OPPOSITION No B 3 063 232

GSL Wire Limited, 68 Harcourt Street, 2 Dublin 2, Ireland (opponent)

a g a i n s t

Betmit Limited, Suite A, Triq Mater Boni Consili, 1610 Paola, Malta (applicant), represented by Von Rohr Patentanwälte Partnerschaft mbB, Rüttenscheider Str. 62, 45130 Essen, Germany (professional representative).

On 19/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 063 232 is upheld for all the contested services.

2. European Union trade mark application No 17 938 312 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 938 312 for the word mark ‘betmit’, namely against all services in Class 41. The opposition is based on the European Union trade mark registration No 17 145 211 for the word mark ‘bettilt’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The services

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

Class 41: Entertainment services, namely, providing online gaming, gambling and betting services; providing online electronic and mobile games; providing online news and information in the field of online gaming, gambling and betting; providing electronic newsletters relating to online gaming, gambling and betting; providing Internet websites in the field of online gaming, gambling and betting; organisation and management of online gaming, gambling and betting services; assistance and advisory services in the field of all the aforementioned services.

Class 42: Design, development, programming, maintenance and implementation of computer software and mobile applications; Design, creation and maintenance of the Internet websites; Computer programming; Maintenance of data bases; Development and maintenance of computer database software; Installation and maintenance of database software; Information, assistance and advisory services in the field of all the aforementioned services.

The contested services are the following:

Class 41: Gambling services; On-line gambling services; Online game services through mobile devices; Electronic game services and competitions provided by means of the internet; Provision of on-line computer games; On-line casino services; Entertainment services; Provision of on-line entertainment; Betting services; Organization of competitions; Entertainment services relating to sport; Casino, gaming and gambling services; Organization of lotteries; Electronic game services provided by means of the internet; Casino services; Entertainment services relating to competitions; Wagering services; Conducting multiple player games of chance.

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

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

Contested services in Class 41

Gambling services and betting services are identically contained in both lists of services.

The contested on-line gambling services; online game services through mobile devices; electronic game services and competitions provided by means of internet; on-line casino services; casino, gaming and gambling services; organization of lotteries; electronic game services provided by means of the internet; casino services; wagering services; conducting multiple player games of chance; provision of on-line computer games are included in the broad category of the opponent’s entertainment services, namely, providing online gaming, gambling and betting services or overlap with these. Therefore, they are identical.

The contested services entertainment services and provision of on-line entertainment include as broader categories, the opponent’s entertainment services, namely, providing online gaming, gambling and betting services. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested organization of competitions; entertainment services relating to competitions; entertainment services relating to sports overlap with the opponent’s entertainment services, namely, providing online gaming, gambling and betting services as the contested term also includes entertainment related to e-sports and are therefore identical.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical are directed at the public at large and at business consumers with specific professional knowledge or expertise.

The degree of attention will be average.

3. The signs

bettilt	betmit
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.

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (…), the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known for him (13/02/2007, T-256/04, RESPICUR, ECLI:EU:T:2007:46 , § 57).

The common beginning of the marks ‘bet’, will be perceived by the English-speaking part of the public as relating to an act of risking a sum of money of the result of an event or a competition (information extracted from Cambridge English Dictionary at https://dictionary.cambridge.org/dictionary/english/bet on 05/12/2019). Bearing in mind that at least part of the services in question are related to gaming that may entail betting, this element is devoid of distinctiveness for the services in question for that part of the public. However, for the non-English speaking part of the public, this coinciding verbal element is meaningless as are the marks considered as a whole. Therefore, both marks are fully distinctive for this part of the public.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public such as the Spanish-speaking public.

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 the first three letters and the last letter respectively (b-e-t-*-*-*-t) and (b-e-t-*-*-t) as well as the vowel ‘i’ in the second half of each mark. However, they differ in the letter ‘m’ at the centre of the contested mark and in the letters ‘t’ and ‘l’ of the earlier mark, although the difference in the letter ‘t’ of the earlier mark may go unnoticed because it is just a repetition of the previous letter ‘t’.

Therefore, taking into account that the signs coincide in their initial part which generally attracts more of the attention of consumers, and also in their ending they are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sounds of the first, second, third and last letters (b-e-t-*-*-*-t) present identically in both signs, as well as in the vowel ‘i’ in the second syllable of both marks. The repetition of the letter ‘t’ in the earlier mark may go unnoticed by the relevant public from an aural point of view. These verbal elements contain the same number of syllables, namely two, and, therefore, have the same rhythm and intonation.

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.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The global assessment of 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).

As concluded above, the services have been considered identical. The earlier mark has a normal degree of distinctiveness for the relevant public. The relevant public is the public at large and business customers displaying an average degree of attention.

The signs are visually and aurally similar to an average degree. They do not have a concept that might help to differentiate between them. Taking into account that the signs coincide in their beginnings and also in their last letter, the difference in only two letters as well as the repetition of the letter ‘t’ in the earlier mark, all positioned in the middle of the marks, is not sufficient to outweigh the strong similarities between the marks.

In view of all the foregoing, and in particular the principle of interdependence, there is a likelihood of confusion in relation to identical services on the part of the Spanish-speaking part of the public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the earlier European Union trade mark registration No 17 145 211. It follows from the above that the contested mark must be rejected for the services found to be identical to those of the earlier mark.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a).

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

Tu Nhi VAN

Lars HELBERT

Octavio MONGE GONZALVO

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.