OPPOSITION No B 3 093 246

Cashdell s.r.o., Staropramenná 530/12, 150 00 Praha 5, Czech Republic (opponent), represented by Pavel Hrášek, Týnská 1053/21, 11000 Praha, Czech Republic (professional representative)

a g a i n s t

Zlatá Kaňka - Golden Blot z.s., Frimlova 332/7, Liberec V-Kristiánov, 460 05 Liberec, Czech Republic (applicant) represented by Daniela Toningerová, Kamenická 3, 170 00 Praha 7, Czech Republic (professional representative).

On 28/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 093 246 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 18 028 912 (figurative mark). The opposition is based on Czech trade mark registration No 364 644 ‘MAlé TElevizní Sázení (MATES)’ (word mark), Czech trade mark registration No 373 702 (figurative mark), European Union trade mark registration No 18 065 447 (figurative mark), European Union trade mark application No 18 065 452 ‘MAlé TElevizní Sázení’ (word mark) in Class 41, and Czech trade mark application No 553 039 ‘MAlé TElevizní Sázení’ (word mark) in Class 41. The opponent invoked Article 8(1)(a) and (b) EUTMR.

PRELIMINARY REMARKS

Earlier mark European Union trade mark application No 18 065 452 ‘MAlé TElevizní Sázení’ (word mark) was refused by the Office on 12/12/2019. As this refusal has become final, the Office must dismiss the opposition insofar as it is based on this earlier mark.

Furthermore, according to the TMVIEW database (on which the Office may rely in case of online substantiation claimed by the opponent), Czech trade mark application No 553 039 ‘MAlé TElevizní Sázení’ (word mark) is stated to be ‘application refused’ as of 03/12/2019. Accordingly, the Office must dismiss the opposition insofar as it is based on this earlier national trade mark application.

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 Czech trade mark registration No 364 644 ‘MAlé TElevizní Sázení (MATES)’ (word mark).

a) The services

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

Class 38: Television broadcast.

The contested services are the following:

Class 36: Fundraising and financial sponsorship.

Class 38: Broadcasting services; Radio and television program broadcasting.

Class 41: Teaching; Presentation of live performances; Presentation of television programmes; Audio, video and multimedia production, and photography; Publishing and reporting; Organization of lotteries; Organization of competitions.

Class 45: Foster care; Provision of emotional support to families; Providing personal support services for families of patients with life threatening disorders.

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.

Contested services in Class 36

The contested fundraising and financial sponsorship do not share relevant trade mark points of contact with the opponent’s television broadcast in Class 38 to justify a finding of similarity. These services do not share a similar purpose, they are neither complementary nor in competition, usually having different distribution channels and providers. Therefore, they are dissimilar.

Contested services in Class 38

The contested broadcasting services include, as a broader category, the opponent’s television broadcast. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested television program broadcasting is included in the broad category of the opponent’s television broadcast. Therefore, they are identical.

The contested radio program broadcasting is similar to the opponent’s television broadcast as they have the same nature (broadcasting), the same general purposes (to inform, educate, entertain), they may coincide in distribution channels, providers and end users.

Contested services in Class 41

None of the contested services in this class - teaching; presentation of live performances; presentation of television programmes; audio, video and multimedia production, and photography; publishing and reporting; organization of lotteries; organization of competitions – has relevant trade mark points of contact with the opponent’s television broadcast in Class 38 to warrant a finding of similarity. In particular, with respect to the contested presentation of live performances; presentation of television programmes, even if large, usually government-run, companies may offer both entertainment and broadcasting services, this is not the rule. It follows that even if there be some complementarity between the contested presentation of live performances; presentation of television programmes and the opponent’s television broadcast, this is not sufficient for a finding of similarity. The contested services and the opponent’s television broadcast have a different purpose, with distinct distribution channels and providers. Therefore, they are dissimilar.

Contested services in Class 45

The contested foster care; provision of emotional support to families; providing personal support services for families of patients with life threatening disorders do not share relevant trade mark points of contact with the opponent’s television broadcast in Class 38 to justify a finding of similarity. These services do not share a similar purpose, they are neither complementary nor in competition, having different distribution channels and providers. Therefore, they are dissimilar.

