OPPOSITION No B 3 096 016

Hestview Limited, 2 Wellington Place, LS1 4AP Leeds, United Kingdom (opponent), represented by Daniel Troake, 60 St. Martins Lane, WC2N 4JS London, United Kingdom (employee)

a g a i n s t

Konect Games UK Ltd, 303 Goring Road, BN12 4NX Worthing, United Kingdom (applicant).

On 27/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 096 016 is partially upheld, namely for the following contested services:

Class 41: Online betting and gambling services; betting and gambling services.

Class 42: IT services; design services.

2. European Union trade mark application No 18 061 917 is rejected for all the above services. It may proceed for the remaining services, namely:

Class 42: Science and technology services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 18 061 917 for the figurative mark . The opposition is based on, inter alia, United Kingdom trade mark registration No 3 197 398 for the figurative mark . 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s United Kingdom trade mark registration No 3 197 398.

a) The goods and services

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

Class 9: Downloadable mobile applications in the field of betting and gaming; mobile phones games in the field of betting and gaming.

Class 28: Betting games; interactive games in the field of betting and gaming; gambling games.

Class 41: Organisation, production, presentation and provision of betting games; gaming and gambling services; online gambling services; bookmaking [gambling] services; provision of betting information; predictor games relating to sports.

The contested services are the following:

Class 41: Online betting and gambling services; betting and gambling services.

Class 42: IT services; design services; science and technology services.

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 41

Online gambling services; gambling services are identically contained in both lists of services (including synonyms).

The contested online betting services; betting services include, as broader categories, the opponent’s organisation, production, presentation and provision of betting games. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

Contested services in Class 42

The contested IT services is closely linked to the opponent’s downloadable mobile applications in the field of betting and gaming in Class 9 because manufacturers of software, which include the opponent’s downloadable mobile applications, will 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. Therefore, they are considered similar.

The contested design services is also similar to the opponent’s downloadable mobile applications in the field of betting and gaming, as they usually coincide in producer/provider and relevant public. Furthermore, they are complementary.

The contested science and technology services is various scientific and technology-related activities which are concerned with research and experimental development and contribute to the generation, dissemination and application of scientific and technical knowledge. These include mainly services provided by persons, individually or collectively, related to the theoretical and practical aspects of complex fields of activities; such services are provided by members of professions such as chemists, physicists and engineers in the fields of science, technology and industry. These contested services have no relevant point of contact with the opponent’s goods and services in Classes 9, 28 and 41. They differ clearly in their purposes and they do not share the same nature. The providers of the contested services are, as explained above, experts in technological and industrial fields which are normally not involved in the production/provision of any of the opponent’s goods and services. It follows that these goods and services are manufactured/provided by different undertakings. In addition, their target publics are also different. Moreover, they are not in competition or complementary. Therefore, they are considered 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 goods and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The 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

Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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

Both signs are figurative marks.

The earlier mark is composed of the verbal element ‘PICK’, written in black upper-case letters, and the numeral ‘6’ placed inside the outlined red circle. The lettering of the earlier mark is commonplace, with the exception of the letter ‘C’, which displays a certain degree of stylisation. Nonetheless, this degree of stylisation does not obstruct the immediate recognition of this letter. Therefore, the relatively standard black typeface of the earlier mark will be perceived as a purely decorative graphic resource, as it is usual in the market sector for a sign’s verbal elements to be slightly stylised. In addition, the earlier mark’s circular outline is a simple geometrical shape that is commonly used in trade to highlight the information contained within and consumers usually attribute a limited trade mark significance to such shapes. Therefore, the circular outline is distinctive to a low degree.

As regards the contested sign, when encountering a mark, consumers will naturally look for its meaning. The Court has held that, although 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). Consequently, the relevant public is likely to dissect the contested sign into the verbal element ‘pick’ and the numeral ‘6’.

These verbal elements are written in slightly stylised golden-and-orange lowercase letters. However, this stylisation is not striking and does not detract attention from the verbal elements and, therefore, it is distinctive to a low degree.

