OPPOSITION Nо B 3 051 665

 

Ubisoft Entertainment, 107, Avenue Henri Fréville BP 10704, 35200 Rennes, France (opponent), represented by Marc Muraccini, 28, rue Armand Carrel, 93108 Montreuil sous Bois, France (employee) 

 

a g a i n s t

 

Take-Two Interactive Software, Inc., 110 West 44th Street, 10036 New York, United States (applicant), represented by Fieldfisher Llp, The Capel Building Mary's Abbey, D07 N4c6 Dublin 7, Ireland (professional representative).

On 31/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 051 665 is upheld for all the contested goods and services.

 

2.	European Union trade mark application No 17 602 624 is rejected in its entirety.

 

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

 

REASONS

 

On 07/05/2018, the opponent filed an opposition against all the goods and services of European Union trade mark application No 17 602 624 (figurative mark), namely against all the goods and services in Classes 9, 16, 25, 28 and 41. The opposition is based on, inter alia, French trade mark registration No 4 010 136, ‘THE DIVISION’ (word mark). 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s French trade mark registration No 4 010 136.

 

a) The goods and services

 

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

 

Class 9: Apparatus for recording, transmission, reception, reproduction and processing of sound and images; magnetic, optical, digital and electronic recording media; magnetic, optical and digital discs; computer programs. digital personal assistant, computer memories; printed circuits; computers; peripheral computer equipment namely screens, keyboards, mice, consoles and joysticks, magnetic and optical disks and disk drives and digital disks; telephony and telecommunication apparatus; recorded computer programs; computer game software; software (recorded programs); computer software for playing video games, computer games and online games. multimedia and interactive software; computer software on a mobile phone; electronic game consoles; magnetic, optical and digital media for computer programs; game apparatus adapted for use with a television receiver; CD-ROMs; compacts discs; computer games; video and audio games; computer software featuring music and soundtracks of motion pictures; cinematographic films; mousepad; component parts for all the aforesaid goods

Class 16: cardboard ; printed products; adhesives (tapes, tapes, stickies) for stationery; photographs, stationery, printed matter and publications relating to computer games; artists' material; paint brushes ; office requisites (except furniture); instructional and teaching material (except apparatus); painting materials for artists; office equipment (except furniture), office requisites (except furniture), writing supplies, book marks, teaching materials in the form of games (books), sachets, envelopes, pouches for packaging (made of paper or plastic), posters, paper or cardboard posters, albums, comics, almanacs, video game brochures, calendars, drawings, stickers, newspapers, books, booklets. handbooks, prospectuses, publications, journals, graphic reproductions, document reproductions 

Class 25: Clothing, shoes, headgear

Class 28: Games toys; electronic game apparatus other than those designed to be used only with a television receiver; audiovisual games on computer platforms; action figures; miniature models of figurines; board games; dolls; clothing for dolls; automatic game machines other than prepaid ones and those designed to be used only with a television receiver; toys, pre-paid automatic games, playing cards

Class 41: Education; teaching; instruction; training; entertainment; sports and cultural activities. organization of competitions relating to video games, education and / or entertainment; organizing and conducting colloquiums, conferences, congresses, organizing exhibitions for cultural or educational purposes; organization of exhibitions in the field of entertainment; publishing of entertainment, education and teaching texts; publication of news magazines, publication of newspapers, publishing of books, publishing of newspapers, publication of magazines, publication of books; computer and telecommunications training services, information services on online computer games and other online entertainment; game service provided online (from a computer network); cell phone game service; service of games through or to use on mobile phones; production of shows, film studio, movie rental, rental of video and sound recordings; organization of shows; recreation services; production of radio programs, television, film and television entertainment, sound recording (recording studio) or images (filming) on magnetic recording media. production of films other than advertising

The contested goods and services are the following:

 

Class 9: Computer and video game programs and software; downloadable computer and video game programs and software; downloadable digital materials, namely, ring tones, wallpapers, screensavers, digital music files, and graphics, videos, films, multimedia files, live action programs, motion pictures, and animation in the field of video games and computer games, all delivered via global computer networks and wireless networks; pre-recorded digital media featuring computer games and video games, ring tones, wallpapers, screensavers, digital music files, and graphics, videos, films, multimedia files, live action programs, motion pictures, and animation in the field of video games and computer games; usb flash drives; cases for mobile phones and tablets; mouse pads; pre-recorded media featuring music, namely, compact discs, and phonograph records; computer application software for mobile phones, portable media players, tablets, handheld computers and other electronic mobile devices namely, software for video and computer games.

