CANCELLATION No 10328 C (INVALIDITY)

G+J Holding GmbH, Parkring 12, 1010 Wien, Austria (applicant), represented by Harte-Bavendamm Rechtsanwälte Partnerschaftsgesellschaft MBB, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)

a g a i n s t

IGT Canada Solutions ULC, 328 Urquhart Avenue, E1H 2R6, Moncton, New Brunswick. Canada (EUTM proprietor), represented by Armin Herlitz, IGT Austria GmbH, Seering 13-14, 8141 Premstätten, Austria (professional representative).

On 16/12/2016, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 12 118 411 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 12 118 411. The application is based on German trade mark registration No 302 010 043 654. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) and 8(5) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that:

• There exists a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR between the Applicant’s earlier German trade mark ‘Geolino’ and the EUTM ‘GEOSINO’ and that the use of the EUTM would, without due cause, take unfair advantage of, and would be detrimental to, the distinctive character and the repute of the earlier mark within the meaning of Article 8(5) EUTMR.

• The contested goods in Class 9 are highly similar to the games, playthings, toy laboratories (playthings) covered by the earlier mark in Class 28 and the entertainment services covered by the earlier mark in Class 41.

• The contested goods in Class 28 designate a sub-category of the broader category of the earlier mark’s games, playthings, toy laboratories (playthings) in the same class and, therefore, they are identical.

• The contested services in Class 41 providing on-line computer games; casino services; operating a jackpot system involving one or more automatic slot machines, namely a jackpot or prize with a fixed minimum value which increases until the jackpot is won are sub-categories of services destined for entertaining the target public. Thus, they fall into the broader category of entertainment services covered by the earlier mark in the same Class and are therefore identical.

• From a visual perspective, the signs coincide in six out of seven letters. From an aural perspective, the signs are identical regarding their first, second and fourth syllable and their pronunciation coincides in rhythm and intonation. The differences regarding the letters ‘L’ and ‘S’ are marginal and will easily be ignored both visually and aurally. Conceptually, it must be found that none of the signs has any clear dictionary meaning. Therefore, overall, the signs are similar to a very high degree.

• The sign ‘Geolino’ is a fanciful term, non-existent in any European languages and without any dictionary meaning. It has no meaning in relation to the goods and services at issue from the perspective of the German public. Accordingly, the earlier mark has at least a normal degree of inherent distinctiveness.

In support of its observations, the applicant filed exhibits (A2-A14) in order to prove that the earlier mark enjoys a reputation. According to the applicant, this reputation particularly applies to the goods printed matter in Class 16 for which the earlier mark has been intensively used on a long-standing basis.

In reply the EUTM proprietor argues that:

• The contested software for on-line games, wireless and mobile devices; smart cards; calculating apparatus in coin-operated machines and parts for the aforesaid goods in Class 9 are dissimilar to the applicant’s goods in Class 28, since it is not clear that the contested goods could be used for games. The same holds true for the similarity of the contested goods and services with the earlier entertainment services in Class 41. Although entertainment could entail providing gaming services, it could also entail offering discotheque services, amusement parks, cinema or any other service in Class 41. As is clear from the exhibits submitted by the applicant the earlier mark is used for publishing services of a children’s magazine.

• The letters ‘L’ and ‘S’ look very different, their pronunciation is also far from identical. Though it is correct that none of the two signs can be found in a dictionary, it has to be pointed out that in German speaking countries the suffix ‘-lino’ is clearly and only associated with children as is demonstrated by exhibits A-F. By contrast the suffix ‘‑sino’ is not associated with children, nor does it have any other specific meaning.

In support of its observations, the EUTM proprietor filed the following evidence:

• Exhibit A: German TV program for children;

• Exhibit B: Alpinolino an Austrian adventure park;

• Exhibit C: Sonnelino an Austrian hotel specialized in family holidays with children;

• Exhibit D:Jackelino indoor playground;

• Exhibit E:Kinderlino a second hand store for children;

• Exhibit F: Logolino an indoor playground;

• Exhibit G: Wikipedia article about the EUTM Proprietor.

