OPPOSITION No B 3 084 517

Spil Games Intangibles B.V., Mussenstraat 15, 1223 RB Hilversum, the Netherlands (opponent), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, the Netherlands (professional representative)

a g a i n s t

Canal Q S.A., Travessa Fábrica dos Pentes, nº 12, 9º, 1250 Lisboa, Portugal (applicant), represented by Márcia Isabel Martinho da Rosa, Rua Rodrigo da Fonseca, nº 82 - 1º Dto, 1250-193 Lisboa, Portugal (professional representative).

On 30/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 084 517 is partially upheld, namely for the following contested goods and services:

Class 9: Downloadable sound recordings; pre-recorded videos; prerecorded motion picture videos; pre-recorded video compact discs; video editing software; computer application software for mobile telephones; computer software to enable the transmission of photographs to mobile telephones; computer programs and software for image processing used for mobile phones; video processors; all of the aforementioned goods not relating to the music industry, music radio, music television broadcasting and pre-recorded music CD's and DVD's.

Class 35: Retail services in relation to computer software; online retail services for downloadable and pre-recorded music and movies.

Class 38: Communications by telegraph; radio, telephone, telegraph communication services; video-on-demand transmission; broadcasting of television programs using video-ondemand and pay-per-view television services; providing online forums; data bank interconnection services; providing access to databases; providing telecommunications connections to a global computer network; providing telecommunications connections to a global computer network or databases; transmission of electronic mail; electronic transmission of mail and messages; data transmission by electronic mail; transmission of electronic mail [e-mail data services]; transmission of digital files; streaming of data; transmission of sound or visual recordings over networks; provision of telecommunication access to films and television programs provided via a video-on-demand service; video uploading services; transmission of sound, video and information; provision of electronic video links; interactive transmission of video over digital networks; providing access to a video sharing portal; transmission of videos, movies, pictures, images, text, user-generated content, audio content, and information via the internet; information relating to communications; telephone services; television broadcasting services for mobile phones; video broadcasting; all aforementioned services not relating to the music industry, music radio, music television broadcasting, pre-recorded music CD's and DVD's, mobile telecommunications services and mobile telecommunications network services.

Class 41: Providing television programmes, not downloadable, via video-on-demand services; provision of multimedia entertainment programs by television, broadband, wireless and on-line services; radio entertainment; provision of radio and television entertainment services; presentation of live performances; organisation and presentation of shows; arranging of entertainment shows; organization of cosplay entertainment events; production of shows; entertainment services; providing multi-media entertainment via a website; entertainment information; recreation information; online publication of electronic books and journals; publication of online guide books, travel maps, city directories and listings for use by travellers, not downloadable; providing films, not downloadable, via video-on-demand services; providing on-line music, not downloadable; providing on-line videos, not downloadable; publication of books; publication of texts, other than publicity texts; video entertainment services; entertainer services.

Class 42: Electronic storage of videos; hosting a website for the electronic storage of digital photographs and videos; electronic storage of files and documents; updating of computer software; maintenance and updating of computer software; rental of web servers; off-site data backup; computer and information technology consultancy services; creating and designing website-based indexes of information for others [information technology services]; computer programming; computer software design; providing information on computer technology and programming via a web site; maintenance of computer software; creating and maintaining websites for mobile phones; creating and maintaining websites for cellular phones; providing temporary use of on-line nondownloadable software for web site development.

2. European Union trade mark application No 18 021 007 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 021 007 for the figurative mark . The opposition is based on European Union trade mark registration No 10 879 633 for the word mark ‘QPLAY’. The opponent invoked Article 8(1)(b) EUTMR.

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

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

1. The goods and services

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

Class 9: Computer programs and software, including computer games and software for playing computer games; data carriers, including carriers with computer games; image and sound carriers; computer games and electronic games (downloadable); discs for computer games; software for virtual reality games; software for creating cartoons; software for creating merchandising products.

