OPPOSITION Nо B 3 081 014

Ares S.A., Avda. Rafael Nuñez, 4763, Cerro de Las Rosas, Córdoba, Argentina (opponent), represented by Manresa Industrial Property, S.L., Diputació 256, 3º 1ª, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Wgames Incorporated (A Delaware Corporation), C/O Corporation Trust Center 1209 Orange Street Wilmington, 19801 Wilmington, United States of America (applicant), represented by HGF Limited, Delta House, 50 West Nile Street, G1 2NP Glasgow, United Kingdom (professional representative).

On 30/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 081 014 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 996 805 is rejected in its entirety.

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

REASONS

On 23/04/2019, the opponent filed an opposition against all the goods and services of European Union trade mark application No 17 996 805 ‘NEVERLAND CASINO’ (word mark). The opposition is based on, inter alia, Spanish trade mark registration No 3 004 556 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, including, inter alia, Spanish trade mark registration No 3 004 556.

The date of filing of the contested application is 05/12/2018. The opponent was therefore required to prove that this trade mark on which the opposition is based was put to genuine use in Spain from 05/12/2013 to 04/12/2018 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date.

Furthermore, the evidence must show use of the trade mark for the services on which the opposition is based, namely the following:

Class 41: Education; providing of training; entertainment; sporting and cultural activities, including amusement parks.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 30/04/2020, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 05/07/2020 to submit evidence of use of the earlier trade mark. This time limit was extended upon the opponent’s request until 12/09/2020. On 09/09/2020, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

 invoices

o 4 invoices, issued between 13/12/2013 and 23/12/2013;

o 34 invoices, issued between 03/01/2014 and 31/12/2014;

o 35 invoices, issued between 01/01/2015 and 31/12/2015;

o 23 invoices, issued between 15/01/2016 and 30/12/2016;

o 22 invoices, issued between 01/02/2017 and 28/12/2017;

o 27 invoices, issued between 05/01/2018 and 13/10/2018.

All the invoices pertain to the relevant period and are issued by the company, Funtasmix International, S.L., which is, according to the licence agreement enclosed and described later, the authorised licensee for use of the opponent’s earlier trade mark and for providing the services in Spain. The invoices are addressed to different companies and/or individual customers in Spain. Each invoice contains the figurative mark at the top and also at the bottom together with the full address of the company, Funtasmix International, S.L. Additionally, ‘NEVERLAND’ can be read in the column ‘invoice concept’ in some of the invoices as the services offered, as well as many other entertainment services, inter alia, bowling event/game, birthday party, PJ Mask breakfast, bowling tournament, Santa Klaus event. All the invoices are in Spanish but a translation into English of the main terms is provided.

 Three invoices issued by providers of beverages and cleaning products in Spain, and addressed to Funtasmix International, S.L. The invoices are dated within the relevant period.

 Trade mark licence agreement between Ares S.L., the owner of the earlier trade marks, and Funtasmix International, S.L., the licensee. This agreement gives the licensee the right to make use of the opponent’s earlier trade mark when offering the related services in Spain. The agreement is dated in 2013 and valid for one year, which can be extended indefinitely.

 Photographs and promotional material of the ‘NEVERLAND’ franchises in which the figurative mark can be seen. The photos are undated but 2016 is displayed in some of the promotional materials. The location of the franchise, or the place where promotions are offered, cannot be determined from these documents. However, it is deduced that the country is Spain since the language is Spanish.

 Several screenshots of the Neverland Europa Facebook page, dated between 2013 and 2018, including leaflets of Neverland promotional activities, as well as photos of the Neverland amusement parks, in which the trade mark is displayed. The photographs show that activities relating to billiards, bowling, carousel, indoor playgrounds, etc. are offered in these parks. The cities that appear in the majority of the Facebook material are all in Spain.

 Two printouts: one from www.duendesenmadrid.com and the other from www.grupovips.com, containing information and pictures about the Neverland leisure spaces. The first printout states that the company, together with a large fast food company called VIPS, has opened a new and innovative amusement park in Madrid. The second printout shows that there are more than 20 stores in Spain, located in the most important cities. The printouts are dated within the relevant period, in 2014 and 2016, and are translated into English as their original language is Spanish.

 Two Spanish press clippings: one from https://infonegocios.info (dated 19/12/2015) providing information relating to the award given to Neverland as the Entrepreneur of the year and the best in 2015. This press article states that there were more than 100 nominees and only 32 winners. The other press clipping is from http://historico.aragondigital.es (dated 27/11/2013) and refers to the Neverland amusement park in Zaragoza ‘Neverland Puerto Venecia’ as ‘the best family entertainment centre in the world’. Moreover, it refers to the Brass Ring Award in the Top FEC’s of the world category (best family leisure park in the world) given to this specific park in Zaragoza by the International Association of Amusement Parks and Attractions (IAPPA). In addition, this article mentions the recognition of the ‘Neverland Puerto Venecia’ park as the best category retail and leisure development, and that it will soon be the best shopping and entertainment centre in the world.