In reply the applicant argues that:

• In his observations of 03/09/2015, the EUTM proprietor has explicitly admitted that he is ‘one of the world’s leading providers of all kinds of gaming solutions’, ‘one of the leading companies in the gambling business, providing mainly lottery services, casino gaming machines and other money wagering services’, and that ‘the relevant public for the contested trademark is in fact casino operators’. Therefore, it is clear that the contested goods are to be used in the gaming and gambling area.

• The element ‘-lino’ of the earlier mark does not have a specific meaning which could neutralize the high aural and visual similarity of the signs at issue. The signs the EUTM Proprietor refers to in support of his allegation namely ‘TOGGOLINO’, ‘ALPILINO’ are irrelevant, since they are used for an Austrian adventure park or an Austrian hotel, not German companies. The other signs, namely ‘SONNELINO’, ‘JACKELINO’, ‘KINDERLINO’ and ‘LOGOLINO’, are unknown in Germany and without any market mindshare. Further, it must be pointed out that the element ‘lino’ is not used for products for children only. For example, a well-known product in Germany is the e-book reader ‘tolino’.

In reply the EUTM proprietor points out:

• Germans are the largest group of tourists in Austria and there are trademark registrations for all of the abovementioned names (Exhibits 1-4). The applicant has not proven that the other signs are unknown in Germany.

• The internet address and use of the mark on the applicant’s website (www.ge.de/GEOlino see Exhibit A 15) show use in such a way - the suffix ‘lino’ written in lower case and ‘GEO’ in upper case - that ‘-lino’ will be perceived as indicating that this product is designed for children.

LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH 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 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.

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

Class 16: Printed matter: photographs.

Class 28: Games, playthings, toy laboratories (playthings), gymnastic and sporting articles, included in this class.

Class 38: Telecommunication; providing of access to platforms or portals on the Internet; providing of access to information and computer programs in data networks and on the Internet, including input, search and navigation function; providing access to databases with electronic publication and published products in data networks and on the Internet, including input, search and navigation function; electronic news, image and text transmission, in particular transmission of electronic published products as e-books, e-magazines and e-newspapers: picture agency services, namely collating and supplying of pictures, included in this class; providing of access to chat lines, chat rooms and forums on the Internet or other data networks.

Class 41: Education, providing of training ,entertainment, publication of material (other than for advertising proposes) in printed and electronic form in the course of online and offline publishing house operations; publication of audio books; editing and publication of texts (other than publicity texts) and / or printed matter (other than for advertising purposes) with images and/or films, in particular multimedia works, included in this class, in each case also for transmission in digital data network; picture agency services, namely photography and imaging services, included in this class.

The contested goods and services are the following:

Class 9: Programs for operating electric and electronic apparatus for games, amusement and/or entertainment purposes; Computer software for computer games on the internet and for games on mobile phones; Software for on-line games, wireless and mobile devices; Smart cards; Calculating apparatus in coin-operated machines and parts for the aforesaid goods.

Class 28: Electric and electronic coin and token-operated entertainment machines and amusement machines; Electric and electronic apparatus for games, amusement or entertainment purposes; Coin-operated gaming machines, entertainment machines and lottery machines; Automatic gaming machines; The aforesaid automatic machines and apparatus operating in networks.

Class 41: Providing on-line computer games; Casino services; Operating a jackpot system involving one or more automatic slot machines, namely a jackpot or prize with a fixed minimum value which increases until the jackpot is won.

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 terms in particular and including, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (on the use of in particular see reference in judgment of 09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

On the other hand, the term namely, used in the EUTM proprietor’s and applicant’s list of goods and services 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 and services.

