OPPOSITION Nо B 3 112 931

 

Rational Intellectual Holdings Limited, Douglas Bay Complex, King Edward Road, Onchan IM3 1DZ, Isle of Man (opponent), represented by FRKelly, 27 Clyde Road Ballsbridge, Dublin 4, Ireland (professional representative) 

 

a g a i n s t

 

Starbet Limited, Cornerline, Dun Karm Street, Birkirkara, Malta (applicant), represented by Thomas Mildner, Schöpfstraße 4, 6020 Innsbruck, Austria (professional representative).

On 14/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 112 931 is partially upheld, namely for the following contested goods and services:

 

	Class 28: All goods in this Class. Class 35: All services in this Class. Class 41: All services in this Class.
2.	European Union trade mark application No 18 156 412 is rejected for all the above goods and services. It may proceed for the remaining services.

 

3.	Each party bears its own costs.

 

REASONS

 

On 02/03/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 156 412 for the figurative mark , namely against all the goods and services in Classes 28, 35, 41 and 43.

The opposition is based on the following earlier rights:

- international trade mark registration designating Cyprus, Spain, Greece No 867 491 for the word mark ‘STARBET’,

- European Union trade mark registration No 4 637 252 for the word mark ‘STARBET’,

- European Union trade mark registration No 4 686 275 for the figurative mark ,

- European Union trade mark registration No 5 044 961 for the figurative mark ,

- European Union trade mark registration No 16 862 311 for the figurative mark ,

- European Union trade mark registration No 16 201 261 for the figurative mark ,

- European Union trade mark registration No 17 576 315 for the word mark ‘BETSTARS’,

- European Union trade mark registration No 14 574 719 for the word mark ‘BetStars’,

- United Kingdom trade mark registration No 2 641 543 for the word mark ‘BetStars’.

The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK CONCERNING THE UNITED KINGDOM EARLIER RIGHT

On 01/02/2020, the United Kingdom withdrew from the European Union subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the United Kingdom. As from 01/01/2021, the United Kingdom rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1) EUTMR, worded in the present tense, must also be fulfilled at the time of taking the decision.

Therefore, United Kingdom trade mark registration No 2 641 543 for the word mark ‘BetStars’ cannot be taken into account and, as a basis of the opposition, must be dismissed.

PROOF OF USE

 

Proof of use of one of the earlier marks, namely European Union trade mark registration
No 4 637 252 for the word mark ‘STARBET’, was requested by the applicant in due time (on 20/05/2020, before the expiry of the time limit for the applicant’s first observations, in accordance with Articles 8(2) and 10(1) EUTMDR). However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T-296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of this earlier mark had been proven for all the goods and services invoked, which is the best light in which the opponent’s case can be considered.

Furthermore, on 27/05/2021, after the expiry of the time limit mentioned above, the applicant requested proof of use of the following trade marks of the opponent:

- international trade mark registration designating Cyprus, Germany, Spain, Greece No 867 491 for the word mark ‘STARBET’,

- European Union trade mark registration No 4 686 275 for the figurative mark ,

- European Union trade mark registration No 5 044 961 for the figurative mark ,

- European Union trade mark registration No 16 862 311 for the figurative mark ,

- European Union trade mark registration No 16 201 261 for the figurative mark ,

- European Union trade mark registration No 17 576 315 for the word mark ‘BETSTARS’,

- European Union trade mark registration No 14 574 719 for the word mark ‘BetStars’.

The Office, in its letter of 28/05/2021, informed the applicant that the aforesaid request for proof of use cannot be taken into account, because it was not submitted in due time, that is to say, before the expiry of the time limit for the applicant’s first observations, in accordance with Articles 8(2) and 10(1) EUTMDR. In addition, the Office informed the applicant that in accordance with its earlier communication of 15/03/2021, unless further examination of the file reveals that the submission of additional observations or evidence is needed, the Office will rule on the opposition on the basis of the evidence before it.

