OPPOSITION No B 3 082 780

Viacom International Inc., 1515 Broadway, New York, NY 10036-5794, United States of America (opponent), represented by Maucher Jenkins, Liebigstr. 39, 80538 München, Germany (professional representative)

a g a i n s t

Craze GmbH, Herrenstraße 9, 76133 Karlsruhe, Germany (applicant), represented by Erlburg Rechtsanwaltsgesellschaft mbH, Friedrichstraße 88, 10117 Berlin, Germany (professional representative).

On 23/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 082 780 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 006 215, ‘CRAZE SOFT SLIME’ (word mark). The opposition is based on European Union trade mark registrations No 9 726 514, No 9 233 966 and No 3 678 372, all for the word mark ‘SLIME’. 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. However, the Opposition Division considers it appropriate to firstly focus the present examination on the earlier European Union trade mark registration No 9 726 514.

The date of priority of the contested application is 05/07/2018. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 05/07/2013 to 04/07/2018 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 mentioned above.

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

European Union trade mark registration No 9 726 514

Class 41: Entertainment services, amusement park services; sporting and cultural services; production of radio and television programmes; production of films and live entertainment features; production of animated motion pictures and television features; cinema and television studio services; motion picture entertainment, television entertainment services; live entertainment performances and shows; publication of books, magazines and periodicals; providing information on entertainment services to multiple users via the world wide web or the internet or other on-line databases; production of dance shows, music shows and video award shows; production, hosting, organising and presenting comedy shows, game shows and sports events before live audiences which are broadcast live or taped for later broadcast; hosting, organising and presenting live musical concerts; tv news shows; organizing talent contests and music and television award events; organizing and presenting displays of entertainment relating to style and fashion; providing information in the field of entertainment by means of a global computer network.

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 23/01/2020, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 27/03/2020 to submit evidence of use of the earlier trade mark. This term was later extended until 27/05/2020. On 27/05/2020, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

 A witness statement, which, contrary to the applicant’s claims, clearly indicates an employee of the opponent as the undersigned. This document, signed on 27/05/2020, states that the opponent owns the Nickelodeon television channels, allegedly one of the most famous and widely watched children’s TV channels, available throughout the EU and which has localised channels in most EU Member States. The witness statement includes also a table outlining the launching date of the various Nickelodeon channels throughout the EU, from 1993 up to 2007. According to this document, the ‘SLIME’ marks are regular features of many programs shown on the opponent’s channels, including, but not limited to, ‘Slimefest’ and the ‘Kids’ Choice Awards’. The opponent has hosted the ‘SlimeFest’ music and entertainment festival in Blackpool, United Kingdom since 2016, investing over GBP 2.2 million in the production and marketing of SlimeFest and its associated television show, and has attracted approximately GBP 2.2 million in revenue, in the UK since 2016. Furthermore, the SlimeFest events have also taken place in Spain in 2015 and 2016 and in Italy since 2016. The two SlimeFest events in Spain sold approximately 13 000 tickets in total, and these events have been either broadcast live or later in a highlights program on Nickelodeon España and Nickelodeon Italia, respectively. This document further includes a table setting out the number of subscribers to Nickelodeon YouTube channels in certain EU countries as of 08/10/2018 (namely, France, Germany, Italy, Spain and The Netherlands) with numbers of subscribers ranging from 76 000 to 1 396 000, approximately).

The witness statement was accompanied by the following documents:

 Exhibit 1: Printouts from the opponent’s ‘NickALive!’ blog and website, in English and Spanish, showing use of the ‘SLIME’ marks in respect of the ‘SlimeFest’ Spain and Italy events, and the dates on which they took place (2015-2016).

 Exhibit 2-3: Print-outs from the website www.visitblackpool.com regarding the ‘SlimeFest’. According to this documents, the first ‘SlimeFest’ took place on 03/09/2016 and was attended by 4 000 people, while the second edition (21-23/10/2017) and the third edition (20-22/10/2018) were both attended by 12 000 people.

 Exhibit 4: A document originating from the opponent containing viewing figures of the ‘SlimeFest’ for each of the three editions broadcasted in the United Kingdom, from 2016-2018. The figures range from 221 000 (2016) to 237 000 (2018). According to the witness statement, these figures have been sourced by the Broadcasters Audience Research Board ("BARB"), which is the British organisation responsible for researching and measuring both the broadcast viewing habits of the UK public and how the broadcast content is viewed.

 Exhibit 5: A printout taken from the website at www.barb.co.uk outlining the activities and responsibilities of the BARB organization (mentioned above).

