OPPOSITION No B 3 116 761

Apex Gaming Technology Gmbh, Apex Straße 1, 4293 Gutau, Austria (opponent), represented by Burgstaller & Partner Rechtsanwälte, Landstraße 12, 4020 Linz, Austria (professional representative)

a g a i n s t

N-Cubator B.V., Markt 19, 6071JD Swalmen, the Netherlands (applicant).

On 09/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 116 761 is partially upheld, namely for the following contested goods and services:

Class 9: Computer hardware; computer hardware and peripheral devices for playback, streaming, transmitting, receiving audio-visual media content via the internet; computer peripherals, namely, computer mice and mouse pads, computer stands, computer speakers, computer cables, computer card adapters, computer cases, and computer keyboards, joysticks and keypads; electronic control apparatus, namely, electronic controllers for computer hardware and peripherals excluding gaming apparatus, electric control panels, and computer terminals; computer keyboards; computer games; computer games downloadable from a global computer network; computer games for use on mobile and cellular phones; computer software, namely, communications software for connecting computer network users computer software for processing digital images, for processing digital music files, for organizing and viewing digital images and photographs, for creating and editing music and sounds, for creating digital animation and special effects of images, for manipulating digital audio information for use in audio media applications, to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures.

Class 41: Entertainment services, namely, organizing, arranging, and hosting dancing, beer tasting and cosplay entertainment events, art shows and exhibitions, musical concerts and fashion shows; presenting live musical performances.

2. European Union trade mark application No 18 163 901 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

On 23/04/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 163 901 ‘CLOVER’ (word mark), namely against some of the goods and services in Classes 9 and 41. The opposition is based on European Union registration No 17 873 571 ‘CLOVER LINK’ (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 and services

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

Class 9: Image display units and screens for electronic gaming apparatus and gaming machines; video cameras, monitors, electric and electronic display devices, equipment and boards; audiovisual and multimedia devices with mechanical, electronic or magnetic payment facilities for the gambling industry, and for commercial use in casinos, arcades or betting offices; mechanisms and electronic components for gaming machines and gambling machines; software for casino games, gaming machines and gambling machines.

Class 28: Slot machines [gaming machines]; casino games, gaming machines and automatic gaming machines, in particular for commercial use in casinos and amusement arcades, with or without a prize payout; slot machines and/or electronic money-based gaming apparatus with or without prizes; housings for slot machines and gaming machines; electronic or electrotechnical gaming apparatus, gaming machines, games machines and slot machines operated by coins, tokens, banknotes, tickets or by means of electronic, magnetic or biometric storage media, in particular for commercial use in casinos and amusement arcades, with or without a prize payout; housings for slot machines, gambling machines, automatic gaming machines and amusement machines, operated by means of coins, tokens, tickets or by means of electronic, magnetic or biometric storage media; electric, electronic or electromechanical apparatus for bingo games, lotteries or video lottery games and for betting offices, networked or unnetworked; electropneumatic and electric pulling machines (gaming machines).

Class 41: Services for casinos, gaming casinos, betting offices, bingo halls or lottery offices, namely operating casinos or gaming casinos, betting services or betting offices, bingo halls, lottery offices, gaming establishments, arcades; rental and leasing of games apparatus, gaming machines, games machines and slot machines, video lottery terminals, bookmakers’ apparatus, in particular for commercial use in casinos and amusement arcades, with or without a prize payout, networked or non-networked, with one or more jackpots.