 Copy of the EUIPO decision in the opposition 27/03/2020, No B 3 077 804.

Place of use

The invoices show that the place of use is Spain. This can be inferred from the addresses of the companies to whom the invoices are issued, the language of the documents (Spanish) and the currency mentioned in the invoices (Euro). Therefore, in accordance with Article 18(1), second subparagraph, point (b), EUTMR, the evidence submitted contains sufficient indications concerning the place of use as Spain.

Time of use

All of the evidence, except the online press clipping from http://historico.aragondigital.es, which is also submitted as a Facebook publication, is dated within the relevant period. Therefore, the evidence of use sufficiently indicates the time of use.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The documents filed, in particular all the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use.

All the invoices issued by the opponent’s licensee in the relevant period (2013 to 2018) demonstrate frequency of use of the mark during that period. Furthermore, the invoices demonstrate that the services were offered in several locations in Spain. Moreover, the printout from www.grupovips.com and the press clipping from https://infonegocios.info provide important information as to the extent of use of the mark. They indicate that there were more than 20 amusement parks in Spain and that a Spanish award was given to Neverland as the Entrepreneur of the year in 2015. Additionally, the opponent has submitted significant examples of promotional materials and screenshots of its Facebook profile, which provide indications as to the extent of use.

Consequently, the evidence is sufficient to demonstrate the extent of use of the mark.

Nature of use

Sign used as a trade mark

Nature of use requires, inter alia, that the sign is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and/or services of different providers.

The materials submitted clearly demonstrate that the opponent is using the sign to indicate the commercial origin of the services. Therefore, it has shown use as a trade mark.

Use of the trade mark as registered and use for the services for which it is registered

In the context of Article 10(3) EUTMDR, the expression nature of use includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the opponent’s sign is registered as the figurative trade mark . In the evidence, the sign generally appears as the earlier registered figurative mark, although sometimes it appears as only the verbal element, or without the red carousel horse or all in white. However, despite the use of slightly different depictions in some items of the evidence, as these do not alter the distinctive character of the earlier mark, the use of the sign in its registered form clearly predominates.

Therefore, use of the sign above is use of the mark as registered and this constitutes use of the earlier mark under Article 18(1), second subparagraph, point (a) EUTMR.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the services covered by this earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

According to case-law, when applying the abovementioned provision, the following should be considered:

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45-46.)

In the present case, the evidence submitted shows that the earlier mark has been used for family entertainment centre services and bowling alley services.

These services can be considered to form objective subcategories of some of the services on which the opposition is based, namely entertainment services and sporting activities. Therefore, the Opposition Division considers that the evidence shows genuine use of the Spanish trade mark registration No 3 004 556 only for family entertainment centre services and bowling alley services.

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 services on which the opposition is based and genuine use is proven are the following:

Class 41: Family entertainment centre services; bowling alley services.

The contested goods and services, after the limitation filed on 29/04/2020, are the following:

Class 9: Computer software and programs for social gaming (excluding gambling for money or money equivalent), social wagering, operation of social games, games of chance, games of skill, and games of mixed chance and skill, and for providing virtual environments in which users can interact for social, gaming or social wagering purposes, all of the foregoing for use on personal computers, on home, arcade, and casino computers, gaming consoles and video terminals, and on wireless communication devices; computer game software downloadable from computer networks for social gaming (excluding gambling for money or money equivalent) social wagering, operation of social games, games of chance, games of skill, and games of mixed chance and skill, and for providing virtual environments in which users can interact for social gaming or social wagering purposes, all of the foregoing for use on personal computers, on home, arcade, and casino computers, gaming consoles and video terminals, and on wireless communication devices.

Class 41: Providing on-line social wagering, social games, games of chance, games of skill, mixed games of chance and skill, and virtual environments in which users can interact for social gaming or social wagering purposes.

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

The term ‘excluding’, 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.

As a preliminary remark, 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.

Contested goods in Class 9

The contested computer software and programs for social gaming (excluding gambling for money or money equivalent), social wagering, operation of social games, games of chance, games of skill, and games of mixed chance and skill, and for providing virtual environments in which users can interact for social, gaming or social wagering purposes, all of the foregoing for use on personal computers, on home, arcade, and casino computers, gaming consoles and video terminals, and on wireless communication devices; computer game software downloadable from computer networks for social gaming (excluding gambling for money or money equivalent) social wagering, operation of social games, games of chance, games of skill, and games of mixed chance and skill, and for providing virtual environments in which users can interact for social gaming or social wagering purposes, all of the foregoing for use on personal computers, on home, arcade, and casino computers, gaming consoles and video terminals, and on wireless communication devices may be indispensable to, or, at least, important for the provision of the opponent’s family entertainment centre services (considered as entertainment services). This is because, in order to offer these services, relevant games software might be required. Due to this close complementary relationship, a significant part of the relevant public may believe that the goods and services concerned are produced/provided under the responsibility of the same undertakings. Therefore, they are similar to a low degree.

