OPPOSITION No B 3 054 379

Ubisoft Entertainment, Société Anonyme, 107, Avenue Henri Fréville, 35207 Rennes cedex, France (opponent), represented by Marc Muraccini, 28, rue Armand Carrel, 93108 Montreuil sous Bois, France (employee representative)

a g a i n s t

Shin-Kyu Choi, B-4101 (Mokdong,Trapalace Western Avenue) 299, Ohmok-ro, Yangcheon-Gu, Seoul, Republic Of Korea (applicant), represented by Mitscherlich Patent- und Rechtsanwälte, PartmbB, Sonnenstraße 33, 80331 München, Germany (professional representative).

On 31/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 054 379 is partially upheld, namely for the following contested goods:

Class 9: Optical apparatus and instruments, except for glasses and photographic apparatus; Photographic apparatus and instruments; Video cameras; Mechanisms for coin-operated apparatus; Electric batteries; Electric audio and visual apparatus and instruments; Telecommunication machines and implements; Telephone sets; Computer programs (downloadable software); Computer software applications, downloadable; Computer game software; Computer application software for mobile phones; Computer software; Computer hardware and computer peripheral devices; Video game cartridges; Downloadable music files; Pre-recorded music electronic media; Recorded videotapes (other than music); Pre-recorded non-musical electronic media (excluding computer software); Photographic media (films, exposed); Electronic publications, downloadable; Downloadable electronic books; Downloadable electronic newspapers; Downloadable electronic study books or papers.

Class 28: Games; Toys (playthings); Toys for domestic pets; Dolls; Playing cards; Card games; Sporting articles (other than golf articles/climbing articles); Ascenders (mountaineering equipment); Climbers' harness; Golf bags with or without wheels; Golf balls; Golf gloves; Golf equipment; Toy bicycles; Toy scooters; Athletic protective wrist pads for skating; Athletic protective elbow pads for skating; Athletic protective knee pads for skateboarding; Athletic protective arm pads for skating; Toy roller skates; Twirling batons; Chess games.

2. European Union trade mark application No 17 777 921 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 777 921 ‘GHOST MECARD’ (word mark). The opposition is based on European Union trade mark registration No 15 227 101 ‘GHOST RECON’ (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.

1. The goods

The goods 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, numerical and electronic data carriers; Magnetic, optical and numerical discs; Computer programs; Personal digital assistant; Computer memory; Printed circuits; Computers; Computer peripheral devices, namely screens, keyboards, mice, consoles and control levers, readers of magnetic, optical and digital disks and diskettes; Telephone and telecommunications apparatus; Recorded computer programs; Games software; Computer software (recorded programs); Software for playing video, computer and on-line games; Software incorporating computer games; Computer software for video and audio games; Multimedia and interactive software; Computer software on mobile telephones and electronic tablets; audio visual games on computer hardware platforms; Magnetic, optical and digital media for computer programs; Cd roms; Compact discs; Electronic publications, downloadable; Software featuring music and motion picture sound tracks; Cinematographic films; Mouse mats; Parts and fittings for all the aforesaid.

Class 28: Games and playthings; Apparatus for electronic games (other than those adapted for use with television receivers only); Action figures and accessories therefor, scale model figures, scale model cars, board games, dolls, dolls' accessories, dolls' clothing, plush toys, automatic game apparatus, other than coin-operated and other than those designed for use solely with television receivers; Playthings, automatic coin-operated games; Card games; Electronic game consoles; Game apparatus for use with television receivers only; Teaching materials in the form of games.

The contested goods are the following:

Class 9: Abacuses; Locks, electric; Physical and chemical laboratory apparatus and instruments; Optical apparatus and instruments, except for glasses and photographic apparatus; Photographic apparatus and instruments; Video cameras; Weighing apparatus and instruments for standard unit; Automatic control apparatus and instruments; Spectacles (optics); Contact lenses; Mechanisms for coin-operated apparatus; Life jackets; Survival suits; Heat sensors; Reflecting discs for wear, for the prevention of traffic accidents; Electrical apparatus for the distribution of electric power; Electric batteries; Electric audio and visual apparatus and instruments; Telecommunication machines and implements; Telephone sets; Computer programs (downloadable software); Computer software applications, downloadable; Computer game software; Computer application software for mobile phones; Computer software; Computer hardware and computer peripheral devices; Magnets; Video game cartridges; Signalling whistles; Protective gloves for use in industry for the prevention of accident or injury; Helmets; Protective clothing specifically adapted for the prevention of accident or injury; Downloadable music files; Pre-recorded music electronic media; Recorded videotapes (other than music); Pre-recorded non-musical electronic media (excluding computer software); Magnetic credit cards; Downloadable tickets; Photographic media (films, exposed); Electronic publications, downloadable; Downloadable electronic books; Downloadable electronic newspapers; Downloadable electronic study books or papers; Animated cartoons; Fire escapes; Breathing apparatus for underwater swimming; Electric door bells; Protective masks.