Class 38: Providing access to the an internet website portal for online gaming.

Class 41: Online computer gaming, also via an internet website portal for online gaming; providing electronic games via internet or other electronic media, including interactive, multi-player and social games, and providing information in relation to these games; conducting alternate reality games via the internet.

After a limitation of 01/08/2019 the contested goods and services are the following:

Class 9: Downloadable sound recordings; pre-recorded videos; prerecorded motion picture videos; pre-recorded video compact discs; video editing software; computer application software for mobile telephones; computer software to enable the transmission of photographs to mobile telephones; computer programs and software for image processing used for mobile phones; video processors; all of the aforementioned goods not relating to the music industry, music radio, music television broadcasting and pre-recorded music CD's and DVD's.

Class 35: Producing promotional video discs, and audio visual recordings; production of television and radio advertisements; production and distribution of radio and television commercials; scriptwriting for advertising purposes; promotion, advertising and marketing of on-line websites; on-line promotion of computer networks and websites; retail services in relation to computer software; online retail services for downloadable and pre-recorded music and movies; online advertisements.

Class 38: Communications by telegraph; radio, telephone, telegraph communication services; video-on-demand transmission; broadcasting of television programs using video-ondemand and pay-per-view television services; providing online forums; data bank interconnection services; providing access to databases; providing telecommunications connections to a global computer network; providing telecommunications connections to a global computer network or databases; transmission of electronic mail; electronic transmission of mail and messages; data transmission by electronic mail; transmission of electronic mail [e-mail data services]; transmission of digital files; streaming of data; transmission of sound or visual recordings over networks; provision of telecommunication access to films and television programs provided via a video-on-demand service; video uploading services; transmission of sound, video and information; provision of electronic video links; interactive transmission of video over digital networks; providing access to a video sharing portal; transmission of videos, movies, pictures, images, text, user-generated content, audio content, and information via the internet; information relating to communications; telephone services; television broadcasting services for mobile phones; video broadcasting; all aforementioned services not relating to the music industry, music radio, music television broadcasting, pre-recorded music CD's and DVD's, mobile telecommunications services and mobile telecommunications network services.

Class 39: Physical storage of electronically stored data or documents; physical storage of electronically stored digital data, photographs, audio and image files; physical storage of electronically stored data, documents, digital photographs, music, images, video, and computer games; physical storage of electronically stored digital video files.

Class 40: Providing information relating to the processing of cinematographic films.

Class 41: Video tape film production and rental; rental of video tapes and motion pictures; rental of motion pictures; rental of motion pictures and of sound recordings; production of sound recordings; rental of sound recordings; rental of sound and image recordings; presentation of variety shows; providing films, not downloadable, via video-on-demand services; providing on-line music, not downloadable; providing television programmes, not downloadable, via video-on-demand services; provision of multimedia entertainment programs by television, broadband, wireless and on-line services; videotape production; video editing; production of musical videos; production of training videos; video rental services; video production services; lending libraries for videos; providing on-line videos, not downloadable; studio services for the recording of videos; provision of video recording studio facilities; provision of video recording studio services; hosting [organising] awards relating to videos; special effects animation services for film and video; post-production editing services in the field of music, videos and film; radio entertainment; provision of radio and television entertainment services; dubbing; videotape editing; editing of video recordings; audio and video editing services; presentation of live performances; showing of films; exhibition of video films; cinema presentations; exhibition of video film sound tracks; videotaping; video recording services; audio and video recording services; provision of automated video recording services; audio, film, video and television recording services; sound recording and video entertainment services; rental of apparatus for the recording of video signals; recording, film, video and television studio services; rental of sound and video recording apparatus; education information; entertainment information; recreation information; subtitling; microfilming; microfilming for others; organisation and presentation of shows; arranging of entertainment shows; organization of cosplay entertainment events; production of shows; film production, other than advertising films; production of documentaries; production of video cassettes; production of cinematographic films; theater production; production of television features; production of television films; production of audio-visual recordings; production of music; production of radio and television programmes; television and radio programme preparation and production; television, radio and film production; production of plays; publication of books; publication of texts, other than publicity texts; online publication of electronic books and journals; publication of online guide books, travel maps, city directories and listings for use by travellers, not downloadable; scriptwriting, other than for advertising purposes; screenplay writing; scriptwriting services; writing of texts; booking of seats for shows; entertainer services; entertainment services; movie studio services; recording studio services; providing multi-media entertainment via a website; provision of online tutorials; all aforementioned services not relating to the music industry, music radio, music television broadcasting and pre-recorded music CD's and DVD's.

