OPPOSITION No B 2 979 865

Hipodromo de la Zarzuela S.A. S.M.E., Avda. Padre Hidrobo s/n. Crta. de A Coruña km. 8, 28023 Madrid, Spain (opponent), represented by Romimark Asesores S.L., Murcia, 10 Oficina J, 28045 Madrid, Spain (professional representative)

a g a i n s t

Legolas Invest Ltd, Vincenti Buildings 28/19, Suite No. 1643, Strait Street, Valletta, VLT 1432, Malta (applicant), represented by Otmore Limited, Dragonara Business Centre, 5th Floor, Dragonara Road, St Julian’s, STJ 3141, Malta (professional representative).

On 30/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 979 865 is upheld for all the contested goods and services, namely:

Class 28: Gaming machines for gambling; coin-operated games; counters for games; quiz games; parlour games; arcade games; games (apparatus for -); electronic games; hand-held electronic games; hand held units for playing video games; electronic games other than those adapted for use with television receivers only; games; slot machines [gaming machines]; video game apparatus; computer game apparatus; automatic gaming machines; chips for gambling.

Class 41: Gambling; casino, gaming and gambling services; casino facilities [gambling] (providing -); leasing of casino games; services for the operation of computerised bingo; game services provided on-line from a computer network; providing of casino and gaming facilities; gaming services for entertainment purposes; sporting activities; operating of lotteries; wagering services; arranging of games; organization of electronic game competitions; organisation of competitions and awards; organising of entertainment competitions.

2. European Union trade mark application No 17 231 011 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 231 011 ‘PICK54’, namely against all the goods and services in Classes 28 and 41. The opposition is based on Spanish trade mark registration No 3 656 291 for the word mark ‘PICK 4’. 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 services on which the opposition is based are the following:

Class 41: Sports and cultural activities. Entertainment services. Organization of bets of horses.

The contested goods and services are the following:

Class 28: Gaming machines for gambling; coin-operated games; counters for games; quiz games; parlour games; arcade games; games (apparatus for -); electronic games; hand-held electronic games; hand held units for playing video games; electronic games other than those adapted for use with television receivers only; games; slot machines [gaming machines]; video game apparatus; computer game apparatus; automatic gaming machines; chips for gambling.

Class 41: Gambling; casino, gaming and gambling services; casino facilities [gambling] (providing -); leasing of casino games; services for the operation of computerised bingo; game services provided on-line from a computer network; providing of casino and gaming facilities; gaming services for entertainment purposes; sporting activities; operating of lotteries; wagering services; arranging of games; organization of electronic game competitions; organisation of competitions and awards; organising of entertainment competitions.

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 gaming machines for gambling; coin-operated games; counters for games; quiz games; parlour games; arcade games; games (apparatus for -); electronic games; hand-held electronic games; hand held units for playing video games; electronic games other than those adapted for use with television receivers only; games; slot machines [gaming machines]; video game apparatus; computer game apparatus; automatic gaming machines; chips for gambling have some relevant points in common with the opponent’s entertainment services. It is not uncommon for manufacturers of games, such as electronic games, to also provide rental, downloading and ancillary advice services in relation to these goods. Moreover, to provide the abovementioned services it is indispensable to use the opponent’s games or various types of gaming apparatus. Therefore, the relevant public would perceive these goods and services as having a common commercial origin. Although by their nature goods are generally different from services, these goods and services have the same purpose, that of providing amusement, and they target the same consumers. They can have the same origins and distribution channels, since it is not unusual for producers to manufacture and sell a wide range of amusement products and provide entertainment services. Therefore, the opponent’s services and the contested goods are similar to a low degree (08/02/2016, R 2302/2011-2, OutDoor (fig. mark) / OUTDOOR PRO et al., § 58).

Contested services in Class 41

The contested sporting activities and the opponent’s sports activities are synonymous. Therefore, they are identical.

The contested gambling; casino, gaming and gambling services; casino facilities [gambling] (providing -); leasing of casino games; services for the operation of computerised bingo; game services provided on-line from a computer network; providing of casino and gaming facilities; gaming services for entertainment purposes; operating of lotteries; wagering services; arranging of games; organization of electronic game competitions; organisation of competitions and awards; organising of entertainment competitions are included in the broad category of the opponent’s entertainment services. 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 or similar to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise (e.g. in the field of gaming and gambling services).

The degree of attention of the relevant public may vary from average to high, given that the (potential) financial consequences for consumers can vary significantly, depending on the specific gaming, gambling or betting goods and services provided and the stakes involved.

3. The signs

PICK 4	PICK54
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Both signs are word marks beginning with the word ‘PICK’, which has no particular meaning in the relevant territory and is distinctive. In addition, the signs end with digits: the earlier mark includes the digit ‘4’, separated by a space from ‘PICK’, whereas the contested sign includes the digits ‘54’, with no space between it and ‘PICK’. The digits in the signs do not relate in any way to the relevant goods and services and are also distinctive.

Visually and aurally, the signs coincide in the word ‘PICK’ and the digit ‘4’. They differ in the digit ‘5’ of the contested sign and in that the earlier mark has a space between the word element and the digit ‘4’. Considering, however, that the signs fully coincide in their beginnings, and in altogether five out of six characters, they are visually and aurally highly similar.

Conceptually, although neither of the signs has a meaning as a whole for the relevant public, the digits contained in the signs represent different values. To that extent, the signs are conceptually not similar. However, the attention of the relevant public is equally likely to be attracted by the meaningless word ‘PICK’, which constitutes the beginning of each mark. Therefore, the conceptual difference resulting from the different numerical values will have a limited impact.

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 undertaking or economically linked undertakings.

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). Even consumers who pay a high degree of attention, as some consumers will do in the present case, need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

In the present case, the contested goods and services are identical or similar to a low degree to the opponent’s services, and the relevant public’s degree of attention will vary from average to high.

Moreover, the signs are visually and aurally highly similar. Although they are conceptually not similar, the impact of the conceptually differing elements is certainly not stronger than that of those that have no meaning. Overall, the differences in the signs are limited to one digit and the fact that the earlier mark has a space between the word element and the digit ‘4’. These small differences are unable to counteract the striking similarities resulting from the distinctive word ‘PICK’ and the digit ‘4’, included identically in both signs. Furthermore, considering that the signs have the same beginnings (the most noticeable part) and endings, the strong overall impression of similarity between the signs will lead consumers to believe that the goods and services in question originate from the same undertaking or related undertakings. 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 slightly different way (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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 Spanish trade mark registration No 3 656 291. 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 (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

Plamen IVANOV

Arkadiusz GORNY

Cindy BAREL

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.