OPPOSITION No B 2 402 017

Maternus Treff Süd Spielhallen GmbH, Friedrich-Breuer-Straße 104-112, 53225 Bonn, Germany (opponent), represented by RWZH Rechtsanwälte, Barthstrasse 4, 80339 München, Germany (professional representative)

a g a i n s t

Gala Group Investments Limited, Glebe House, Vicarage Drive, Barking, Essex IG11 7NS, United Kingdom (applicant), represented by Freeths LLP, 6 Bennetts Hill, Birmingham B2 5ST, United Kingdom (professional representative).

On 26/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 402 017 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 Community trade mark application No 13 070 701. The opposition is based on Community trade mark registration No 9 515 321 and Community trade mark registration No 9 515 248. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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:

Community trade mark registration No 9 515 248

Class 28: Coin-operated automatic gaming machines for adults; coin-operated billiard tables; chips for gambling; playing cards and dice for adults; all of the aforesaid goods, other than those in connection with ice hockey and solely for games of chance.

Class 41: Casino facilities [gambling] (providing -); conducting casino games on the Internet; casino gambling games; rental of casino game equipment; all of the aforesaid goods, solely for games of chance.

Community trade mark registration No 9 515 321

Class 14: Jewellery, horological and chronometric instruments.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; trunks and bags in the class; trunks and travelling bags; umbrellas, sun umbrellas, parasols.

Class 28: Coin-operated automatic gaming machines for adults; coin-operated billiard tables; tokens for gaming; playing cards and dice for adults.

Class 34: Smokers’ articles; matches.

Class 41: Casino facilities; games on the Internet; gaming services; rental of games apparatus.

The contested goods and services are the following:

Class 9: Downloadable games; computer software, including downloadable computer software; computer software for use in playing poker; game and/or gaming software, including interactive gaming; betting terminals.

Class 28: Printed game cards; electronic games, interactive electronic games; apparatus for games adapted for use with television receivers.

Class 41: Entertainment services and leisure facilities; organisation and presentation of gambling or gaming events, poker games, betting, pool betting, tote betting, playing games, bingo games; gambling or gaming services, betting, pool betting, tote betting, book-making and casino services; electronic game and/or gaming services, interactive games, interactive entertainment and interactive competition services; education, teaching and training relating to playing games, gambling, gaming, poker, bingo, betting, book making; gaming, or entertainment provided online via the internet, by telephone, by radio or via a mobile communications network; operation of a TV channel allowing a user to bet, gamble and play games, including poker and bingo; entertainment services namely, the provision of a website allowing a user to bet, gamble and play games, including poker and bingo; all the aforesaid services also provided on-line from a computer database, by telephony or the Internet; provision of information services and advice in relation to all the aforesaid; all the aforesaid services relating to or offered in connection with casinos, gambling, gaming, poker gaming, betting, tote betting, pool betting, playing bingo, playing games, book-making or casino services.

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 (see the judgment of 09/04/2003, T‑224/01, ‘Nu‑Tride’).

However, the term ‘namely’, used in the 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.

As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in 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 contested downloadable games; computer software, including downloadable computer software; computer software for use in playing poker; game and/or gaming software, including interactive gaming; betting terminals are similar to the opponent’s coin-operated automatic gaming machines for adults in Class 28 (CTM No 9 515 321), as they can be complementary and can have the same distribution channels and end users.

Contested goods in Class 28

The contested printed game cards are included in the broad category of the opponent’s playing cards and dice for adults (CTM No 9 515 321). Therefore, they are considered identical.

The contested electronic games, interactive electronic games include, as a broader category, the opponent’s coin-operated automatic gaming machines for adults (CTM No 9 515 321). It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested apparatus for games adapted for use with television receivers is similar to the opponent’s coin-operated automatic gaming machines for adults (CTM No 9 515 321), since they have the same purpose and can have the same producers and end users.

Contested services in Class 41

The contested entertainment services and leisure facilities; all the aforesaid services also provided on-line from a computer database, by telephony or the Internet; all the aforesaid services relating to or offered in connection with casinos, gambling, gaming, poker gaming, betting, tote betting, pool betting, playing bingo, playing games, book-making or casino services include, as a broader category, the opponent’s casino facilities (CTM No 9 515 321). It is impossible for the Opposition Division to filter these services from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s services, they are considered identical to the opponent’s services.

The contested interactive entertainment and interactive competition services; entertainment provided online via the internet, by telephone, by radio or via a mobile communications network; operation of a TV channel allowing a user to bet, gamble and play games, including poker and bingo; entertainment services namely, the provision of a website allowing a user to bet, gamble and play games, including poker and bingo; all the aforesaid services also provided on-line from a computer database, by telephony or the Internet; all the aforesaid services relating to or offered in connection with casinos, gambling, gaming, poker gaming, betting, tote betting, pool betting, playing bingo, playing games, book-making or casino services include, as a broader category, the opponent’s gaming services (CTM No 9 515 321). It is impossible for the Opposition Division to filter these services from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s services, they are considered identical to the opponent’s services.