Class 16: Printed materials, namely, manuals, pamphlets, booklets, books, magazines, posters and guides in the field of computer and video games; lithographs; paperweights.

Class 25: Clothing, namely, shirts, t-shirts, sweatshirts, pants, casual and leisure jackets; headgear, namely, hats and caps.

Class 28: Playing cards.

Class 41: Entertainment services, namely, providing online games, providing a website featuring computer games and video games, and news, information, tips, hints, contests, computer interface themes, enhancements, audio-visual content, music, films, videos, television programs, animated series, and other multimedia materials in the field of computer games and video games; providing information, news and commentary in the field of computer games and video games.

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 the opponent’s lists of goods and services 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.

  

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 computer programs and software include, as a broader category the opponent's computer game software. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested downloadable computer programs and software overlap with the opponent’s computer game software. Therefore, they are identical.

The contested video game programs and software; downloadable video game programs and software are included in the opponent's broad category of computer game software. Therefore, they are identical.

Mouse pads; computer application software for mobile phones, portable media players, tablets, handheld computers and other electronic mobile devices namely, software for video and computer games; compact discs are identically contained in both lists of goods (including synonyms).

The contested USB flash drives are at least highly similar with the opponent's magnetic, optical, digital and electronic recording media since they can have the same purpose, producers, they share distribution channels and they target the same end users.

The contested pre-recorded media featuring music, namely, phonograph records are similar to a high degree to the opponent's apparatus for transmission and reproduction of sound because they coincide in end user, in producer, in distribution channels and they are complementary.

The contested cases for mobile phones are similar to the opponent's telephony and telecommunication apparatus because they coincide in producer, relevant public and distribution channels, and, finally, they are complementary.

The contested cases for tablets are similar to the opponent's computers because they usually coincide in relevant public and distribution channels. Furthermore, they are complementary.

The contested pre-recorded digital media featuring computer games and video games, ring tones, wallpapers, screensavers, digital music files, and graphics, videos, films, multimedia files, live action programs, motion pictures, and animation in the field of video games and computer games are similar to the opponent's computer games because they coincide in end user, producer and in distribution channels.

The contested downloadable digital materials, namely, ring tones, wallpapers, screensavers, digital music files, and graphics, videos, films, multimedia files, live action programs, motion pictures, and animation in the field of video games and computer games, all delivered via global computer networks and wireless networks are similar to the opponent's computer games because they coincide in distribution channels, they coincide in end user and they coincide in producer.

Contested goods in class 16

The contested paperweights are included in the opponent's broad category of office requisites (except furniture). Therefore, they are identical.

The contested printed materials, namely, manuals, pamphlets, booklets, books, magazines, posters and guides in the field of computer and video games; lithographs are included in the opponent's broad category of printed products. Therefore, they are identical.

Contested goods in class 25

The contested clothing, namely, shirts, t-shirts, sweatshirts, pants, casual and leisure jackets are included in the opponent's broad category of clothing. Therefore, they are identical.

The contested headgear, namely, hats and caps are included in the opponent's broad category of headgear. Therefore, they are identical.

Contested goods in class 28

The contested playing cards are similar to the opponent's board games because they coincide in end user, they have the same purpose, they are in competition, they coincide in producer, they coincide in distribution channels.

Contested services in class 41

The contested providing information, news and commentary in the field of computer games and video games is included in the opponent's broad category of game service provided online (from a computer network), as the provision of information in the field of computer games entertainment is an activity that is inherent to the game services. Therefore, they are identical.

The contested entertainment services, namely, providing online games, providing a website featuring computer games and video games, and news, information, tips, hints, contests, computer interface themes, enhancements, audio-visual content, music, films, videos, television programs, animated series, and other multimedia materials in the field of computer games and video games are included in the opponent's broad category of entertainment. Therefore, they are 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 and similar are directed at the public at large as well as at the professional public.

The degree of attention may vary from average to high due to the specialised nature of certain of the goods and services in question which are likely to be sought by business customers with specific professional knowledge or expertise. These consumers are deemed to pay a higher degree of attention when selecting these goods and services.

c) The signs

 