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 services found to be identical or similar are directed at the public at large for which the degree of attention is average.

c) The signs

MAlé TElevizní Sázení (MATES)
Earlier trade mark	Contested sign

The relevant territory is the Czech Republic.

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

The earlier mark consists of the words ‘MAlé TElevizní Sázení (MATES)’. The words ‘MAlé TElevizní Sázení’ are meaningful for the relevant public referring to ‘small television betting’. Considering the relevant services in Class 38 (television broadcasting), this expression as a whole is weak thereof as it alludes to the fact that the television broadcasting services will concern betting and this is so notwithstanding the irregular capitalisation of the letter ‘A’ of the word ‘MAlé’ and of the letter ‘E’ at second position of the word ‘TElevizní’.

The word ‘MATES’ of the earlier mark will be perceived as a male first name (or a variation of the male first name ‘Matěj’) for the relevant public and as it bears no direct reference to the services in question, it is normally distinctive of them. Despite the irregular said capitalisation and the presentation of the word ‘MATES’ inside parentheses, the Opposition Division considers it to be unlikely that this word will be perceived by the relevant public as an acronym of ‘MALÉ TELEVIZNÍ SÁZENÍ’ because a normal acronym or abbreviation of these words would be ‘MTS’. Moreover, the Opposition Division takes the view that the parentheses placed on each side of the word ‘MATES’ will be perceived as a mere punctuation sign having no trade mark significance.

In its reply dated 06/06/2020, the opponent argues that the word ‘MATES’ in the contested sign ‘aims at the customer’s recollection of the fact that the MATES abbreviation was used for [a] historically very popular television lottery game (‘MALÉ TELEVIZNÍ SÁZENÍ’)’. However, the possible aims or intentions of the applicant in filing the contested sign are irrelevant for the purposes of opposition proceedings and, in particular, Article 8(1)(b) EUTMR. It follows that this assertion of the opponent must be dismissed. In any case, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM is potentially subject 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 contested sign is a complex figurative sign consisting of a number of verbal and figurative elements. On the left hand side appears the stylised letters ‘MA’, ‘TE’, and ‘S’ spread across three lines. Due to their same size, colour and font type, at least a part of the relevant public will perceive these letters as together forming the word ‘MATES’ the meaning of which is set out above and the Opposition Division shall focus its attention on this part of the relevant public as it is the best case scenario for the opponent (given that the earlier mark also features the word ‘MATES’). The said word ‘MATES’ bears no reference to the relevant services and so is normally distinctive.

On the right hand side of the contested sign is placed a figurative element of a smiling face in the colours green, orange, red, black, and white, the left-hand side green ear of which is extended and features the numeral ‘7’. As this figurative element bears no direct reference to the relevant services, it is normally distinctive. In any event, however, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

In the context of the relevant broadcasting services, however, the said numeral ‘7’ is likely to be perceived as a reference to a television or radio channel and so it is weakly distinctive of such services.

Placed directly above the said figurative element appears the stylised word ‘MATÝSEK’ in the colour green, which will be perceived by the relevant public as a diminutive of the male forename ‘Mates’ (or ‘Matěj’) and, as it bears no direct reference to the relevant services in question, it is normally distinctive of them.

Beneath the said verbal and figurative elements of the contested sign, appear the words ‘DEJTE VÝHRÁM SMYSL’ spread across three lines, one such word per line. These words will be perceived by the relevant public as meaning ‘give winnings a sense’ and as they bear no direct reference to the relevant broadcasting services in question, they are normally distinctive. The Opposition Division does not agree with the opponent who submits, without providing supporting evidence, that this expression is commonly used and has low distinctive ability and that it is also descriptive in connection with the lottery, organizing competitions and television broadcasting. While these words may be weakly distinctive of lottery services, they are normally distinctive of the relevant broadcasting services.

Contrary to the submission of the applicant, arguing that the word ‘MATES’ is the dominant word element of the contested sign, the Opposition Division takes the view that none of the elements of the contested sign is dominant (i.e. visually outstanding).

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.

Visually, for the public under analysis, the signs coincide in the word ‘MATES’, differing in the additional lowly-distinctive expression ‘MAlé TElevizní Sázení’ of the earlier mark, the distinctive verbal elements ‘MATÝSEK’ and ‘DEJTE VÝHRÁM SMYSL’ and a weak numeral ‘7’ of the contested sign, as well as the figurative and stylised elements of the contested sign.

