OPPOSITION No B 3 097 807

Dermal Diagnostics Limited, Advanced Technology Innovation Centre, Oakwood Drive, LE11 3QF Loughborough, United Kingdom (opponent), represented by Serjeants LLP, Dock, 75 Exploration Drive, LE4 5NU Leicester, United Kingdom (professional representative)

a g a i n s t

ColdFire Games GmbH, Anna-Lauter-Str. 10, 76137 Karlsruhe, Germany (applicant).

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

DECISION:

1. Opposition No B 3 097 807 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 120 505 ‘Beat Shift’ (word mark), namely against all the goods in Class 9. The opposition is based on international trade mark registration No 1 301 326 designating the European Union ‘BEAT’ (word 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.

a) The goods

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

Class 9: Software for use by the medical industry.

The contested goods, after the limitation filed by the applicant on 28/11/2019, are the following:

Class 9: Games software; interactive game software; downloadable electronic game programs; downloadable interactive entertainment software for playing video games; downloadable interactive entertainment software for playing computer games; software programs for video games; augmented reality game software; computer application software featuring games and gaming; computer programs for pre-recorded games; computer programmes for interactive television and for interactive games and/or quizzes; computer software for the administration of on-line games and gaming; electronic game software for wireless devices; electronic game software for handheld electronic devices; interactive multimedia software for playing games; interactive multimedia game programs; computer gaming software; virtual reality game software; electronic game software for mobile phones; games software for use with video game consoles; computer games programmes downloaded via the internet [software]; video games [computer games] in the form of computer programs recorded on data carriers; mobile apps, for the purpose of video games only; application software for mobile phones, for the purpose of video games only; computer application software for mobile telephones, for the purpose of video games only; downloadable computer games; computer programs for video and computer games.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The terms ‘for the purpose of […] only’ and ‘for use by the […]’, used in the applicant’s and opponent’s lists of goods to show the relationship of individual goods and services to a broader category, are exclusive and restrict the scope of protection only to the goods specifically listed.

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.

The earlier mark protects a specific software for use by the medical industry, while the contested goods are games software, computer programs for games and mobile apps for video games. Contrary to the opponent’s arguments, these goods are different. Although the goods have the same nature since both are computer programs (a set of instructions that enables a computer to perform a task), their specific purpose is different. Due to the significantly different fields of application, the expertise needed to develop these types of software is not the same, nor are their end users or distribution channels. The goods are not complementary, to the extent that one is indispensable for the other, nor in competition.

Therefore, the contested games software; interactive game software; downloadable electronic game programs; downloadable interactive entertainment software for playing video games; downloadable interactive entertainment software for playing computer games; software programs for video games; augmented reality game software; computer application software featuring games and gaming; computer programs for pre-recorded games; computer programmes for interactive television and for interactive games and/or quizzes; computer software for the administration of on-line games and gaming; electronic game software for wireless devices; electronic game software for handheld electronic devices; interactive multimedia software for playing games; interactive multimedia game programs; computer gaming software; virtual reality game software; electronic game software for mobile phones; games software for use with video game consoles; computer games programmes downloaded via the internet [software]; video games [computer games] in the form of computer programs recorded on data carriers; mobile apps, for the purpose of video games only; application software for mobile phones, for the purpose of video games only; computer application software for mobile telephones, for the purpose of video games only; downloadable computer games; computer programs for video and computer games are dissimilar to the opponent’s goods.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

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 holder 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 holder are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Begoña URIARTE VALIENTE

Claudia SCHLIE

Boyana NAYDENOVA

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.