OPPOSITION No B 3 083 999

Ilyon Dynamics Ltd, Lev Haaretz Industrial Zone POB 731, 4810602, Rosh Haayin, Israel (opponent), represented by Taylor Wessing LLPlp, 5 New Street Square, EC4A 3TW, London, United Kingdom (professional representative)

a g a i n s t

Hangzhou Mengku Technology Co.Ltd., Room 721, 7th Floor, Building 2, Huajiang Paradise Walk Business Center, No.1001 Yuhangtang Road, Xihu District, Hangzhou, Zhejiang 310000, People’s Republic of China (applicant), represented by Würth & Kollegen, Auf dem Berge 36, 28844 Weyhe, Germany (professional representative).

On 15/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 083 999 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 018 500 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 018 500 . The opposition is based on, inter alia, United Kingdom trade mark registration No 3 356 182 . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in respect of this mark, and also other earlier registered rights. Additionally, the opponent invoked Article 8(4) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s United Kingdom trade mark registration No 3 356 182.

a) The goods and services

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

Class 9: Downloadable computer game programs; Computer game programmes downloadable via the internet; computer game software for use on mobile and cellular phones; computer game software; computer games; downloadable computer games; recorded computer programmes; computer game programs; games software; computer peripherals; computer games hardware; computer games software supplied from the Internet; interactive software; downloadable publications.

Class 41: Entertainment and educational services; sporting and cultural activities; online entertainment services; online gaming services; game services provided on-line from a computer network; non-downloadable internet games; arcade game services; single player video game services; puzzle video game services; entertainment services, namely, providing an on-line computer game; entertainment services, namely, conducting contests online, and organizing, planning and executing entertainment and games events between computer game players and interest groups via a website.

The contested goods and services are the following:

Class 9: Computer game software; Computer game programs; Computer game software for use on mobile and cellular phones; Electronic game software; Electronic game software for mobile phones; Electronic game software for wireless devices; Downloadable software; Downloadable computer game software via a global computer network and wireless devices; Downloadable computer game software; Video game software; Virtual reality game software; Computer software; Animated cartoons; Downloadable image files; Software applications for use with mobile devices.

Class 41: Entertainment services; Providing on-line computer games; Providing interactive multi-player computer games via the internet and electronic communication networks; Providing games; Internet games (non-downloadable); Game services; Electronic games services, including provision of computer games on-line or by means of a global computer network; Electronic games services provided from a computer database or by means of the internet; Providing information on-line relating to computer games and computer enhancements for games; Training services; Education services relating to computer software; Training in the development of software systems; Training services relating to computer software; Educational and training services relating to games; Games services provided via computer networks and global communication networks.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The contested computer game software; computer game programs; computer game software for use on mobile and cellular phones; electronic game software; electronic game software for mobile phones; electronic game software for wireless devices; downloadable software; downloadable computer game software via a global computer network and wireless devices; downloadable computer game software; video game software; virtual reality game software; computer software; software applications for use with mobile devices are identical to the opponent’s computer game software for use on mobile and cellular phones; computer game software; games software; computer games, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested animated cartoons; downloadable image files are similar to an average degree to the opponent’s downloadable publications as they have the same purpose and nature. They usually coincide in producer, relevant public and distribution channels. The contested animated cartoons; downloadable image files are also similar to at least a low degree to the opponent’s entertainment services, as they coincide in the origins and users, and may share the same purpose.

Contested services in Class 41

The contested entertainment services; providing on-line computer games; providing interactive multi-player computer games via the internet and electronic communication networks; providing games; internet games (non-downloadable); game services; electronic games services, including provision of computer games on-line or by means of a global computer network; electronic games services provided from a computer database or by means of the internet; training services; education services relating to computer software; training in the development of software systems; training services relating to computer software; educational and training services relating to games; games services provided via computer networks and global communication networks are identical to the opponent’s entertainment and educational services; online entertainment services; online gaming services; game services provided on-line from a computer network; non-downloadable internet games; arcade game services, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

The contested providing information on-line relating to computer games and computer enhancements for games are included in and are thus identical to the opponent’s broad category of entertainment, as the services of providing information in relation to games which are a type of entertainment, are inherent to the main activity itself.

b) Relevant public — degree of attention

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

In the present case, the goods and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention varies from average to above average depending on the exact nature of the goods and services.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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 figurative mark contains words BUBBLE SHOOTER and some circular objects in a variety of colours. The contested figurative sign contains word elements BUBBLE SHOOTER KINGDOM.

