OPPOSITION No B 3 124 745

TikTok Information Technologies UK Limited, Wework, 125 Kingsway, WC2B 6NH London, United Kingdom (opponent), represented by Taylor Wessing LLP, 5 New Street Square, EC4A 3TW London, United Kingdom (professional representative)

a g a i n s t

Tick Tack Spółka z ograniczoną odpowiedzialnością spółka komandytowa, Bartosza Głowackiego 10, 30-085 Kraków, Poland (applicant), represented by Justyna Nykiel, ul. Kawalerzystów 20/3, 53-004 Wrocław, Poland (professional representative).

On 25/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 124 745 is upheld for all the contested goods and services, namely:

Class 28: All the goods in this class.

Class 35: All the services in this class.

Class 41: All the services in this class.

2. European Union trade mark application No 18 207 711 is rejected for all the above goods and services. It may proceed for the remaining non-contested services in Class 43.

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

REASONS

On 23/06/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 207 711 for the figurative mark , namely against all the goods and services in Classes 28, 35 and 41. The opposition is based on, inter alia, European Union trade mark registrations No 17 891 401 for the word mark ‘TIK TOK’ (earlier mark 1) and No 18 184 895 for the word mark ‘TikTok’ (earlier mark 2). 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 marks, 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 registrations No 17 891 401 (earlier mark 1) and No 18 184 895 (earlier mark 2).

a) The goods and services

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

Earlier mark 1

Class 41: Presentation of music videos via mobile device on online; entertainment and amusement information via internet online.

Earlier mark 2

Class 28: Games and playthings.

Following the limitation requested by the applicant on 06/08/2020, the contested goods and services are the following:

Class 28: Games; parlour games; manipulative games; manipulative puzzles; manipulative logic puzzles; manipulative logic games.

Class 35: Retail services in relation to games; wholesale services in relation to games; retail services in relation to parlour games; wholesale services in relation to parlour games; retail services in relation to manipulative games; wholesale services in relation to manipulative games; retail services in relation to manipulative puzzles; wholesale services in relation to manipulative puzzles; retail services in relation to manipulative logic puzzles; wholesale services in relation to manipulative logic puzzles; retail services in relation to manipulative logic games; wholesale services in relation to manipulative logic games.

Class 41: Bowling alleys; provision of bowling alley facilities; bowling centres (operation of -); provision of facilities for tenpin bowling; rental of billiard tables; providing billiard rooms; providing billiard facilities; entertainment services; amusement centers; party planning [entertainment]; games equipment rental; conducting of entertainment events; conducting of entertainment activities; live entertainment production services; provision of live entertainment; children’s entertainment services; advisory services relating to entertainment; organisation of entertainment for birthday parties; booking of seats for entertainment events; arranging of demonstrations for entertainment purposes; provision of amusement facilitie; rental of amusement machines and apparatus; preparation of special effects for entertainment purposes; provision of rooms for entertainment; gaming services for entertainment purposes; entertainment information, interactive entertainment services; organising of entertainment, organising events for entertainment purposes, audio-visual display presentation services for entertainment purposes; none of the aforementioned services to be used in relation to online education and e-learning.

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

The contested games; parlour games; manipulative games; manipulative puzzles; manipulative logic puzzles; manipulative logic games are included in the broad category of, or at least overlap with, the opponent’s games and playthings of earlier mark 2. Therefore, they are identical.

Contested services in Class 35

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary, and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services in Class 35.

Therefore, the contested retail services in relation to games; wholesale services in relation to games; retail services in relation to parlour games; wholesale services in relation to parlour games; retail services in relation to manipulative games; wholesale services in relation to manipulative games; retail services in relation to manipulative puzzles; wholesale services in relation to manipulative puzzles; retail services in relation to manipulative logic puzzles; wholesale services in relation to manipulative logic puzzles; retail services in relation to manipulative logic games; wholesale services in relation to manipulative logic games are similar to the opponent’s games and playthings in Class 28 of earlier mark 2.

Contested services in Class 41

The contested services in Class 41 contain the following limitation ‘none of the aforementioned services to be used in relation to online education and e-learning’. While this limitation has been duly taken into account in the comparison below (in relation to each contested item), to avoid repetition it will not be expressly mentioned, but will be considered included by way of reference.