THE DIVISION
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 word mark consists of the verbal elements ‘THE’ and ‘DIVISION’. The element ‘THE’ is a definite article which will be understood by the relevant, French-speaking, public as it constitutes a basic English word, recognised in all Member States. (28/09/2016, T-593/15, THE ART OF RAW / *art (fig.) et al., EU:T:2016:572, § 33 – 36; 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 109). This element is non-distinctive, since it lacks commercial source-identifying importance. As definite articles are used in everyday language to highlight the nouns that follow them, they have a weaker impact on consumers than those nouns (05/11/2018, R 928/2018 2, La passiata / Passina (fig.), § 41; 24/06/2014, T 330/12, The Hut, EU:T:2014:569, § 44). They are common in many international company names (e.g. ‘THE WALT DISNEY COMPANY’), and they only serve a specifying or particularising effect when placed before a noun which, in the present case, is ‘DIVISION’. Although ‘THE’ is located at the beginning of the earlier sign, a part to which the consumers usually attach more attention, the public usually does not attribute much trade mark significance to articles. Therefore, the impact of this element, even though it appears at the beginning of the sign, is very limited and the public will focus more attention on the succeeding element, ‘DIVISION’. Seeing as the article ‘THE’ of the earlier sign merely serves to specify the following noun for its uniqueness or as a particular member of its class, this element plays a lesser role in the comparison of the signs as it will be perceived together with the remaining verbal element ‘DIVISION’. When it comes to the verbal element ‘DIVISION’, it is identical to the French word ‘division’ which means ‘division’, ‘sharing out, dividing up’, ‘section of a whole’, depending on context (information extracted from WordReference on 21/05/2021 at https://www.wordreference.com/fren/division). Bearing in mind the nature of the goods and services in question, the term ‘DIVISION’ is distinctive.

The contested figurative mark consists of the verbal elements ‘PRIVATE’ and ‘DIVISION’, presented in a black minimalistic font. The letters ‘A’ of ‘PRIVATE’ and ‘V’ of ‘DIVISION’ are stylised in a way to create a rhombus shape. This same shape appears in a larger form above the verbal elements of the sign. When it comes to the meaning and the distinctiveness of the verbal element ‘DIVISION’ the previous assertions are applicable in the case of the contested sign as well. The element ‘PRIVATE’ it is very close to the equivalent word in the official language in the relevant territory, namely ‘privé’ (information extracted from WordReference on 21/05/2021 at https://www.wordreference.com/enfr/private). For this reason, it is deemed to be understood by at least part of the relevant, French-speaking, public, contrary to the arguments of the applicant. The two verbal elements together form a semantic unit that means ‘division privée’ (in English: ‘private division’). The applicant’s argument that the element ‘PRIVATE’ is distinctive has to be set aside by the Opposition Division to the extent that, for the part of the public that sees meaning in this term, this element will be seen as describing the private or personalised character of the goods and the services offered. For this part of the public, it is therefore weak. However, for the rest, it bears a normal degree of distinctiveness. The font of the verbal element, as well as the rhombus element that appears twice within the mark, are of a purely decorative nature and thus non-distinctive. More precisely, the rhombus element is an abstract geometrical shape that is unable to indicate commercial origin in the eyes of the consumer, and so despite its double presence within the sign and its size, it is devoid of distinctiveness. Finally, there is no element within the contested mark that could be considered more dominant than the other.

 

Visually, the signs coincide in ‘DIVISION’ which is a distinctive element. They differ in the presence of ‘THE’ which is devoid of distinctive character, and in the verbal element ‘PRIVATE’ which is weak for at least a part of the relevant public. They also differ in the figurative elements of the contested sign, which are however non-distinctive. What is more, 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). For these reasons, the two signs are visually similar to at least a low degree.

Aurally, the signs coincide in ‘DIVISION’ which is a distinctive element. They differ in the presence of ‘THE’ which is devoid of distinctive character, and in the verbal element ‘PRIVATE’ which is weak for at least a part of the relevant public. The figurative elements of the contested sign will not be pronounced and, thus, do not affect the aural comparison. For these reasons, the two signs are aurally similar to an average 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 namely ‘division’ for the earlier mark, and ‘private division’ in the case of the contested sign, and as the figurative elements of the contested sign are abstract and do not convey any concept, the signs are conceptually similar to an average degree. For the part of the public that does not understand the term ‘private’, the signs would be even conceptually highly similar.

  

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. 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.

 

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).

 

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.

As previously established, the goods and services in question are identical and similar.

The relevant public is the public at large and the professional public and the degree of attention is considered to vary from average to high.

When it comes to the signs, they coincide in a distinctive element, while they differ in elements that are weak or non-distinctive for a significant part or all of the relevant public. This results to a visually low, aurally average and conceptually average or high similarity between the signs.

 

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 need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

 

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 4 010 136. It follows that the contested trade mark must be rejected for all the contested goods and services.

  

As the earlier French trade mark No 4 010 136 ‘THE DIVISION’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

 

 

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

 

 

Michaela SIMANDLOVA	Claudia SCHLIE	Lucinda CARNEY

 

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.