Class 42: Electronic storage of videos; hosting a website for the electronic storage of digital photographs and videos; electronic storage of files and documents; updating of computer software; maintenance and updating of computer software; rental of web servers; off-site data backup; computer and information technology consultancy services; creating and designing website-based indexes of information for others [information technology services]; computer programming; computer software design; providing information on computer technology and programming via a web site; maintenance of computer software; creating and maintaining websites for mobile phones; creating and maintaining websites for cellular phones; providing temporary use of on-line nondownloadable software for web site development.

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

The term ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

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.

The Opposition Division notes that the specifications included at the end of the list of goods and services in Classes 9, 38 and 41, namely all of the aforementioned goods not relating to the music industry, music radio, music television broadcasting and pre-recorded music CD's and DVD's; all aforementioned services not relating to the music industry, music radio, music television broadcasting, pre-recorded music CD's and DVD's, mobile telecommunications services and mobile telecommunications network services; all aforementioned services not relating to the music industry, music radio, music television broadcasting and pre-recorded music CD's and DVD's, although taken into account, have no impact on the present comparison.

Contested goods in Class 9

The contested video editing software; computer application software for mobile telephones; computer software to enable the transmission of photographs to mobile telephones; computer programs and software for image processing used for mobile phones are included in the broad category of, or overlap with, the opponent’s computer programs and software, including computer games and software for playing computer games. Therefore, they are identical.

The contested downloadable sound recordings; pre-recorded videos; prerecorded motion picture videos; pre-recorded video compact discs are similar to the opponent’s computer software. These goods can be complementary and coincide in their relevant public, producer and distribution channels.

The contested video processors are devices that convert all incoming video signals to the native resolution of a particular fixed-pixel display, enhance the image and remove artifacts caused by the conversion and transmission of video. As such they are similar to the opponent’s computer programs and software, including computer games and software for playing computer games as they are aimed at the same relevant public via the same distribution channels and can be provided by the same entities. Furthermore, they are complementary.

Contested services in Class 35

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. Therefore, the contested retail services in relation to computer software are similar to the opponent’s computer programs and software, including computer games and software for playing computer games in Class 9.

There is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers. Since downloadable and pre-recorded music and movies are similar to computer software, the contested online retail services for downloadable and pre-recorded music and movies are similar to a low degree to the opponent’s computer programs and software in Class 9.

The remaining contested services in this class are promotion and advertising related services. As such they have different natures, purposes and methods of use to the opponent’s goods and services (various software and games and gaming related services). Furthermore, they do not coincide in any other similarity criteria. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc. Finally, advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods or services being advertised. The same applies to the comparison of advertising services with goods that can be used as a medium for disseminating advertising, such as DVDs or software in Class 9. Therefore, the contested producing promotional video discs, and audio visual recordings; production of television and radio advertisements; production and distribution of radio and television commercials; scriptwriting for advertising purposes; promotion, advertising and marketing of on-line websites; on-line promotion of computer networks and websites; online advertisements are dissimilar to the opponent’s goods and services in Classes 9, 38 and 41.

Contested services in Class 38

The contested providing telecommunications connections to a global computer network; providing telecommunications connections to a global computer network or databases include, as broader categories, or overlap with, the opponent’s providing access to the an internet website portal for online gaming. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services in the same class.

