elements ‘FISH TANK’ and ‘GOLDEN FISH TANK’ and, consequently, these elements have a higher impact as indicators of commercial origin for the consumer than the figurative elements of the contested sign.

As a word mark, the earlier mark has no element that could be considered clearly more dominant than other elements.

Contrary to the claims of the applicant, the contested sign has no element that could be considered clearly more dominant (visually eye-catching) than other elements. It is true that the element ‘GOLDEN’ and the fish device are slightly larger than the expression ‘FISH TANK’. However, such difference is size is rather minimal and these elements are far from overshadowing the referred expression, which also remains clearly visible and legible for the consumers.

Visually, the signs coincide in their distinctive word elements ‘FISH TANK’. However, they differ in the weak element ‘GOLDEN’ and in the figurative elements of the contested sign. These figurative elements are distinctive per se as explained above, but have less impact as an indicator of commercial origin for the consumer than the verbal elements of the mark, ‘GOLDEN FISH TANK’.

Therefore, considering the coincidence in the expression ‘FISH TANK’, which comprises the earlier mark and is entirely reproduced in the contested sign as an independent and distinctive element, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‛FISH TANK’, present identically in both signs as a distinctive element. In the word element ‛GOLDEN’ of the contested mark, the pronunciation differs. However, such element is weak, as previously explained.

Therefore, considering the weakness of the differing component, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be perceived as referring to a ‘FISH TANK’, whereas the word ‘GOLDEN’ of the contested sign is likely to be perceived as a qualitative characterisation of such fish tank. The figurative elements of the contested sign have also been previously described. Considering the coincidence in the semantic content of ‘FISH TANK’, which is normally distinctive, the signs are conceptually similar to at least an average degree.

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

The contested goods and services are identical and highly similar to the goods and services covered by the earlier European Union trade mark No 12 252 623.

The earlier mark is distinctive to a normal degree.

The signs under comparison have been found to be visually similar to an average degree, aurally highly similar and conceptually similar to at least an average degree.

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). In the present case, the consumer will keep in mind the phrase ‘FISH TANK’. Indeed, 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). As a matter of fact, the contested mark may be viewed as a new version of the previous mark, for example, a particular line of goods and services of superior (i.e., ‘Golden’) quality.

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 (as explained above) and assumes that the goods/services covered are from the same or economically linked undertakings.

As the applicant correctly points out, there are noticeable visual differences between the signs. However, as previously explained, the differences originating from the figurative elements and stylisation of the contested sign have less impact for the consumers than the coincidence in the distinctive expression ‘FISH TANK’, which entirely reproduces the earlier mark. The coincidence in this entire expression will not go unnoticed by consumers, who might legitimately assume that the contested sign is simply a new/updated version of the earlier mark, as covered above.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the general public, because the differences between the signs are confined to weak or secondary elements and aspects. 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 12 252 623. 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, 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

Ewelina ŚLIWIŃSKA

Gueorgui IVANOV

Marzena MACIAK

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.