OPPOSITION No B 2 238 635

We Do Consulting – Sistemas de Informacao, S.A., Lugar do Espido, Via Norte, 4470 Maia, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, P-1249-103 Lisbon, Portugal (professional representative)

a g a i n s t

Polskie Centrum Informacji Prawno-Ekonomicznej Sp. z o.o. Trademark Holder S.k.a., Zolkiewskiego 3, 63400 Ostrow Wielkopolski, Poland (applicant), represented by Przemyslaw Marmul, Polskie Centrum Informacji Prawno-Ekonomicznej Sp. z o.o. Trademark Holder S.k.a., Zolkiewskiego 3, 63400 Ostrow Wielkopolski, Poland (employee representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 238 635 is partially upheld, namely for the following contested goods:

Class 9: Computer software; computer programs; recorded computer programs; computer game software; computer game software and related instruction manual sold together as a unit; computer games software supplied from the Internet or recorded on discs, cartridges, tapes, CD-ROMs; software games recorded on CD-ROMs, digital video discs, and cartridges for console and individual, portable gaming systems; computer game programs; downloadable computer game programs; multimedia and interactive software; electronic game programs; electronic game software; downloadable electronic game programs; interactive game programs; interactive game software; video game programs; video game software; computer game cartridges; computer game discs; video game programs for mobile devices, telecommunications devices, hand-held electronic devices and personal digital assistant devices; applications for mobile devices and tablets; downloadable software enhancements for interactive, video, electronic and mobile games; downloadable multimedia file containing artwork, text, audio, video, games, and internet web links relating to interactive, video, electronic and mobile games; digital music downloadable from the Internet; downloadable music files; software featuring music and motion picture sound tracks; computer peripheral devices, namely screens, keyboards, mice, consoles and control levers, readers of magnetic, optical and digital disks and diskettes; digital personal organizer; computer memories, graphic cards; headsets for use with computers and consoles; headsets for use in playing video games; mouse pads; mobile telephone covers, straps, cases, casings, parts and fittings for all of the aforementioned goods; bags, coverings, containers, carriers and holders for mobile telephones, personal computers and consoles; cinematographic films; television films and shows.

Class 16: Printed matter; instruction manuals and published guides for playing computer, video and interactive games; video games pamphlets; comic books, comic magazines; handbooks (manuals), prospectuses, magazines.

2. European Union trade mark application No 11 765 501 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 11 765 501, namely against all the goods in Classes 9 and 16. The opposition is based on European Union trade mark registration No 5 156 666. 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.

1. The goods and services

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

Class 9: Computer software; computers; adapters for computers; components for computers; parts and fittings for computers; intercoms; microcomputers; minicomputers; microphones; computer memories; interfaces for computer; data processing equipment; data processing machines/computer memory devices, random access memory circuits, chips; semiconductor devices, integrated circuits, electronic circuit boards, microprocessors; electronic circuits, terminals, controllers; integrated circuits; printed circuits; magnetic disks; floppy disks; data modules; telecommunications batteries and equipment; computer software networks, wide area networks, and global computer networks; computer software used for software development and web authoring; computer related security devices for portable computer products; cases (for computers, computer peripheral devices and computer equipment); computer programs; operating system software and application software; documentation and instruction manuals recorded on machine readable media or on paper and relating to computers or computer programs; all the aforesaid goods intended for the management of computer systems in the field of income guarantees for invoicing.

Class 16: Documentation and publications relating to software, computers or computer programs or services; manuals; printed publications; magazines; printed matter relating to computer software and services; all the aforesaid goods intended for the management of computer systems in the field of income guarantees for invoicing.

Class 35: Business management and consultancy, business information, management of data processing.

Class 38: Telecommunications, communication by computer terminals, communication for commercial interaction in the field of global computer networks, providing user access to computers for business purposes; all the aforesaid services intended for the management of computer systems in the field of income guarantees for invoicing.

Class 42: Computer programming; design, updating and maintenance of computer software; design, installation, interconnection, testing and maintenance of software and information for computers; services for information handling systems products; technical project studies in the field of computer hardware and software; computer software consulting services; computer systems analysis; consultancy and advice relating to computer programs; rental, distribution, licensing, sub-licensing and sale of computer software; scientific and industrial research; technical support for computer programs; Internet website services; all the aforesaid services intended for the management of computer systems in the field of income guarantees for invoicing.

