OPPOSITION No B 3 052 333

S.C. Smartech S.R.L., Str.Prel.Bucuresti, Nr. 206, Corp C1, Calarasi, jud. Calarasi, Romania (opponent), represented by S.C. Weizmann Ariana & Partners Agentie de Proprietate Intelectuala S.R.L., str. 11 Iunie, nr. 51, sc. A, etaj 1, ap. 4, sector 4, 040171 Bucharest, Romania (professional representative)

a g a i n s t

Smart Exim Com SRL, Str. Vergului nr. 5, bl. 19, sc. 3, Ap 142, Sector 2, Bucharest, Romania (applicant), represented by Anghel Luminita Doina, Str. Gherghitei Nr 1, Bl. 94B, Sc B, Ap. 76, Sector 2, 022511 Bucharest, Romania (professional representative)

On 15/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 333 is partially upheld, namely for all the contested goods and services except for:

Class 9: Coin accumulators [totalisers]; coin counting or sorting machines; coin changers; coin change dispensers; coin-operated mechanisms for vending machines; coin-operated mechanisms; security tokens [encryption devices]; payment terminals, money dispensing and sorting devices; money counting and sorting machines; counterfeit coin detectors; mechanisms for counter-operated apparatus; automatic paying-in and deposit machines; automatic ticket dispensing machines; fare collecting machines; automatic cash sorting and counting machines; automated bank note sorting machines; automatic cash registers; automatic control apparatus; timers for automatic apparatus; automatic transfer switches.

Class 28: Fairground apparatus.

Class 35: Retail services in relation to computer hardware; retail services in relation to computer software; wholesale services in relation to computer software; organisation of internet auctions; arranging and conducting of Internet auctions; conducting interactive virtual auctions; arranging of auctions; arranging and conducting auctions; rental of vending machines; rental of card-operated vending machines; rental of coin-operated vending machines.

Class 42: Coin analysis [authentication] services; grading of coins; designing computer software for controlling self-service terminals; design and development of computer software for supply chain management; constructing an internet platform for electronic commerce; consultancy relating to the creation and design of websites for e-commerce; maintenance of software used in the field of e-commerce; programming of software for e-commerce platforms; consultancy services relating to software used in the field of e-commerce.

2. European Union trade mark application No 17 770 918 is rejected for all the contested goods and services with the exception of those listed above, for which it may proceed to registration.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 770 918 for the figurative sign illustrated below. The opposition is based on Romanian trade mark registration No 117 361 for the figurative sign illustrated below. The opponent invoked Article 8(1)(b) EUTMR.

Earlier trade mark	Contested sign

PRELIMINARY REMARK

Pursuant to the general rules set out in Article 146(9) EUTMR and Article 24 EUTMIR, most submissions of the parties in opposition proceedings have to be in the language of the proceedings in order to be taken into account.

According to Article 146(9) EUTMR, an exception is made in that the applicant’s first reply may be in any of the Office’s official languages, in which case the submission will not be taken into account unless the applicant submits a translation of the documents into the language of the proceedings within the time limit of one month from the date of receipt of the original by the Office.

However, the Opposition Division points out that the applicant’s submission of 20/12/2018, although received within the time limit given to submit observations, is in Romanian, namely a language which is not one of the five official languages of the Office (English, French, German, Italian or Spanish) and does not constitute a valid exception to the abovementioned rule. Consequently, the Office cannot take into account the observations submitted by the applicant as they were not in the language of the proceedings or/and were not accompanied by the relevant translation into English. Both parties were informed accordingly in a communication of 25/01/2019.

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 playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 35: Advertising; business management; business administration; office functions.

Class 41: Education; providing of training; entertainment; sporting and cultural activities.

Class 43: Services for providing food and drink; temporary accommodation.