Contested goods in Class 9

The contested programs for operating electric and electronic apparatus for games, amusement and/or entertainment purposes are complementary to the games covered by the earlier mark in Class 28, since the earlier games, which are unmistakably used for gaming, amusement and entertainment purposes rely on the contested computer software to operate properly. Furthermore, they can coincide in their producer, end user and distribution channels. Therefore, these goods are similar.

The contested computer software for computer games on the internet and for games on mobile phones; software for on-line games, wireless and mobile devices are complementary to the entertainment services covered by the earlier mark in Class 41 in the sense that the EUTM proprietor’s software is needed to use the applicant’s services, namely to allow gaming via the internet (by means of a wireless or mobile device). Furthermore, these goods and services target the same public and may be purchased via the same web shop and originate from the same companies. Therefore, these goods and services are similar.

The contested calculating apparatus in coin-operated machines and parts for the aforesaid goods can be used as calculators or parts thereof in coin-operated gaming machines. The contested goods are often produced and/or sold by the same undertaking that manufactures the end product, since the contested goods are particularly important for the functioning of the machine. Therefore, they can target the same public, that is, casinos and other places where gaming machines can be found, which may expect these components to be produced by, or under the control of, the ‘original’ manufacturer of the machine, and can acquire them via the same distribution channels. Since coin-operated gaming machines are included in the applicant’s broad category of the applicant’s games and playthings in Class 28, the contested goods are similar to those goods.

The contested smart cards are complementary to the applicant’s entertainment in Class 41, which is a broad category including gaming services. Nowadays casinos provide customers with their own custom cards which they can use to pay the various services offered such as the use of coinless and cashless gaming machines. Moreover, casinos use such cards to track individual players’ movements throughout the facility and to offer customers additional rewards points. Therefore, these cards are commonly provided by the same undertakings that provide the entertainment services of Class 41. As a consequence, they target also the same end users and are offered via the same distribution channels. Therefore, these goods and services must be considered similar.

The EUTM Proprietor’s argues that applicant is using its earlier mark for publishing services of a children’s magazine and that it is not clear that the contested goods are used for games. In this respect it must be noted that the Cancellation Division can only take into account the goods or services for which both marks are registered and not the goods or services for which the marks are actually used (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

When taking the exact specification of Class 9 into account, in this case there is no reason to assume that the contested goods could not be used for playing games, especially considering that the goods of Class 9 make reference to games - ‘apparatus for games’, computer software for computer games on the internet and for games on mobile phones; software for on-line games -, or can be used in combination with game machines such as smart cards; calculating apparatus in coin-operated machines and parts for the aforesaid goods.

Moreover, as correctly pointed out by the applicant the EUTM proprietor has mentioned in its observations of 03/09/2015, that GTECH (the former name of the EUTM proprietor) is ‘one of the world’s leading gaming solution providers with significant global market share and the broadest portfolio of technology, services and content solutions (see also exhibit G).

Contested goods in Class 28

The contested electric and electronic coin and token-operated entertainment machines and amusement machines; electric and electronic apparatus for games, amusement or entertainment purposes; coin-operated gaming machines, entertainment machines and lottery machines; automatic gaming machines; the aforesaid automatic machines and apparatus operating in networks are included in the broad category of the applicant’s games. Therefore, they are identical.

Contested services in Class 41

The contested providing on-line computer games; casino services; operating a jackpot system involving one or more automatic slot machines, namely a jackpot or prize with a fixed minimum value which increases until the jackpot is won are included in the broad category of the applicant’s entertainment. Therefore, they are identical.

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 are partly directed at the public at large (e.g. software for on-line games, wireless and mobile devices in Class 9) and partly at business customers with specific professional knowledge or expertise in the gaming industry (e.g. calculating apparatus in coin-operated machines and parts for the aforesaid goods in Class 9). The level of attention to be taken into account will vary from normal to high. For example, inexpensive game applications for smart phones in Class 9 will receive a normal level of attention whereas the various gaming machines in Class 28 are usually not inexpensive but require a more significant investment and are usually for a longer term use (29/01/2015, T-665/13, Spin Bingo, EU:T:2015:55, § 18 in relation with § 3 and 6; see also 17/09/2014, R 917/2014-1, Magic Pot (fig.) / Magic Casinos et al, § 23-27).