Class 28: Games; Toys (playthings); Toys for domestic pets; Dolls; Playing cards; Card games; Sporting articles (other than golf articles/climbing articles); Ascenders (mountaineering equipment); Climbers' harness; Golf bags with or without wheels; Golf balls; Golf gloves; Golf equipment; Toy bicycles; Toy scooters; Athletic protective wrist pads for skating; Athletic protective elbow pads for skating; Athletic protective knee pads for skateboarding; Athletic protective arm pads for skating; Toy roller skates; Ornaments for Christmas trees (except illumination articles and confectionery); Butterfly nets; Fishing tackle; Twirling batons; Fairground ride apparatus; Chess games.

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.

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

The term ‘namely’, used in the opponent’s list of goods 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 specifically listed.

Contested goods in Class 9

Electronic publications, downloadable are identically contained in both lists of goods.

The contested computer game software and the opponent’s games software are synonymous and therefore identical.

The contested computer programs (downloadable software) are included in the broad category of the opponent’s computer programs. Therefore, they are identical.

The contested computer software overlaps with the opponent’s computer software (recorded programs). Therefore, they are identical.

The contested computer software applications, downloadable; computer application software for mobile phones are included in the broad category of, or overlap with, the opponent’s computer programs. Therefore, they are identical.

The contested computer hardware are included in the broad category of the opponent’s computers. Therefore, they are identical.

The contested computer peripheral devices includes, as a broader category, the opponent’s computer peripheral devices, namely screens, keyboards, mice, consoles and control levers, readers of magnetic, optical and digital disks and diskettes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested photographic apparatus and instruments; video cameras; electric audio and visual apparatus and instruments; pre-recorded music electronic media; recorded videotapes (other than music); pre-recorded non-musical electronic media (excluding computer software) are either identical to, as included in the broad category of, or overlap with, the opponent’s apparatus for recording, transmission, reception, reproduction and processing of sound and images or at least similar to these goods, as they coincide in producers, distribution channels and relevant public.

The contested telecommunication machines and implements; telephone sets are included in the broad category of, or overlap with, the opponent’s telephone and telecommunications apparatus. Therefore, they are identical.

The contested downloadable electronic books; downloadable electronic newspapers; downloadable electronic study books or papers are included in the broad category of, or overlap with, the opponent’s electronic publications, downloadable. Therefore, they are identical.

The contested photographic media (films, exposed) overlaps with the opponent’s cinematographic films. Therefore, they are identical.

The contested mechanisms for coin-operated apparatus have some similarities to the opponent’s automatic coin-operated games. They have the same nature and can have the same producers, distribution channels and relevant public. Moreover, they are complementary. Therefore, they are at least similar.

The contested downloadable music files are at least similar to the opponent’s software featuring music and motion picture sound tracks as they have the same nature and purpose and coincide in producers, distribution channels and relevant public. These goods are also complementary.

The contested optical apparatus and instruments, except for glasses and photographic apparatus are similar to the opponent’s magnetic, optical, numerical and electronic data carriers. They are complementary and can have the same producers, distribution channels and relevant public.

The contested electric batteries are similar to the opponent’s computers. Batteries are indispensable for computers to function. Therefore, these goods are complementary. They also coincide in distribution channels and target the same consumers.

The contested video game cartridges are similar to at least a low degree to the opponent’s software for playing video, computer and on-line games. These goods are complementary, come from the same undertakings and target the same consumers. In addition, they coincide in distribution channels and points of sale.