The contested goods and services are the following:

Class 9: Coin accumulators [totalisers]; coin changers; coin change dispensers; coin-operated mechanisms for vending machines; coin-operated mechanisms; electronic components for gambling machines; computer hardware for games and gaming; downloadable information relating to games and gaming; electronic publications, downloadable, relating to games and gaming; computer software for the administration of on-line games and gaming; computer application software featuring games and gaming; games software; video games [computer games] in the form of computer programs recorded on data carriers; training manuals in the form of a computer program; encoded programs; computer programmes for data processing; image recognition software; interactive computer software; interactive multimedia computer programs; interactive computer game programs; computer programmes for interactive television and for interactive games and/or quizzes; computer programs for pre-recorded games; computer programs for user interface design; process controlling software; computer programmes stored in digital form; recorded computer game programs; interactive multimedia computer game programs; interactive multimedia game programs; computer games programmes for simulating financial securities trading [software]; downloadable video game programs; downloadable electronic game programs; computer programs for video and computer games; downloadable computer utility programs; programs recorded on electronic circuits for amusement apparatus with liquid crystal screens; recorded programs for hand-held games with liquid crystal displays; programs for arcade video game machines; downloadable computer game programs; software programs for video games; interactive video game programs; data processing programs; automatic paying-in and deposit machines; automatic control apparatus; automatic ticket dispensing machines; fare collecting machines; automatic cash sorting and counting machines; automated bank note sorting machines; automatic cash registers; automatic transfer switches; timers for automatic apparatus; betting software; money counting and sorting machines; software platforms to allow users to collect money; payment terminals, money dispensing and sorting devices; counterfeit coin detectors; coin counting or sorting machines; mechanisms for counter-operated apparatus; security tokens [encryption devices]; games cartridges for use with electronic games apparatus; memory cards for video game machines; game programs for arcade video game machines; software for renting advertising space on websites.

Class 28: Amusement machines, automatic and coin-operated; automatic coin-operated games; automatic gaming machines; amusement apparatus for use in arcades; coin-operated amusement gaming machines; coin-operated arcade video game machines; arcade game machines; electronic games apparatus; free-standing video games apparatus; coin-operated pinball game machines; apparatus for games; video game apparatus; computer game apparatus; machines for playing games of skill or chance; apparatus for electronic games adapted for use with an external display screen or monitor; video game machine cases; controllers for video game machines; gamepads; bill-operated gaming equipment; markers [counters] for playing games; chips for gambling; chips and dice [gaming equipment]; coin-operated games; token-operated video game machines; arcade games (electronic -) [coin or counter operated apparatus]; skill and action games; tiddlywinks; mechanical games; LCD game machines; coin-operated amusement machines; gaming machines for gambling; gaming keypads; bingo game playing equipment; counters [discs] for games; roulette tables; roulette sets; roulette chips; slot machines [gaming machines]; slot machines [counter-freed amusement apparatus]; equipment sold as a unit for playing card games; fairground and playground apparatus; poker chips.

