OPPOSITION No B 3 024 612

Vasgard GmbH, Straßenbahnring 15, 20251 Hamburg, Germany (opponent), represented by Rau & Rau, Widenmayerstr. 28, 80538 München, Germany (professional representative)

a g a i n s t

NetEnt Product Services Ltd, Level One, Spinola Park Mikiel Ang. Borg Street, SPK1000, St. Julians, Malta (applicant), represented by Advokatbyrån Gulliksson AB, Carlsgatan 3, 211 20 Malmö, Sweden (professional representative).

On 21/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 024 612 is upheld for all the contested services.

2. European Union trade mark application No 17 314 816 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 314 816 for the word mark ‘Asgardian Stones’. The opposition is based on European Union trade mark registration No 17 314 816932 for the word mark ‘Vasgardian’. 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 services

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

Class 41: Providing of training, in particular training in the field of electronic data processing.

The contested services are the following:

Class 41: Entertainment services; Interactive entertainment services; Cultural activities; Gambling services; Game services provided on-line from a computer network.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘in particular’, used in the opponent’s list of services, indicates that the specific services 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).

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.

The contested entertainment services and interactive entertainment services are similar to the opponent’s providing of training. Providing of training includes informal transmission of knowledge, skills, and attitudes, which are the elements in common with certain entertainment services. These services may have the same purpose. They can coincide in users and distribution channels.

The contested gambling services and game services provided on-line from a computer network are similar to the opponent’s providing of training, because training services might include, among others, training services related to games. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested cultural activities consist of a broad spectrum of activities such as organization of exhibitions for cultural or educational purposes, for example, which can be provided by the same undertaking as the opponent’s providing of training. This means that the services in comparison may coincide in their essential purpose, providers and consumers (16/12/2014, R 1007/2014-4, B (fig) / B (fig.), § 16). Therefore, these services are similar to a low degree.

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 services found to be similar to varying degrees are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

Vasgardian	Asgardian Stones
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 signs in conflict are word marks. In the case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether a word mark is depicted in lower or upper case or in a combination of the two.

Being word marks, none of the signs has any element which can be considered to be more dominant than other elements.

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 ‘Vasgardian’ and ‘Asgardian’ have no meaning for the relevant services, therefore they have a normal degree of distinctiveness.

The English‑speaking part of the public in the relevant territory will understand the element ‘Stones’ as a hard solid non-metallic mineral matter of which rock is made, especially as a building material. For the remaining part of the public, ‘Stones’ is meaningless. In both scenarios, since the element is not related to the relevant services, it is distinctive.

Nevertheless the Opposition Division considers it appropriate to focus the present decision on the non-English speaking consumers for whom the signs as a whole or as individual words have no meaning.

Visually and aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the string of letters/sounds ‘*ASGARDIAN’, being almost the entirety of the earlier mark and the first word of the contested one. They differ in the first letter/sound of the earlier mark, namely ‘V’, and the second word of the contested sign, ‘STONES’.

With regard to the difference in the first letters of the signs, the applicant emphasises the importance of the beginnings of the conflicting signs for the consumer’s perception of them. Although the importance of the initial part of a word in the consumer’s mind has been underlined by the General Court, this finding is not an axiom. As noted by the Court itself, this consideration cannot apply in all cases (16/05/2007, T-158/05, Altrek, EU:T:2007:143). In the present case, the earlier mark and the contested sign’s first element coincide in nine letters/sounds placed in the same order and only differ in one additional letter/sound in the earlier mark. Accordingly, the conflicting elements ‘VASGARDIAN’ and ‘ASGARDIAN’ have the same number of syllables and coincide in their rhythms and intonations. The main visual and aural difference between the signs lies in the second element contained in the contested sign, ‘STONES’, which is, however, shorter.

Therefore, the signs are visually and aurally highly similar.

Conceptually, neither of the signs has a meaning for the relevant public. 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 the 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

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).

In the present case, the services have been found similar to varying degrees. They target the general public with an average degree of attention. The signs have been found visually and aurally highly similar, whereas the conceptual comparison is not possible. In this regard, it must also be pointed out that although the conflicting elements ‘VASGARDIAN’ and ‘ASGARDIAN’ differ in the first letter of the earlier mark, the remaining nine letters and sounds are placed in the same order. Therefore, the earlier mark is almost entirely included in the contested sign, as its first element.

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 services covered are from the same or economically linked undertakings. 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 services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Taking all the above into account, the Opposition Division considers that the differences between the signs are not sufficient to outweigh the assessed similarities between them. Consequently, the relevant consumers, when encountering the signs in relation to similar services (even those considered similar to a low degree), are likely to think that they come from the same undertaking or from economically linked undertakings.

Considering all the above, and in particular the interdependence principle, there is a likelihood of confusion (including a likelihood of association) on the part of the non-English speaking 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 17 314 816932. It follows that the contested trade mark must be rejected for all the contested 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

Marta GARCÍA COLLADO

Stanislava STOYANOVA

Marianna KONDAS

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.