On the right side of the element ‘pick 6’ is a circular figurative element consisting of a black-and-yellow football surrounded by a dark yellow circle. This figurative element may be perceived by a part of the relevant public as the letter ‘O’ or the numeral ‘0’. However, given that only a small part of the relevant public will perceive this element in the aforesaid manner and considering that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, the Opposition Division finds it appropriate to focus the examination on the substantial part of the public which will perceive this figurative element solely as a representation of a football.

The coinciding verbal element of the signs, ‘PICK’, will be understood by the relevant public as, inter alia, ‘[with object] choose (someone or something) from a number of alternatives’ (information extracted from Oxford Dictionary on 24/08/2020 at https://www.lexico.com/definition/pick). In the context of the goods and services at issue, that is to say, betting and gaming services and goods related thereto, the meaningful expression ‘PICK 6’, taken as a whole, is fanciful and conveys no clear information about the goods and services at issue. It has an average degree of inherent distinctiveness, since it is not descriptive, allusive or otherwise weak in relation to any goods and/or services.

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 representation of the football in the contested sign will be associated with sporting activities. Sport is one of the fields in which betting games are very common. Bearing in mind that the relevant services in Class 41 are online betting and gambling services; betting and gambling services, this element is weak for these services, as it consists of a reference to the nature or purpose of the services, namely betting in the field of sport events, in particular football. This figurative element is also weak in relation to the remaining services, namely IT services; design services in Class 42, since IT and design services may be specialised in the sports field.

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 clearly more dominant than other elements.

Visually, the signs are similar to the extent that they coincide in the letters ‘PICK’ and the numeral ‘6’, which are normally distinctive, present identically in both signs, although they are stylised differently. In addition, they differ in the earlier mark’s circular shape and the contested sign’s representation of a football, which is weak in relation to the services at issue.

Consequently, as they only differ in their slight stylisations and the abovementioned circular shape, which are distinctive to a low degree, and in the figurative element of the contested sign, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛PICK’ and the numeral ‘6’, which will be pronounced by the relevant public as ‘SIX’, present identically in both signs. The figurative elements are not subject to a phonetic assessment.

Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. Both signs will evoke the same concept of the words ‘PICK 6’, which are normally distinctive. However, they differ in the concept introduced by the contested signs’ representation of the football (albeit weakly distinctive for the services at issue) which has no counterpart in the earlier mark. Therefore, the signs are conceptually similar to a high 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

Likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services found to be identical or similar target the professional public and the public at large, and the degree of attention will vary from average to high. 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 are visually and conceptually similar to a high degree and aurally identical. The signs coincide in the verbal elements ‘PICK 6’, albeit written as one word in the contested sign, and differ merely in their slight stylisations, the circular shape of the earlier mark and the representation of a football in the contested sign. However, these additional figurative elements do not make it possible to establish any clear difference between the conflicting signs or, in any case, to detract the consumers’ attention from the coincidence in their verbal elements with the same meaning.

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 and services covered are from the same or economically linked undertakings.

The relevant services in Classes 41 and 42 belong to a market sector in which it is common to create sub-brands, namely variations of the main brand that include additional figurative elements – such as a modernised font and a representation of a football in this case. Indeed, due to the use of the identical element ‘PICK 6’, 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 services that it designates.

Based on the principle of imperfect recollection, the similarities between the signs are sufficient to cause the public to believe that the conflicting goods and services, which are identical or similar, come from the same or, at least, economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s United Kingdom trade mark registration No 3 197 398.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to the goods and services 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.

The other earlier right invoked by the opponent, namely United Kingdom trade mark registration No 3 199 193 for the figurative mark , is less similar to the contested mark. This is because it contains the numeral ‘7’, which is not present in the contested trade mark. Moreover, it covers the same scope of the goods and services as the trade mark which has been compared above. 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.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Gueorgui IVANOV

Patricia LOPEZ FERNANDEZ DE CORRES

Dorothée SCHLIEPHAKE

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.