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 5 044 961 for the figurative mark , for which proof of use was not requested in due time.

a) The goods and services

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

Class 28: Electronic games and playthings, except those adapted for use with television receivers only; counters for games; automatic slot machines; gaming machines, games, toys.

Class 35: Advertising; advertising on the Internet, for others; market research; auctioneering, including on the Internet.

Class 41: Betting offices; arranging, conducting and operating of lotteries, gambling and sports betting by means of telecommunications, in particular via email and/or on the Internet; games on the Internet; entertainment; sporting and cultural activities in connection with the arranging, conducting and operating of lotteries, gambling and sports betting; providing casino facilities (gambling).

The contested goods and services are the following:

Class 28: Toys, games, playthings and novelties.

Class 35: Advertising, marketing and promotional services; promotional management for sports personalities; advertising and marketing; online advertisements; advertising services relating to the provision of business.

Class 41: Football pools services; betting services; sports betting services; online sports betting services.

Class 43: Services for providing food and drink; providing drink services; bar services; providing food and drink for guests.

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

 

The terms ‘in particular’ and ‘including’, used in the opponent’s list of services, indicate that the specific 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).

 

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 goods in Class 28

Toys, games are identically contained in both lists of goods.

The contested novelties are included in the broad category of, or overlap with, the opponent’s toys. Therefore, they are identical.

The contested playthings include, as a broader category, the opponent’s electronic playthings, except those adapted for use with television receivers only. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested services in Class 35

Advertising (listed twice) is identically contained in both lists of services.

The contested marketing (listed twice) and promotional services; promotional management for sports personalities; online advertisements; advertising services relating to the provision of business are included in the broad category of, or overlap with, the opponent’s advertising. Therefore, they are identical.

Contested services in Class 41

The contested football pools services; betting services; sports betting services; online sports betting services are included in the broad category of, or overlap with, the opponent’s betting offices. Therefore, they are identical.

Contested services in Class 43

The contested services for providing food and drink; providing drink services; bar services; providing food and drink for guests are dissimilar to the opponent’s goods in Class 28 and services in Classes 35 and 41. They differ not only in their nature and purpose, but also in their distribution channels, sales outlets, producers and method of use. They are neither in competition nor complementary.

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 in Class 28 and services in Class 41 found to be identical are directed at the public at large. The services in Class 35 found to be identical are more specialized services directed at business customers with specific professional knowledge or expertise.

 

The degree of attention is average with regard to the goods in Class 28 and services in Class 41. However, in relation to the services in Class 35, the degree of attention may vary from average to above-average, depending on the specialised nature of the services, the frequency of purchase and their price.

 

c) The signs

 

Earlier trade mark	Contested sign

The relevant territory is the EU.

 

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 verbal element ‘starbet’ as such has no meaning in certain territories, for example in Poland, Slovakia and the Czech Republic. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-, Slovak- and Czech-speaking part of the public.

As the verbal element ‘starbet’ as such, present both signs, has no meaning for the relevant public, it is, therefore, distinctive.

It is, however, quite likely that at least a significant part of the public will dissect the verbal element ‘star’ from ‘STARBET’ (both in the earlier mark and the contested sign). The element ‘star’ is a basic word in English and primarily means a ‘celestial object’; although, it can also portray the concept of excellence, quality or popularity, which is in fact how it will be understood’ (05/08/2014, R 2452/2013-4, StarElements / STAR). According to the established case-law the word ‘star’ is ‘commonly understood also by non-English-speaking public as a laudatory term highlighting the quality of the products (10/09/2014, T-199/13, STAR, EU:T:2014:761, § 61; 11/05/2010, T-492/08, Star foods, EU:T:2010:186; § 52). Bearing in mind the above, the Opposition Division is of the opinion that the word ‘star’ is weak for the relevant public. The remaining component, namely ‘bet’/’BET’ has no meaning for the relevant public and is, therefore, distinctive.

The earlier mark contains an oval figurative element on which a four-pointed star appears. The contested sign contains a five-pointed star. These depictions of a star only reinforce the meaning of the verbal element ‘star’ in both signs at their beginnings.

