OPPOSITION No B 3 080 567

ÏD Group, Société par Actions Simplifiée, 162, Boulevard de Fourmies, 59100 Roubaix, France (opponent), represented by Cabinet Degret, 24, Place du Général Catroux, 75017 Paris, France (professional representative)

a g a i n s t

Particula Ltd, 38 Sheshet Hayamim, 3057746 Binyamina, Israel (applicant), represented by Ratza & Ratza SRL, Bulevardul A.I. Cuza NR. 52-54, Sector 1, 011056 Bucharest, Romania (professional representative).

On 15/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 080 567 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 004 207 , namely against some of the goods in Class 9 and all the goods in Class 28. The opposition is based on French trade mark registration No 4 358 651 . 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 28: Games, toys and playthings; entertainment and game apparatus designed for use with a separate display screen or a monitor; portable games with liquid crystal displays; controllers for game consoles; controllers for games; confetti; game consoles; novelty toys for parties; practical jokes (novelties); parlour games; jigsaw puzzles.

Class 35: Retail services for the following goods: sound recording discs, audio and video recording discs, bags, covers and cases for mobile phones, data processing equipment, video game cartridges, games, toys and playthings.

Class 41: Education; providing of training; cultural and entertainment activities; animation of educational conferences; facilitation of instruction, education and training courses for young people and adults; animation of educational courses; animation of educational events; game animation; distribution of education material; complementary education; education, teaching and providing of training; providing of educational entertainment services for children in after-school centers; providing of training and educational services in theater, music, television, radio and cinema; organization of exhibitions for cultural or educational purposes; preparation and animation of games; educational and training services related to games.

The contested goods are the following:

Class 9: Educational software; computer gaming software; software; downloadable applications for use with mobile devices; electronic game software for mobile phones; augmented reality software for use in mobile devices for integrating electronic data with real world environments; computer central processing units; processors [central processing units]; all of the aforementioned goods being exclusively proposed in connection with cube-type puzzles.

Class 28: Toys; games; controllers for game consoles; novelty toys for parties; parlour games; joysticks for video games; jigsaw puzzles; all of the aforementioned goods being exclusively proposed in connection with cube-type puzzles.

Some of the contested goods are identical or similar to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 majority of the goods deemed to be identical are directed at the public at large. However, some of the goods such as educational software; software; computer central processing units; processors [central processing units]; all of the aforementioned goods being exclusively proposed in connection with cube-type puzzles target both the public at large and business customers with specific professional knowledge or expertise. In relation to software and particularly education software as well as toys and games, the public at large will display a somewhat higher than average degree of attentiveness since – in relation to these goods – consumers take into account not only the look or outward appearance but also the educational or developmental aspects. Therefore, in relation to the relevant goods, the relevant public’s degree of attention may vary from average to higher than average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is France.

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 trade mark is a figurative mark composed of a figurative device depicting a cube with green, red and yellow square surfaces, with some rounded and some straight corners, placed against a grey circle. The figurative device of a cube has a low degree of distinctiveness in relation to games, toys and playthings; jigsaw puzzles in Class 28 and in relation to retail services for the following goods: games, toys and playthings in Class 35 which might include cube toys or have a relation to cube games. It has an average degree of distinctiveness in relation to the remaining goods and services. The grey circle is a basic geometrical shape. It plays a function of a background for the cube and is non-distinctive.

The earlier mark has no element that could be considered clearly more dominant than other elements.

The contested sign is a figurative mark composed of a figurative device depicting a cube in red, blue and yellow and outlined with a thick hexagonal line which, as the parties argued, might also be perceived as a stylised letter ‘O’. The contested sign also contains a black bold upper-case letter ‘G’ and the verbal element ‘cube’ depicted in black stylised lower-case letters.

