OPPOSITION No B 3 094 048

Natureh Ideas, S.L., Avenida de Bruselas, 5 - 3ª Planta, 28108 Alcobendas, Spain (opponent), represented by Abril Abogados, C/Amador de los Ríos, 1-1°, 28010 Madrid, Spain (professional representative)

a g a i n s t

Kolibri Games GmbH, Hallesches Ufer 60, 10963 Berlin, Germany (applicant), represented by LLR, 11, boulevard de Sébastopol, 75001 Paris, France (professional representative).

On 14/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 094 048 is partially upheld, namely for the following contested goods and services:

Class 9: Games software; downloadable computer betting software from the Internet; Downloadable interactive entertainment software for playing computer games; Video games [computer games] in the form of computer programs recorded on data carriers; Game applications for mobile computer systems, mobile terminals, mobile telephones and tablets (apps); Downloadable games software in the form of a mobile application (app); Electronic games publications; Plug-ins and upgrade programs for the aforesaid goods; all aforesaid goods only for or in relation to computer games.

Class 42: Computer programming of computer games; Programming of computer game software; Development of computer game software; Design of computer game software; Computer programming of video and computer games; Design and development of computer game software and virtual reality software; Design and development of computer game software; Design and development of game applications for mobile computer systems, mobile terminals, mobile telephones and tablets (apps); Social network software and virtual worlds software development, hosting and management; Providing of game software in the form of a mobile application (app); Providing of online information relating to game software in the form of a mobile application (app) and computer enhancements for games; all aforesaid services only for or in relation to computer games.

2. European Union trade mark application No 18 040 916 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 18 040 916 ‘Kolibri Games’ (word mark). The opposition is based on European Union trade mark registration No 15 584 899 (figurative mark). The opponent invoked Article 8(1)(a) and (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.

a) The goods and services

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

Class 42: Creating, maintaining, and modernizing computer software; IT consultancy, advisory and information services; Software development, programming and implementation; Hosting services, and software as a service and rental of software.

After the limitation by the applicant on 22/10/2020, the contested goods and services are the following:

Class 9: Games software; downloadable computer betting software from the Internet; Downloadable interactive entertainment software for playing computer games; Video games [computer games] in the form of computer programs recorded on data carriers; Game applications for mobile computer systems, mobile terminals, mobile telephones and tablets (apps); Downloadable games software in the form of a mobile application (app); Electronic games publications; Plug-ins and upgrade programs for the aforesaid goods; all aforesaid goods only for or in relation to computer games.

Class 41: Provision of on-line computer games; Entertainment for suitable users being computer games and games software in the form of a mobile application (app); Providing of newsletters via email on the subject of electronic games; Electronic games services, including provision of computer games on-line or by means of a global computer network; providing on-line information relating to computer games; Providing of interactive multi-player computer games and games software in the form of a mobile application (app) via the internet and electronic communications networks; provision of customised web pages for featuring game player information, including information regarding a player’s identity and the player’s preferences; publishing of entertainment and/or educational software; all aforesaid services only for or in relation to computer games.

Class 42: Computer programming of computer games; Programming of computer game software; Development of computer game software; Design of computer game software; Computer programming of video and computer games; Design and development of computer game software and virtual reality software; Design and development of computer game software; Design and development of game applications for mobile computer systems, mobile terminals, mobile telephones and tablets (apps); Social network software and virtual worlds software development, hosting and management; Providing of game software in the form of a mobile application (app); Providing of online information relating to game software in the form of a mobile application (app) and computer enhancements for games; all aforesaid services only for or in relation to computer games.

The applicant claims that the goods and services cannot be confused and references different subcategories in application stores, different ways of searching and a distinction between apps and mobile games. The applicant also refers to actual use and fields of activities of the opponent and applicant, where the earlier mark is the product name, and the contested sign is a developer’s name. However, the comparison of goods and services must be based on the wording used in the lists of goods and/or services in question, that is to say, for which the trade mark is registered or for which registration is sought. 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 argument must be set aside.