The contested entertainment information includes, as a broader category, the opponent’s entertainment and amusement information via internet online of earlier mark 1. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested audio-visual display presentation services for entertainment purposes includes, as a broader category, or at least overlaps with, the opponent’s presentation of music videos via mobile device on online of earlier mark 1. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

‘Provision of information’ refers to providing a user with all necessary details (general or specific) about a matter or service. The opponent’s entertainment and amusement information via internet online of earlier mark 1 covers a wide range of activities inherent to entertainment and amusement services. In today’s high-tech society, consumers often look for information about entertainment and amusement activities and events via the internet. Furthermore, companies rendering services such as entertainment and amusement information via internet online have a presence on online platforms, portals, websites and similar online information channels. However, the contested entertainment services; amusement centers; party planning [entertainment]; conducting of entertainment events; conducting of entertainment activities; live entertainment production services; provision of live entertainment; children’s entertainment services; advisory services relating to entertainment; organisation of entertainment for birthday parties; booking of seats for entertainment events; arranging of demonstrations for entertainment purposes; provision of amusement facilitie; preparation of special effects for entertainment purposes; provision of rooms for entertainment; gaming services for entertainment purposes; interactive entertainment services; organising of entertainment, organising events for entertainment purposes are diverse entertainment and amusement services. Therefore, although a certain overlap between the services under comparison cannot be denied, these contested services are at least similar to the opponent’s entertainment and amusement information via internet online of earlier mark 1, insofar as they coincide at least in provider, relevant public and distribution channels.

The contested rental of billiard tables; games equipment rental; rental of amusement machines and apparatus cover a wide range of sports, games and amusement equipment, for example arcade video game machines, slot machines, disco equipment, bounce houses. These contested services are at least similar to the opponent’s entertainment and amusement information via internet online of earlier mark 1, insofar as they coincide at least in provider, relevant public and distribution channels.

The contested bowling alleys; provision of bowling alley facilities; bowling centres (operation of -); provision of facilities for tenpin bowling; providing billiard rooms; providing billiard facilities are various sporting activities. They are similar to the opponent’s entertainment and amusement information via internet online of earlier mark 1, insofar as they have the same purpose, and they coincide in relevant public and distribution channels.

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 to varying degrees are directed at the public at large (e.g. various games in Class 28) and at business customers with specific professional knowledge or expertise (e.g. wholesale services in Class 35).

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

TIK TOK (earlier mark 1) TikTok (earlier mark 2)
Earlier trade marks	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). 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 elements of the signs are meaningful or allude to a specific meaning in certain territories, for example in those countries where English is understood. This affects the perception of the signs by that public and influences the assessment of likelihood of confusion. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on part of the English-speaking public, such as Ireland, as this will have an impact on the conceptual similarity between the signs.

Both earlier marks are word marks. Earlier mark 1 consists of the verbal elements ‘TIK’ and ‘TOK’, whereas earlier mark 2 is the verbal element ‘TikTok’. Although earlier mark 2’s verbal element ‘TikTok’ is one verbal element, due to the use of an irregularly capitalised letter ‘T’ in the middle, the relevant public will split it into the verbal elements ‘Tik’ and ‘Tok’.

In light of the aural identity with the English onomatopoeia ‘ticktock’ (sometimes spelled as ‘tick-tock’), insofar as the combination of letters ‘ck’ and the single letter ‘k’ are pronounced in the exact same manner in English, the earlier marks ‘TIK TOK’ and ‘TikTok’ will be perceived by at least part of the relevant public under examination as a misspelling of the aforementioned imitative, used to denote a repeated ticking sound. Since these verbal elements are not descriptive, allusive or otherwise weak in relation to the goods and services at issue, they have an average degree of distinctiveness.

The contested sign is a figurative mark, composed of the string of letters ‘Tic’, followed by the figurative element resembling a simplified depiction of a clock face and the final verbal element ‘Tack’. The verbal elements ‘Tic’ and ‘Tack’ are depicted in black title case and the dot above the lower-case letter ‘i’ is orange. Part of the relevant public under examination is likely to recognise and identify the letter ‘K’ enclosed in the figurative element of that sign. Indeed, the shapes confined within that figurative device, due to their positions and proportions, somehow resemble the bars of a stylised letter ‘K’ and might lead consumers to such an interpretation. Furthermore, the contested sign’s expression ‘TickTack’ will be perceived by at least a substantial part of the public under examination as a variant of the known word combination ‘TickTock’ with the meaning and the degree of distinctiveness as described above.

The recognition of the letter ‘K’ in the contested sign is likely because consumers instinctively and naturally look for a meaning when faced with a sign. This is particularly justified by the fact that the onomatopoeia ‘TickTack’ is a relatively widespread figure of speech, which is of such a nature as to be immediately inferred by the part of the public who understand it. The aforesaid consumers will not have to make an extra mental effort in order to recognise this letter, particularly given that the semantic notion of a clock face will help them to identify it. In addition, they are used to recognising and remembering meaningful words, even when they are depicted with a certain degree of fancifulness, as has occurred in the contested sign’s stylised depiction of the clock face. Therefore, since a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, the Opposition Division finds it appropriate to focus the examination on the part of the Irish public who will perceive the contested sign as composed of a stylised verbal element ‘TickTack’.

Although the contested sign’s stylisation and its figurative element resembling a clock face have a certain degree of inherent distinctiveness, from a market perspective, the verbal element ‘TickTack’ has a stronger impact on the public under examination as an indicator of origin, because consumers are used to marks’ stylisations. They will perceive and refer to the contested figurative sign through its verbal element. 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; 19/12/2011, R 233/2011‑4 BEST TONE (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, JUMBO (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The contested sign has no element that could be considered clearly more dominant than other elements.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short signs, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. In the present case, the earlier marks and the contested sign are relatively long signs since they consist of six and eight letters, respectively.