The contested communications by telegraph; radio, telephone, telegraph communication services; video-on-demand transmission; broadcasting of television programs using video-ondemand and pay-per-view television services; providing online forums; data bank interconnection services; providing access to databases; transmission of electronic mail; electronic transmission of mail and messages; data transmission by electronic mail; transmission of electronic mail [e-mail data services]; transmission of digital files; streaming of data; transmission of sound or visual recordings over networks; provision of telecommunication access to films and television programs provided via a video-on-demand service; video uploading services; transmission of sound, video and information; provision of electronic video links; interactive transmission of video over digital networks; providing access to a video sharing portal; transmission of videos, movies, pictures, images, text, user-generated content, audio content, and information via the internet; telephone services; television broadcasting services for mobile phones; video broadcasting are various telecommunication and broadcasting services, and services related to the provision to content, websites or internet communication. As such they have the same nature as the opponent’s providing access to the an internet website portal for online gaming in the same class. Furthermore, they coincide in their relevant public, distribution channels and providers. Therefore, they are considered similar at least to a low degree.

The contested information relating to communications is complementary to the opponent’s providing access to the an internet website portal for online gaming in the same class. Furthermore, they are often provided by the same entities and are aimed at the same relevant public. Therefore, these services are considered similar.

Contested services in Class 39

The contested services in this class refer to physical storage of electronically stored data. As such, storage services refer to services whereby a company’s merchandise is kept in a particular place for a fee. Those services are neither similar to the opponent’s goods in Class 9, which could be physically stored, nor to the opponent’s services in Classes 38 and 41. The natures, purposes and methods of use of these services and goods are different. They do not have the same providers/producers or distribution channels, and are not in competition. Therefore, the contested physical storage of electronically stored data or documents; physical storage of electronically stored digital data, photographs, audio and image files; physical storage of electronically stored data, documents, digital photographs, music, images, video, and computer games; physical storage of electronically stored digital video files are dissimilar to the opponent’s goods and services in Classes 9, 38 and 41.

Contested services in Class 40

The contested providing information relating to the processing of cinematographic films refers to information relating to a specific service in the field of cinematography. As such it has a different nature, purpose and method of use to those of the opponent’s goods and services (various software, games and gaming services, providing access to internet website) and are provided by different entities. Furthermore, these goods and services are aimed at different end users. Consequently, they have different distribution channels. Finally, they are neither complementary nor in competition with each other. Therefore, they are dissimilar.

Contested services in Class 41

The contested entertainment information; recreation information include, as broader categories, or overlap with, the opponent’s providing electronic games via internet or other electronic media, including interactive, multi-player and social games, and providing information in relation to these games in the same class. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested providing television programmes, not downloadable, via video-on-demand services; provision of multimedia entertainment programs by television, broadband, wireless and on-line services; radio entertainment; provision of radio and television entertainment services; presentation of live performances; organisation and presentation of shows; arranging of entertainment shows; organization of cosplay entertainment events; production of shows; entertainment services; providing multi-media entertainment via a website are highly similar to the opponent’s online computer gaming, also via an internet website portal for online gaming in the same class. These services have the same purpose of entertaining and the same nature. They usually coincide, relevant public, distribution channels and method of use. Furthermore, they may have the same provider too.

The contested online publication of electronic books and journals; publication of online guide books, travel maps, city directories and listings for use by travellers, not downloadable are similar to the opponent’s computer programs and software in Class 9 as they usually coincide in producer/provider, relevant public and distribution channels. Furthermore they are complementary.

The contested video entertainment services are similar to the opponent’s providing electronic games via internet or other electronic media, including interactive, multi-player and social games in Class 41 as they coincide in their purpose and relevant public. Furthermore, they can have the same distribution channels and may coincide in their providers. A similar reasoning is applicable to the contested entertainer services which are found similar to the opponent’s conducting alternate reality games via the internet in the same class.

