OPPOSITION No B 3 100 294

Zitro IP S.àr.l, 17, Boulevard Royal, 2449 Luxembourg, Luxembourg (opponent), represented by Canela Patentes y Marcas, S.L., Girona, 148 1-2, 08037 Barcelona, Spain (professional representative)

a g a i n s t

HLVT Technology s.r.o. Holušická 2253/1, 14800 Praha 11 Czech Republic (applicant) represented by Pavel Hrášek, Týnská 1053/21, 11000 Praha, Czech Republic (professional representative).

On 11/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 100 294 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 085 302 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 085 302 for the word mark ‘Hallow Night’. The opposition is based on, inter alia, European Union trade mark registration No 13 500 053 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 trade mark registration No 13 500 053.

a) The goods and services

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

Class 9: Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Data processing equipment and computers; Software; Computer hardware and software, in particular for bingo halls, casinos, automatic slot machines; games programmes; Interactive-game programs; Electronic publications, downloadable; Telecommunications apparatus.

Class 28: Games, playthings, toys; Automatic slot machines; Automatic games other than those adapted for use with television receivers only; Slot machines (gaming devices); Arcade game machines, including machines for amusement arcades and gaming rooms; Gaming machines operated by coins, tokens or any other means of pre-payment; Automatic amusement machines; Free-standing video games apparatus; Electronic hand-held game units; Games equipment for casinos, bingo halls and other gaming halls; Apparatus for games adapted for use with television receivers only; Automatic gaming machines for amusement arcades and betting establishments; Betting terminals; Cards or counters for games included in this class.

Class 41: Provision of tuition; Providing of training; Entertainment; Sporting and cultural activities; On-line gaming services; Organization of competitions; Operating of lotteries; Providing gaming house facilities; Provision of gaming services; Entertainment and recreation information, including an electronic bulletin board with information, news, advice, and strategies about electronic, computer and video games; Casino services; Provision of entertainment facilities; Rental of recreational and gaming machines; Amusement park services.

The contested goods and services are the following:

Class 9: Games software; Games software; Games software; Games software; Games software; Games software; Software programs for video games; Interactive video game programs; Games (cartridges for computer -) [software]; Software; Software programs for video games; Computer software; Education software; Application software; Community software; Computer telephony software; Interactive computer software; Communication software; Programs for computers; Electronic components for gambling machines; Games cartridges for use with electronic games apparatus; Juke boxes, musical; Computer game software for use with on-line interactive games; Computer application software featuring games and gaming; Interactive multimedia software for playing games.

Class 28: Electronic games; Quiz games; Games (Apparatus for -); Arcade games; Lottery wheels; Lottery tickets; Slot machines [gaming machines]; Coin-operated amusement machines; Bill-operated gaming equipment; LCD game machines; Counters for games; Counters for games; Counters for games; Board games; Amusement apparatus for use in arcades.

Class 41: Gambling; Operating of lotteries; Games equipment rental; Casino services; Casino services; Providing casino facilities; Leasing of casino games; Casino facilities [gambling] (Providing -); Providing of casino and gaming facilities; Casino, gaming and gambling services; Providing amusement arcade services; Providing amusement arcade services; Video arcade services.

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 terms ‘in particular’ and ‘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).

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

Software is identically contained in both lists of goods.

The contested games software (listed six times); software programs for video games (listed twice); interactive video game programs; games (cartridges for computer -) [software]; computer software; education software; application software; community software; computer telephony software; interactive computer software; communication software; programs for computers; computer game software for use with on-line interactive games; computer application software featuring games and gaming; interactive multimedia software for playing games are included in the opponent's broad category of software. Therefore, they are identical.

The contested juke boxes, musical are included in the opponent’s broad category of apparatus for reproduction of sound. Therefore, they are identical.

The contested games cartridges for use with electronic games apparatus are removable memory cards designed to be connected to a video game console and can be used to load software, such as video games or other application programs. These goods and the electronic components for gambling machines are at least similar to the opponent's computer hardware, in particular for bingo halls, casinos, automatic slot machines because they can they coincide in distribution channels and producers. Furthermore, they can be complementary.

Contested goods in Class 28

The contested counters for games (listed three times) are identically contained in both lists.

The contested electronic games; quiz games; games (apparatus for -); arcade games; slot machines [gaming machines]; coin-operated amusement machines; LCD game machines; board games; amusement apparatus for use in arcades are included in the opponent's broad category of games. Therefore, they are identical.

The contested lottery wheels; lottery tickets; bill-operated gaming equipment; are highly similar, if not identical, to the opponent’s games, playthings as they have the same purpose, nature and usually coincide in producer and relevant public. Furthermore they are in competition.

Contested services in Class 41

Operating of lotteries; casino services (listed three times in the applicant’s list of services) are identically contained in both lists of services.

The contested gambling; games equipment rental; gaming and gambling services; providing amusement arcade services (listed twice); video arcade services are included in the opponent's broad category of entertainment. Therefore, they are identical.

The contested providing casino facilities; casino facilities [gambling] (providing -); providing of casino and gaming facilities are included in the opponent's broad category of provision of entertainment facilities. Therefore, they are identical.

The contested leasing of casino games is included in the opponent's broad category of casino services. Therefore, they are identical.