The contested goods are the following:

Class 9: Computer software; computer programs; recorded computer programs; computer game software; computer game software and related instruction manual sold together as a unit; computer games software supplied from the Internet or recorded on discs, cartridges, tapes, CD-ROMs; software games recorded on CD-ROMs, digital video discs, and cartridges for console and individual, portable gaming systems; computer game programs; downloadable computer game programs; multimedia and interactive software; electronic game programs; electronic game software; downloadable electronic game programs; interactive game programs; interactive game software; video game programs; video game software; computer game cartridges; computer game discs; video game programs for mobile devices, telecommunications devices, hand-held electronic devices and personal digital assistant devices; applications for mobile devices and tablets; downloadable software enhancements for interactive, video, electronic and mobile games; downloadable multimedia file containing artwork, text, audio, video, games, and internet web links relating to interactive, video, electronic and mobile games; digital music downloadable from the Internet; downloadable music files; software featuring music and motion picture sound tracks; computer peripheral devices, namely screens, keyboards, mice, consoles and control levers, readers of magnetic, optical and digital disks and diskettes; digital personal organizer; computer memories, graphic cards; headsets for use with computers and consoles; headsets for use in playing video games; mouse pads; mobile telephone covers, straps, cases, casings, parts and fittings for all of the aforementioned goods; bags, coverings, containers, carriers and holders for mobile telephones, personal computers and consoles; cinematographic films; television films and shows.

Class 16: Paper, cardboard; printed matter; instruction manuals and published guides for playing computer, video and interactive games; advertisement boards of paper or cardboard, albums, almanacs, video games pamphlets; comic books, comic magazines; photographs, stationery, trading cards, coloring books, adhesive stickers, rub-on transfers, notebooks and stationery-type portfolios; wrapping paper; gift wrap paper; memo pads; party napkins, table covers, place mats, greeting cards, post cards, invitations, place cards; calendars, graphic prints, stickers; handbooks (manuals), prospectuses, magazines, graphic reproductions.

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 to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

The specification of the goods and services of the earlier mark contains restrictions: the goods and services in Classes 9, 16, 38 and 42 are limited to those intended for the management of computer systems in the field of income guarantees for invoicing.

This restriction does not make sense for certain goods or services, as some of them cannot be specifically intended for the management of computer systems in the field of income guarantees for invoicing, due to their natures and purposes. The goods and services that cannot be affected by the restrictions will be discussed in detail below.

It is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to 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 opponent’s computer software can be fully included in the restriction of the goods in Class 9. Despite this restriction, the contested computer software; computer programs; recorded computer programs; interactive software include as broader categories, or overlap with, the opponent’s computer software; all the aforesaid goods intended for the management of computer systems in the field of income guarantees for invoicing, which is software with an application in a specific field. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested computer memories, graphic cards are included in the broad category of the opponent’s components for computers, to which the abovementioned restriction does not apply. Such computer components for the management of computer systems in the field of income guarantees for invoicing do not exist. Therefore, these goods are identical.

The contested digital personal organizer; computer peripheral devices, namely screens, keyboards, mice, consoles and control levers, readers of magnetic, optical and digital disks and diskettes; headsets for use with computers and consoles; headsets for use in playing video games are included in the broad category of the opponent’s data processing equipment, to which the abovementioned restriction does not apply, as such equipment designed for the management of computer systems in the field of income guarantees for invoicing does not exist. Therefore, these goods are identical.

The contested bags, coverings, containers, carriers and holders for personal computers either are synonymous with or overlap with the opponent’s cases (for computers). Therefore, these goods are identical.

The contested computer game software; computer game software and related instruction manual sold together as a unit; computer games software supplied from the Internet or recorded on discs, cartridges, tapes, CD-ROMs; software games recorded on CD-ROMs, digital video discs, and cartridges for console and individual, portable gaming systems; computer game programs; downloadable computer game programs; multimedia software; electronic game programs; electronic game software; downloadable electronic game programs; interactive game programs; interactive game software; video game programs; video game software; computer game discs; computer game cartridges (game software recorded on a specific data storage medium); video game programs for mobile devices, telecommunications devices, hand-held electronic devices and personal digital assistant devices; applications for mobile devices and tablets; downloadable software enhancements for interactive, video, electronic and mobile games; software featuring music and motion picture sound tracks have certain points in common with the opponent’s computers, to which the abovementioned restriction does not apply. Such computers designed specifically for the management of computer systems in the field of income guarantees for invoicing do not exist. The abovementioned contested goods – which are, broadly, game software and multimedia software – and the opponent’s goods may be produced by the same undertakings and may target the same relevant public through the same distribution channels. Moreover, these goods can be complementary. Therefore, they are similar.