The figurative elements in the signs are weak as they depict stars and can be seen as laudatory. Thus, their role in the comparison is secondary. In this regard it should be also noted 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).

The letters in the signs in conflict are slightly stylised. This stylisation, being rather commonplace, has a secondary role in the comparison.

The signs in question have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the sequence of letters ‘starbet’, which is the sole verbal element of the signs in conflict and they also coincide in the fact that the figurative element in both signs contains a representation of a star. They differ however in the stylisation of the letters in both signs, the depiction of the stars in the figurative elements, the oval part of the figurative element of the earlier mark and the colours used in the signs.

Therefore, and taking into account the distinctiveness and dominance issues, the signs are visually similar to a high degree.

Aurally, the signs coincide in the sound of the letters ‘starbet’, which makes up the whole of the verbal element in the signs in conflict.

Therefore, the signs are aurally identical.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the elements ‘star’ (verbal and figurative), included in both signs, will be associated with the meaning explained above. To that extent, the signs are conceptually similar to an average degree. However, the impact of these verbal and figurative elements may have a reduced impact due to their weak character as explained above.

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, despite the presence of weak elements (i.e. the verbal element ‘star’ and the representation of a star) in the mark as stated above in section c) of this decision.

 

e) Global assessment, other arguments and conclusion

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 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 goods and services are partly identical and partly dissimilar. They are directed, to some extent, at the public at large whose degree of attention is average and at professionals whose degree of attention may vary from average to above-average. The signs are visually similar to a high degree and aurally they are identical. Conceptually, they are similar to an average degree, since they coincide in weak concepts as explained above. The earlier mark’s distinctiveness as a whole is normal.

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 coincide in their sole verbal element ‘starbet’. They also coincide in the fact that they contain depictions of stars (even though one is four-pointed star and the other is a five-pointed star). The differences, for instance the stylisation of the letters, the differences in the figurative elements and the colors used in the signs, are secondary or have less impact in the comparison. Accordingly, the Opposition Division finds that the differences between the signs are not sufficient to outweigh the striking similarities between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the Polish-, Slovak- and Czech-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 5 044 961 for the figurative mark . 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.

 

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical to those 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 opponent has also based its opposition on the following earlier trade marks:

 

- European Union trade mark registration No 4 686 275 for the figurative mark ,

- international trade mark registration designating Cyprus, Germany, Spain and Greece
No 867 491 for the word mark ‘STARBET’,

- European Union trade mark registration No 16 862 311 for the figurative mark ,

- European Union trade mark registration No 16 201 261 for the figurative mark ,

- European Union trade mark registration No 17 576 315 for the word mark ‘BETSTARS’,

- European Union trade mark registration No 14 574 719 for the word mark ‘BetStars’,

- European Union trade mark registration No 4 637 252 for the word mark ‘STARBET’.

The contested services that were found dissimilar under section a) of this decision are all the services in Class 43, namely services for providing food and drink; providing drink services; bar services; providing food and drink for guests. They will be compared with the goods and services of the aforesaid earlier trade marks.

European Union trade mark registration No 4 686 275 for the figurative mark and No 4 637 252 for the word mark ‘STARBET’ (for which use was assumed to have been proven) cover the same scope of goods and services. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected (comparison and explanations made above). Therefore, no likelihood of confusion exists with respect to those services in Class 43.

