OPPOSITION No B 3 078 692

Sony Interactive Entertainment Europe Limited, 10 Great Marlborough Street, W1F 7LP London, United Kingdom (opponent), represented by Boult Wade, S.L., Avda. de Europa, 26, Edif. Ática 5, Planta 2, 28224 Pozuelo de Alarcón (Madrid), Spain (professional representative)

a g a i n s t

Story Producoes Ltda – EPP, Rua Itobi 106, Sumare, São Paulo, Brazil (applicant), represented by Casas Asin, S.L, Av. San Francisco Javier 9, Edificio Sevilla 2, 8ª Planta, Oficina 7, 41018 Sevilla, Spain (professional representative).

On 25/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 078 692 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 970 813 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 and services (in Classes 9 and 41) of European Union trade mark application No 17 970 813 FORMULA DREAMS (word mark). The opposition is based on European Union trade mark registration No 14 241 749 DREAMS (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 and services

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

Class 9: Computer game software; computer software for video games or for games machines; video games; electronic devices for the wireless receipt, storage and transmission of data and messages; downloadable electronic publications; sound and video recordings featuring music, entertainment and games; electronic game software for mobile phones; application development tool programs for personal and handheld computers; downloadable application software; downloadable audio and video recordings and media.

Class 38: Digital media streaming services; streaming of audio material on the internet, via televisions, mobile phones and games consoles; streaming of video material on the internet, via computers, televisions, mobile phones and games consoles; streaming of audio and video material via third party devices; all of the aforesaid services being for or in relation to computer game software and video game software and the online hosting of content, video and sound files regarding characters, themes, levels, storylines from a computer game or video game.

Class 41: Electronic games services provided by means of the Internet; Internet games (non-downloadable); arranging of games; organizing of games; education; entertainment services; entertainment services provided online and/or via a computer database for matching users for the transfer or sharing of computer games, music, video and audio recordings via communications networks; organizing, staging and the provision of on-line tournaments; entertainment by means of wireless television broadcasts; provision of customized web pages for featuring game player information, including information regarding a player's identity and the player's preferences; the provision of on-line electronic publications; entertainment services provided online and via a computer database for the transfer or sharing of computer games, music, video and audio recordings via communications networks; electronic game services provided by means of the internet allowing players to share live game footage with other players for the purposes of either allowing them to take control of the game or to allow multiplayer game player; information relating to all of the aforementioned; all of the aforesaid services being for or in relation to computer game software and video game software and the online hosting of content, video and sound files regarding characters, themes, levels, storylines from a computer game or video game.

Class 42: Hosting on-line web facilities for interactive game play; computer services in the nature of customised web pages for featuring game player information, including information regarding a player's identity and the player's preferences; hosting video and computer games or parts of video or computer games created by others on a computer service for a global network; all of the aforesaid services being for or in relation to computer game software and video game software and the online hosting of content, video and sound files regarding characters, themes, levels, storylines from a computer game or video game.

The contested goods and services are the following:

Class 9: Downloadable applications; downloadable on-line games; downloadable publications; exposed cinematographic films; recorded DVDs and CDs; computer game programs; Audio recordings; Audio visual recordings; Video recordings; Downloadable video files; Downloadable video recordings; Downloadable podcasts; Downloadable digital music; Downloadable music files; Downloadable sound recordings; Downloadable multimedia files; Downloadable applications; Downloadable computer games; Downloadable electronic games; CDs; Pre-recorded CDs; DVDs; Pre-recorded DVDs.

Class 41: Entertainment services; television entertainment; production of TV shows, reality shows, movies, films, videos, cartoons (other than for advertising purposes); production of podcasts, webcasts; production of audio and video content for cultural and entertainment purposes; providing not downloadable on-line electronic publications, music, videos, electronic books and journals; game services provided on-line from a computer network; organization of sports competitions (entertainment); providing television programmes, reality shows, movies, films, videos, cartoons, podcasts, webcasts and games, all the aforementioned not downloadable and via video-on-demand or website services; providing information on television programmes, reality shows, movies, films, videos, cartoons, podcasts, webcasts and games, all the aforementioned not downloadable and via video-on-demand or website services; creation of game concepts and formats for TV shows; Production of TV shows; Production of films; Production of video films; Production of cinema films; Production of television films; Production of cinematographic films; Production of animated cartoons; Provision of entertainment via podcast; Audio, video and multimedia production, and photography; Production of entertainment in the form of television programs; Production of entertainment in the form of sound recordings; Production of entertainment in the form of a television series; Production of educational sound and video recordings; Providing online publications, not downloadable; Providing online music, not downloadable; Providing online videos, not downloadable; Providing online graphic novels, not downloadable; Providing online comic books, not downloadable; Organization of sports competitions; Providing television programs, not downloadable, via video-on-demand services; Providing films, not downloadable, via video-on-demand services; Development of formats for television programs.