Class 35: Rental of vending machines; rental of card-operated vending machines; rental of coin-operated vending machines; mediation of trade business for third parties; rental of advertising space on the internet; rental of advertising space on-line; marketing the goods and services of others; arranging of demonstrations for advertising purposes; organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; organisation of exhibitions for business or commerce; organisation of internet auctions; arranging and conducting of internet auctions; conducting interactive virtual auctions; arranging of auctions; arranging and conducting auctions; prize draws (organising of -) for promotional purposes; retail services in relation to games; wholesale services in relation to games; procurement services for others [purchasing goods and services for other businesses]; import and export services; assistance in product commercialization, within the framework of a franchise contract; trade marketing [other than selling]; preparing promotional and merchandising material for others; advertising services relating to the commercialization of new products; administration of the business affairs of retail stores; provision of information relating to commerce; provision of information and advisory services relating to e-commerce; management of a retail enterprise for others; retail services in relation to computer hardware; retail services in relation to computer software; wholesale services in relation to computer software; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; business management services relating to electronic commerce; advertising services for the promotion of e-commerce; conducting, arranging and organizing trade shows and trade fairs for commercial and advertising purposes; organisation of exhibitions and trade fairs for business and promotional purposes; conducting virtual trade show exhibitions online; trade show and commercial exhibition services; distribution of advertisements and commercial announcements; dissemination of advertising matter; dissemination of advertising material [leaflets, brochure and printed matter]; dissemination of advertising for others via the internet; distribution of advertising announcements; distribution of advertising material; distribution of promotional matter; distribution of advertising mail and of advertising supplements attached to regular editions; distribution of publicity materials (flyers, prospectuses, brochures, samples, particularly for catalogue long distance sales) whether cross border or not; distribution and dissemination of advertising materials [leaflets, prospectuses, printed material, samples]; distribution of flyers, brochures, printed matter and samples for advertising purposes; distribution of products for advertising purposes; production and distribution of radio and television commercials; dissemination of data relating to advertising; promotion [advertising] of business; advertising; online advertisements; radio advertising; television advertising; banner advertising; advertising and marketing; cinema advertising; advertising by mail order; magazine advertising; advertising in the popular and professional press; advertising in periodicals, brochures and newspapers; advertising particularly services for the promotion of goods; advertising, including on-line advertising on a computer network; advertising of the services of other vendors, enabling customers to conveniently view and compare the services of those vendors; advertising through all public communication means; advertising, marketing and promotional services; distribution of advertising, marketing and promotional material.

Class 41: Wagering services; on-line gambling services; betting services; casino, gaming and gambling services; betting exchange services; horses (betting on -); bookmaking [turf accountancy]; rental of arcade video game machines; conducting multiple player games of chance; gambling services; providing casino facilities [gambling]; gaming machine entertainment services; gaming services for entertainment purposes; providing slot machine parlors; rental of video game apparatus; rental of slot machines [gaming machines]; amusement arcade machine rental services; providing amusement arcade services; providing of casino and gaming facilities; rental of video game consoles; rental of electronic game equipment; leasing of casino games; rental of game machines and apparatus; games equipment rental; provision of games by means of a computer based system; amusement arcades; video arcade services; casino services; computer and video game amusement services; poker game services; services for the operation of computerised bingo; arranging of games; on-line casino services; providing casino facilities; bingo services; bingo hall services; amusement park and theme park services; amusement park services; amusement and theme park services.

Class 42: Coin analysis [authentication] services; grading of coins; designing computer software for controlling self-service terminals; design and development of video game software; development of computer hardware for computer games; development of computer game software; video game software development; computer programming of computer games; computer programming of video and computer games; computer programming of video games; rental of computer game software; rental of video game software; programming of video game software; programming of computer game software; design of games; video game software design; design of computer game software; design and development of computer game software; design and development of computer game software and virtual reality software; design and development of computer software for supply chain management; constructing an internet platform for electronic commerce; consultancy relating to the creation and design of websites for e-commerce; maintenance of software used in the field of e-commerce; programming of software for e-commerce platforms; consultancy services relating to software used in the field of e-commerce.

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 terms ‘particularly’ and ‘including’, used in the applicant’s list of services (in relation to Class 35), indicate that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used by the applicant for the same class 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.

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.

Contested goods in Class 9

The contested electronic components for gambling machines; computer hardware for games and gaming; games cartridges for use with electronic games apparatus; memory cards for video game machines are hardware components used for playing games and gaming. On the other hand, the contested computer application software featuring games and gaming; games software; video games [computer games] in the form of computer programs recorded on data carriers; training manuals in the form of a computer program; encoded programs; computer programmes for data processing; image recognition software; interactive computer software; interactive multimedia computer programs; interactive computer game programs; computer programmes for interactive television and for interactive games and/or quizzes; computer programs for pre-recorded games; computer programs for user interface design; process controlling software; computer programmes stored in digital form; recorded computer game programs; interactive multimedia computer game programs; interactive multimedia game programs; computer games programmes for simulating financial securities trading [software]; downloadable video game programs; downloadable electronic game programs; computer programs for video and computer games; downloadable computer utility programs; programs recorded on electronic circuits for amusement apparatus with liquid crystal screens; recorded programs for hand-held games with liquid crystal displays; programs for arcade video game machines; downloadable computer game programs; software programs for video games; interactive video game programs; data processing programs; betting software; game programs for arcade video game machines; relating to games and gaming; computer software for the administration of on-line games and gaming; software platforms to allow users to collect money; software for renting advertising space on websites are various types of software, some of which concern in particular video and computer games, including digital forms of games of chance involving dice, playing cards, roulette wheels, etc., as well as computer programs for arcade games. Others are broadly formulated, (e.g. interactive computer software).