 Exhibit 6 and Exhibit 7: Print-outs from the opponent’s Nickelodeon UK Twitter and Facebook accounts, containing references to the ‘SlimeFest’. The posts appearing in these documents date 2016 and 2017.

 Exhibit 8: A powerpoint presentation providing an overview of the 2016 SlimeFest event in Spain (from 26-28 August 2016 in Benicàssim, Spain). The presentation provides information relating to the communication campaign for the event. This document also includes a slide with pictures of merchandising bearing the sign ‘SLIME FEST’, namely one bag, one T-shirt and a cap, in the following manner:

. One of the slide shows what is defined by the opponent as a merchandising shop where goods were sold. This document also states that the 20 minute summary show of the event has been broadcasted 4 times on the Nickelodeon channel and reached over 63 000 viewers, according to a media monitoring company, Kantar Media.

 Exhibit 9: A print-out of the Wikipedia page dedicated to the ‘Nickelodeon Kids’ Choice Awards’ (KCAs) TV program, which includes a table with celebrities ‘slimed’ at the KCAs during the years and other references to Slime Stunts which have taken place at the KCAs.

 Exhibit 10: A print-out of the first page of a Google search for 'kids choice awards SLIME' showing search results consisting of videos from the Youtube website that refer to a 'sliming' from the KCAs.

 Exhibit 11: A document titled ‘Kids Choice Awards UK Viewing Figures’, originating from the opponent and containing viewing figures for the KCAs for the years from 2009-2018. According to the witness statement, these figures have been sourced by BARB. The figures range from 110 000 to 504 000.

 Exhibit 12: A document originating from the opponent containing two tables, one titled ‘EU Slime royalties for toys and games’ in relation to products sold by two licensees, divided per EU country (‘Jurisdiction’). In the ‘Units’ column the figures range from few tens to over 1 300 000. The second table, titled ‘EU Slime royalties for apparel’ refer to other two licensees and regards over 13 400 units sold in the United Kingdom. According to the witness statement, all these data refer to the relevant period. Additionally, in the witness statement it is maintained that over 4 000 000 US dollars ‘in retail sales were generated from licensed sales of toys, games and clothing under the SLIME marks in the European Union during the relevant period’.

 Exhibit 13 and 14: Several print-outs from the UK Amazon website, showing toys products consisting of a sticky and viscous substance, bearing the mark ‘SLIME’, with prices in pounds sterling and dollars. According to the witness statement, the products in question were available on localised Amazon websites throughout the European Union. The dates shown in these documents mostly refer to the relevant period. Customers’ comments are also visible in these printouts.

 Exhibit 15: Printouts from the www.amazon.co.uk website showing few T-shirts under the mark Nickelodeon (visible also on the products’ internal tags). The T-shirts bear stylised inscriptions such as ‘No bad vibes’, ‘You just got slimed’, ‘Slime on’, ‘What’s up slime?’, ‘yo!’, and are presented in the following way: , , , , . According to the witness statement ‘the “product details” section shows that the first date of sale for each item was within the relevant period’.

 Exhibit 16: Printouts from an undefined Amazon website showing few T-shirts bearing the indications ‘MTV Music Television’ or ‘MTV’, which according to the witness statement were available for shipping throughout the European Union.

 Exhibit 17: Printouts from the website blog.viacom containing four blog posts dated within the relevant period which make reference to Nickelodeon and to the toy product called ‘SLIME’, which consists of a viscous, squishy material.

 Exhibit 18: Various articles in English from various online magazines some of which circulated in the United Kingdom, in particular, METRO (dated outside the relevant period, 24/03/2013), Daily Star (18/07/2014), Vox (two articles, dated 12/01/2015 and 29/03/2015), E-News (12/03/2016), Business Insider (15/01/2017) and The Gazette (14/08/2017). Those articles make reference to the use of the SLIME toy product at the SlimeFest and the KCAs events, broadcasted on the Nickelodeon channel, and refer to various international celebrities who had been ‘slimed’ at those events. As highlighted in the witness statement, the article dated 12/01/2015 makes reference to the SLIME toy product and the history and use of such product on Nickelodeon television programs.

 Exhibit 19: A print-out of a search on the Nickelodeon UK YouTube channel for 'SLIME'. The results show a number of videos mostly relating to the use of the SLIME product during the SlimeFest or other TV events broadcasted on the Nickelodeon channel. According to the Witness statement, this search has been made on 08/10/2018 and the videos show a posting date from 6 days to 2 years prior to the date the search has been carried out.

