OPPOSITION Nо B 3 119 036

 

Palatial Leisure Limited, Church Plain, NR30 1PL Great Yarmouth, United Kingdom (opponent), represented by WP Thompson, 138 Fetter Lane, EC4A 1BT London, United Kingdom (professional representative) 

 

a g a i n s t

 

Opalchenska Limited, PO Box 227, Clinch's House, Lord Street, 991 RZ Douglas, Isle of Man (applicant), represented by Martina Borg Stevens, Martinique, Tal-Fjuri Road, St Pauls Bay, SPB 0392 Malta, Malta (professional representative).

On 11/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 119 036 is upheld for all the contested goods and services.

 

2.	European Union trade mark application No 18 198 500 is rejected in its entirety.

 

3.	The applicant bears the costs, fixed at EUR 620.

 

REASONS

 

On 12/05/2020, the opponent filed an opposition against all the goods and services (in Classes 9, 38 and 41) of European Union trade mark application No 18 198 500 (word mark palace.com). The opposition is based on, inter alia,  EUTM registration No 10 471 357 (word mark PALACE). The opponent invoked Article 8(1)(b) EUTMR and Article 8(4) EUTMR in relation to the non-registered trade mark ‘PALACE’.

 

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 EUTM registration No 10 471 357.

 

a) The goods and services

 

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

 

Class 9: Publications, books, pamphlets, stationery (documents) and reports in electronic format; downloadable electronic publications, books, pamphlets, stationery (documents) and reports; downloadable computer software, code and programs.

Class 41: Casino services; game, gaming and gambling services; game, gaming and gambling services provided via the internet or a computer network; electronic game, gaming and gambling services provided via the internet or a computer network.

The contested goods and services are the following:

 

Class 9: Computer programs; Gambling software; Interactive computer systems; Computer software downloadable from the internet; Software applications for mobile devices; Downloadable computer software; Entertainment software.

Class 38: Providing access to gambling and gaming websites on the internet; Providing access to Internet chatrooms; Providing access to Internet forums; Providing access to multimedia content online.

Class 41: Casino facilities [gambling] (Providing -); On-line gambling services; Casino, gaming and gambling services; Providing casino facilities [gambling]; Online gambling services; Games services provided on-line from a computer network; all of the aforesaid in connection with bettting and gambling; none of the aforesaid in connection with fashion, streetwear, sports, and skateboarding.

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

 

Downloadable computer software; Computer software downloadable from the internet are identically included in both lists of goods (incl. synonyms).

The contested goods Computer programs, as a broader category, include the opponent’s goods downloadable computer software, code and programs. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested goods Gambling software; Interactive computer systems; Software applications for mobile devices; Entertainment software overlap with the opponent’s goods downloadable computer software, code and programs and are therefore identical.

Contested services in Class 38

The contested services Providing access to gambling and gaming websites on the internet; Providing access to Internet chatrooms; Providing access to Internet forums; Providing access to multimedia content online are similar to the opponent’s goods downloadable computer software, code and programs as they have the same purpose. They usually coincide in relevant public and distribution channels. Furthermore, they are complementary.

Contested services in Class 41

The contested services Casino facilities [gambling] (Providing -); On-line gambling services; Casino, gaming and gambling services; Providing casino facilities [gambling]; Online gambling services; Games services provided on-line from a computer network; all of the aforesaid in connection with bettting and gambling; none of the aforesaid in connection with fashion, streetwear, sports, and skateboarding are included in the broad category of the opponent’s services game, gaming and gambling services and therefore 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 or similar are directed at the public at large and at a professional public. 

 

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

 

PALACE	palace.com
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. In the case of word marks, the word itself is protected; therefore, the use of upper- or lower-case character is irrelevant.

 

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 common verbal element ‘Palace’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as Malta and Ireland.

 

The earlier mark and the first verbal element in the contested sign (palace) will be understood as, among others, as the ‘official residence of a reigning monarch or member of a royal family’ (see Collins Online Dictionary) by the relevant public. Since this verbal element is not descriptive, allusive or otherwise weak in relation to the goods and services, it is considered to be distinctive.

 

The last element ‘.com’ of the contested sign is devoid of distinctiveness. It merely refers to a top-level domain and therefore to the fact that the goods and services can also be purchased online.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

 

Visually and aurally, the signs coincide in ‘palace’, the only difference lies in the non- distinctive ending ‘.com’ in the contested sign.

 

Therefore, the signs are highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the common word ‘palace’, which is identical in both signs. The signs differ merely in the concept evoked by the contested sign’s element ‘.com’, which, however, does not establish any relevant conceptual difference, as this element is non-distinctive and cannot indicate a commercial origin. Therefore, the signs are conceptually highly 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as normal.

 

e) Global assessment, other arguments and conclusion

 

The goods and services are either identical or similar. The level of attention is average. The earlier mark’s distinctiveness is normal. The signs are aurally, visually and conceptually similar to a high degree as the earlier mark is the only distinctive verbal element in the contested sign.

 

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 only difference lies between the signs lie in the non-distinctive verbal element ‘.com’ at the end of the contested sign. Therefore, for identical and similar goods and services and taking into account the high degree of similarity between the signs, a likelihood of confusion cannot be excluded, even for highly attentive public.

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

 

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration No 10 471 357. It follows that the contested trade mark must be rejected for all the contested goods and services.

  

As the earlier EUTM registration No 10 471 357 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

 

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(4) 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.

 

 

 

The Opposition Division

 

 

Tobias KLEE

Lars HELBERT

Anna PĘKAŁA

 

 

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.