The words BUBBLE SHOOTER are understood as ‘someone/something shooting bubbles’ or ‘bubble gun’. In both cases, considering that the goods and services are all related to video games, games, their software and hardware, and that the services are mainly entertainment related services, these words are allusive to a kind of game, and are to be considered to have less than average distinctive character, since they may be perceived as describing the content of the game or service. The same applies to the educational and training services at issue, as these can be intended to improve one’s skills at a given game. In any event, the verbal components BUBBLE SHOOTER in the signs are both on equal footing as concerns their distinctiveness. Therefore this factor is rather immaterial for the comparison.

In the earlier mark, the circular elements are considered to be the bubbles, mentioned also as a word in the mark, and are therefore also weak. The mark has no dominant elements.

In the contested sign, the element ‘Kingdom’ refers to a community ruled or reigned over by a king or queen or an area of activity, especially mental activity, considered as being the province of something specified. The Opposition Division considers that as such it is allusive too of a feature of the game, having thus weak distinctive character.

Visually, the signs coincide in the word element ‘Bubble’ and also in the element ‘Shooter’, considering the slight difference in the typeface. 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.

The signs differ in the word element ‘Kingdom’ of the contested mark and also in the less distinctive figurative elements and the specific manner of the graphical representation and colours of the word elements in the earlier mark. 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).

Therefore, and considering the distinctiveness of the differentiating elements in the marks, the signs are visually similar to at least a low degree.

Aurally, the pronunciation of the signs coincides in pronunciation of the word elements ‘Bubble Shooter’ present identically in both signs. The pronunciation differs in the pronunciation of the element ‘Kingdom’ of the contested mark.

Therefore, and considering the distinctiveness of the differentiating element in the contested sign, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to ‘Bubble Shooter’, while the remaining element ‘Kingdom’ is weak, the signs are conceptually similar to an average degree.

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.

Considering what has been stated above in section c) of this decision, the inherent distinctiveness of the earlier mark must be seen as low for all of the relevant goods and services.

According to the opponent, the earlier trade mark has a higher degree of distinctive character through use in the United Kingdom in connection with all the goods and services for which it is registered and which are listed above in section a). This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted evidence to support this claim. The opponent indicated that its submissions of 17/02/2020 were ‘Confidential’, thus expressing a special interest in keeping these documents confidential vis-à-vis third parties. In accordance with Article 114(4) EUTMR, the special interest must be sufficiently justified. In the present case, the special interest has not been sufficiently justified or elaborated upon. Therefore, the Opposition Division does not consider these submissions confidential. In any event, the Opposition Division will describe the evidence in general terms, without disclosing commercially potentially sensitive information. The evidence consists, in particular, of the following documents:

 ANNEX 5 Details of unique downloads of Bubble Shooter by year, starting from 2013. Bubble Shooter, as stated by the opponent, was first launched as a web/desktop game by Absolutist Ltd ("Absolutist") in 2001. It was ported to iOS, the operating system used for mobile devices manufactured by Apple Inc, in 2010. It was ported to Android, the operating system used for various other mobile devices including Samsung- and Google-manufactured smartphones, on 1 September 2012. The downloads reach over 80 000 000 per year by 2019 in steady growth.

 ANNEX 6 Images of Bubble Shooter app . Android version of the game, from launch on 1 September 2012 until the present day, bears the Earlier Figurative Mark.

 ANNEX 7 Images of Bubble Shooter Facebook Messenger webpage and app. Opponent has expanded the game onto new platforms such as Facebook Messenger. This allows users to play the game on the Facebook platform, either on desktop or on a mobile phone, without having to download an app to their device.

 ANNEX 8 Image of Bubble Shooter from Skillz mobile platform . The Opponent has also launched the game on the mobile eSports platform Skillz. This offers enhanced functionality to the classic Bubble Shooter game, enabling users to enter into multiplayer competitions to win cash and prizes.

 ANNEX 9 Images of Hard Rock Bubble Shooter version of game. A special version of the Opponent's Bubble Shooter game was developed and published with the Seminole Tribe of Florida using their world-famous Hard Rock Cafe brand. This version of the classic Bubble Shooter game enables users to go on an adventure around the renowned Hard Rock universe, picking up gifts and rewards along the way.

 ANNEX 10 An extensive list of Licensees and screenshots of third party websites in different countries. The opponent has previously licensed the Bubble Shooter brand to third party websites and applications. A list of some of these licensees and screenshots of the third party websites is included.

 ANNEX 11 Image of Google Play store showing Bubble Shooter app ranking, having four stars out of five. As of August 2017 there have been over 30 million new, unique downloads of the Opponent's Bubble Shooter game with over 6.3 of these downloads in the EU. Bubble Shooter is currently ranked highly on the Google Play App Store.

 ANNEX 12 Details of the amounts specified as ‘Advertising spend/ User acquisition’.