The contested mobile telephone covers, straps, cases, casings, parts and fittings for all of the aforementioned goods; bags, coverings, containers, carriers and holders for mobile telephones and consoles and the opponent’s cases (for computers, computer peripheral devices and computer equipment), to which the abovementioned restriction does not apply (as there are no computer cases for the management of computer systems), have the same function, that of holding various devices, such as computers and mobile phones, and protecting them from drops and scratches. These goods may have the same producers, distribution channels and consumers. Therefore, they are similar.

The contested mouse pads and the opponent’s cases (for computers, computer peripheral devices and computer equipment) have certain points in common, as they are or include accessories for computer equipment and peripherals. These goods may be produced by the same undertakings and may target the same relevant public through the same distribution channels. Therefore, they are similar.

The contested downloadable multimedia file containing artwork, text, audio, video, games, and internet web links relating to interactive, video, electronic and mobile games; digital music downloadable from the Internet; downloadable music files; cinematographic films; television films and shows are all downloadable files available in an electronic format. These goods are similar to the opponent’s telecommunications in Class 38 (for which the abovementioned restriction does not have a meaning), as they have similar purposes and may have the same providers and target the same consumers.

Contested goods in Class 16

The opponent’s goods in Class 16 are various kinds of printed matter, which can be fully included in the restriction of the goods, which defines their subject matter.

The contested printed matter; handbooks (manuals), prospectuses, magazines include as broader categories, or overlap with, the opponent’s manuals; printed publications; all the aforesaid goods intended for the management of computer systems in the field of income guarantees for invoicing, which are publications with a subject matter in a specific field. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested instruction manuals and published guides for playing computer, video and interactive games; video games pamphlets; comic books, comic magazines and the opponent’s manuals; printed publications; all the aforesaid goods intended for the management of computer systems in the field of income guarantees for invoicing have the same nature (printed publications) and method of use. Although these goods have different subject matters, they may be produced by the same companies (e.g. printing houses) and distributed through the same channels of trade. Therefore, they are similar.

The rest of the contested goods in Class 16, namely almanacs; photographs, trading cards, coloring books, rub-on transfers, greeting cards, post cards, invitations, place cards; calendars, graphic prints, graphic reproductions; paper, cardboard; advertisement boards of paper or cardboard, albums, stationery, adhesive stickers, notebooks and stationery-type portfolios; wrapping paper; gift wrap paper; memo pads; party napkins, table covers, place mats, stickers are generally stationery articles, various kinds of printed matter and other paper goods. These goods are not sufficiently closely related to the opponent’s goods in Class 16, which are various kinds of publications with a subject matter in a specific field. These goods have different natures and purposes. They are not necessarily produced by the same companies and they target consumers who have different needs. Furthermore, they are neither in competition with each other nor complementary. These goods are even further removed from the opponent’s remaining goods and services in Classes 9, 35, 38 and 42. Therefore, these contested goods and the opponent’s goods and services are dissimilar.

2. 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 target both the public at large and business customers (e.g. computer software in Class 9 may be provided to the general public or to business customers with specific business needs). The relevant public’s degree of attention will vary from average to higher than average, depending on the exact nature of these goods and services and their impact on the economic activities of the business customers in question.

3. The signs

RAID	HELLRAID
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

Both marks are word marks. The earlier mark is the word ‘RAID’ and the contested sign is the word ‘HELLRAID’.

The word ‘RAID’, constituting the earlier mark, will be perceived by the English-speaking part of the public as meaning ‘a sudden surprise attack’.

The compound ‘HELLRAID’, constituting the contested sign, has no meaning for the relevant public and does not exist in common parlance as an expression. The Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details when perceiving a word sign, they will break it down into elements that, for them, suggest a specific meaning or that resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Therefore, it is reasonable to assume that the English-speaking part of the relevant public will perceive this word as the mere sum of its parts, thus splitting it into the words ‘HELL’ and ‘RAID’, since both words exist in English.

The word ‘HELL’ may be understood by the relevant English-speaking public as, inter alia, ‘a. the place or state of eternal punishment of the wicked after death, with Satan as its ruler; b. forces of evil regarded as residing there’, ‘pain, extreme difficulty, etc.’, ‘a cause of such difficulty or suffering (as in “war is hell”)’. The meaning of ‘RAID’ has already been defined above. Consequently, in the contested mark the word ‘HELL’ may be perceived as qualifying the word ‘RAID’ in the sense that a sudden surprise attack causes hell, difficulty or suffering.

