OPPOSITION Nо B 3 100 034

Electraworks Limited, Suite 711, Europort, Gibraltar (opponent), represented by Stobbs, Building 1000 Cambridge Research Park, CB25 9PD Cambridge, United Kingdom (professional representative)

a g a i n s t

„уърлд Гейм" Оод, Бул."симеоновско Шосе" 85 "з" /буква "з"/, Вх. Б, Ет. 6, Офис Б-10, 1700 София, Bulgaria (applicant), represented by Rumen Dontchev Darakev, 21, Kyustendil Str., Fl.2, Of.27, 1680 Sofia, Bulgaria (professional representative).

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

DECISION:

1.	Opposition No B 3 100 034 is upheld for all the contested goods and services.
2.	European Union trade mark application No 18 093 013 is rejected in its entirely.

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 18 093 013 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 7 577 331 . 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 European Union trade mark registration No 7 577 331.

a) The goods and services

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

Class 9: Computer software.

Class 38: Telecommunications, in particular message sending via the Internet in connection with sports betting and gaming, providing communications access to electronic databases.

Class 41: Entertainment; in particular conducting of sports betting and gaming, conducting sports events.

The contested goods and services are the following:

Class 28: Chips for gambling; gaming machines for gambling; bill-operated gaming equipment; chips and dice [gaming equipment]; board games; counters [discs] for games; playing card shuffling device; arcade games (electronic -) [coin or counter operated apparatus].

Class 41: Gaming machine entertainment services; casino, gaming and gambling services; gaming services for entertainment purposes; betting services; leasing of casino games; organization of lotteries; on-line gaming services; entertainment services provided on-line from a computer database or the internet; electronic games services, including provision of computer games on-line or by means of a global computer network; providing online entertainment in the nature of game tournaments; organising of sporting events, competitions and sporting tournaments; entertainment, sporting and cultural activities.

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 ‘in particular’, used in the opponent’s list of goods and services and the term ‘including’, used in the applicant’s list of goods and services, indicate 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).

Therefore, contrary to the applicant’s assertion, the opponent’s services in Class 41 are not restricted to conducting of sports betting and gaming, conducting sports events, which are only examples of the services included in the category of entertainment.

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 or complementary to each other.

Contested goods in Class 28

The contested gaming machines for gambling; bill-operated gaming equipment; board games; arcade games (electronic -) [coin or counter operated apparatus] are similar to the opponent’s computer software in Class 9. The Court of Justice of the European Union has found that these goods are complementary inasmuch as the software in Class 9 is essential for the functioning of the electronic or online games of chance. Furthermore, it stated that the nature of the opponent’s goods is the same as that of electronic or online games of chance and they may have the same distribution and manufacturing channels. Furthermore, since the software can be intended for gaming, they may be used in the same establishments as those in which games of chance are kept, namely casinos and amusement arcades, and may be purchased by the same professionals (19/04/2016, T‑326/14, HOT JOKER / JOKER et al., EU:T:2016:221, § 54).

The contested chips for gambling; chips and dice [gaming equipment]; counters [discs] for games; playing card shuffling device have some relevant aspects in common with the opponent’s entertainment; in particular conducting of sports betting and gaming, conducting sports events. To provide the abovementioned services, it is essential to use the contested types of gaming apparatus. Therefore, the relevant public would perceive these goods and services as having a common commercial origin. They can have the same origins and distribution channels, since it is not unusual for producers to manufacture and sell a wide range of amusement machines and equipment and provide entertainment services. Therefore, the opponent’s services and the contested goods are similar to a low degree.

Contested services in Class 41

The contested gaming machine entertainment services; casino, gaming and gambling services; gaming services for entertainment purposes; betting services; leasing of casino games; organization of lotteries; on-line gaming services; entertainment services provided on-line from a computer database or the internet; electronic games services, including provision of computer games on-line or by means of a global computer network; providing online entertainment in the nature of game tournaments; entertainment activities are included in the opponent's broad category of entertainment; in particular conducting of sports betting and gaming, conducting sports events. Therefore, they are identical.

The contested organising of sporting events, competitions and sporting tournaments; sporting and cultural activities are similar to the opponent’s entertainment; in particular conducting of sports betting and gaming, conducting sports events as they have the same purpose. They usually coincide in relevant public and 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 identical and similar to varying degrees are directed at the public at large. The degree of attention is considered to be average.