Firstly, according to Article 33(7) EUTMR, goods or services are not regarded as similar or dissimilar 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 goods in Class 9

The opponent’s software development, programming and implementation in Class 42 is the writing of a computer program (including game program), which is a set of coded instructions to enable a machine, especially a computer, to perform a desired sequence of operations. Since the term is not limited and does not specify any particular kind of software, it is considered that it covers development, programming and implementation of all kinds of software.

Therefore, the opponent’s service is closely linked to the contested games software; downloadable computer betting software from the Internet; downloadable interactive entertainment software for playing computer games; video games [computer games] in the form of computer programs recorded on data carriers; game applications for mobile computer systems, mobile terminals, mobile telephones and tablets (apps); downloadable games software in the form of a mobile application (app); plug-ins and upgrade programs for the aforesaid goods; all aforesaid goods only for or in relation to computer games which are various kinds of software and applications used in relation to computer games, as well as plug-ins and upgrade programs for these goods. This is because manufacturers of game software and applications also commonly provide software-related services (as a means of keeping the system updated, for example). Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary. In considering the contested electronic games publications, they are electronic versions of traditional media, such as e-books, electronic journals, online magazines, online newspapers, etc. It is common to distribute books, magazines and newspapers to consumers in the form of electronic publications by means of various software applications, and the manufacturers of the latter will also commonly render software-related services such as the software development, programming and implementation. There is therefore a complementary relationship between the contested electronic games publications and the opponent’s software development, programming and implementation. Their producers/providers can be the same, they follow the same distribution channels, and the public is also generally the same. Therefore, the contested goods in Class 9 are considered similar at least to a low degree to the opponent’s software development, programming and implementation in Class 42

Contested services in Class 41

The contested services in this class cover the provision of games as well as the provision of information, newsletters and websites regarding games and players and publishing of entertainment and/or educational software. They are all intended for the entertainment and recreational pursuit of individuals. These services and the opponent’s services in Class 42 are fundamentally different in nature, purpose and method of use. The opponent’s services require technical expertise in the computer field to execute. The providers of these types of services will not provide gaming services even though they develop game software. Likewise, providers of services relating to entertainment usually do not develop the software that is connected with their services. Furthermore, these services are not in competition. Therefore, they are dissimilar.

Contested services in Class 42

Even though the applicant limited the services in Class 42 to those relating to computer games, their general nature remains the same: they are still services of software programming, design, development, hosting, management and information. Thus, the contested computer programming of computer games; Programming of computer game software; development of computer game software; design of computer game software; computer programming of video and computer games; design and development of computer game software and virtual reality software; design and development of computer game software; design and development of game applications for mobile computer systems, mobile terminals, mobile telephones and tablets (apps); social network software and virtual worlds software development, hosting and management; providing of game software in the form of a mobile application (app); providing of online information relating to game software in the form of a mobile application (app) and computer enhancements for games; all aforesaid services only for or in relation to computer games are at least similar, if not identical, to the opponent’s software development, programming and implementation or IT consultancy, advisory and information services; hosting services, and software as a service and rental of software. The services have the same nature and are provided by the same undertakings, i.e. IT experts in programming, development and design. Moreover, they are directed at the same consumers and coincide in distribution channels.

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 similar to varying degrees (or even identical) are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

	Kolibri Games
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The applicant argues that the marks cannot be confused because one of them is a product name while the other is a developer’s name. Therefore, they would be displayed differently in searches within application stores, meaning a clear distinction between the signs can be made. However, the comparison of the signs must be based on the representation of the signs as registered or for which registration is sought. The actual way the earlier sign is displayed in the application store search is not relevant for the examination unless the opponent cannot prove genuine use of the mark as registered. In this regard, the Opposition Division reminds that in accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. However, in the present case, the applicant did not request the proof of genuine use of the earlier mark nor would such a request be admissible, since the earlier trade mark has not been registered for five years. In addition, and contrary to the applicant’s assertion, no recognition of the earlier mark on the relevant market is required for the purposes of the present assessment given that the opponent has not claimed enhanced distinctiveness or reputation for its trade mark. Consequently, the applicant’s arguments must be set aside, and the Opposition Division will proceed with the comparison of the signs as represented in the Register.