European Union trade mark registration No 16 862 311 for the figurative mark and European Union trade mark registration No 17 576 315 for the word mark ‘BETSTARS’ are registered for some goods in Classes 25 and 28. As the scope of protection is different with regard to these earlier marks it should be explained that European Union trade mark registration No 16 862 311 for the figurative mark is registered for the goods in Class 25, namely clothing, footwear, headgear; accessories worn on the body, and Class 28, that is, gaming chips; gaming chip sets; arcade games (electronic-) (coin or computer operated apparatus); balls being sporting articles; footballs, golf balls, stress relief balls for hand exercise; bags adapted for carrying sporting articles; sports gloves; board games; cups for dice; sports equipment; dice and dice games; roulette and casino games; poker sets; game tables; playing cards, and European Union trade mark registration No 17 576 315 for the word mark ‘BETSTARS’ is registered for the goods in Class 25, namely clothing; footwear; headgear; sports clothing; sports garments, and Class 28, that is, toys, games, playthings and novelties; sporting articles and equipment; fairground and playground apparatus; festive decorations and artificial Christmas trees; soft toys; card games; poker chips; chips and dice [gaming equipment]; gaming chip sets; chips and dice (gaming equipment); cups for dice; playing cards; cases for playing cards; playing card shuffling devices; coin-operated gaming equipment; games relating to sport; sports equipment; balls being sporting articles; bags adapted for carrying sporting articles; bags specially adapted for sports equipment; cases adapted for carrying sporting apparatus; sports gloves. The contested services in Class 43 and the aforesaid goods in Classes 25 and 28 are dissimilar as they differ not only in their nature and purpose, but also in their distribution channels, producer/provider, sales outlets and method of use. Furthermore, they are neither in competition nor complementary. Therefore, no likelihood of confusion exists with respect to those remaining services in Class 43.

European Union trade mark registration No 16 201 261 for the figurative mark and European Union trade mark registration No 14 574 719 for the word mark ‘BetStars’ cover goods in Class 9, that is, computer software and computer programs for gaming, gambling and betting; computer software and computer programs exclusively in connection with sports betting; computer software platforms for social networking exclusively in connection with sports betting, competitions, contests, gameshows and events; computer application software exclusively in connection with sports betting; video game programs exclusively in connection with sports betting; downloadable electronic game programs that may be accessed via the internet, electronic mail or portable, mobile, handheld or tablet devices, exclusively in connection with sports betting; downloadable electronic publications exclusively in connection with sports betting, competitions, contests, gameshows and events, and services in Class 41, that is, betting, gambling and gaming services; the provision of sports betting played live or over the internet and via portable, mobile handheld or tablet devices; entertainment services exclusively in connection with sports betting, competitions, contests, gameshows and events; television entertainment services exclusively in connection with sports betting, competitions, contests, gameshows and events; providing sports betting facilities; sporting and cultural activities in connection with betting; organisation, production and presentation of tournaments, competitions, contests, games, gameshows and events all relating to or featuring sports betting; the provision of information relating to betting services, competitions, contests, games, gameshows and events; the provision and distribution of electronic publications, including online, exclusively in connection with sports betting, competitions, contests, gameshows and events; services of a sports bookmaker; organization and operation of pools, wagering and betting for live sports games and racing; organisation, administration and running of betting services, competitions, contests, games, gameshows and events; providing sports betting services via social media web sites; providing news, consultancy and advisory services relating to any of the aforesaid services. The contested services in Class 43 and the aforesaid goods and services in Classes 9 and 41 differ not only in their nature and purpose, but also in their distribution channels, producer/provider, sales outlets and method of use. Furthermore, they are neither in competition with each other nor complementary. Therefore, no likelihood of confusion exists with respect to those services in Class 43.

International trade mark registration designating Cyprus, Spain and Greece No 867 491 for the word mark ‘STARBET’ covers services in Classes 35, 38, 41 and 43. The specification of services in Classes 35 and 41 is narrower than in the above examined European Union trade mark registration No 5 044 961 (comparison and explanations made above). The services in Class 38, that is, telecommunication, in particular news transmission in context with sport bets; provision of electronic access to sport bets-specific data bases and Class 42, namely design and development of computer hardware and software are dissimilar to the remaining contested services in Class 43 as they differ not only in their nature and purpose, but also in their distribution channels, sales outlets and method of use. Furthermore, they are neither in competition nor complementary. Therefore, no likelihood of confusion exists with respect to those remaining services in Class 43.

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

 

 

The Opposition Division

 

 

Helen Louise MOSBACK

Michal KRUK

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.