The contested organisation and presentation of gambling or gaming events, poker games, betting, pool betting, tote betting, playing games, bingo games; gambling or gaming services, betting, pool betting, tote betting, book-making and casino services; electronic game and/or gaming services, interactive games; gaming, provided online via the internet, by telephone, by radio or via a mobile communications network; all the aforesaid services also provided on-line from a computer database, by telephony or the Internet; all the aforesaid services relating to or offered in connection with casinos, gambling, gaming, poker gaming, betting, tote betting, pool betting, playing bingo, playing games, book-making or casino services are included in the broad category of the opponent’s gaming services (CTM No 9 515 321). Therefore, they are considered identical.

The contested education, teaching and training relating to playing games, gambling, gaming, poker, bingo, betting, book making; all the aforesaid services also provided on-line from a computer database, by telephony or the Internet; all the aforesaid services relating to or offered in connection with casinos, gambling, gaming, poker gaming, betting, tote betting, pool betting, playing bingo, playing games, book-making or casino services are similar to the opponent’s casino facilities, since it is conceivable that an undertaking responsible for offering casino facilities would also organise training for its own employees and for end users in its facilities. Therefore, these services may have the same providers, distribution channels and end users.

The contested provision of information services and advice in relation to all the aforesaid; all the aforesaid services relating to or offered in connection with casinos, gambling, gaming, poker gaming, betting, tote betting, pool betting, playing bingo, playing games, book-making or casino services are similar to the opponent’s gaming services and casino facilities since they correspond to the subject matter of the information and advice, and it is conceivable that an undertaking providing gaming services and/or casino facilities would also provide information and advice about those services. Therefore, these services may have the same producers and relevant public.

2. The signs

(CTM No 9 515 321) WILD (CTM No 9 515 248)
Earlier trade marks	Contested sign

The relevant territory is the European Union.

Visually, the signs are similar to the extent that the contested sign coincides with CTM No 9 515 321 in the verbal elements ‘JOKERS WILD’ and with CTM No 9 515 248 in the element ‘WILD’. However, they differ in the verbal element ‘Pokerette’ and the stylisation of the letters in the contested sign and in the verbal element ‘CASINO’ and figurative elements of CTM No 9 515 321.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables ‛JO‑KERS-WILD’, present identically in the contested sign and in CTM No 9 515 321, and in the syllable ‘WILD’, present identically in the contested sign and in CTM No 9 515 248, and to that extent the signs are aurally similar. The pronunciation differs in the syllables ‛CA‑SI-NO’ of CTM No 9 515 321 and in the sound of the letters ‘POKERETTE’ of the contested mark.

Conceptually, the element ‘JOKERS’ in CTM No 9 515 321 and in the contested sign is an English plural word that has multiple meanings, such as a fictional character in popular culture, or a jester or other person who is employed to tell jokes and provide general entertainment. Furthermore, ‘JOKER’ may refer to a special type of playing card found in certain decks (decision of 27/03/2012, R 655/2011-2 – ‘Joker Maniac/JOKER et al.’). As a rule, the conceptual comparison is not influenced by the relevant goods and services. However, if a term has many meanings, one of which is of particular significance to the relevant goods and services, the conceptual comparison may focus on this meaning. In this case, in view of the goods and services covered by the marks at issue, it is conceivable that the public in the relevant territory would understand the meaning of ‘Joker’ as a playing card, due to the extensive use of this word in English.

The element ‘WILD’ in all the signs means ‘game’ (‘wild animals, including birds and fishes, hunted for food or for sport or profit’) and ‘savage’ in Dutch and German (information extracted from Bab.La Dictionary on 30/10/2015 at http://en.bab.la/dictionary/dutch-english/wild and from Student online Wörterbuch on 30/10/2015 at http://www.student-online.net/woerterbuch.shtml?q=wild&d=1&maxresult=15) and ‘offspring’ in Maltese (information extracted from Ġabra on 30/10/2015 at http://mlrs.research.um.edu.mt/resources/gabra/lexemes/view/54a0173d28d34f10080009b9). In English, it has various meanings, but, taking into account the goods and services concerned, it is conceivable that the consumers will perceive it as meaning ‘(of a card, such as a joker or deuce in some games) able to be given any value the holder pleases’ (information extracted from the Collins English Dictionary on 02/11/2015 at http://www.collinsdictionary.com/dictionary/english/wild). Therefore, the English-speaking part of the public and the public with knowledge of English will understand that meaning.

The element ‘CASINO’ in earlier mark No 9 515 321 will be understood as ‘a public building or room in which gaming takes place’, as this word exists in various official languages of the relevant territory (e.g. English, Spanish, Irish, Italian, French and Dutch) or the foreign word will be understood, since it is very similar to the equivalent in the official language (‘cassino’ in Portuguese, ‘kazino’ in Lithuanian and Latvian, ‘Kasino’ in Czech, German and Croatian, ‘kaszinó’ in Hungarian, etc.).