The contested providing films, not downloadable, via video-on-demand services; providing on-line music, not downloadable; providing on-line videos, not downloadable are lowly similar to the opponent’s computer programs and software in Class 9 as they usually coincide in producer/provider and relevant public. Furthermore they are complementary.

The contested publication of books; publication of texts, other than publicity texts are lowly similar to the opponent’s computer programs and software in Class 9 as they have the same purpose and they usually coincide in relevant public. Furthermore they are in competition.

The remaining contested services, namely video tape film production and rental; rental of video tapes and motion pictures; rental of motion pictures; rental of motion pictures and of sound recordings; production of sound recordings; rental of sound recordings; rental of sound and image recordings; presentation of variety shows; videotape production; video editing; production of musical videos; production of training videos; video rental services; video production services; lending libraries for videos; studio services for the recording of videos; provision of video recording studio facilities; provision of video recording studio services; hosting [organising] awards relating to videos; special effects animation services for film and video; post-production editing services in the field of music, videos and film; dubbing; videotape editing; editing of video recordings; audio and video editing services; showing of films; exhibition of video films; cinema presentations; exhibition of video film sound tracks; videotaping; video recording services; audio and video recording services; provision of automated video recording services; audio, film, video and television recording services; sound recording; rental of apparatus for the recording of video signals; recording, film, video and television studio services; rental of sound and video recording apparatus; education information; subtitling; microfilming; microfilming for others; film production, other than advertising films; production of documentaries; production of video cassettes; production of cinematographic films; theater production; production of television features; production of television films; production of audio-visual recordings; production of music; production of radio and television programmes; television and radio programme preparation and production; television, radio and film production; production of plays; scriptwriting, other than for advertising purposes; screenplay writing; scriptwriting services; writing of texts; booking of seats for shows; movie studio services; recording studio services; provision of online tutorials; all aforementioned services not relating to the music industry, music radio, music television broadcasting and pre-recorded music CD's and DVD's are dissimilar to the opponent’s goods and services as they do not coincide in any of the similarity criteria as listed above. The nature of these services, rental and production of films, television programmes, sound and image recordings, post-production services, movie and recording studio services, is different than that of the opponent’s goods and services (mostly software and gaming-related services). Consequently, the purpose of these goods and services is different. Furthermore, they target different relevant public using different distribution channels. Furthermore, the providers do not coincide either. Finally, the compared goods and services are neither in competition with each other nor complementary.

Contested services in Class 42

The contested updating of computer software; maintenance and updating of computer software; computer programming; computer software design; maintenance of computer software; providing temporary use of on-line nondownloadable software for web site development; providing information on computer technology and programming via a web site; computer and information technology consultancy services; electronic storage of videos; electronic storage of files and documents; off-site data backup are similar to the opponent’s computer programs and software in Class 9 as they are complementary. Although the nature of the goods and services is not the same, both the relevant public and the usual providers of these goods and services coincide.

The contested hosting a website for the electronic storage of digital photographs and videos; rental of web servers are similar to the opponent’s computer programs and software in Class 9 as they may coincide in provider, distribution channels and are complementary.

The remaining creating and designing website-based indexes of information for others [information technology services]; creating and maintaining websites for mobile phones; creating and maintaining websites for cellular phones are considered similar to at least a low degree to the opponent’s computer programs and software in Class 9 as they are complementary to each other and may coincide in provider and relevant public.

2. Relevant public — degree of attention

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

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

The degree of attention may vary from average to high depending on the specialised nature of the goods and services and their price.