Contested services in Class 41

A link can be found between the contested providing on-line social wagering, social games, games of chance, games of skill, mixed games of chance and skill, and virtual environments in which users can interact for social gaming or social wagering purposes and the opponent’s family entertainment centre services. Both cases involve entertainment services, and games rooms that are installed in amusement parks may also have online gaming or betting services. The opponent’s family entertainment centre services is a broad term, including any term intended for entertainment purposes, which includes gambling services that can be physical or virtual. Consequently, these services can, broadly speaking, coincide in their purpose (providing activities for consumers to enjoy in their spare time) and end users. Moreover, they can be in competition. Furthermore, although the usual commercial origin and the premises where these activities take place may differ, they can also be the same, for instance in large amusement parks or theme parks. Therefore, they are considered at least similar.

b) Relevant public – degree of attention

The average consumer of the category of services 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 similar to varying degrees are directed at the public at large and professionals. However, the degree of attention will be higher than average, considering that the services in question can involve significant financial consequences for the consumers, depending on the specific services provided and the stakes involved.

c) The signs

	NEVERLAND CASINO
Earlier trade mark	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 earlier mark is a figurative mark composed of the verbal element ‘NEVERLAND’, depicted in standard, colourful upper-case letters that are uneven and convey the idea of movement, and the figurative element of a red carousel horse. The contested sign is the verbal element ‘NEVERLAND CASINO’.

The verbal element ‘NEVERLAND’, present in both signs, has no meaning for the relevant public and is therefore distinctive. Moreover, the figurative element of the earlier sign does not convey any concept directly related to the relevant services. Therefore, it is also distinctive. However, 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).

The word ‘CASINO’ of the contested mark refers to a gambling establishment. Since the relevant goods and services of the contested sign cover gambling and other services that involve taking risks in the hope of gaining some advantage, benefit, or success, and the respective computer software, the word ‘CASINO’ is either weak or non-distinctive for all the contested goods and services. This is because it indicates the purpose of the goods and services concerned and/or the place where the services are delivered. The Spanish public will understand the meaning of the word ‘CASINO’ and perceive it as descriptive/allusive and, therefore, it is non-distinctive/weak in relation to the relevant goods and services.

Moreover, 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. Consequently, the position of the similar element ‘NEVERLAND’ at the beginning of the contested sign has a particular impact in the present case.

Visually, the signs coincide in the verbal element ‘NEVERLAND’, which is the sole verbal element of the earlier mark and is fully included as the first and distinctive element of the contested sign. However, they differ in the verbal element ‘CASINO’ of the contested sign, which is non-distinctive/weak, and in the figurative element of the earlier mark.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘NEVERLAND’, present identically in both signs. They differ in the additional sound of the letters ‘CASINO’ of the contested sign.

Therefore, the signs are similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a dissimilar meaning since the earlier mark contains the figurative element, as described above, and the contested sign includes the meaningful element ‘CASINO’, which is limited/non-distinctiveness, the signs are conceptually not 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.

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.

e) Global assessment, other arguments and conclusion

The services in question are partly similar to a low degree and partly at least similar. The earlier trade mark’s degree of distinctiveness is average. The level of attention of the relevant public is higher than average. However, 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 signs are visually similar to an average degree, aurally similar to at least an average degree and conceptually not similar. The only verbal element of the earlier mark, ‘NEVERLAND’, is entirely included at the beginning of the contested sign, and is distinctive, as set out above. The additional elements of the signs, namely the figurative element and the different colours of the verbal element of the earlier mark and the verbal element ‘CASINO’ of the contested sign, have less or no impact on the overall impression created by the marks.

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).

It is concluded that the differences between the signs are insufficient to counterbalance the similarities. Consequently, when encountering the contested sign, consumers, even though showing a higher level of attention, will make an association with the earlier mark, which will lead them to believe that the contested goods and services originate from the opponent or, as the case may be, from an economically linked undertaking.

In line with the above, the marks are considered sufficiently similar to cause confusion for the goods and services that are similar to varying degrees.

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 Spanish trade mark registration No 3 004 556. It follows that the contested trade mark must be rejected for all the contested goods and services.

As this earlier right lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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), nor to examine the request of proof of use in relation to these other earlier rights.

In its observations, the applicant argues that it owns several registrations for ‘NEVERLAND CASINO’ in the United States of America and in Canada, which coexist with the opponent’s earlier marks.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C‑498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, and considering that these earlier marks are not registered at European Union level, this argument of the applicant must be rejected as unfounded.

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

Richard BIANCHI

Cristina CRESPO MOLTO

Pierluigi M. VILLANI

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.