OPPOSITION No B 3 070 860

Alma Technologies, S.A., Calle Valentin Beato, nº23, 28037 Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 - 1º izda, 28010 Madrid, Spain (professional representative)

a g a i n s t

Matteo Milleri, Rua da Esperanca, 4-3, 1200-657 Lisboa, Portugal, Moner Al Sati, 802-B Sama Tower, Sheikh Zayed Road, 211715 Dubai, United Arab Emirates (applicant), represented by Sasse, Bachelin & Lichtenhahn Rechtsanwälte Partnerschaft mbB, Alexanderstr. 9, 10178 Berlin, Germany (professional representative).

On 30/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 070 860 is partially upheld, namely for the following contested goods and services:

Class 9: All the goods in this Class.

Class 28: Games, playthings; Games; Arcade games; Musical games; Games consoles; Electronic games; Handheld computer games; Hand held video games; Apparatus for games; Skill and action games; Joysticks for video games; Games relating to fictional characters.

Class 36: All the services in this Class.

Class 38: All the services in this Class.

Class 41: Education services related to the arts; art exhibition services; organisation of conferences, exhibitions and competitions; entertainment services; arranging of presentations for cultural purposes; education and training in the field of music and entertainment; organisation of festivals; arranging of festivals for cultural purposes; arranging and conducting of live entertainment events; organizing cultural and arts events; art gallery services; providing information in the field of music; cultural activities; arranging and conducting of concerts; organisation of games; providing games; providing online games; internet games (non-downloadable); virtual reality arcade services; virtual reality game services provided on-line from a computer network; providing on-line video games; video game entertainment services.

2. European Union trade mark application No 17 951 223 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

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 17 951 223 . The opposition is based on Spanish trade mark registrations No 1 807 200 , No 1 807 202 and No 2 208 046 ‘ALMA’. 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.

a) The goods and services

The applicant claims that there is no connection whatsoever between the parties businesses. However, in the framework of opposition proceedings the Opposition Division can only take into account the goods or services for which both marks are registered and not the goods or services for which the marks are actually used (16/06/2010, T 487/08, Kremezin, EU:T:2010:237, § 71, 29/03/2017, T-389/15; J & Joy SA v EUIPO; EU:T:2017:231, § 30-35, 29/03/2017, T 387/15; J & Joy SA v EUIPO; EU:T:2017:233, § 30-35, 29/03/2017, T-388/15 and J & Joy SA v EUIPO, EU:T:2017:232, § 30-35). Therefore, the actual use of the competing goods and/or services on the market is irrelevant and the applicant’s arguments on that point must be rejected.

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

(1) Spanish trade mark registration No 1 807 200:

Class 9: Magnetic data carriers; data processing equipment and computers.

(2) Spanish trade mark registration No 1 807 202:

Class 41: Education, training and teaching services, especially in computing.

(3) Spanish trade mark registration No 2 208 046:

Class 38: Telecommunications and communications services, including communications via computer terminals and digital communications and worldwide computer networks.

The contested goods and services are the following:

Class 9: Software; Communication Software; Encryption software; Entertainment software; Mobile apps; Mobile software; Platform software; Software for online messaging; Software for operating an online shop; Media software; Telecommunications software; Community software; Music software; Day trading software; Media content; Virtual reality hardware; Virtual reality software; Virtual reality game software; Virtual reality headsets; Virtual reality glasses; Games software; Virtual reality software for playing virtual reality games; Virtual reality models; Graphic art software; Computer games; Downloadable electronic games; Software programs for video games; Software for generating virtual images; Interactive multimedia software for playing games; Computer hardware for games and gaming; Computer software for facilitating payment transactions by electronic means; Electronic currency converters; Augmented reality software; Augmented reality game software; Augmented reality software for creating maps; Augmented reality software for use in mobile devices; Augmented reality software for use in mobile devices for integrating electronic data with real world environments.

Class 25: Clothing; Headgear; Footwear; Belts [clothing]; Boots; Shoes; Gloves; Jackets [clothing]; Ties; Cuffs; Caps [headwear]; Pullovers; Pyjamas; Scarves; Shirts; Skirts; Sleep masks; Socks; Suits; T-shirts; Trousers; Hoodies; Jeans.

Class 28: Toys, games, playthings and novelties; Games; Arcade games; Musical games; Games consoles; Electronic games; Handheld computer games; Hand held video games; Apparatus for games; Skill and action games; Joysticks for video games; Games relating to fictional characters.

Class 32: Energy drinks; Energy drinks containing caffeine; Soft drinks for energy supply; Soft drinks; Non-alcoholic beverages; Preparations for making beverages.

Class 35: Business management; Advertising, marketing and promotional services; Prize draws (Organising of -) for promotional purposes; Organisation of exhibitions and events for commercial or advertising purposes; Planning of marketing strategies; Market campaigns; Public relations services; Publication of publicity texts; Writing of publicity texts; Production of advertising films; Marketing research and analysis; Marketing agency services; Organization of exhibitions for commercial or advertising purposes; Organization of trade fairs for commercial or advertising purposes; Arranging of presentations for advertising purposes; Providing online marketplaces for sellers of goods and or services; Arranging commercial transactions, for others, via online shops; Online business networking services; Conducting virtual trade show exhibitions online.