 Exhibit 20: A print-out of a further search for ‘SLIME’ made on the Nickelodeon Spanish YouTube channel carried out, as stated on the witness statement, on 08/10/2018.

The applicant claims that the written statement ‘is not capable to meet the requirements for a proof of use as it does not originate from either the opponent or its registered representatives and has also not been signed by the latter’.

In this respect, it is noted that Article 10(4) EUTMDR expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up.

Moreover, it is observed that Article 97(1)(f) EUTMR does not specify by whom these statements should be signed, which leave open the possibility for this type of evidence to be covered by this provision even when it is not signed by the parties to the proceedings themselves (by analogy 16/12/2008, T-86/07, Deitech, EU:T:2008:577, § 46 et seq.). It follows that the applicant’s claims in this respect lack relevance and shall be set aside.

As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees (as in the present case) are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

Place of use

The evidence, in particular the printouts from the internet and the articles from the online magazines, show that the place of use is essentially the United Kingdom, Italy and Spain. This can be inferred from the language of the documents, the currency and the geographical reference contained therein which predominantly points to those countries. In this respect it is noted that evidence of use relating to the United Kingdom and referring to a period of time prior to 01/01/2021 (date by which the United Kingdom is no longer considered to form part of the EU territory) is relevant with a view to maintaining rights in the European Union and will be taken into account. Therefore, the evidence relates to the relevant territory.

Time of use

Most of the evidence is dated within the relevant period.

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 assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the printouts from the internet and the online articles, provide the Opposition Division with adequate information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. From those documents it is possible to see that the earlier mark have been used, at least in the countries of the European Union mentioned above (United Kingdom, Italy and Spain) during most of the relevant period, although for a limited period of time each year. More specifically, the mark have been used in relation to entertainment events, in the form of festivals, mostly aimed at a young audience. Those events have formed part of TV programs named ‘SlimeFest’ transmitted on the opponent’s TV channels, as it is possible to see also from the hits for ‘SlimeFest’ on the printouts from the Youtube website.

Although the evidence indicates a low frequency of use, it shows use of the earlier mark ’SLIME’ in several Member States, namely, United Kingdom, Italy and Spain, at least in relation to part of the opponent’s services such as organization of entertainment events and production of TV programs.

Nature of use

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.

The Opposition Division observes from the material filed that the opponent’s earlier mark is used as a word mark, namely as it was registered, and that the evidence shows use of the sign as a trade mark in relation at least to part of the goods and services for which it was registered. However, the earlier mark ‘SLIME’ appears to be used together with another word element, namely as ‘SlimeFest’ (or ‘SLIMEFEST’).

In this regard it should be mentioned that 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.

The purpose of this provision is to allow its proprietor to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, EU:T:2006:65, § 50).

The General Court further mentioned that strict conformity between the sign as used and the sign registered is not necessary. However, the difference must be in negligible elements and the signs as used and registered must be broadly equivalent (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

With regard to those cases where the sign is used together with further additions, if the addition is not distinctive, is weak and/or is not dominant, it does not alter the distinctive character of the registered trade mark (30/11/2009, T-35307, Coloris, EU:T:2009:475 § 29-33 et seq.: 10/06/2010, T-482/08, Atlas Transport, EU:T:2010:229, § 36 et seq.).

In the present case, contrary to the applicant’s views, although it is true that the earlier mark is used together with the word element ‘Fest’ in the word combination ‘SlimeFest’, it is considered that this use does not alter the distinctive character of the earlier mark. Indeed, the component ‘Fest’ will be understood by the public concerned as an abbreviation for ‘festival’, a word existing and/or understood throughout the whole European Union and meaning an organised series of special events and performances, usually in one place. To this extent, it is descriptive of the type of the entertainment services offered, that is entertainment services in the form of a festival, which has been offered both in live sessions and has been part of TV programs aired through the opponent’s television channels. Moreover, this word is placed in a secondary position after the element ‘Slime’.

The applicant has also undertaken a rather piecemeal approach to the evidence which goes against the global assessment as carried out by the Opposition Division. Although pieces of evidence may be insufficient by themselves to prove the use of an earlier trade mark, they may contribute to proving use in combination with other documentation and information.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

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

In the present case, the evidence shows genuine use of the trade mark ‘SLIME’ for organisation of entertainment events and production of television programs.

In relation to the organisation of entertainment events, it is noticed that 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.)

