OPPOSITION No B 3 102 353

adp Gauselmann GmbH, Merkur-Allee 1-15, 32339 Espelkamp, Germany (opponent), represented by Valentine Kohl, Paul-Gauselmann-Straße 1, 32312 Lübbecke, Germany (employee representative)

a g a i n s t

Play’n GO Marks Ltd, Level 4, The Centre Pjazza Tigné, Tigné Point, SLM 1022 Sliema, Malta (applicant), represented by Advokatfirman Nordia, Kungsportsavenyen 1, 411 36 Göteborg, Sweden (professional representative).

On 20/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 102 353 is upheld for all the contested goods and services, namely:

Class 9: Computer games and video games (software), hereunder software for slot machine games, betting and wagering games, video slot games and casino games provided online and via computer networks and playable on any type of computing device including arcade games; software for slot machine games, betting and wagering games, video slot games and casino games provided online and via computer networks and playable on any type of computing device including arcade games.

Class 28: Videogaming apparatus, hereunder slot machines for gambling, gaming machines, poker machines and other video based casino gaming machines; arcade games; gaming machines, namely, devices that accept a wager; reconfigurable casino and gaming equipment, hereunder gaming machines including computer games and software therefor sold as a unit.

Class 41: Games services provided online (via computer networks), hereunder providing slot machine games, video slot games and casino games, playable via local or global computer networks; on-line gaming services; entertainment services, namely, conducting a game of chance simultaneously at multiple, independent gaming establishments; entertainment services, hereunder providing on-line computer games; prize draws [lotteries]; organising and conducting lotteries.

2. European Union trade mark application No 18 137 009 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 137 009 for the word mark ‘RING OF ODIN’, namely against some of the goods and services in Classes 9, 28 and 41. The opposition is based on European Union trade mark registration No 12 482 221 for the word mark ‘Odin’. 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 goods and services on which the opposition is based are, inter alia, the following:

Class 9: Games software for use on any computer platform, including electronic entertainment and games consoles; computer games; video games (software).

Class 28: Gaming apparatus (including coin-operated apparatus).

Class 41: Entertainment.

The contested goods and services are the following:

Class 9: Computer games and video games (software), hereunder software for slot machine games, betting and wagering games, video slot games and casino games provided online and via computer networks and playable on any type of computing device including arcade games; software for slot machine games, betting and wagering games, video slot games and casino games provided online and via computer networks and playable on any type of computing device including arcade games.

Class 28: Videogaming apparatus, hereunder slot machines for gambling, gaming machines, poker machines and other video based casino gaming machines; arcade games; gaming machines, namely, devices that accept a wager; reconfigurable casino and gaming equipment, hereunder gaming machines including computer games and software therefor sold as a unit.

Class 41: Games services provided online (via computer networks), hereunder providing slot machine games, video slot games and casino games, playable via local or global computer networks; on-line gaming services; entertainment services, namely, conducting a game of chance simultaneously at multiple, independent gaming establishments; entertainment services, hereunder providing on-line computer games; prize draws [lotteries]; organising and conducting lotteries.

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 ‘including’ and ‘hereunder’, used in the parties’ lists 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).

However, the term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

The applicant argues that the parties are commercially active in different fields. However, the comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for this comparison since it is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71).

Contested goods in Class 9

The contested computer games and video games (software), hereunder software for slot machine games, betting and wagering games, video slot games and casino games provided online and via computer networks and playable on any type of computing device including arcade games are identical to the opponent’s computer games; video games (software) as the specific contested goods indicated under those broad categories are only examples, as explained above.

The contested software for slot machine games, betting and wagering games, video slot games and casino games provided online and via computer networks and playable on any type of computing device including arcade games are included in the broad category of, or overlap with, the opponent’s games software for use on any computer platform, including electronic entertainment and games consoles. Therefore, they are identical.

Contested goods in Class 28

The contested videogaming apparatus, hereunder slot machines for gambling, gaming machines, poker machines and other video based casino gaming machines; arcade games; gaming machines, namely, devices that accept a wager; reconfigurable casino and gaming equipment, hereunder gaming machines including computer games and software therefor sold as a unit are included in the broad category of the opponent’s gaming apparatus (including coin-operated apparatus). Therefore, they are identical.

Contested services in Class 41

The contested games services provided online (via computer networks), hereunder providing slot machine games, video slot games and casino games, playable via local or global computer networks; on-line gaming services; entertainment services, namely, conducting a game of chance simultaneously at multiple, independent gaming establishments; entertainment services, hereunder providing on-line computer games; prize draws [lotteries]; organising and conducting lotteries are included in the broad category of the opponent’s entertainment. 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 are directed at the public at large and at a professional public with specific 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

Odin	RING OF ODIN
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).

Both signs are word marks. The protection of a word mark concerns the words as such. Therefore, it is irrelevant, for the purposes of the comparison of word marks, if one of them is written in lower-case letters and the other in upper-case letters or a combination of those letters.

The word ‘Odin’/ ‘ODIN’ in both signs might be perceived by part of the relevant public as designating the supreme god and creator, god of victory and the dead in Norse mythology. Another part of the relevant public will perceive it as a meaningless term. In any case, it has a normal degree of distinctiveness in relation to the relevant goods and services.

The applicant argued that the word ‘ODIN’, which predates the opponent’s business by many centuries, is used by many companies in a wide spectrum of commercial fields and is often used in films, television, games and other media in a descriptive way and, therefore, its distinctive character is affected. However, this is not relevant since the applicant did not provide any evidence to support this assertion.

The element ‘RING’ in the contested sign will be understood by the English-speaking public as referring to an object in the form of a circle or jewellery and the element ‘OF’ as the English preposition used to indicate, inter alia, that something (indicated by the word preceding it) belongs to someone/something (indicated by the word following it). ‘RING OF ODIN’, as a whole, means an object in the form of a circle or a piece of jewellery belonging to Odin. Another part of the relevant public will perceive it as meaningless. In any case, these words have a normal degree of distinctiveness.

Visually and aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the sound of the verbal element ‘Odin’/’ODIN’, which comprises the entire earlier mark and is an independent distinctive element in the contested sign. They also differ in the additional verbal elements ‘RING OF’ in the contested sign.

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

Conceptually, for part of the relevant public, neither of the signs has a meaning. Since a conceptual comparison is not possible for this part of the relevant public, the conceptual aspect does not influence the assessment of the similarity of the signs.

Another part of the relevant public might only perceive the elements ‘RING OF’ with a meaning. Since the earlier mark does not have any concept, for this part of the relevant public the signs are not conceptually similar.

For the part of the relevant public that will perceive the verbal element ‘Odin’/’ODIN’ in both signs with the meaning referred to above, the signs are similar at least 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 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 on numerous elements and, in particular, 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, Sabèl, EU:C:1997:528, § 22).

The earlier mark has an average degree of distinctiveness. The relevant public is the public at large and a professional public whose degree of attention varies from average to high.

The goods and services are identical.

The signs are visually and aurally similar to an average degree. Conceptually, for a part of the relevant public, the signs are similar to at least an average degree. For the remaining part of the relevant public, a comparison is either not possible or the signs are conceptually not similar.

Even if the relevant public might perceive the differences produced by the additional words in the contested sign, a likelihood of confusion cannot be excluded as the earlier mark is fully included in the contested sign as an independent distinctive element.

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/services covered are from the same or economically linked undertakings. Indeed, 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 goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 482 221 for the word mark ‘Odin’. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

María del Carmen SUCH SÁNCHEZ

Saida CRABBE

Chantal VAN RIEL

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.