In relation to the relevant goods and services, none of the elements of the marks is descriptive or of limited distinctiveness.

Consequently, neither of the marks has any element that could be clearly considered more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘RAID’, which constitute the entire earlier mark and are fully included at the end of the contested sign. However, the marks differ in the additional letters contained at the beginning of the contested sign, ‘HELL’.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘RAID’, which constitute the earlier mark and are present at the end of the contested sign. The pronunciation differs in the sound of the additional letters contained at the beginning of the contested sign, ‘HELL’, which have no counterparts in the earlier mark.

Therefore, the signs are aurally similar to an average degree.

Conceptually, as seen above, the word ‘RAID’, constituting the entire earlier mark and present at the end of the contested sign, will be perceived by the English-speaking part of the public as meaning ‘a sudden surprise attack’. The word ‘HELL’ of the contested sign will be perceived as having the meanings described above. It may be perceived as qualifying the noun ‘RAID’ in the compound ‘HELLRAID’ of the contested sign, which does not exist in common parlance.

Therefore, the marks are conceptually similar to an average degree on account of the coinciding word ‘RAID’.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services are partly identical, partly similar and partly dissimilar. The signs are similar on account of the coinciding word ‘RAID’, which is the only element of the earlier mark and is entirely included in the contested sign. The signs differ as a result of the additional letters at the beginning of the contested sign, ‘HELL’.

The letters ‘HELL’ in the contested sign will not go unnoticed by the relevant public. Nevertheless, according to settled case law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (02/11/2003, T‑286/02, Kiap Mou, EU:T:2003:311; 15/02/2005, T‑169/02, Negra modelo, EU:T:2005:46; 16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102; 08/03/2005, T‑32/03, Jello Schuhpark, EU:T:2005:82; 06/10/2004, T‑356/02, Vitakraft, EU:T:2004:292; 23/10/2002, T‑104/01, Fifties, EU:T:2002:262; 04/05/2005, T‑22/04, Westlife, EU:T:2005:160), and this element that the marks have in common retains an independent distinctive role in another composite mark (06/10/2005, C‑120/04, Thomson Life, EU:C:2005:594, § 30).

As seen above, the compound ‘HELLRAID’, constituting the contested sign, does not convey a clear and evident meaning as a whole. Therefore, the relevant English-speaking part of the public will perceive this element as the mere sum of its parts, splitting it into the words ‘HELL’ and ‘RAID’. Consequently, since both word elements of the contested sign are distinctive for all the relevant goods, the word ‘RAID’ is distinguishable in the contested sign and plays an independent role within it. This coinciding element in the marks will also establish a conceptual link between the signs, thus further contributing to the finding of similarity between the marks.

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark (emphasis added).

In the present case, consumers may legitimately believe that the contested trade mark, ‘HELLRAID’, is a new version or a brand variation of the earlier mark, ‘RAID’, originating from the same undertaking as the earlier mark or from an economically linked undertaking. In other words, consumers may confuse the origins of the conflicting goods and services.

In its observations, the applicant argues that the mark applied for was intended to protect its video game ‘HELLRAID’, which has become widely popular. Moreover, the applicant argues that its goods and the opponent’s goods and services will be used in different market sectors. However, as seen above, the restriction in the opponent’s list of goods and services does not make sense for certain goods and services (e.g. computers in Class 9), as some of them cannot be specifically intended for the management of computer systems in the field of income guarantees for invoicing, due to their natures and purposes, and similarity has been found between the goods and services in question. The Opposition Division is in principle restricted in its examination to the trade marks in conflict and to the goods and services for which they are registered or for which registration is sought. It should be also noted that the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Taking into account 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, the Opposition Division considers that there is a likelihood of confusion, including a likelihood of association, for the English-speaking part of the public in relation to identical and similar goods, even considering that the degree of attention with regard to some of the relevant goods and services may be higher than average.

As already explained, likelihood of confusion for only part of the public in the relevant territory of the European Union is sufficient to reject the contested trade mark.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 5 156 666.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to the goods and services of the earlier trade mark.

The rest of the contested goods 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 cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Pedro JURADO MONTEJANO

Alexandra APOSTOLAKIS

Solveiga BIEZA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.