The verbal element ‘cube’ means ‘a solid object with six square surfaces which are all the same size’ (information extracted from Collins Dictionary on 21/05/2020 at https://www.collinsdictionary.com/dictionary/english/cube). This word also exists in French with the same meaning and therefore the relevant public will understand it as described above. The contested sign also contains a figurative device of a cube, which reinforces the concept conveyed by the verbal element ‘cube’. Bearing in mind the fact that all the contested goods have a connection with cubes, these elements have a low degree of distinctiveness.

The parties argued that the contested sign contained the verbal element ‘GO’. The applicant also submitted extracts from its website and from an internet search showing that the contested sign is used and promoted on the market as ‘GO CUBE’. Therefore, at least part of the relevant public will perceive the image of a cube as a stylised letter ‘O’ and, in combination with the letter ‘G’, as the verbal element ‘GO’.

The applicant argued that the relevant public will associate the word ‘GO’ with the concept of a famous Chinese board game called ‘GO’, which, according to the applicant, is very popular in France. The applicant also submitted a printout from the official web site of the French GO Federation. However, the information in the printout is not in the language of the proceedings. Furthermore, even if the ‘GO’ game is known by some part of the relevant public, the evidence does not show to what extent the relevant public is familiar with this game. Moreover, even if it was familiar, in the contested sign the letter ‘O’ appears as a cube device and it appears, from the printouts submitted by the applicant, that the ‘GO’ game does not involve cubes. Furthermore, the part of the relevant public, which perceives the cube as a stylised letter ‘O’ and identifies the verbal element ‘GO’, is likely to perceive it as referring to the English word which means, inter alia, ‘movement from one place to another, travel’ (information extracted from Oxford Dictionaries 25/05/2020 at https://www.lexico.com/en/definition/go ). This word is not related in any way with the relevant goods and has an average degree of distinctiveness.

However, it cannot be excluded that part of the relevant public will perceive the letter ‘G’ and a figurative device of a cube. This is because the word ‘GO’ is not a French word and because of the high stylisation of the hexagonal shape, as well as the fact that it is not empty like a typical letter ‘O’, but filled with a cube.

The applicant argued that the letter ‘G’ might be associated with the gravitational constant, which – according to the extract from Wikipedia submitted by the applicant – ‘is involved in the calculation of gravitational effects in Sir Isaac Newton’s law of universal gravitation and in Albert Einstein’s general theory of relativity’. Bearing in mind the relevant goods and services and the very specific nature of this concept, it is unlikely that even professional consumers who display a higher than average degree of attentiveness would associate the letter ‘G’ in the contested sign with the gravitational constant even if they are familiar with this concept. However, it must be recalled that the Court has confirmed that single letters can have an independent conceptual meaning (08/05/2012, T‑101/11, G, EU:T:2012:223, § 56; 21/03/2013, C‑341/12 P, G, EU:C:2013:206). Therefore, the letter ‘G’ in the contested sign will be perceived as having the concept of a letter ‘G’.

Furthermore, the opponent argued that the letter ‘G’ is weak and it referred to four single letter ‘G’ trade marks, namely to IR designating the European Union No 1 315 968, ‘G’ (figurative mark); IR designating the European Union No 1 313 299 ‘G’ (figurative mark); EUTM No 1 943 091, ‘G’ (figurative mark); EUTM No 432 500, ‘G’ (figurative mark). The opponent also referred to a Boards of Appeal decision (05/06/2017, R 2080/2016‑4, A) to support its argument that the letter ‘G’ in the contested sign is weak. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198). In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings because they concerned single-letter trade marks, which is not the case here. ‘G CUBE’ or ‘GO CUBE’ is not a single letter sign. The letter ‘G’ in the contested sign is not related in any way to the relevant goods and is considered to have an average degree of distinctiveness.