3. The signs

QPLAY
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark, perceived as a whole, does not convey any clear meaning for the public in the relevant territory. However, the Opposition Division is of the opinion that even though the element ‘PLAY’ is not visually separated from the remaining element ‘Q’, consumers, when encountering the earlier mark, will naturally look for its meaning. In this regard, the Court has held that, although the average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

The common element ‘PLAY’ is meaningful in English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The term ‘PLAY’ will be understood as ‘to amuse or divert oneself’ or to ‘participate in a game, sport, etc.’ by the relevant public (information extracted from Oxford Dictionary on 17/06/2020 at https://www.oed.com/view/Entry/145475?rskey=i8vjKk&result=2#eid). Bearing in mind that the relevant goods and services include entertainment- and games-related goods and services (games, gaming, software, entertainment and entertainment information, etc.), this element is non-distinctive for these goods and services. However, this has no impact on the comparison: to the extent that it will be perceived as descriptive, the same concept is conveyed by both signs and, therefore, they are on equal footing as regards their distinctiveness.

The other common element, the letter ‘Q’, has no meaning for the relevant public and is, therefore, distinctive.

Regarding the figurative components and aspects of the contested sign (i.e. the stylisation, the typeface, the colours and the banal rectangular background), contrary to the assertions of the applicant, they are considered of weak inherent distinctiveness. The relevant public is used to encountering this kind of graphic arrangements on the marketplace, when encountering trade marks, and does not pay much attention to them, as it affords them an essentially ornamental role. Furthermore, 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 contested sign has no element that could be considered clearly more dominant than other elements. The earlier mark has no dominant element either since it is a word mark.

Visually and aurally, the signs coincide in the letters and their pronunciation ‘Q PLAY’ as well as in their positions within the signs. They differ in the figurative aspects of the contested sign, considered weak, and its structure, the letter ‘Q’ being separated from ‘PLAY’, which, however, is likely to be ignored by at least part of the public.

Therefore, the signs are visually highly similar and aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘PLAY’, included in both signs, will be associated with the meaning explained above. Moreover, the signs coincide in the letter ‘Q’ as well. Consequently, the signs are conceptually identical.

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 marks are particularly distinctive by virtue of intensive use or reputation. However, the opponent claims that the earlier mark has a high degree of inherent distinctiveness because it contains a word without any meaning. In this regard, it should be noted that when an earlier mark is not descriptive or otherwise non-distinctive the mark is considered to have no more than a normal degree of distinctiveness. A mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

In the present case the contested goods and services have been found partly identical, partly similar to varying degrees and partly dissimilar to those of the opponent. They are directed at the public at large and at business customers whose degree of attention may vary from average to high.

The distinctiveness of the earlier mark is normal.

The signs have been found visually highly similar and aurally and conceptually identical on account of the common element ‘QPLAY’ despite of its slightly different structure in the contested sign. Moreover, it is the only element of the earlier mark and the most distinctive element of the contested sign. As a rule, when the earlier trade mark is wholly incorporated in the contested sign and performs an independent and distinctive role therein, this is an indication that the two signs are similar (13/06/2012, T-519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T-260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T-179/11, Seven Summits, EU:T:2012:254, § 26). The distinctiveness of the figurative components of the contested sign is limited, as mentioned above in section c) of the decision.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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 applicant argues that its EUTM is ‘very reputed in Europe as a streaming channel for humour, and it is safe to say that, at least in Portugal, it holds a great degree of notoriety’ and filed some evidence to substantiate this claim.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

The applicant claims its trade mark ‘is intended exclusively for online gaming and the

opponent’s trade mark is mainly intended for streaming video and associated products and services, none of which include online gaming’ and that ‘the opponent’s trade mark is just for online gaming’ while ‘[t]he applicant’s trade mark is just for streaming and talk shows, like Netflix, humour shows, streaming and edition, along with other associated products and services that are altogether very distanced from online gaming’. In this regard, it should be pointed out that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods and/or services. The actual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Consequently, the applicant’s claim must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 10 879 633. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark, even as regards the contested services found similar to a low degree to the opponent’s goods, as the similarities between the signs are overwhelming and taking into account the interdependence principle mentioned above.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Valeria ANCHINI

Tzvetelina IANTCHEVA

Meglena BENOVA

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.