The organisation of entertainment events can be considered to form an objective subcategory of entertainment services. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark for organisation of entertainment events. Moreover, these services cover, or are synonyms of the following opponent’s services explicitly listed in Class 41: production of live entertainment features; live entertainment performances and shows; production, hosting, organising and presenting game shows before live audiences which are broadcast live or taped for later broadcast.

Finally, as already concluded above, the evidence shows genuine use of the earlier mark in relation to the opponent’s production of television programmes, which also appear listed in Class 41 as production of television features and television entertainment services.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the use of the earlier European Union trade mark registration No 9 726 514 only in connection with the organisation of entertainment events; production of television programmes; production of live entertainment features; production of television features; television entertainment services; live entertainment performances and shows; production, hosting, organising and presenting game shows before live audiences which are broadcast live or taped for later broadcast.

Conversely, in relation to the rest of the services covered by the earlier mark, the evidence of use provides the Opposition Division with little or no information as regards the extent to which such use has taken place.

In particular, the remaining services in Class 41 relate to sporting and cultural activities, publication services and other specific types of entertainment services that are not encompassed by, or are not in other ways related to, the above mentioned services for which use of the mark has been shown. It follows, that the evidence submitted failed to prove use in relation to those services.

The opponent has based the opposition also on earlier European Union trade mark registrations No 9 233 966 and No 3 678 372, which cover, respectively, the following goods:

European Union trade mark registration No 9 233 966

Class 9: Theatrical or musical sound recordings or video recordings; sunglasses; magnets; wireless mobile phone equipment and accessories, mobile phone face plates; ring tones being downloadable ring tones, music, mp3s, graphics, video images for wireless mobile communication devices; providing wireless transmission of uploading and downloading ring tones, voice, music, mp3s, graphics, video images, information, and news via a global computer network to a wireless mobile communication device; voting and receiving voice and text messages between wireless mobile communication devices; video game programs recorded on cartridges, discs, cd-roms, cassettes, tapes and mini discs; computers; computer game software recorded on discs, cd roms and mini discs.

Class 25: Clothing; bathing suits, bathrobes, beachwear, clothing belts, shorts, jackets, coats, socks, footwear, bandanas, sweaters, halloween costumes, masquerade costumes, character costumes, stage costumes, dresses, gloves, gym shorts, ear muffs, neckwear, pyjamas, pants, shirts, sweat shirts, ski wear, slacks, sun visors, suspenders, turtlenecks, underclothes, vests, warm-up suits, headwear.

Class 28: Games and playthings; card games, darts, dolls; inflatable toys; plush dolls; plush toys; action figures and accessories thereof; stand alone video game machines utilizing cd rom's; stand alone video game machines; stand alone audio output game machines; board games; sporting articles; golf clubs, baseballs, footballs, paddle balls, baseball bats, activity balls; activity compounds; freeflowing play gel; skateboards; decorations for Christmas trees.

European Union trade mark registration No 3 678 372

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

Class 25: Clothing, footwear, headgear.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; free-flowing play gel.

The evidence listed above were filed in regard also to the other two earlier rights invoked. However, the only documents which refer to some of the goods in Classes 25 and 28 covered by these other two earlier marks are those listed in Exhibit 8 and Exhibits from 12 to 18.

However, from the evidence provided, it can at most be inferred that there has been a production of a few models of T-shirts and caps, as well as of a squishy and viscous toy under the mark SLIME that have been made available for purchase. However, there is no concrete proof on file that those products have been effectively sold to consumers in the relevant territory, let alone to what extent in terms of quantity and frequency of sales throughout the relevant time period. Moreover, there is no or little reference to the geographical scope of the use, since aside from some indications that those goods were made available for purchase in one live event (Exhibit 8) or even online (virtually) in all the European Union, no further pieces of evidence have been filed in order to confirm that an actual sale of those goods bearing the earlier mark have effectively taken place in the relevant territory.

As regards the use of the mark SLIME on merchandise goods (Exhibit 8), it is noted that in principle direct use and use for merchandising are among traditional trade mark uses in accordance with the core function of a trade mark. When the trade mark is affixed to merchandising, this is considered as use of the trade mark by authorized licensees.

For the purpose of the present proceedings, it is not questioned whether the opponent has embarked on such merchandising activity. What needs to be assessed here is the extent to which a genuine use of the mark has effectively been shown. After taking into account the evidence as a whole, the Opposition Division considers that there is not enough information on the circulation of the products in question among the relevant public in the relevant period. The evidence submitted includes a document with tables and figures regarding the royalties deriving from the sale of some of the goods covered in Class 25 (Exhibit 12) and the witness statement also contains indications that those tables refer to the relevant period. However, no actual proof stemming from independent sources has been filed that could back up that information.

