OPPOSITION No B 2 306 218

José María Rada Calvo, C/ Puente Verde, nº4, 18008 Granada, Spain (opponent), represented by Ipamark S.L., Paseo de la Castellana, 72‑1º, 28046 Madrid, Spain (professional representative)

a g a i n s t

NaturalMotion Limited, 10 St Ebbe’s Street, Oxford OX1 1PT, United Kingdom (applicant), represented by Brand Protect Limited, Suite B, 2nd Floor, Rowood House, Murdock Road, Bicester OX26 4PP, United Kingdom (professional representative).

On 31/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 306 218 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 147 013 for the word mark ‘CLUMSY’, namely against all the goods and services in Classes 9, 28 and 41. The opposition is based on Spanish trade mark registration No 2 853 730 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods and services

Following cancellation proceedings in Spain, the earlier trade mark has been cancelled for some of the goods and services for which it was initially registered and on which the opposition was based. The services on which the opposition is based are the following:

Class 41: Sports rental services for sports; rental equipment for sports (with the exception of vehicles).

After limitation the contested goods and services are the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; mechanisms for coin-operated apparatus; computers; encoded carriers, audio cartridges, video cartridges, audio and visual cartridges, magnetic tapes, discs, DVD-ROMS, HD DVD ROMs and BD-ROMS, magnetic discs, optical discs, silicon chips, microchips, electronic circuits, records, phonograph records, tapes, cassettes, cartridges and cards; computer software; computer games; software for mobile phones, software in the form of games for mobile phones, computer firmware; mobile phone rechargers; programs, software and firmware; software for playing video, computer and on-line games; interactive multimedia software programs; program memory cartridges for electronic amusement apparatus; video games; electronic games; software, motion pictures, sound tracks downloadable from the Internet; publications in electronic form or other data provided by means of multi-media electronic broadcast, network transmission or the internet; memory carriers; interactive compact discs; CD-ROMs; electrically, magnetically and optically recorded data for computers; instructional and teaching apparatus and instruments; sound, video and data recording and reproducing apparatus; games, apparatus for games and amusement apparatus all for use with or incorporating a television screen or video monitor including karaoke videos; computer peripherals; mouse pads; parts and fittings for all the aforesaid goods; protective headwear, knee guards, elbow guards, hand guards, protective gloves, sunglasses, protective eyewear; audiovisual works, including interactive audiovisual works motion pictures, fitness workouts, karaoke presented via any medium including CD-ROMs, DVD-ROMS, HD DVD ROMs and BD-ROMS, optical discs, magnetic discs, radio, television, tapes, cassettes, video recordings and over the internet; camera, disposable camera; computer games software; all the aforesaid not for sports use.

Class 28: Games and playthings; Decorations for Christmas trees; Toys, games and playthings, board games, jigsaw and manipulative puzzles, action figures and figurines and accessories therefore, playing cards; Christmas tree ornaments; playing cards, paper party favours amusement and game apparatus adapted for use with an external display screen or monitor amusement park rides apparatus for consumer games adapted for use with an external display screen or monitor apparatus for games apparatus for games other than those adapted for use with an external display screen or monitor electronic toys hand-held electronic video games hand-held games with liquid crystal displays hand-held units for playing electronic games hand-held units for playing electronic games, other than those adapted for use with an external display screen or monitor hand-held units for playing electronic games for use with an external display screen or monitor hand-held units for playing video games portable games with liquid crystal displays radio-controlled toy vehicles scale model vehicles toys designed to be attached to car seats toy vehicles video game machines video games apparatus video output game machines for use with televisions; entertainment and amusement machines and apparatus; video game apparatus, computer games, electronic game apparatus, all adapted for use for television receivers, video apparatus; computer games hardware; video game peripherals; coin or token operated electrical or electronic amusement apparatus; all the aforesaid not for sports use.

Class 41: Education; Providing of training; Entertainment; Education; providing of training; entertainment; entertainment services in the form of computer games, motion pictures, stage plays; instruction, tuition and training; entertainment, education and instruction by means of or relating to the internet, radio or television; production, presentation, on-line distribution, syndication, networking and rental of computer games, interactive entertainment, motion pictures, stage plays, TV programs, interactive compact discs, CD-ROMs, high definition optical discs, optical discs; publication, including on line publication, printed formats, sound recordings, video recordings, data, images, games, graphics, text, programs or information; exhibition services for educational and entertainment purposes; organization, production and presentation of shows, stage plays, competitions, contests, games, concerts and events including karaoke and sing-a-long events; provision of karaoke services; provision of entertainment and education accessed via communication and computer networks; provision of games or computer software accessed via communication and computer networks; provision of information relating to any of the aforesaid services, rental and distribution of programs, motion pictures, images, music, games, text and recordings; information and advisory services related to all the aforesaid services; all the aforesaid not for sports use.

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 ‘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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

All the contested goods and services are dissimilar to the opponent’s services. While the opponent’s services are rental services in the field of sport, the contested goods and services relate to science, technology, games, playthings, education, training and entertainment, and are explicitly excluded from use in connection with sport. Hence, the natures, purposes and methods of use of the goods and services in question are different. Also their producers/providers, distribution channels and end users are different. They are neither complementary nor in competition.

The opponent states that the goods and services in question belong to the same market, are addressed to the same consumers, have the same natures and are complementary. However, without any further explanation as to why the goods and services in question coincide in the said relevant criteria, the Opposition Division, based on the aforesaid, finds no conclusive reason for such an assumption and therefore no ground for finding that even a low degree of similarity exists between the goods and services in question.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Lars HELBERT

Alexandra APOSTOLAKIS

TuNhi VAN

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.