Class 36: Currency trading; Currency dealing; Brokerage of currency; Virtual currency services; Virtual currency exchange; Virtual currency transfer services; Computerised financial services relating to foreign currency dealings; Payment processing; Payment administration services; Electronic processing of payments; Electronic financial trading services; Currency exchange services; Buying and selling currency; Currency trading and exchange services; On-line real-time currency trading.

Class 38: Provision of access to an electronic marketplace [portal] on computer networks; Provision of access to content, websites and portals; Data streaming; Telecommunication; Online messaging services; Providing online forums; Communication by online blogs; Providing online facilities for real-time interaction with other computer users; Providing virtual facilities for real-time interaction among computer users; Virtual chatrooms established via text messaging.

Class 41: Entertainment services; Organisation of conferences, exhibitions and competitions; Arranging of presentations for cultural purposes; Art exhibition services; Production of video and/or sound recordings; Organisation of festivals; Arranging of festivals for cultural purposes; Arranging and conducting of live entertainment events; Organizing cultural and arts events; Art gallery services; Education services related to the arts; Education and training in the field of music and entertainment; Providing information in the field of music; Cultural activities; Live music concerts; Music composition services; Party planning [entertainment]; Theatre productions; Presentation of live performances; Orchestra services; Arranging and conducting of concerts; Publishing services; Disc jockey services; Provision of club entertainment services; Recording studios; Ticket agency services [entertainment]; Live entertainment production services; Music publishing and music recording services; Production of music; Publication of printed matter; On-line publishing services; Providing on-line electronic publications, not downloadable; Writing of texts, other than publicity texts; Publication of texts, other than publicity texts; Preparation of texts for publication; Publication of material which can be accessed from databases or from the internet; Publishing services for books and magazines; Providing on-line music, not downloadable; Film production, other than advertising films; Performance of dance, music and drama; Providing games; Providing online games; organisation of games; Internet games (non-downloadable); Virtual reality arcade services; Virtual reality game services provided on-line from a computer network; Providing on-line video games; Video game entertainment services.

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 ‘including’, used in the opponent’s list of goods and services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T 224/01, Nu Tride, EU:T:2003:107).

However, the term ‘especially’, also used in the opponent’s list of goods and services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01,Nu‑Tride, EU:T:2003:107).

As a preliminary remark, in relation to the applicant’s claim 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 virtual reality hardware; virtual reality headsets; virtual reality glasses; computer hardware for games and gaming; electronic currency converters are similar to the earlier data processing equipment and computers because they can coincide in distribution channels, in end user and in producer.

The contested software; communication software; encryption software; entertainment software; mobile apps; mobile software; platform software; software for online messaging; software for operating an online shop; media software; telecommunications software; community software; music software; day trading software; media content; virtual reality software; virtual reality game software; games software; virtual reality software for playing virtual reality games; virtual reality models; graphic art software; computer games; downloadable electronic games; software programs for video games; software for generating virtual images; interactive multimedia software for playing games; computer software for facilitating payment transactions by electronic means; augmented reality software; augmented reality game software; augmented reality software for creating maps; augmented reality software for use in mobile devices; augmented reality software for use in mobile devices for integrating electronic data with real world environments are similar to the earlier data processing equipment and computers because they coincide in distribution channels, in end user and in producer. Moreover, they are also complementary.

Contested goods and services in Classes 25, 32, 35

The contested goods in this classes consist of clothing, headgear and footwear; beverages and preparations for making beverages; business management and advertising services. They have no point of contact with the opponent’s goods and services in classes 9, 38 and 41 that essentially consist of data processing equipment, data carriers and education and telecommunication services. They are of a different nature, purpose and they do not follow the same method of use. They are neither complementary nor in competition. Moreover, they do not share the same distribution channels, they do not target the same end user and they are produced by different companies. Therefore, they are dissimilar.

Contested goods in Class 28

The contested games, playthings; games; arcade games; musical games; games consoles; electronic games; handheld computer games; hand held video games; apparatus for games; skill and action games; games relating to fictional characters may all consist of video games for which a software is necessary. To this extent, these goods are similar to the earlier data processing equipment and computers because they coincide in distribution channels, in end user and in producer.

The contested joysticks for video games are also similar to the earlier data processing equipment and computers because they coincide in distribution channels, in end user and in producer. Moreover, they are complementary.

However, the contested toys; novelties do not share any relevant points of contact with the earlier goods and services in Classes 9, 38 and 41. They differ in nature, purpose and method of use. Furthermore, they do not coincide in producers or distribution channels and they are not complementary or in competition. Therefore, they are dissimilar.

Contested services in Class 36

The contested services in this class that are financial, monetary and banking services and the opponent’s magnetic data carriers in class 9 that may include debit and credit card for banking operations are at least lowly similar as they have a similar purpose and can coincide in producer and distribution channels. Furthermore, the opponent’s goods can also be complementary with some of the contested services.