The contested goods and services are the following:

Class 9: Computer hardware; computer hardware and peripheral devices and software for playback, streaming, transmitting, receiving audio-visual media content via the internet; computer software, namely, communications software for connecting computer network users; computer software for processing digital images, for processing digital music files, for organizing and viewing digital images and photographs, for creating and editing music and sounds, for creating digital animation and special effects of images, for manipulating digital audio information for use in audio media applications, to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures; computer games; computer games downloadable from a global computer network; computer games for use on mobile and cellular phones; computer peripherals, namely, computer mice and mouse pads, computer stands, computer speakers, computer cables, computer card adapters, computer cases, and computer keyboards, joysticks and keypads; electronic control apparatus, namely, electronic controllers for computer hardware and peripherals excluding gaming apparatus, electric control panels, and computer terminals; computer keyboards; motion picture films about video recordings featuring music and artistic performances, education, entertainment, fashion, sports and culture.

Class 41: Film production; entertainment services, namely, organizing, arranging, and hosting dancing, beer tasting and cosplay entertainment events, art shows and exhibitions, musical concerts and fashion shows; presenting live musical performances; arranging and conducting seminars in the field of art, music and artistic performances, fashion, sports, culture, general human interest, film production, languages, science and technology, law; arranging and conducting educational congresses in the field of art, music and artistic performances, fashion, sports, culture, general human interest, film production, languages, science and technology, law.

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 ‘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.

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 9

The contested electronic control apparatus, namely, electronic controllers for computer hardware and peripherals excluding gaming apparatus, electric control panels, and computer terminals share some commonalities with the opponent’s monitors, electric and electronic display devices in the same class. The opponent’s goods often need a remote control device, such as automatic control apparatus, to be used. In particular, the function of automatic control apparatus in this context could be one of supporting a camera view angle in a broadcast, a movie, etc. by, for instance, controlling the zoom pan and tilt conditions of a camera. To this extent, these goods are complementary and intended for the same public. Furthermore, they can coincide in producers and distribution channels. Therefore, they are similar to a low degree.

The contested computer hardware; computer hardware and peripheral devices for playback, streaming, transmitting, receiving audio-visual content via the internet; computer peripherals, namely, computer mice and mouse pads, computer stands, computer speakers, computer cables, computer card adapters, computer cases, and computer keyboards, joysticks and keypads; computer keyboards and the opponent’s monitors, electric and electronic display devices, equipment and boards are all used for data processing and/or display. They usually coincide in producer, relevant public and distribution channels. They can also be complementary. Consequently, they are at least similar to a low degree.

The contested computer games; computer games downloadable from a global computer network; computer games for use on mobile and cellular phones; computer software, namely, communications software for connecting computer network users; computer software for processing digital images, for processing digital music files, for organizing and viewing digital images and photographs, for creating and editing music and sounds, for creating digital animation and special effects of images, for manipulating digital audio information for use in audio media applications, to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures are different types of software. Therefore, they are at least similar to a low degree to the opponent’s software for casino games, gaming machines and gambling machines, as they have the same application field and can have the same producers, relevant public and distribution channels.

The contested motion picture films about video recordings featuring music and artistic performances, education, entertainment, fashion, sports and culture; software for playback, streaming, transmitting, receiving audio-visual media content via the internet are dissimilar to all of the opponent’s goods and services in Classes 9, 28, and 41, as they do not coincide in any of the criteria that may, alone or in combination, give rise to a degree of similarity between them. Although some of them may target the same relevant public, they differ in their purpose, nature and method of use. Moreover, they usually have different producers or distribution channels and are neither complementary nor in competition.

Contested services in Class 41

The opponent’s services for casinos, gaming casinos, betting offices, bingo halls or lottery offices, namely operating casinos or gaming casinos, betting services or betting offices, bingo halls, lottery offices, gaming establishments, arcades are all entertainment services in different forms, mainly related to gaming. The contested entertainment services, namely, organizing, arranging, and hosting dancing, beer tasting and cosplay entertainment events, art shows and exhibitions, musical concerts and fashion shows; presenting live musical performances cover a broad range of activities also in the entertainment field, mostly related to shows, arts, music, and performances. Therefore, the services coincide in their purpose, which is to entertain people, target the same relevant public and may be provided on the same premises or combined with casino gaming etc. in the form of shows or events. Therefore, they are similar to a low degree.