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

The term ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and 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).

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 Downloadable on-line games; Downloadable applications; Downloadable applications; Downloadable computer games; Downloadable electronic games are included in the broad category of, or overlap with, the opponent’s downloadable application software. Therefore, they are identical.

The contested Downloadable video files; Downloadable video recordings; Downloadable podcasts; Downloadable digital music; Downloadable music files; Downloadable sound recordings; Downloadable multimedia files are included in the broad category of, or overlap with, the opponent’s downloadable audio and video recordings and media. Therefore, they are identical.

The contested Downloadable publications include, as a broader category the opponent’s downloadable electronic publications. 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 Computer game programs are included in the broad category of, or overlap with, the opponent’s computer game software. Therefore, they are identical.

The contested Exposed cinematographic films; recorded DVDs and CDs; Audio recordings; Audio visual recordings; Video recordings include, are included in, or overlap with the opponent’s sound and video recordings featuring music, entertainment and games. The goods are identical.

The contested CDs are at least similar to the opponent’s electronic devices for the wireless receipt, storage and transmission of data and messages, for instance such as hard drives, USB flash drives. They have the same purpose and usually coincide in the relevant public. Furthermore they are in competition

The contested Pre-recorded CDs overlap with the opponent’s sound and video recordings featuring music, entertainment and games. The goods are identical.

The contested DVDs are at least similar to the opponent’s electronic devices for the wireless receipt, storage and transmission of data and messages, for instance such as hard drives, USB flash drives. They have the same purpose and usually coincide in the relevant public. Furthermore they are in competition.

The contested Pre-recorded DVDs overlap with the opponent’s sound and video recordings featuring music, entertainment and games. The goods are identical.

Contested services in Class 41

The contested Entertainment services are contained identically in both lists of services and hence identical.

The contested services television entertainment; production of TV shows, reality shows, movies, films, videos, cartoons (other than for advertising purposes); production of podcasts, webcasts; production of audio and video content for cultural and entertainment purposes; Production of TV shows; Production of films; Production of video films; Production of cinema films; Production of television films; Production of cinematographic films; Production of animated cartoons; Provision of entertainment via podcast; Audio, video and multimedia production; Production of entertainment in the form of television programs; Production of entertainment in the form of sound recordings; Production of entertainment in the form of a television series; creation of game concepts and formats for TV shows; Development of formats for television programs are included in or overlap with the opponent’s entertainment services. Therefore, these services are identical.

The same applies to the contested services providing television programmes, reality shows, movies, films, videos, cartoons, podcasts, webcasts and games, all the aforementioned not downloadable and via video-on-demand or website services; providing information on television programmes, reality shows, movies, films, videos, cartoons, podcasts, webcasts and games, all the aforementioned not downloadable and via video-on-demand or website services; Providing online music, not downloadable; Providing online videos, not downloadable; Providing television programs, not downloadable, via video-on-demand services; Providing films, not downloadable, via video-on-demand services; providing music, videos as well as game services provided on-line from a computer network on the one hand and the opponent’s entertainment services on the other. Consequently, these services are also identical.

The contested services organization of sports competitions (entertainment); Organization of sports competitions and the opponent’s entertainment have the same purpose, distribution channels and end users. Therefore, these services are similar.

The contested production of educational sound and video recordings overlaps with, and is thus identical to, the opponent’s education.

The contested services providing not downloadable on-line electronic publications, electronic books and journals; Providing online publications, not downloadable; Providing online graphic novels, not downloadable; Providing online comic books, not downloadable are included in or synonymous to the opponent’s provision of on-line electronic publications. Therefore, these services are identical.

The contested photography and the opponent’s provision of on-line electronic publications can have the same purpose. They usually coincide in their usual origin, relevant public and distribution channels. Consequently, these services are considered to be highly similar.

The applicant’s argument, that the goods and services are dissimilar because the opponent is active in the videogame sector whereas the applicant is active in the television sector, cannot be upheld.

It must be noted the way the parties would actually use the goods and services bears no relevance for the comparison of the goods and services, as the goods and services as protected by the marks in conflict must be taken into account, and not those actually marketed under those marks (16/06/2010, T-487/08, KREMEZIN, EU:T:2010:237, § 71; 18/11/2014, T-308/13, Electrolinera, EU:T:2014:965, § 50). It is of importance that the protection granted is sufficiently broad not to undermine the opponent’s legitimate interest in being able, in the future, to extend its range of goods or services while enjoying the protection which the registration of that trade mark confers on it. Therefore, the Opposition Division is bound to the respective list of goods and services when comparing the goods and services at issue.

Furthermore, and in any event, the target public of the videogame and television sector is the same, and not different as the applicant contends.

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 goods and services found to be identical and similar are directed at the public at large but also 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, specialised nature, or terms and conditions of the goods and services purchased.