The contested downloadable information relating to games and gaming; electronic publications, downloadable relate to the digital publications of e-books, digital magazines or catalogues, as well as any type of commercially available information in a digitalised form.

All the above hardware, software and digital publication products are considered similar to the opponent’s games in Class 28 since the goods may, above all, have common consumers, distribution channels and manufacturers specialising in the games industry. This conclusion of the Opposition Division is to a certain extent backed up by the findings of the Court in its judgment (19/04/2016, T‑326/14, ECLI:EU:T:2016:221, Hot Joker/Joker, § 49-54), where it was found that these goods are complementary inasmuch as the software and hardware in Class 9 are essential for the functioning of the electronic or on-line games of chance. Furthermore, the Court stated that the nature of those goods, namely ‘hardware and software’, is the same as that of electronic or on-line games of chance and they may have the same distribution and manufacturing channels. In addition, since the ‘hardware and software’ are intended ‘in particular for casino and amusement arcade games, for gaming machines, slot machines or video lottery gaming machines, with or without prize payouts, or games of chance via telecommunications networks and/or the Internet, with or without prize payouts’, they may be used in the same establishments as those in which games of chance are kept, namely casinos and amusement arcades, and may be purchased by the same professionals.

However, given the principally different purposes and methods of use of the remaining contested goods in Class 9, these goods are considered dissimilar to any of the goods or services covered by the earlier right. It is evident that these goods and services have nothing in common as, above all, their nature, purpose and method of use are completely different.

In particular, the contested coin accumulators [totalisers]; coin counting or sorting machines; coin changers; coin change dispensers; coin-operated mechanisms for vending machines; coin-operated mechanisms are various mechanisms related to coin operations. However, as will be seen below, they differ from the contested (arcade) coin-operated machines in Class 28 and to that extent cannot display any similarities with the opponent’s goods/services and in particular with its goods in Class 28. The contested security tokens [encryption devices] are tools that enable one’s identity to be proven electronically/digitally and are often used in addition to, or in place of, passwords for banking services. The contested payment terminals, money dispensing and sorting devices; money counting and sorting machines; counterfeit coin detectors; mechanisms for counter-operated apparatus; automatic paying-in and deposit machines; automatic ticket dispensing machines; fare collecting machines; automatic cash sorting and counting machines; automated bank note sorting machines; automatic cash registers encompass other devices and machines mainly related to money dispensing and the performing of money/payment transactions and operations. Moreover, the contested automatic control apparatus; timers for automatic apparatus; automatic transfer switches are apparatus for controlling electricity. Not only will all the above contested goods target a different group of consumers, they will also be available through highly specialised distribution networks with the main focus on business consumers involved in particular areas (i.e. banking, electricity controlling, tickets dispensing, etc.). Finally, these goods will be produced by different manufacturers which are not involved in any of the opponent’s alleged commercial activities, such as manufacturing of games, playthings and sporting articles, provision of business services for other undertakings, education, training, cultural and sport activities or entertainment or provision of temporary accommodation or foods and drinks.