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.

When assessing the similarity of the signs, an analysis of whether the signs convey any meaning is carried out to determine whether the signs are conceptually similar, and if so, to what extent. It may be easier to establish that the public may be confused about origin when both signs convey an identical (or similar) concept that is distinctive in relation to the goods and services.

The element ‘Kolibri’ of the contested mark exists in German and will be understood as ‘hummingbird’. The German-speaking public will see the same meaning in the word ‘Kolibry’ of the earlier sign, despite the difference in the last letter.

Accordingly, the Opposition Division will first examine the opposition in relation to the part of the public for which the verbal elements of the marks are meaningful, such as the German-speaking part of the relevant public. The elements ‘Kolibry’ and ‘Kolibri’ are distinctive for the goods and services in question.

Considering the word ‘Games’ of the contested sign, at least part of the relevant public will understand this English word as a reference to, for example, computer games, and as such, it could be considered non-distinctive in relation to at least some of the goods and services in question, since it may indicate their kind or purpose. In this regard, although similarities between signs are higher where the differences between the signs reside in weak or non-distinctive elements, as in this case (at least in relation to some of the goods and services), for the purpose of this comparison, the Opposition Division will assume that the word ‘Games’ has a normal degree of distinctiveness for all the goods and services concerned, which is the most advantageous scenario for the applicant and does not have a negative impact on the opponent’s position.

The letter ‘k’ in a square frame of the earlier sign is considered distinctive, however, it will merely be perceived as a graphical representation of the first letter of the following verbal element ‘Kolibry’. Moreover, where 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).

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 have no elements that could be considered dominant (visually eye-catching).

Visually, the signs coincide in ‘Kolibr*’ of the verbal elements ‘Kolibry’ and ‘Kolibri’, which play distinctive and independent roles in the respective signs. The signs differ in the final letters ‘y’ v ‘i’ of the above verbal elements, the word ‘Games’ of the contested sign and the figurative representation of the letter ‘k’ in the earlier sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in ‘Kolibry/Kolibri’ since the letters ‘y’ and ‘i’ placed at the end of the verbal elements will be pronounced identically. The signs differ in the pronunciation of the word ‘Games’ of the contested sign. It cannot be excluded that part of the public under analysis will also pronounce a single letter ‘k’ of the earlier sign.

Therefore, 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 a reference to a hummingbird, 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 in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include ‘C/KOLIBR’. In support of its argument the applicant refers to several trade mark registration.

However, 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 ‘C/Kolibr’. Under these circumstances, the applicant’s claims must be set aside.

e) Global assessment, other arguments and conclusion

The goods and services are similar to varying degrees (or even identical). The signs are overall similar to an average degree. The earlier sign has a normal degree of distinctiveness.

The signs are similar insofar as they coincide almost entirely in their distinctive elements ‘Kolibry’ and ‘Kolibri’, which play independent roles in the respective signs. The difference in ‘y’ v ‘i’ may easily go unnoticed and has no impact from an aural point of view. Account is 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 signs differ in the word ‘Games’ of the contested sign. Although the word ‘Games’ is assumed to be distinctive for the goods and services concerned, it is the common element ‘Kolibr*’, placed at the beginning of the contested mark, that first catches the attention of the reader for the reasons explained above. The signs further differ in the figurative representation of the letter ‘k’ in the earlier sign and its stylisation.

The applicant refers to a well-known product in relation to its mark and argues that consumers better recognise the contested sign than the earlier sign.

However, 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.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-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 15 584 899. 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 similar to varying degrees (or identical) to those of the earlier trade mark.

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.

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 and directed against the remaining services because the signs 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. 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

Martin MITURA

Anna BAKALARZ

Katarzyna ZANIECKA

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.