Visually and aurally, the signs coincide in the first two letters ‘TI’ and the last letter ‘K’. They also coincide in the letters ‘K’ and ‘T’, albeit in different positions in the signs: the letter ‘K’ is the fourth letter of the contested sign, and the third letter of the earlier marks and ‘T’ is the fifth letter of the contested sign and the fourth letter of the earlier marks. The signs differ in the earlier marks’ letter ‘O’ and the letters ‘C’, ‘A’ and ‘C’ in the contested sign. Therefore, the signs coincide in five out of six letters (in the earlier marks) and eight letters (in the contested sign). The signs also differ visually in the figurative elements and aspects of the contested sign, including the stylisation of its verbal elements and additional figurative depiction of a clock face, which have a lesser impact, as explained above.

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. Furthermore, since the letter combination ‘CK’ and the letter ‘K’ are pronounced identically by the public under examination, the signs have a highly similar rhythm, as they consist of two syllables of a similar structure (‘TICK-TACK’ versus ‘TIK-TOK’). In addition, the length of the signs has to be taken into account, as the difference between some letters is less noticeable in long signs and consumers are not in the habit of breaking down words of this length into individual letters. Moreover, as they have a highly similar structure (the same two letters at the beginning, two letters in the middle and the same letter at the end) the overall impression is similar – the differences in the letters/sounds in the middle parts of the signs are outweighed by their coinciding beginnings and endings.

Therefore, despite the abovementioned differences, and particularly taking into account that five of the six letters of the earlier marks are included in the contested sign and the signs have the same letters in the beginnings and endings, whereas the exact order in which the letters appear in the middle part of the signs is something that may be overlooked by consumers, the signs are visually similar to an average degree. As the signs differ aurally only in the sound of the vowel ‘O’ in the earlier marks versus ‘A’ in the contested sign, placed in the same positions within relatively long strings of letters, they are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will all be associated by the public under examination with essentially the same semantic content conveyed by the expressions ‘ticktack’ and ‘ticktock’, used interchangeably to denote a repeated ticking sound, as described above. In addition, the differentiating additional figurative simplified depiction of a clock face in the contested sign somehow reiterates the concept of the passing of time. Therefore, the signs are conceptually similar to a high 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 marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation. However, it claimed that the earlier trade marks enjoy a high degree of inherent distinctiveness since the terms ‘TikTok’ and ‘TIK TOK’ do not have a meaning in relation to any of the goods and services for which they are protected.

It is Office practice that, when earlier marks are not descriptive or are not otherwise non-distinctive and/or weak, to consider them as having no more than a normal degree of inherent distinctiveness. This degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier marks have been acquired through use (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49). However, marks will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C‑379/12 P, H/Eich EU:C:2013:317, § 71).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public under examination in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

e) Global assessment, other arguments and conclusion

Likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case. This appreciation depends on numerous elements and, in particular, on the degree of recognition of the trade marks on the market, the association that the public might make between the marks, and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services are partly identical and partly similar to varying degrees. The inherent distinctiveness of the earlier marks is normal. The goods and services target the public at large and the professional public. The degree of attentiveness varies from average to high.

The signs are visually similar to an average degree and aurally and conceptually similar to a high degree. This is because their verbal elements will be associated with essentially the same distinctive concept, and because the coincidences are at the beginnings (‘TI’) and endings (‘K’) of the signs, and the remaining two letters of the earlier marks (‘K’ and ‘T’) are also included in the contested sign, albeit in different positions. They differ mainly in the letters, ‘O’ in the earlier marks and ‘C’, ‘A’ and ‘C’ in the contested sign. These differentiating letters will be less relevant from the aural perspective, as explained in detail above. Moreover, the signs differ in the additional figurative element and aspects of the contested sign, which are less important in the overall impression created by it and will not attract much of the public’s attention. Consequently, the differences between the signs are not sufficient to outweigh the visual, aural and conceptual similarities resulting from the verbal elements ‘TIK TOK’ and ‘TickTack’, as the differences between the marks, resulting from their middle parts, will not be sufficient to counteract such an impression. Therefore, the relevant public under examination could be confused regarding the origin of the goods and services that are identical and similar to varying degrees.

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). In the present case, it is very likely that even consumers displaying a high level of attention may overlook the different letters in the middle parts of the signs, particularly as these signs will be associated with essentially the same concept, and will, therefore, confuse the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking public, such as a substantial part of consumers from Ireland taken into consideration. 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 registrations No 17 891 401 (earlier mark 1) and No 18 184 895 (earlier mark 2). It follows that the contested trade mark must be rejected for all the contested goods and services. It may proceed for the non-contested services in Class 43.

As the earlier EUTM registrations No 17 891 401 (earlier mark 1) and No 18 184 895 (earlier mark 2) lead 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).

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

Liliya YORDANOVA

Anna PĘKAŁA

Lars HELBERT

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.