 ANNEX 13 Screenshot of Bubble Shooter Facebook page . The page has acquired 265,157 'likes' and 270,522 (over 90,000 from the EU) 'followers' since its creation on 30 January 2012.

 ANNEX 14 Examples of Bubble Shooter advertisements in app stores.

 ANNEX 15 In-app revenue details July 2016 to December 2017.

 ANNEX 16 In-app revenue generated January 2018 to December 2018 in various countries in significant amounts.

 ANNEX 17 Some press articles, such as www.pocketgamer.biz, with a title ‘Bubble shooter bursts through 50 million download mark’.

 ANNEX 18 Bubble Shooter Customer Reviews 2017-19 on play-google.com.

The abovementioned evidence indicates that the earlier trade mark has been used for a substantial period of time. The sales figures and marketing efforts suggest that the trade mark has a consolidated position in the market, which can also be seen on the significant amount of application downloads (up to 50 million times), from the Facebook page visit and the customer comments, among others.

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys a certain degree of recognition among the relevant public. Bearing in mind that the earlier mark has a low degree of inherent distinctiveness, by taking into account the evidence of intensive and long-standing use, it is concluded that the mark has acquired a normal degree of distinctiveness.

However, the evidence does not succeed in establishing that the earlier mark has acquired a normal degree of distinctiveness for all the goods and services on which the opposition is based and which have been found identical or similar to the contested goods and services. The evidence mainly relates to computer games and entertainment in the nature of online games, whereas there is no or little reference to the remaining goods and services, i.e. downloadable publications and educational services. This is clear, for example, from the sales figures and advertisements, where only computer games and entertainment in the form of online games are mentioned.

Consequently, in relation to the remaining goods and services, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se, which is considered low. However, the earlier mark is considered to have at least a minimum degree of inherent distinctiveness. Earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. The Court made it clear, in its judgment of 24/05/2012, C-196/11, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’. The Court added that ‘it should be noted that the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character’.

e) Global assessment, other arguments and conclusion

The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarities of the signs in question, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of such likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 35 and the case-law cited).

Moreover, the global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the services covered. Accordingly, a low degree of similarity between those goods may be offset by a high degree of similarity between the marks, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Account has also to be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

The contested goods and services have been found identical or similar to the opponent’s goods and services. The marks are visually similar to at least a low degree, aurally and conceptually similar to an average degree. The earlier mark has been found to have acquired a normal degree of distinctiveness through use in relation to some of the goods and services that are relevant for the assessment of likelihood of confusion, namely computer games and entertainment in the nature of online games.

In relation to the opponent’s goods and services for which the global assessment of likelihood of confusion must be based on the earlier mark’s low degree of inherent distinctiveness, namely downloadable publications and educational services, it should be noted that although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Even in cases involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular of similarity between the signs and between the goods and services covered (see judgement of 13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70). In any event, the validity of national trade marks may not be called into question in proceedings for registration of a European Union trade mark, as mentioned.

Consequently, the low degree of distinctiveness of the earlier mark which exists for some of the relevant goods and services, must be viewed against the other relevant factors that must be taken into account in the global assessment of likelihood of confusion. Since the opponent’s goods and services for which the earlier mark has a low degree of distinctiveness are either similar to an average degree or identical to some of the contested goods in Class 9 or services in Class 41 as set out in section a) of this decision, the impact of the earlier mark’s low distinctiveness is counteracted, at least to some extent, by the greater similarity between the goods and services. Furthermore, the contested goods in Class 9 are also similar, albeit to a low degree, to some of the opponent’s services for which the earlier mark has acquired a normal degree of distinctiveness.

It is thus considered that the similarities between the signs established above are sufficient to cause at least part of the relevant public to believe that the conflicting goods and services, which are identical or similar, come from the same undertaking or economically linked undertakings. Furthermore, the coincidences are in the first word elements of the contested mark, which includes all the word elements of the earlier mark. The remaining elements are in a secondary position or have less distinctive character, as it is a custom of game developers to develop sub-brands and spin-offs of games and denoting these by adding words of lower distinctive character to the house brand. Therefore, it is also highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). In such context, the Opposition Division considers that a likelihood of confusion between the marks in presence cannot be safely excluded.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include elements BUBBLE SHOOTER. In support of its argument the applicant refers to a few trade mark registrations in European Union Member States.

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 BUBBLE SHOOTER. Under these circumstances, the applicant’s claims must be set aside.

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 United Kingdom trade mark registration No 3 356 182. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right, United Kingdom trade mark registration No 3 356 182, leads 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).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Articles 8(4) and (5) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

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

The Opposition Division

Solveiga BIEZA

Erkki MÜNTER

Biruté SATAITE-GONZALEZ

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.