Contested services in Class 38

The contested services in this class all consist of telecommunication services. They are identical to the opponent’s telecommunications and communications services, including communications via computer terminals and digital communications and worldwide computer networks either because they are identically mentioned in both lists or because they are included in the broad category of the opponent’s services.

Contested services in Class 41

The contested education services related to the arts; art exhibition services; organisation of conferences, exhibitions and competitions; entertainment services; arranging of presentations for cultural purposes; education and training in the field of music and entertainment are included in the broad category of the earlier education, training and teaching services, especially in computing. Therefore, they are identical.

The contested organisation of festivals; arranging of festivals for cultural purposes; arranging and conducting of live entertainment events; organizing cultural and arts events; art gallery services; cultural activities; arranging and conducting of concerts; organisation of games; providing games; providing online games; internet games (non-downloadable); virtual reality arcade services; virtual reality game services provided on-line from a computer network; providing on-line video games; video game entertainment services may involve sharing knowledge and experience and providing a forum for exchange. Therefore, the contested services may have some relevant points in common with the opponent’s education, training and teaching services, especially in computing. They can be offered by the same provider and they can target the same public. Therefore, they are similar to a low degree.

The contested live music concerts; providing information in the field of music; theatre productions; music composition services; party planning [entertainment]; presentation of live performances; orchestra services; disc jockey services; provision of club entertainment services; ticket agency services [entertainment]; providing on-line music, not downloadable; performance of dance, music and drama; publishing services; music publishing and music recording services; publication of printed matter; on-line publishing services; providing on-line electronic publications, not downloadable; writing of texts, other than publicity texts; publication of texts, other than publicity texts; publication of material which can be accessed from databases or from the internet; publishing services for books and magazines; preparation of texts for publication; production of video and/or sound recordings; recording studios; live entertainment production services; production of music; film production, other than advertising films are dissimilar to the opponent’s goods and services. They differ in nature, purpose and method of use. Furthermore, they do not coincide in producers or distribution channels and they are not complementary or in competition.

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 and 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, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

Earlier mark (1) Earlier mark (2) ALMA Earlier mark (3)
Earlier trade marks	Contested sign

The relevant territory is Spain.

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 word ‘ALMA’ in the three earlier marks and in the contested sign is a Spanish word that will be understood as the part of someone that consists of his mind, character, thoughts, and feelings. Since this meaning has no relation with any of the relevant goods and services, it is distinctive.

The verbal element ‘ALMA’ and the circular device of earlier marks (1) and (2) are co-dominant as they are the most eye-catching.

Nevertheless, these circular devices of earlier marks (1) and (2) are lowly distinctive since they consist in a rather simple geometrical shape. Moreover, account is also taken of the fact that 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). As far as the typeface used to represent the contested sign is concerned, it is not particularly elaborate or sophisticated and it will not lead the consumer’s attention away from the verbal element itself.

The English words ‘Technologies’ of earlier mark (1) and ‘Consulting’ of earlier mark (2) will be understood as such as by the public they are similar to their equivalent in Spanish, namely tecnología and consultoría. Since the goods and services in question are IT related or can be offered in the form of consulting, respectively, these elements are non-distinctive.

Visually and aurally, the signs coincide in the word ‘ALMA’ and in its corresponding sound. Visually, the signs differ in the stylization and in the devices of the contested sign and of earlier marks (1) and (2). Aurally, the signs also differ in the additional words of earlier marks (1) and (2) that have no counterpart in the contested sign.

Taking into consideration that, for the reasons explained above, the role of the differentiating elements is rather secondary, earlier marks (1) and (2) and the contested sign are visually and aurally similar to an average degree at least. Earlier mark (3) and the contested sign are visually highly similar and aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As earlier mark (3) and the contested sign will be perceived with exactly the same meaning, the signs are conceptually identical. Earlier marks (1) and (2) and the contested sign are 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 marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal, despite the presence of non‑distinctive or lowly distinctive element in earlier marks (1) and (2), as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

According to the same line of case-law, 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). Moreover, for the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect.

In the present case, the goods and services are partly identical and similar to varying degrees and partly dissimilar. The signs are visually and aurally similar to an average degree at least and conceptually, at least, highly similar. This is because the only distinctive verbal element of the earlier marks is entirely reproduced in the contested sign. Moreover, for the reasons already given above, the differentiating elements will have little impact on the consumer, if any, and cannot counteract the overwhelming similarities between the signs.

Account should also be 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 the present case, 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).

Furthermore evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17). In the present case, the similarities between the signs are sufficient to counterbalance the low degree of similarity between some of the services.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include ‘ALMA’ In support of its argument the applicant refers to a few trade mark registrations in the European Union

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 ‘ALMA’. 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 public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registrations.

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.

The rest of the contested goods and services 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 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

Aldo BLASI

Sandra IBAÑEZ

Marianna KONDAS

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.