The opponent argued that the cube device, because of its size and bright colours, is a prominent element in the contested sign. However, the letter ‘G’ is of the same size as the cube and, moreover, both the letter ‘G’ and the cube device appear on the same line within the contested sign. Therefore, contrary to the opponent’s argument, the Opposition Division is of the view that the contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the image of a cube depicted from the same angle. They also coincide in that their cubes both have red and yellow square surfaces – although only the yellow square surface appears in the same position. The signs differ in the position of their red square surface and in the colour and position of the third square surface – namely green in the earlier mark (on the left side) versus blue (on the top) in the contested sign. The signs also differ in that the cube in the earlier mark is placed against a grey circle whilst in the contested sign it is outlined with thick black lines in a hexagonal shape. They further differ in the contested sign’s upper-case letter ‘G’ and verbal element ‘cube’, which have no counterparts in the earlier mark. Furthermore, due to the presence of verbal elements in the contested sign, the overall configuration of the contested sign is visually quite different from that of the earlier mark.

The visual similarity between the signs lies in the fact that the cubes are depicted at the same angle and that they coincide in two out of three colours, albeit not exactly in the same positions or shapes. However, the differing verbal elements in the contested sign, along with the earlier mark’s circle, contribute to a quite different overall configuration of the signs. Therefore, the signs are visually similar to only a low degree.

Aurally, it is not possible to compare the signs since the earlier mark is purely figurative and purely figurative signs are not subject to a phonetic assessment.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be associated with the concept of a cube. However, the differing verbal elements, namely the letter ‘G’ or the word ‘GO’ (depending on the public’s perception) will convey additional concepts in the contested sign as explained above. Moreover, these differing concepts are evoked by the distinctive verbal elements ‘G’ or ‘GO’. Therefore, the signs are conceptually similar to a low degree.

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

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as below average for some of the goods and services in question, namely for games, toys and playthings; jigsaw puzzles in Class 28 and retail services for the following goods: games, toys and playthings in Class 35. The mark has a normal degree of distinctiveness for the remaining goods and services, despite the presence of a non-distinctive circular background in the mark, as stated above in section c) of this decision.

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).

The goods and services are deemed to be identical. They target both the public at large and business customers with specific professional knowledge or expertise. The degree of attention of the relevant public may vary from average to higher than average.

The signs are visually and conceptually similar to a low degree and the aural comparison has no impact on the assessment of the similarity between the signs. The distinctiveness of the earlier mark is low in relation to games, toys and playthings; jigsaw puzzles in Class 28 and retail services for the following goods: games, toys and playthings in Class 35, and normal in relation to the remaining goods and services.

The signs are similar to the extent that they both contain an image of a cube which is depicted from the same angle. However, the colours, shapes and positions of the coloured surfaces are not the same in the cubes. Moreover, the presence of the differing elements, namely the circular background in the earlier mark and letter ‘G’ / verbal element ‘GO’ (depending on the public’s perception) and the verbal element ‘cube’ in the contested sign contribute to the different overall perception of the signs. They will not be overlooked by consumers when encountering the signs and, despite their weak degree of distinctiveness (or non-distinctiveness in the case of the circular background), these elements play an important role in the overall visual perception of the signs.

The differing elements in the signs are clearly perceptible and, owing to these differing elements, the overall impressions created by the signs are sufficiently different to safely dispel any likelihood of confusion between the marks. For the sake of completeness, the Opposition Division concludes that a likelihood of association (where consumers assume that the goods and services originate from the same undertaking or economically linked undertakings) is also excluded. It is not likely that consumers will perceive the contested mark as a different line of the opponent’s goods and services because of the completely different overall compositions of the marks, the non-identity of the signs’ similar element (the cube) and the additional differing elements.

In its observations, the applicant argued that the earlier trade mark has a low degree of distinctiveness given that many trade marks both in France and in the European Union include a cube in relation to goods in Classes 9 and 28. In support of its argument the applicant submitted an extract from TMView that lists several trade mark registrations in France and 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 a cube device. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Cynthia DEN DEKKER

Birute SATAITE-GONZALEZ

Erkki MÜNTER

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.