3. The signs

Geolino	GEOSINO
Earlier trade mark	Contested trade mark

The relevant territory is Germany.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Visually, both signs are composed of a seven letter word of which the first three and last three letters are the same and are placed in the same order: ‘GEO*INO’. The only difference is their central letter, the ‘L’ versus ‘S’. As both signs are word marks it is irrelevant whether they are written in lower-case or upper-case letters or a combination of both (31/01/2013, T-66/11, ‘Babilu’, EU:T:2013:48, § 57). Therefore, the only difference in their fourth letter must be considered a rather minor one, as it occurs in a less prominent position, hidden between the more noticeable identical letters marking the more important beginning and ending of the marks. Therefore, the signs are visually similar to a high degree.

Aurally, both signs are composed of a single word having four syllables, namely: ‘GE‑O‑LI‑NO’ and ‘GE‑O‑SI‑NO’. They coincide in three out of four syllables while the fourth is similar due to the coincidence in the sound of the identical vowel ‘I’. The applicant claims that the letters ‘L’ and ‘S’ sound very different. However, in terms of the global impression, these differences cannot dispel the similarity arising out of the highly similar pattern and rhythm produced by the more striking sound of the remaining other identical letters. Not only are they more numerous, they are also located at the more memorable beginnings of the signs and, therefore, have a significant influence on the overall impression made by the mark (15/12/2009, T‑412/08, ‘Trubion’, EU:T:2009:507, §40; 25/03/2009, T-109/07, ‘Spa Therapy’, EU:T:2009:81, § 30). Therefore, the marks are aurally similar to a high degree.

Conceptually, the applicant claims that the ending ‘–LINO’ of the earlier mark will be clearly and only associated with children. In support of its claim the applicant relies on excerpts from internet showing use of this ending as part of trademarks for a TV program, adventure park, hotel, store and indoor playgrounds. However, this evidence does not prove that the suffix ‘-lino’ is perceived by a significant part of the public as referring to children. The fact that this ending is used in words or websites that indicate places intended for children, does not automatically mean that the public understands ‘–lino’ as indicating children, especially considering that the German word for children is ‘Kinder’ and that the other part of the mark ‘GEO-’ bears no obvious relation to the goods and services in question. As correctly pointed out by the applicant this suffix is not mentioned in any dictionary and is not merely used in words relating to children. In fact, neither of the signs has a meaning for the public in the relevant territory. Therefore, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

According to the applicant, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the applicant to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 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 (eighth recital of the CTMR). 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the contested goods and services were found partly identical and partly similar to those of the earlier mark and are directed at the general public and professionals whose level of attention to be taken into account is normal, but higher than average on the part of the professionals. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness.

The marks in dispute have been found to be visually and aurally similar to a high degree while the signs do not convey any concepts and therefore the conceptual aspect does not influence the assessment of the similarity of the signs.

Thus, on the basis of all the foregoing, also taking into account that the average consumer only rarely has the chance to make a direct comparison between different marks but must place his/her trust in the imperfect picture of them he/she has kept in mind, the small difference in the signs’ central letter is not sufficient to rule out a likelihood of confusion in the sense that even highly attentive professional consumers could reasonably believe that the contested goods and services come from the same undertaking or from economically-lined undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the application is well founded on the basis of the applicant’s German trade mark registration No 302 010 043 654. It follows that the contested trade mark must be declared invalid for all the contested goods and services.

Since the cancellation application is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the earlier mark due to its extensive use as claimed by the applicant. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Since the application is fully successful on the grounds of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the application, namely Article 8(5) EUTMR in conjunction with Article 53(1)(a) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Saida CRABBE

Adriana VAN ROODEN

Reiner SARAPOGLU

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.