Contested goods in Class 28

The contested amusement machines, automatic and coin-operated; automatic coin-operated games; automatic gaming machines; amusement apparatus for use in arcades; coin-operated amusement gaming machines; coin-operated arcade video game machines; arcade game machines; electronic games apparatus; coin-operated pinball game machines; apparatus for games; video game apparatus; machines for playing games of skill or chance; video game machine cases; bill-operated gaming equipment; markers [counters] for playing games; free-standing video games apparatus; computer game apparatus; apparatus for electronic games adapted for use with an external display screen or monitor; controllers for video game machines; gamepads; chips for gambling; token-operated video game machines; tiddlywinks; mechanical games; lCD game machines; gaming keypads; counters [discs] for games; roulette tables; roulette sets; roulette chips; coin-operated games; arcade games (electronic -) [coin or counter operated apparatus]; skill and action games; coin-operated amusement machines; gaming machines for gambling; bingo game playing equipment; slot machines [gaming machines]; slot machines [counter-freed amusement apparatus]; chips and dice [gaming equipment]; equipment sold as a unit for playing card games; poker chips are various items used for playing games and gaming, video and computer game apparatus, arcade games and mechanism, as well as games of chance. All these goods are included in, or overlap with, the earlier games and playthings. Therefore, these goods are identical.

The contested fairground and playground apparatus are various installations placed in areas designated for entertainment purposes, such as fairs and amusement parks, parks for recreation, children’ areas and playing fields.

The contested playground apparatus may serve the same entertainment purpose as the opponent’s playthings and, nowadays, they may be addressed, inter alia, at parents who purchase playground sets and equipment to install them at home or in the garden since this is seen as an easy Do-It-Yourself alternative to the outdoor facilities designed for public use. To that extent, these goods may also share the same distribution channels and manufacturers specialising in playthings and playgrounds. Therefore, they are considered to be similar to the opponent’s goods.

However, unlike the other contested goods under comparison above, the contested fairground apparatus have a different nature and method of use. Even though these goods coincide in their entertainment function with the opponent’s games and playthings, they target different groups of business consumers and will be available via other specialised distribution networks. Consumers will not expect to find such goods in regular toy or games stores, nor will they assume that such devices and structures may originate from the same manufactures as game producers. These goods are therefore found to be dissimilar not only to the opponent’s goods in Class 28, but also to the remaining opponent’s goods and services, which have nothing at all in common with them.

Contested services in Class 35

The contested advertising; rental of advertising space on the internet; rental of advertising space on-line; arranging of demonstrations for advertising purposes; prize draws (organising of -) for promotional purposes; preparing promotional and merchandising material for others; advertising services relating to the commercialization of new products; advertising services for the promotion of e-commerce; distribution of advertisements and commercial announcements; dissemination of advertising matter; dissemination of advertising material [leaflets, brochure and printed matter]; dissemination of advertising for others via the Internet; distribution of advertising announcements; distribution of advertising material; distribution of promotional matter; distribution of advertising mail and of advertising supplements attached to regular editions; distribution of publicity materials (flyers, prospectuses, brochures, samples, particularly for catalogue long distance sales) whether cross border or not; distribution and dissemination of advertising materials [leaflets, prospectuses, printed material, samples]; distribution of flyers, brochures, printed matter and samples for advertising purposes; distribution of products for advertising purposes; production and distribution of radio and television commercials; dissemination of data relating to advertising; promotion [advertising] of business; online advertisements; radio advertising; television advertising; banner advertising; advertising and marketing; cinema advertising; advertising by mail order; magazine advertising; advertising in the popular and professional press; advertising in periodicals, brochures and newspapers; advertising particularly services for the promotion of goods; advertising, including on-line advertising on a computer network; advertising through all public communication means; advertising, marketing and promotional services; marketing the goods and services of others; trade marketing [other than selling]; advertising of the services of other vendors, enabling customers to conveniently view and compare the services of those vendors; distribution of advertising, marketing and promotional material; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes are identically contained, included in, or overlap with, the opponent’s broad category of advertising. Therefore, these services are identical.

The contested assistance in product commercialization, within the framework of a franchise contract; provision of information and advisory services relating to e-commerce; management of a retail enterprise for others; business management services relating to electronic commerce; provision of information relating to commerce are included in, or overlap with, the earlier mark’s business management. Therefore, they are identical.

