OPPOSITION No B 3 038 877

Codere Newco, S.A.U., Avda de Bruselas, 26, 28108 Madrid/Alcobendas, Spain (opponent), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain (professional representative)

a g a i n s t

Multigate, a.s., Riegrova 373/6, 77900 Olomouc, Czech Republic (applicant), represented by Denisa Dudová, Vršovická 478/51, 100 00 Praha 10 – Vršovice, Czech Republic (professional representative).

On 22/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 038 877 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 189 523 . The opposition is based on European Union trade mark registration No 7 263 395 . 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 the following:

Class 28: Games and toys; Decorations for Christmas trees.

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities.

The contested goods and services are the following:

Class 28: Amusement apparatus for use in arcades; Slot machines, parts and fittings therefor; LCD game machines; Coin-operated amusement machines; Gaming machines for gambling; Card games; Roulette wheels; Poker chips; Counters for games.

Class 41: Casino, gaming and gambling services; Club [cabaret] services; Club services (entertainment or education); Provision of club entertainment services; Night clubs (entertainment); Provision of rooms for entertainment; Providing amusement arcade services, Providing casino facilities (gambling), Game services provided on-line from a computer network; providing gaming housefacilities; Providing of slot machines; Operating of lotteries; Operating of lotteries; Gambling; Rental of games; Leasing of casino games; Nightclub services (entertainment); Game services provided on-line from a computer network; Demonstration and teaching of the rules of games for entertainment and casino gambling games; Entertainment information; Entertainment information.

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 28

The contested amusement apparatus for use in arcades; slot machines; LCD game machines; coin-operated amusement machines; gaming machines for gambling; card games; are included in the broad category of the opponent’s games. Therefore, they are identical.

The contested roulette wheels; poker chips; counters for games are at least similar to the opponent’s games. They are complementary and can have the same relevant public, distribution channels and commercial origin.

The contested parts and fittings therefor [amusement apparatus for use in arcades; slot machines] are similar to the opponent’s games, since they can have the same producers, distribution channels and relevant public. Furthermore, in some cases, they can be complementary.

Contested services in Class 41

The contested casino, gaming and gambling services; club [cabaret] services; club services (entertainment or education); provision of club entertainment services; night clubs (entertainment); providing amusement arcade services, providing casino facilities (gambling), game services provided on-line from a computer network; providing of slot machines; operating of lotteries (listed twice); gambling; nightclub services (entertainment); game services provided on-line from a computer network; rental of games; leasing of casino games are club, gaming and gambling services, and as such included in the broad category of, or overlap with, the opponent’s entertainment. Therefore, they are identical.

The contested entertainment information (listed twice) is included in the broad category of the opponent’s entertainment. Therefore, they are identical.

The contested demonstration and teaching of the rules of games for entertainment and casino gambling games are included in the broad category of, or overlap with, the opponent’s providing of training. Therefore, they are identical.

The contested providing gaming housefacilities; provision of rooms for entertainment concerns the provision of the localities for the entertainment. It is still an entertainment service and therefore included in the broad category of the opponent’s entertainment. They are considered identical.

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 is average.

c) The signs

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 earlier mark consists of the verbal element ‘Bingo’ in title case letters above the verbal element ‘vittoria’, in lower case, all in black letters and highly stylised with stars as dots over the letters ‘i’. On the top right hand of the mark is a black star with a smaller white star inside.

The contested sign consists of the verbal elements ‘CASINO’ in black thin font letters and ‘VICTORY’ in black bold letters, both in uppercase standard letters. Above these verbal elements is a figurative element consisting of a large black filled circle with a white stylised letter ‘V’ inside, and under this circle, four black stars.

The element ‘Bingo’ of the earlier mark will be understood as referring to a gambling game, in which the numbers selected at random are called out and the players cover the numbers on their individual cards; the first to cover the numbers is the winner. Bearing in mind that all the relevant goods and services are – or could be - related to games, this element is non-distinctive for all the goods and services.

