OPPOSITION Nо B 3 112 947

 

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 06/04/2021, the Opposition Division takes the following

DECISION:

 

1.	Opposition No B 3 112 947 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 18 156 416 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 18 156 416 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:

- 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 ,

- 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’,

- 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. 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.

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 , which was not under proof of use requirement.

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, indicates 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.

It should also be noted that the limitation at the end of the specification of the earlier mark’s goods in Class 28 (electronic games and playthings, except those adapted for use with television receivers only) does not affect their degree of identity with some of the contested goods in Class 28. Therefore, for the sake of clarity, and considering that it would not alter the result of the comparison, the aforementioned limitation will be taken into account, but will not be mentioned in the comparison that follows.

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. 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 with each other 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 and the phrase ‘bet like a star’ as a whole have no meaning in certain territories, for example in the countries where Polish, Slovak and Czech are understood. 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’ (earlier mark and contested sign) and from the expression underneath in the contested sign ‘bet like a star’. The l 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.

With regard to the contested sign consumers generally tend to focus on the beginning or top of a sign when they encounter a trade mark. This is because the public reads from left to right or from top to bottom, which makes the part placed at the left or on the top of the sign (the initial part) the one that first catches the attention of the reader. It is therefore relevant to note that in the present case the coincidences between the marks (which constitute the entire earlier mark) are found at the beginning of the contested sign, as it is explained in detail below.

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(s) ‘star’ in both signs, partially, 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 sign in conflict are slightly stylised. This stylisation, being rather commonplace, has a secondary role in the comparison.

The earlier mark has no elements that could be considered clearly more dominant than other elements.

The element ‘STARBET’ and the figurative element of a star in the contested sign are the dominant elements as they are the most eye-catching.

Visually, the signs coincide in the sequence of letters ‘starbet’, which is the sole verbal element of the earlier mark and the first (top) verbal element of the contested sign and they also coincide in the figurative element in the form of a star. In addition, the element ‘star’ is reproduced in the expression ‘bet like a star’ at the end and in the less dominant part of the contested sign. However, they differ partially in the phrase of the contested sign, namely ‘bet like a (star)’. They also differ in the stylisation of the letters in both signs and in the figurative element of a red background in the earlier mark.

Therefore, and taking into account the distinctiveness and dominance issues, the signs are visually similar to an above-average degree.

Aurally, the signs coincide in the sound of the letters ‘starbet’, which makes up the whole of the earlier mark and the first and dominant verbal element of the contested sign. However, they differ (partially) in the sound of the phrase of the contested sign, namely ‘bet like a (star)’. Consumers tend not to pronounce all the elements of signs, simply to economise on words because they take time to pronounce, especially when they are easily separable from the dominant element of the mark (18/09/2012, T-460/11, Bürger, EU:T:2012:432, § 48). Therefore, it is very plausible that the relevant public will not pronounce the wording ‘bet like a star’ at all, given its smaller size and length.

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

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 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, for the remaining extent, at professionals whose degree of attention may vary from average to above-average. The signs are visually similar to an above-average degree and aurally they are highly similar. Conceptually, they are similar to an average degree, having some elements a reduced impact on the comparison for the reasons explained above The earlier mark’s distinctiveness as a whole is normal.

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).

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 contested sign coincide in the verbal element ‘starbet’ which is the sole verbal element of the earlier mark and the dominant verbal element of the contested sign. They also coincide in the fact that they contain stars (the fact that one is four-pointed star and the other is a five-pointed star can even go rather unnoticed). As it was said above beginnings are always more memorable to the public. The signs also differ (partially) in the phrase ‘bet like a (star)’ of the contested sign, and also in some figurative elements and the stylization of the letters. These differences play however a secondary role 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 part of 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’.

One of these marks, namely European Union trade mark registration No 4 686 275 for the figurative mark covers 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.

With regard to European Union trade mark registration No 4 637 252 for the word mark ‘STARBET’ that was subject to proof of use request it must be explained that the scope of protection covers the same goods and services as European Union trade mark registration No 5 044 961 for the figurative mark , which was examined in the present case. The examination of the evidence was not necessary. Therefore, no likelihood of confusion exists with respect to those remaining services in Class 43.

The remaining earlier rights invoked by the opponent, namely 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’ and European Union trade mark registration No 14 574 719 for the word mark ‘BetStars’, cover a narrower scope of goods and services as these are only goods and services in Classes 9 and 41 which are dissimilar to the remaining contested services in Class 43 (comparison and explanations made above). The other two earlier rights, namely 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’ invoked by the opponent cover, apart from the goods in Class 28 (comparison and explanations made above), also goods in Class 25 such as clothing, footwear, headgear; accessories worn on the body, which are clearly different to those remaining contested services in Class 43. The contested services in Class 43 and the aforesaid goods in Class 25 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 with each other nor complementary. Therefore, no likelihood of confusion exists with respect to those services in Class 43 and the goods in Class 25.

In relation to international trade mark registration designating Cyprus, Germany, Spain and Greece No 867 491 for the word mark ‘STARBET’, the services cover services in Classes 35 and 41 (comparison and explanations made above), and also services in Classes 38, namely telecommunication, in particular news transmission in context with sport bets; provision of electronic access to sport bets-specific data bases and 42, namely design and development of computer hardware and software. The contested services in Class 43 and the aforesaid services in Classes 38 and 42 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 with each other 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.