The remaining contested goods in this Class, namely abacuses; locks, electric; physical and chemical laboratory apparatus and instruments; weighing apparatus and instruments for standard unit; automatic control apparatus and instruments; spectacles (optics); contact lenses; life jackets; survival suits; heat sensors; reflecting discs for wear, for the prevention of traffic accidents; electrical apparatus for the distribution of electric power; magnets; signalling whistles; protective gloves for use in industry for the prevention of accident or injury; helmets; protective clothing specifically adapted for the prevention of accident or injury; magnetic credit cards; downloadable tickets; animated cartoons; fire escapes; breathing apparatus for underwater swimming; electric door bells; protective masks have no relevant points in common with the opponent’s goods in Classes 9 and 28. They do not have the same nature or purposes, neither the same producers, distribution channels nor the same relevant public. Furthermore, they are not complementary or in competition.

The contested goods in Class 28

Games; toys (playthings); dolls; card games are identically contained in both lists of goods (including synonyms).

The contested toys for domestic pets; toy bicycles; toy scooters; toy roller skates are included in the broad category of the opponent’s playthings. Therefore, they are identical.

The contested playing cards are included in the broad category of the opponent’s card games. Therefore, they are identical.

The contested chess games are included in the broad category of the opponent’s board games. Therefore, they are identical.

The contested sporting articles (other than golf articles/climbing articles); ascenders (mountaineering equipment); climbers' harness; golf bags with or without wheels; golf balls; golf gloves; golf equipment; athletic protective wrist pads for skating; athletic protective elbow pads for skating; athletic protective knee pads for skateboarding; athletic protective arm pads for skating; twirling batons are various sporting equipment and their accessories. They are at least similar to a low degree to the opponent’s games and playthings. These goods coincide in their nature (being goods for sports and games). Furthermore, they can coincide in producers and at least some of them also in distribution channels and points of sale, being usually positioned within the same areas of department stores. Moreover, they can be directed at the same consumers.

However, the contested fairground ride apparatus are installations that refer to mechanical devices or structures that move people to create enjoyment and that are usually found in amusement parks, traveling carnivals and travelling funfairs. Their nature and method of use are clearly distinct from the opponent’s games and plaything and also the other opponent’s goods in Class 9 and 28. Furthermore, they are not in competition or complementary and do not usually coincide in manufacturer or distribution channels. Therefore, they are dissimilar.

Moreover, the contested ornaments for Christmas trees (except illumination articles and confectionery); butterfly nets; fishing tackle have different natures and purposes than the opponent’s goods in Classes 9 and 28. They do not originate from the same companies, have different distribution channels and are directed at different consumers, neither are they complementary or in competition. For these reasons they are also considered to be dissimilar.

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 found to be identical or similar to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending in particular on the specialised nature of the goods, the frequency of purchase and their price.

2. The signs

GHOST RECON	GHOST MECARD
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 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 common element ‘GHOST’ is not meaningful in certain territories, for example in those countries where English is not understood, such as Spain. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The marks are both word marks; ‘GHOST RECON’ respectively ‘GHOST MECARD’.

Since the common element ‘GHOST’ has no meaning for the relevant public, it is distinctive.

Neither do the elements ‘RECON’ of the earlier mark or ‘MECARD’ of the contested sign have a meaning for the relevant public. They are, therefore, distinctive.

Being word marks, neither the earlier mark nor the contested sign have any element that could be considered clearly more dominant than other elements.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in their first and distinctive verbal element ‘GHOST’. However, they differ in the distinctive verbal elements ‘RECON’ of the earlier mark and ‘MECARD’ of the contested sign. Even if these elements coincide in the second and third letters ‘EC’, it is not particularly relevant as it is not likely to be noticed by the relevant public.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘GHOST’, present identically in both signs. This element, placed first in both marks, is distinctive, as described above. The pronunciation differs in the sound of the letters ‘RECON’ of the earlier mark and ‘MECARD’ of the contested sign. These elements are also distinctive.

Therefore, the signs are aurally similar to an average degree.

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

3. 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

4. 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.

In the present case, the goods are partly identical, partly similar to various degrees and partly dissimilar. The earlier mark enjoys a normal degree of distinctiveness and the degree of attention varies from average to high. The signs are visually and aurally similar to an average degree, due to the common element ‘GHOST’ placed in the beginning of the marks, and the conceptual aspect does not affect the assessment of the similarity of 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).

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 goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the element ‘GHOST’. In support of its argument the applicant refers to several trade mark registrations in the European Union trade mark register that includes the element ‘GHOST’.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘GHOST’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar, even to a low degree, to those of the earlier trade mark. The considerable similarity between the signs outweighs the low similarity of these goods.

The rest of the contested goods are 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 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Katarzyna ZANIECKA

Lena FRANKENBERG GLANTZ

Angela DI BLASIO

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.