The verbal element ‘VICTORY’ of the contested sign is a rather basic English word, while the verbal element ‘vittoria’ of the earlier sign is the Italian equivalent of the same word. Both words will be recognised by a significant part of the relevant public especially in relation with the relevant goods and services, and also since it is rather similar to equivalent words in other languages of the relevant territory, such as French (‘victoire’), Spanish (‘victoria’) and Portuguese (‘vitória’). Bearing in mind that the relevant goods and services are game-related and therefore mainly has the aim of achieving victory, this element is weak. For the part of the public that does not understand these words, they are distinctive. Moreover, the stars of both signs are considered to be of weak distinctiveness because they merely constitute a reference to high quality of the relevant goods and services.

The word ‘CASINO’ of the contested sign will be understood by the EU public as ‘a place where people gamble (=risk money in the hope of winning more) by playing card games, roulette, or slot machines’ given that it exits as such in some relevant languages (among others, in French, Spanish, Dutch) or it has very similar equivalents (for example, in Italian ‘casinò’, in German ‘Kasino’, in Swedish and in Czech ‘kasino, in Slovenian ‘kazino’, in Polish ‘kasyno’, in Portuguese ‘cassino’, in Romanian ‘cazinou’). Bearing in mind that the relevant goods and services are – or could be - related to gambling or gaming, it is considered that this element is non-distinctive for all the relevant goods and services.

The large black circle with the letter ‘V’ of the contested sign will be perceived as such or as the first letter of the word ‘VICTORY’, which is in bold text below. In any case, in relation to the relevant goods and services, it would not be associated with any particular meaning and therefore, it is distinctive.

The reasoning above concerning the stars, equally applies to the stars of the contested sign. Therefore, they are of weak distinctiveness.

In the earlier mark, none of the elements can be considered clearly more dominant (visually eye-catching) than other elements.

In the contested sign, the figurative element of the black circle with the letter ‘V’ inside is dominant, as it is the most eye-catching element in the sign.

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).

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.

Visually, the signs coincide in three letters in the first verbal elements, ‘I’, ‘N’ and ‘O’ and in the letters ‘VI*TOR**’. They also coincide in the figurative elements of some stars, which are weak, as stated above. The marks differ in the first verbal elements ‘BINGO’ and ‘CASINO’ (except for the common letters ‘I’, ‘N’ and ‘O’) and in the overall stylisation of the signs, including the dominant and distinctive figurative element of a large black filled circle with the stylised letter ‘V’ on top of the contested sign.

Taking into account the coincidences and the specific impact of each element of the signs, they are considered visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘**IN*O’, present identically in both signs and in the letters ‘VI*TOR**’. The pronunciation differs in the sound of the letters ‘B**G* *****IA’ of the earlier mark and the sound of the letters ‘CAS*** **C***Y’ of the contested sign.

Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning on the one hand (as they both refer to gambling or gaming), but on the other hand, these elements are non-distinctive or at least weak, the signs are conceptually similar only to a low degree.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods and services in question.

e) Global assessment, other arguments and conclusion

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 goods and services are partly identical and partly similar. The relevant public is the public at large with an average degree of attention.

The signs are visually, aurally and conceptually similar to only a low degree, to the extent that they coincide in some letters and some figurative elements which form (part of) non-distinctive or weak elements in the marks. The beginnings and the stylisation of the marks are very different. Therefore, the coincidences in the marks are not sufficient to overcome the visual and aural distance between the marks. The additional and differing elements are clearly perceivable and sufficient to exclude any likelihood of confusion.

The opponent refers to a previous decision of the Office, B 2 614 181, VICTORY / VITTORIA to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous case referred to by the opponent is not particularly relevant to the present proceedings. This is because in the referred case, the verbal elements of the marks were considered distinctive, whereas in the present case, they are weak for the relevant goods and services. Therefore, this claim has to be disregarded.

Considering all the above, even considering that the goods and services are identical or similar, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Benoit VLEMINCQ

Lena FRANKENBERG GLANTZ

Anna BAKALARZ

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.