The contested procurement services for others [purchasing goods and services for other businesses]; administration of the business affairs of retail stores are included in, or overlap with, the earlier business administration. Therefore, they are identical.

The contested organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; organisation of exhibitions for business or commerce; conducting, arranging and organizing trade shows and trade fairs for commercial and advertising purposes; organisation of exhibitions and trade fairs for business and promotional purposes; conducting virtual trade show exhibitions online; trade show and commercial exhibition services are similar to the opponent’s advertising since these services have the same purpose and relevant public, and usually share the same origin.

The contested import and export services are related to the navigation and shipping of end products worldwide. As an essential business tool, they overlap to a certain extent with the providers of the broad category of business management services covered by the earlier mark. Furthermore, these two categories of services may coincide in their distribution channels and relevant public. Therefore, they are similar.

The contested mediation of trade business for third parties is similar to a low degree to the opponent’s business management. Business mediation concerns services rendered by specialists with the purpose of helping businesses to resolve their business-related problems. It also includes services where a third party puts sellers in contact with buyers, negotiates between them and receives commission for such services. Business mediation and business management are closely related. Companies providing business management services, which include all aspects of overseeing and supervising business operations, may also provide mediation services aimed at resolving or preventing business-related problems. The services may share the same purpose and are directed at the same public.

The contested retail services in relation to games; wholesale services in relation to games are similar to a low degree to the opponent’s games. It has been established in case-law that retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (05/05/2015, T‑715/13, Castello (fig.) / Castelló y Juan S.A. (fig.) et al., EU:T:2015:256, § 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public. The same findings apply with respect to the wholesale services of those goods.

However, retail/wholesale services will be found to be dissimilar to other goods that are not identical to the goods sold through retail/wholesale, as may be seen in the case of the contested retail services in relation to computer hardware; retail services in relation to computer software; wholesale services in relation to computer software, which are dissimilar to any of the opponent’s goods and services.

Furthermore, dissimilarity is established also in relation to the contested organisation of internet auctions; arranging and conducting of Internet auctions; conducting interactive virtual auctions; arranging of auctions; arranging and conducting auctions, which have nothing in common with the opponent’s goods and services, including the opponent’s business services in Class 35. Auctions are public sales of goods or property where prospective purchasers specifically bid against each other until the highest price is reached. On account of their special status as trade services, auctions services will rarely be found to be similar to any other category of goods or services, unless the same items of trade are concerned. Since, in the present case, auction services have a general meaning, they do not cover any particular goods and are deemed to be dissimilar to all the goods and services of the opponent’s mark.

Finally, the contested rental of vending machines; rental of card-operated vending machines; rental of coin-operated vending machines are also dissimilar to all goods and services covered by the earlier right. These services obviously have a different nature, purpose and method of use to the earlier mark’s goods and services, as well as different distribution channels and relevant public. They are provided by different companies and are not in competition with, or complementary to, the opponent’s goods and services.

Contested services in Class 41

The contested wagering services; on-line gambling services; betting services; casino, gaming and gambling services; betting exchange services; horses (Betting on -); bookmaking [turf accountancy]; rental of arcade video game machines; conducting multiple player games of chance; gambling services; providing casino facilities [gambling]; gaming machine entertainment services; gaming services for entertainment purposes; providing slot machine parlors; rental of video game apparatus; rental of slot machines [gaming machines]; amusement arcade machine rental services; providing amusement arcade services; providing of casino and gaming facilities; rental of video game consoles; rental of electronic game equipment; rental of game machines and apparatus; games equipment rental; provision of games by means of a computer based system; amusement arcades; video arcade services; casino services; computer and video game amusement services; poker game services; services for the operation of computerised bingo; arranging of games; on-line casino services; providing casino facilities; bingo services; bingo hall services; amusement park and theme park services; amusement park services; amusement and theme park services; leasing of casino games are included in the broad category of the opponent’s entertainment in Class 41. Therefore, they are identical.