3. The signs

DREAMS	FORMULA DREAMS
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 marks at issue are word marks, the contested sign being ‘FORMULA DREAMS’, whereas the earlier mark is ‘DREAMS’.

‘DREAMS’ is meaningless for the non-English speaking part of the public, whereas it is self-explanatory for the English-speaking part of the public as meaning a ‘series of images, thoughts, and emotions, often with a story-like quality, generated by mental activity during sleep; the state in which this occur’.

The word ‘FORMULA’ is Latin-based and will probably be understood around Europe as many European languages have Latin roots. It certainly exists in the English language and the English speaking public will readily and easily identify this word as meaning either a group of symbols that make a mathematical statement, or a powder which you mix with water to make artificial milk for babies (collinsdictionary.com). For reasons of procedural economy, the Opposition Division will hence focus its examination on the English-speaking public.

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.

According to settled case-law, a term with a clear meaning is considered to be descriptive only if there is a sufficiently direct and specific relationship between that term and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (27/09/2018, T-70/17, NorthSeaGrid (fig.) / nationalgrid (fig.) et al., EU:T:2018:611, § 82). Further, the fact that a mark has been registered means that that mark has a minimum of inherent distinctiveness, since Article 7(1)(b) EUTMR precludes registration of a mark which is devoid of distinctive character (27/09/2018, T-449/17, SEVENFRIDAY / SEVEN et al., EU:T:2018:612, § 73 and the case-law therein cited).

Therefore the terms ‘DREAMS’ and ‘FORMULA’, as they do not have a direct and specific relationship to the goods and services in question, which would allow the public immediately and without further thought perceive a description of those goods and services, are of average distinctive character for all the goods and services at issue (see also for instance decision of the Boards of Appeal of 20/10/2016, R 89/2016-1, para 25 concerning DREAMS).

Visually and aurally, the signs coincide in the word ‘DREAMS’. However, they differ in the word ‘FORMULA’ which has no counterpart in the earlier right. It is duly considered that a difference between the signs lies in the first verbal element of the contested sign. However, the fact remains that the entire verbal element of the earlier mark is fully included as the last component of the contested mark. Even though the coincidence is in the last element of the contested sign, on account of the fact that the consumers would likely grasp the sign in its entirety, and that the entire wording of the earlier mark represents the second half of the contested sign, the signs are considered to be visually and aurally similar to an average degree as both signs share the independent and identical word element ‘DREAMS’.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both marks will be understood as referring to ‘DREAMS’. The addition of the word ‘FORMULA’ in the contested sign does not create a unitary meaning and endow these two words together with a different concept. Both words retain their individual meaning and the additional word ‘FORMULA’ does in no way weaken or remove the meaning of ‘DREAMS’. Therefore, they are conceptually similar to an average degree. The applicant did not submit any argument to why the relevant public would automatically relate the term ‘FORMULA’ , which has several meanings as seen above, to the car race series called ‘Formula 1’.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

The applicant’s argument that the signs would be dissimilar cannot be upheld. There is no reason to believe that the public would only retain the element ‘FORMULA’ of the contested sign and not pay any attention of the element ‘DREAMS’. The fact that the applicant might use its sign for a reality show about kids that dream of being racing pilots, is of no bearing in the comparison of the sign, as this comparison has to be based on the signs as registered and not on the signs as used.

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 goods and 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 contrary to what the applicant invokes.

5. 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 and services are identical or similar, and the signs are visually, aurally and conceptually similar to an average degree. The earlier mark has an average inherent distinctive character, and the public’s degree of attentiveness may vary from average to high.

It is true that consumers more easily remember the beginning of the signs. However, the beginning of a trade mark is not always capable of attracting the consumers’ attention to a greater extent than the components which follow. In particular, the fact that a component of a composite trade mark is situated at the beginning thereof may be offset by the characteristics of the following component, provided that, as in the present case, it cannot be disregarded in the overall impression created by the composite trade mark (07/03/2013, T-247/11, ‘Fairwild’, ECLI:EU:T:2013:112, § 33 and § 34). Furthermore, two marks are similar where, from the point of view of the relevant public, they are at least in part identical as regards one or more relevant aspects (20/01/2010, T-460/07, Life Blog, EU:T:2010:18, § 51 and the case-law cited therein) as is the case here, since the signs share the identical and independent element ‘DREAMS’.

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), as the entire earlier mark is fully and identically contained in the contested sign.

Therefore, as the goods and services are identical or similar, and due to the visual, aural, and conceptual similarity, a likelihood of confusion exists.

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

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include ‘DREAMS’. In support of its argument the applicant refers to several 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 ‘DREAMS’. Under these circumstances, the applicant’s claims must be set aside.

Therefore, the opposition is well founded on the basis of the opponents European Union trade mark registration No 14 241 749. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Beatrix STELTER

Karin KLÜPFEL

Tobias KLEE

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.