OPPOSITION No B 3 075 822

Cherry AB (publ), Blekholmstorget 30, 111 64 Stockholm, Sweden (opponent), represented by Valea AB, Lilla Bommen 3a, 405 23 Göteborg, Sweden (professional representative)

a g a i n s t

IGT, a Nevada Corporation, 9295 Prototype Drive, 89521-8986 Reno, United States of America (applicant), represented by Armin Herlitz, Seering 13-14 8141 Premstätten, Austria (professional representative).

On 02/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 075 822 is upheld for all the contested goods.

2. European Union trade mark application No 17 961 303 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods (in Class 28) of European Union trade mark application No 17 961 303 (word mark CHERRY CA$H). The opposition is based on, inter alia, Swedish trade mark registration No 174 732 (word mark CHERRY). The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Swedish trade mark registration No 174 732 (word mark CHERRY).

Preliminary remarks with regard to the comments of the applicant in relation to the admissibility check of the earlier rights

During the opposition proceedings, the earlier marks/rights are examined to see if at least one is clearly identified. If the opposition is based on more than one earlier right and at least one of them has been correctly identified, the examination of admissibility (relative requirements) can proceed based on that earlier right. The parties are informed thereof when notification of the time limits for the opposition proceedings is sent to the parties. In the case at hand the parties were informed with a letter dated 11/03/2019 that at least one earlier right, namely EUTM No 5 811 765 was found to be admissible. This however does not mean that the other earlier rights are considered to be non-admissible. Quite the contrary in the present case, also the earlier Swedish trade mark mark registration No 174 732 (word mark CHERRY) is admissible given that it fulfils all admissibility requirements, that is the absolute requirements such as the identification of the earlier right and ground and the relative requirements such as the representation of the earlier mark, the goods and services, identification of the opponent etc.

a) The goods

The goods on which the opposition is based are, among others, the following:

Class 28: Games and toys; gymnastic and sporting articles (other than clothes); decorations for Christmas trees.

The contested goods are the following:

Class 28: Slot machines, gaming machines and poker machines; Gaming machines, namely, devices which accept a wager; reconfigurable casino and lottery gaming equipment, namely, gaming machines and operational computer games software therefor sold as a unit; the aforesaid machines and equipment operating individually or in networks; lottery tickets; lottery cards; scratch cards for playing lottery games.

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 applicant’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.

The contested goods slot machines, gaming machines and poker machines; gaming machines, namely, devices which accept a wager; reconfigurable casino and lottery gaming equipment, namely, gaming machines and operational computer games software therefor sold as a unit; the aforesaid machines and equipment operating individually or in networks; lottery tickets; lottery cards; scratch cards for playing lottery games are all included in, or overlap with the broad category of the opponent´s goods games and are therefore identical.

b) Relevant public — degree of attention

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

In the present case, the goods found to be identical 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 on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

CHERRY	CHERRY CA$H
Earlier trade mark	Contested sign

The relevant territory is Sweden.

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 verbal element ‘CA$H’ in the contested sign will be immediately understood as the English word ‘cash’ by the relevant public as the use of the Dollar symbol instead of the letter ‘S’ is commonplace in the relevant market of casino- and lottery games. Cash is a very basic English word and will be understood by the relevant public. This element is considered to be non-distinctive as all relevant goods which are casino machines and lottery tickets can be used to gain or, more likely, lose cash.

The element ‘CHERRY’ which constitutes the earlier mark and is the only distinctive element in the contested sign will be understood as a well-known stone fruit and is easily understood by the relevant public who has a good knowledge of the English language. This word is distinctive for the relevant goods. While it is true that slot machines may also contain a cherry symbol on their reels, they may also contain other symbols such as a pineapples, bananas, grapes, melons, numbers and many other icons. The word Cherry as such can however not be considered to be lacking distinctiveness as it does not describe anything with regard to the goods found to be identical. The word Cherry cannot be considered to be commonly used in relation to slot machines, unlike the icon of a cherry. To place the word Cherry on a slot machine would be seen as a badge of commercial origin.

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 and aurally the signs coincide in the verbal element ‘CHERRY’, which constitutes the entire earlier mark and is the only distinctive element in the contested mark.

Therefore, the signs are highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a cherry, the signs 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 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

e) Global assessment, other arguments and conclusion

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.

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).

The goods are identical. The signs are visually, aurally and conceptually highly similar due to the fact that they coincide in the only distinctive element CHERRY, which constitutes the earlier mark. The degree of attention varies from average to high. The distinctiveness of the earlier mark is at least average.

Bearing in mind all of the above, the difference in the non-distinctive verbal element ‘CA$H’ at the end of the contested mark, is not sufficient to outweigh the signs’ visual and aural similarities. Therefore, it is highly conceivable that the relevant public could confuse the signs or believe that the identical goods originate from the same or economically linked undertakings.

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).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Swedish trade mark registration No 174 732. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier Swedish trade mark registration No 174 732 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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(5) EUTMR.

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.

The Opposition Division

Tobias KLEE

Lars HELBERT

Beatrix STELTER

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.