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 and similar are directed at the public at large and also at specialists with specific knowledge or expertise, such as IT professionals. The degree of attention varies from average to higher than average depending on the exact nature, the sophistication and price of the goods.

c) The signs

	Hallow Night
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.

For the reasons set out below, at least part of the English speaking public will perceive both signs as referring to ‘Halloween’ despite the fact that the verbal elements of the signs are not coinciding. As this coincidence in perception does not apply for the rest of the relevant public, the Opposition Division finds it appropriate to focus on this part of the English speaking public, in the United Kingdom, Ireland and Malta.

In the earlier mark, irrespective of the fact that the public under analysis will perceive a meaning in both ‘HALLO’ and ‘WIN’ (the latter in particular when seen in relation to games and which is, as such weak in relation thereto) and that these elements might be perceived as alluding to ‘greeting a victory’ or ‘saying hello to the win’ (as argued by the applicant), the public is also likely to perceive the combination of the verbal elements ‘HALLO’ and ‘WIN’ as a play on words of the term Halloween, which refers to the dressing up in costumes and trick-or-treating activities associated with the annual celebrations on October 31^st on the evening before All Saints’ Day (or All Hallows' Day). Nowadays, Halloween is a well-known celebration in the whole European Union and, moreover, the embellishing yellow and orange colours of the earlier mark further reinforce that perception, as the Halloween celebrations typically involve the colour orange deriving from the so-called Jack- o’-lantern, a lantern made from a pumpkin, lit from within by a candle. For the public under analysis, which will refer to Halloween, it has no meaning in relation to the relevant goods and services and is, therefore, distinctive.

The word ‘ZITRO’ in the earlier mark, albeit distinctive, is negligible due to its very small size, such that the term will go completely unnoticed in the sign as a whole (decision of Boa 15/10/2020, R 621/2020-4, HALLOWEEN JACK (fig.) / HALLO WIN (fig.) et al. 8). Therefore, the comparison of the signs will not take this term into account.

As regards the contested sign, it consists of the English words ‘Hallow Night’ which, as such, have the meanings ‘Hallow’, 1.  to consecrate or set apart as being holy 2.  to venerate as being holy, and ‘Night’, the period of darkness each 24 hours between sunset and sunrise, as distinct from day (information extracted from Collins Dictionary on 09/12/2020 at https://www.collinsdictionary.com/dictionary/hallow and night). Although it is true, as the applicant argues, that ‘Hallow Night’ will be perceived as ‘holy night’ by part of the public, it cannot be excluded that part of the English-speaking public also will associate ‘Hallow Night’ with the celebrations of Halloween described above, in particular due to the initial word ‘Hallow’, which make up the first six letters of the word Halloween. This association with Halloween is also likely to be reinforced by the word ‘Night’ in the contested sign, since the celebrations of Halloween are held the evening/night before All Saints’ Day (or All Hallows' Day). Understood or not as such, the word mark ‘Hallow Night’ has no meaning in relation to the relevant goods and services and is, therefore, distinctive to a normal degree.

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.

As regards the figurative aspects (stylisation/colours) of the earlier mark, the Opposition Division notes that 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.

Visually, the signs coincide in their 6 first letters ‘HALLO( )W’ and they also have the letters ‘I’ and ‘N’ in common, albeit in different order. The signs differ in the letters ‘G’, ‘H’ and ‘T’ placed in the final part of the contested sign and in the colours and stylisation of the earlier mark which all, however, has reduced impact for the reasons set out above.

Therefore, the signs are visually similar to a below average degree.

Aurally, the pronunciation of the signs coincides in the sound of the first word in each of the signs at issue,. The pronunciation differs in the sound of the word ‘WIN’ in the earlier mark and in the sound of the word ‘NIGHT’ of the contested sign.

Therefore, taking into account that the coincidence lies in the first word of each of the signs at issue, the signs are aurally similar to an average degree for the public under analysis.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

Although for the public under analysis, both signs will be perceived as referring to ‘Halloween’, as has been explained above, such that they possess at least some degree of conceptual similarity, the fact remains that the earlier mark contains the meaningful words ‘HALLO’ and ‘WIN’ (the latter being weakly distinctive) which do not coincide semantically with the meanings of the two words ‘Hallow’ and ‘Night’ that comprise the contested sign. As a result, the signs are considered to be conceptually similar to no more than 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 goods and 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, despite the presence of a weak element (‘WIN’) in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

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 goods and services have been found partly identical and partly similar at least to an average degree and consumers’ degree of attention varies from average to higher than average. The earlier mark is, as a whole, distinctive to a an average degree for the public under analysis.

The signs are visually similar to a below average degree, aurally and conceptually similar to an average degree for the public under analysis on account of the perception of the verbal elements ‘HALLO WIN’ as a play on words of ‘HALLOWEEN’ in the earlier mark, and the verbal elements ‘Hallow Night’ in the contested sign. Therefore, the differences between the signs are not enough to exclude a likelihood of confusion in this case. Account is also 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) and that 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).

Considering all the above, there is a likelihood of confusion, at least on the part of the public that will perceive a reference to ‘Halloween’ in both marks, such as part of the English speaking public in United Kingdom, Ireland and Malta. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 500 053. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right, European Union trade mark registration No 13 500 053, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

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

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

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

The Opposition Division

María del Carmen COBOS PALOMO

Martin INGESSON

Kieran HENEGHAN

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.