Admittedly, in relation to the toy products, the evidence relating to the ‘SlimeFest’ also refer to the use of a squishy and viscous substance called ‘SLIME’ that has been thrown at people and celebrities as part of the entertainment events. However, even if such use has taken place during the live performances of those shows, it has no value for proving that the mark has been in fact used on the toy product itself (outside the realm of the shows) in the relevant territory and within the relevant timeframe.

In conclusion, the documentation provided by the opponent is deemed not sufficient to allow the Opposition Division to draw a solid conclusion on the use of the mark in relation to any of the goods covered by the earlier marks in question in Classes 9, 25 and 28. In follows that, the opponent has failed to show genuine use of European Union trade mark registrations No 9 233 966 and No 3 678 372 within the meaning of Article 47(2) and (3) EUTMR. It follows that the opposition is rejected insofar as based on these marks.

Therefore, the examination of the opposition will continue on the basis of European Union trade mark registration No 9 726 514 and the services in Class 41 for which the genuine has been proven, namely organisation of entertainment events; production of live entertainment features; live entertainment performances and shows; production, hosting, organising and presenting game shows before live audiences which are broadcast live or taped for later broadcast; production of television programmes; production of television features and television entertainment 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 are the following:

Class 41: Organisation of entertainment events; production of television programmes; production of live entertainment features; production of television features; television entertainment services; live entertainment performances and shows; production, hosting, organising and presenting game shows before live audiences which are broadcast live or taped for later broadcast.

The contested goods are the following:

Class 14: Alloys of precious metal; jewels; ornaments [jewellery, jewelry (am.)]; gemstones; clocks; pearl; imitation pearls for crafts for making jewellery; beads for making jewelry; necklaces [jewellery]; bracelets; jewellery rope chain for anklets; pendants; charms made from rubber bands; rubber bands for making jewellery; rubber bands for making charms; sets for making jewellery consisting of artificial pearls, thread, wire, elastic bands and a hook.

Class 16: Paper cardboard; printed matter; comics; magazines [periodicals]; collector albums; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters; office requisites; instructional and teaching material (except apparatus); plastic materials for packaging; printers' type; printing blocks; removable tattoos [decalcomania]; temporary tattoos; advent calendars; disposable paper articles, namely tissues of paper for cosmetic purposes, hygienic paper, table linen of paper, tablecloths of paper, table napkins of paper, table mats of paper, table decorations of paper, table mats of paper, handkerchiefs of paper, place cards, cocktail umbrellas of paper, paper garlands; decoration and art materials and media; artistic works and statuettes of paper and cardboard; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; albums for stickers; stickers [stationery]; calendars; posters; postcards, advertising signboards and banners and publicity material of paper; flags of paper; paper pennants; paper crafts materials; trading cards, other than for games; picture books; modelling clay.

Class 28: Toys, games, playthings and novelties; electronic games; gymnastic articles; athletic sporting goods; decorations for Christmas trees; miniatures for use in games; toy figurines; collectable toy figures; toy beads; thread beads (toys); fusible plastic beads (playthings); plug-on beads (toys); threading toys; toy jewellery; party favors; toy kits for making flowable, viscous play gel; chemistry sets (toys); scientific and biological research sets (toys); play dough; play gel; toys presented in an advent calendar; toy dough; iron-on beads.

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 Classes 14, 16 and 28

The contested goods in these classes, which encompass, alloys of precious metal, jewellery articles and precious stones (in Class 14), paper, cardboard and goods made of those materials, as well as office requisites (in Class 16), and toys, games, decorations and sporting articles (Class 28) are dissimilar to the services for which the earlier mark is registered in Class 41. The goods and services in question do not have any relevant points of contact that could justify finding a level of similarity between them. Apart from having a different nature, they have a different purpose, method of use, are neither complementary nor in competition, and do not usually originate from the same producers/providers. In particular, the fact that some of the opponent’s services, such as organisation of entertainment events might show some point in contact with, or even show to some extent a complementary relationship to some of the contested goods in Class 28, such as games and playthings, is not enough to find a similarity. Firstly, it has to be reminded that goods or services are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (see, to that effect, judgments of 11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). Furthermore, in the case at issue the connection between the goods and services in question is not close enough for each to be indispensable (essential) or important (significant) for the use of the other. Therefore no complementarity can be found.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and 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

Martina GALLE

Claudia ATTINÀ

Angela DI BLASIO

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.