Taking the above into account, including the fact that the coinciding word ‘MATES’ is placed in a different position in each sign – coming at the end of the earlier mark whereas it is placed at the beginning of the contested sign, where it is spread over three lines – the Opposition Division considers that the signs are visually similar only to a low degree.

Aurally, the signs coincide in the sound of the word ‘MATES’, differing in the sound of the additional preceding words ‘MALÉ TELEVIZNÍ SÁZENÍ’ of the earlier mark which have no counterpart in the contested sign, and the sound of the words ‘MATÝSEK’ and ‘DEJTE VÝHRÁM SMYSL’ and of the numeral ‘7’ of the contested sign, which have no counterpart in the earlier mark.

Taking all the above into account, including the distinctiveness of the said words as set out above, the Opposition Division considers that the signs are aurally similar to a below average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the public under analysis, the signs coincide in the meaning of the word ‘MATES’. Moreover, this coincidence will be strengthened by the concept of the word ‘MATÝSEK’ of the contested sign, as it is a diminutive form of the male forename ‘Mates’.

Although the words ‘MAlé TElevizní Sázení’ of the earlier mark are merely lowly distinctive, their meaning, which has no counterpart in the contested sign, will not go entirely unnoticed, taking into account their position at the start of the earlier mark.

The signs differ semantically also with respect to the distinctive words ‘DEJTE VÝHRÁM SMYSL’ of the contested sign although their impact will be diminished given their relatively smaller size and position in the contested sign. Moreover, the signs differ conceptually with respect to the figurative device of the contested sign and the numeral ‘7’ although their impact is reduced for the reasons set out above.

On the basis of the above, the Opposition Division considers that 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.

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of the lowly‑distinctive verbal element in the mark ‘MAlé TElevizní Sázení’, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The signs have been found to be visually similar to a low degree, aurally similar to a below-average degree, and conceptually similar to an average degree. The services are partly identical, partly similar, and partly dissimilar. The earlier mark as a whole is normally distinctive, and the degree of attention is average.

Taking the relevant factors into account, the Opposition Division considers that the similarities between the signs, pertaining primarily to the coinciding word ‘MATES’, are not sufficient to outweigh the differences. In particular, the overall impression given by the signs at issue is different, especially from the visual perspective.

The additional non coinciding elements are clearly perceivable and are sufficient to exclude any likelihood of confusion between the marks, bearing in mind also that the coinciding word ‘MATES’ appears at the end of the earlier mark and is spread across three lines in the contested sign.

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

The opponent has also based its opposition on the following two earlier trade marks:

 Czech trade mark registration No 373 702 (figurative mark) for lottery ball, lottery wheels in Class 28 and for design of advertising materials, production of advertising films, advertisement in Class 35;

 European Union trade mark registration No 18 065 447 (figurative mark) for lottery balls, lottery drums in Class 28 and for design of publicity material, production of advertising films, advertising in Class 35;

These two earlier rights invoked by the opponent cover goods and services which are clearly different to those applied for in the contested trade mark. In particular, the contested organisation of lotteries; organisation of competitions in Class 41 do not share relevant points of contact with the opponent’s lottery ball(s), lottery wheels/drums in Class 28 to warrant a finding of similarity. The undertakings which organise lotteries and competitions do not as a rule produce the relevant lottery or competition equipment which, instead, are produced by other undertakings which typically manufacture equipment and accessories for lotteries, competitions and/or games. These goods and services have a different nature, are not in competition, with different producers/providers and distribution channels so that the fact that they may share some element of complementarity and purpose is insufficient to make them similar. Therefore, they are dissimilar.

Such goods of the opponent in Class 28 are even more remote from the remaining contested services of the applicant in Classes 36, 38, 41, and 45. They are clearly dissimilar. Furthermore, the opponent’s services in Class 35, all being in the nature of advertising services, are dissimilar to the contested services in Classes 36, 38, 41, and 45 on the basis that they have a different purpose, being neither complementary nor in competition, with different providers and distribution channels. Moreover, the fact that the contested services may appear in the advertising services provided by the opponent is insufficient to find them similar.

Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs at issue are obviously not identical.

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

María del Carmen COBOS PALOMO

Kieran HENEGHAN

Martin MITURA

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.