Contested services in Class 42

Even though companies providing general IT and programming services and video games manufacturers are not, in principle, engaged in the same line of commercial activities, it cannot be denied that a certain proximity exists between the opponent’s games in Class 28 and the contested design and development of video game software; development of computer hardware for computer games; development of computer game software; video game software development; computer programming of computer games; computer programming of video and computer games; computer programming of video games; rental of computer game software; rental of video game software; programming of video game software; programming of computer game software; design of games; video game software design; design of computer game software; design and development of computer game software; design and development of computer game software and virtual reality software, which are essentially design and development services related exclusively to games. Indeed, games in Class 28 also include computer game consoles and video games. Furthermore, it is well-established practice in the market for companies, particularly those involved in the creation of games from the conception, design and development to the finished product, to take the opportunity to market the final products as their own. Consequently, the above listed services are found to be similar to a low degree.

Unlike the above services, the remaining contested services, namely, coin analysis [authentication] services; grading of coins; designing computer software for controlling self-service terminals; design and development of computer software for supply chain management; constructing an internet platform for electronic commerce; consultancy relating to the creation and design of websites for e-commerce; maintenance of software used in the field of e-commerce; programming of software for e-commerce platforms; consultancy services relating to software used in the field of e-commerce, are evidently different from all the goods and services covered by the earlier right as they do not specifically concern any of them. Since they coincide in none of the Canon criteria referred to above, in particular as regards their nature, purpose, method of use, relevant public, origin, etc., they are dissimilar.

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 to varying degrees are directed at the public at large, as well as at business customers with specific professional knowledge or expertise.

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

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Romania.

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).

Account is taken of the fact that when comparing signs in conflict in terms of their purely figurative elements, the Office considers the latter as images: if they match in one, separately recognisable, element or have the same or a similar contour, it is likely that some visual similarity will be found.

Visually, it is evident that, albeit with certain alterations to the contested sign, the signs represent an almost identical depiction of a joker holding a pack of cards. The different elements in the contested sign are confined to secondary elements, which will not be immediately grasped and are not the more or most striking parts of the signs in terms of visual dominance. By way of example, the differences between the signs include the presence of two additional dice, certain different cards in the joker’s hand, such as an ace of hearts instead of an ace of clubs, and a slight modification of the joker’s ring. None the less, since the overall impression created by the almost identical graphical representations of the signs is overwhelming, the signs are considered, visually at least, to be highly similar.

Aurally, purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.

Conceptually, both signs will be perceived as visual representations of a joker holding a pack of cards. Consequently, despite certain additions or changes to certain secondary elements (the dice, different cards), the signs are conceptually identical.

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.

Although the earlier mark depicts a popular playing card, due to its high degree of complexity and inventive character, it is considered to have a normal degree of distinctiveness for all the goods and services for which it has been registered.

In fact, the question of whether the images of the signs will be fully distinctive or may allude to a certain extent to the nature/characteristics of some of the goods and services in question cannot be, in any event, regarded to have a crucial impact in the present case, on account of the almost identical images, as concluded above.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, the similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The signs are visually at least highly similar and conceptually identical. The aural aspect does not influence the comparison of the signs, since both signs are purely figurative. 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).

In spite of certain variations in the stylisation and the addition of certain secondary, not immediately striking, elements, both images remain the same and retain the same proportions and use of colour. Consequently, it is more than evident that consumers will not be able to distinguish between the signs on the basis of those secondary elements as they are, in any event, not what first catches the consumers’ attention.

On the contrary, the relevant public will perceive both images as a whole, without further dissecting and analysing their graphical particularities. As mentioned above, on encountering the signs on the market, consumers will rarely have them side by side so as to be able to identify their possible differences.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Romanian trade mark registration No 117 361.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark. Given the principle of interdependence referred to above, this conclusion applies also with respect to the goods and services found to be similar to only a low degree on account of the greater similarity between the signs

The rest of the contested goods and services are however dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Inés GARCÍA LLEDÓ

Manuela RUSEVA

Teodora TSENOVA-PETROVA

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.