The applicant argues that the degree of attention of the relevant public in relation to the services in Class 41 is very high because some of the services (such as betting and gambling services) are connected to money. However, this is not a criterion to be taken into account to define a high degree of attention of the relevant public. A high degree of attention is usually connected with expensive purchases, the purchase of potentially hazardous or technically sophisticated goods (e.g. cars, pharmaceutical products) as well as goods for which brand loyalty is important for the consumer. Therefore, the opponent’s claim must be set aside.

c) The signs

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 common element ‘WIN’ is meaningful in certain territories, for example, in those countries where English is understood. It means, inter alia, ‘be successful or victorious in (a contest or conflict)’ (information extracted from Oxford Dictionary on 09/12/2020 at https://www.lexico.com/definition/win). Bearing in mind the relevant goods and services, this element lacks distinctiveness. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which this verbal element is meaningless, for example, the Spanish-speaking public, since from the perspective of this part of the public the signs will have more relevant coincidences as further explained below.

The earlier mark is a figurative mark composed of the verbal element ‘bwin’ depicted in slightly stylised typeface on a black square background. The dot of the letter ‘i’ is depicted in yellow. This verbal element is meaningless for the relevant public and therefore, it has a normal degree of distinctiveness. As regards the graphical depiction of the earlier mark, namely its stylisation, colours used and back background, it is of an essentially decorative nature.

The contested mark is also a figurative mark composed of the verbal elements ‘WIN CLUB.COM’ depicted in a standard typeface on a black square background. The dot of the letter ‘I’ is depicted in orange and below the verbal elements, there is a slightly curved blue line. This figurative element is totally commonplace and therefore, has a limited distinctiveness. The verbal element ‘WIN’ is meaningless for the relevant public and therefore, it is distinctive.

The verbal element ‘CLUB’ will be understood by the relevant public as, inter alia, a ‘company founded by a group of people with common interests and dedicated to different kinds of activities, mainly recreational, sports or cultural’ (information extracted from Diccionario de la Real Academia Española on 09/12/2020 at https://dle.rae.es/club; translation by the examiner). Bearing in mind the relevant goods and services, it can be considered non-distinctive.

The element ‘.COM’ of the contested mark refers to a generic top-level domain, and therefore it only indicates that ‘WIN CLUB’ is the name of the website and thus the means of provision (the platform) through which the goods and services are offered and/or delivered. It is, therefore, non-distinctive for the relevant goods and services.

The graphical depiction of the contested sign, namely, the colours used and the black background are of a purely decorative nature.

The element ‘WIN’ in the contested sign is the dominant element as it is the most eye-catching.

Visually, the signs coincide in ‘*WIN’ and in their similar overall structure, in particular, the fact that the dot of the letter ‘I’ is depicted in a different colour from the rest of the elements of the signs and also the black rectangular background. They differ in the letter ‘B’ of the earlier mark, the colour of the dot of the letters ‘I’, the verbal element ‘CLUB.COM’ and the curved blue line in the contested sign and in their stylisation.

Therefore, taking into account the distinctiveness of the elements composing the signs, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛WIN’, present identically in both signs. The pronunciation differs in the sound of the letter ‘B’ of the earlier mark and the sound of the letters ‘CLUB’ and ‘.COM’ which, as stated above, are non-distinctive.

Therefore, taking into account the distinctiveness of the elements composing the signs, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Only the word elements ‘CLUB’ and ‘.COM’ in the contested mark will be understood by the relevant public. However, it is not sufficient to establish any conceptual comparison, since they are elements devoid of distinctiveness.

Consequently, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends, inter alia, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabel, EU:C:1997:528, § 22).

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 are partly identical and partly similar to varying degrees. They are directed at the public at large whose degree of attention is average. The earlier mark is distinctive to a normal degree.

The signs have been found visually similar to an average degree and aurally highly similar, whereas the conceptual aspect does not influence the similarity of the signs. In particular, the signs, although differing in some verbal and figurative elements and in some limited aspects of their stylisations (such as the colours and typefaces), share a very similar structure, namely the fact that the dot of the letter ‘I’ is depicted in a different colour from the rest of the elements of the signs and also the black background, both of which contribute to create a similar overall impression.

Some of the differences reside in verbal elements which lack distinctiveness. It is true that verbal components of signs usually have a stronger impact on the consumer than figurative components, however, this does not alter the basic principle that the average consumer perceives a mark as a whole and does not proceed to analyse its various details. Consequently, the differences between the signs are not sufficient to compromise their similar overall impression, even in relation to lowly similar goods by application of the abovementioned principle of interdependence.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the word ‘WIN’. In support of its argument the applicant refers to some European Union trade mark registrations. 

 

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 the word ‘WIN’. Under these circumstances, the applicant´s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 7 577 331. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier European union trade mark registration No 7 577 331 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 rights 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

Inés GARCIA LLEDO

Claudia SCHLIE

Helen Louise MOSBACK

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.