However, the contested film production; arranging and conducting seminars in the field of art, music and artistic performances, fashion, sports, culture, general human interest, film production, languages, science and technology, law; arranging and conducting educational congresses in the field of art, music and artistic performances, fashion, sports, culture, general human interest, film production, languages, science and technology, law are services of an educational nature and are normally provided by different undertakings or institutions from the opponent’s services for casinos, gaming casinos, betting offices, bingo halls or lottery offices, namely operating casinos or gaming casinos, betting services or betting offices, bingo halls, lottery offices, gaming establishments, arcades. Moreover, they do not coincide in their purpose or method of use. They are neither complementary nor in competition and do not target the same consumers. Therefore they are dissimilar.

Likewise, these contested services have nothing in common with the opponent’s goods in Classes 9 and 28, and the remaining services in Class 41. Indeed, they do not have the same nature or purpose, the distribution channels and the sales outlets are different, and the producers and the method of use do not coincide. They are neither complementary nor in competition. Therefore, they are also dissimilar.

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 similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to higher than average, depending on the specialised nature of the goods and services, the frequency of purchase or order and their price.

c) The signs

CLOVER LINK	CLOVER
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).

The earlier sign is a word mark consisting of two verbal elements ‘CLOVER’ and ‘LINK’. The contested mark is also a word mark but is just one verbal element ‘CLOVER’. Word marks have by definition no dominant (visually outstanding) elements.

The coinciding verbal element ‘CLOVER’ is not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public for who this term is meaningless and therefore distinctive.

The verbal element ‘LINK’ will be understood by the relevant professional public, who can reasonably be expected to have sufficient knowledge of a basic terminology used in computing, as ‘to connect or be connected’ and/or, in relation to computing or telecommunication services, as referring specifically to a ‘hyperlink’, namely, ‘a connection between different documents, or between different parts of the same document, using hypertext’ (information extracted from Collins Online Dictionary on 17/05/2021 at https://www.collinsdictionary.com/dictionary/english/link). Bearing in mind the relevant goods and services in Classes 9 and 41, it strongly alludes to the way of use of the goods and services in question, namely that they are used in connection with or can be found or operated through the internet link or include online services, and this verbal element has a weak distinctive character. However, at least part of the general public may perceive this verbal element as meaningless and, therefore, it will have an average degree of distinctiveness. Therefore, the verbal element ‘CLOVER’ is the most distinctive element of the earlier mark for the part of the public who will understand the verbal element ‘LINK’.

Visually and aurally, the signs are similar to the extent that they coincide in (the sound of) the contested mark ‘CLOVER’ which is fully included in the earlier sign. They differ in (the sound of) the earlier sign’s additional verbal element ‘LINK’.

Therefore, and taking into account that the signs coincide in the earlier sign’s more distinctive element, the signs are visually and aurally similar to a high degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the verbal element ‘LINK’ of the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 a weak element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

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.

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 similar to at least a low degree and partly dissimilar. The signs are visually and aurally similar to a high degree, since the contested sign is contained at the beginning of the earlier sign. The additional verbal element ‘LINK’ of the earlier sign is weak for the reason set out above in part c).

Despite the presence of the additional verbal element ‘LINK’ in the earlier sign, the similarities between the signs are sufficient for the relevant public to associate the marks in such a way that they might believe that the respective goods and services, found similar to at least a low degree, have the same or connected origins. This is still the case, despite the higher than average degree of attention that a part of the public may pay when purchasing or ordering some of the goods and services.

There is also a risk of confusion in respect of the goods and services found similar to a low degree, as their low degree of similarity will be offset by the high degree of similarity between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-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. 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 similar to at least a low degree to those of the earlier trade mark.

The rest of the contested goods and 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 goods and services cannot be successful.

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

Richard BIANCHI

Cristina CRESPO MOLTO

Pierluigi M. VILLANI

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.