The figurative elements in CTM No 9 515 321 (a jester’s hat, four playing cards, each depicting one of the letters of ‘WILD’, and a group of coins or tokens) will convey the concepts of the items they depict.

The verbal element ‘Pokerette’ does not exist in any of the languages of the relevant territory. However, taking into account the goods and services concerned, the initial letter string ‘Poker’ is likely to be recognised in all Member States as referring to one of the most popular card games (decision of 04/12/09, R 1414/2008-2 – ‘POKER PRO LINE K K (FIG. MARK)/POKER’).

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The element ‘JOKERS’ of the contested sign and earlier mark No 9 515 321 will be associated with a certain playing card. Bearing in mind that the relevant goods and services are downloadable games, game and gaming software, games and entertainment services, it is considered that this element is weak for some of these goods and services, namely for those related to card games. The public understands the meaning of the element and will not pay as much attention to this weak element as to the other, more distinctive, elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The element ‘WILD’ of the conflicting signs will be associated by part of the relevant public with a way of playing a card, giving it any value the holder pleases. Bearing in mind that the relevant goods and services are downloadable games, game and gaming software, games and entertainment services, it is considered that this element is weak for some of these goods and services, namely for those that relate to card games. The part of the relevant public that understands the meaning of that element will not pay as much attention to this weak element as to the other, more distinctive, elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The element ‘CASINO’ of earlier mark No 9 515 321 will be associated by the relevant public with ‘a public building or room in which gaming takes place’. Bearing in mind that the relevant goods and services are downloadable games, game and gaming software, games and entertainment services, it is considered that this element is non-distinctive for these goods and services. The public understands the meaning of the element and will not pay as much attention to this non-distinctive element as to the other, more distinctive, elements of the mark. Consequently, the impact of this non-distinctive element is limited when assessing the likelihood of confusion between the marks at issue.

The element ‘POKER’ of the contested sign will be associated with a popular card game. Bearing in mind that the relevant goods and services are downloadable games, game and gaming software, games and entertainment services, it is considered that this element is weak for some of these goods and services, namely for those that relate to card games. The public understands the meaning of the element and will not pay as much attention to this weak element as to the other, more distinctive, elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The figurative elements of earlier mark No 9 515 321 – depicting a jester’s hat, playing cards, and coins or tokens – may be associated with games and casino facilities; therefore, it is considered that these elements are weak for all the goods and services that are similar or identical. Consequently, the impact of these weak elements is limited when assessing the likelihood of confusion between the marks at issue.

The earlier marks have no element which could be considered more dominant (visually eye‑catching) than other elements.

The element ‘Pokerette’ in the contested sign is the dominant element as it is the most eye‑catching.

4. Distinctiveness of the earlier marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as low for some of the goods and services in question, namely for those goods and services that relate to card games, and for a part of the relevant public, namely for the English-speaking part of the public and the public with knowledge of English. The marks have a normal degree of distinctiveness for the remaining goods and services, in relation to which they have no meaning from the perspective of the public in the relevant territory, and for the remaining part of the relevant territory, where they have no meaning in relation to the goods and services in question despite the presence of a non-distinctive element (‘CASINO’) in earlier mark No 9 515 321, as stated above in section c) of this decision.

5. Relevant public – degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise (e.g. in the case of betting terminals or coin-operated automatic gaming machines). The degree of attention of the relevant public may vary from average to higher than average, given that the (potential) financial consequences for consumers can vary significantly, depending on the specific gaming, gambling or betting goods and services provided. The goods targeting business customers are not frequent purchases, but are important for their businesses, and therefore they are expected to select those goods carefully.

6. Global assessment, other arguments and conclusion

The goods and services are partly similar and partly identical. The signs are similar to the extent that the contested sign coincides with CTM No 9 515 321 in the verbal elements ‘JOKERS WILD’ and with CTM No 9 515 248 in the verbal element ‘WILD’. These are not the dominant elements in the contested sign, which consists of three stylised verbal elements, the first being much larger than the others. The distinctiveness of the coinciding elements is weak for a part of the public and for some of the goods and services.

Even for consumers with a high degree of attention and even considering the public and goods and services for which the coinciding components of the signs have a normal degree of distinctiveness, the small size of the coinciding elements makes the overall impressions of the conflicting signs different; this is reinforced by the completely different layouts and figurative elements (where they exist) of the signs. Average consumers of this category of goods and services are deemed to be reasonably well-informed and reasonably observant and circumspect; however, they rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them, so it is conceivable that the consumers will focus on the clearly dominant element of the contested sign.

Moreover, the first parts of the conflicting marks are different. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. Consequently, the different first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

The opponent argues that the earlier trade marks, both characterised by the presence of the word ‘WILD’, constitute a ‘family of marks’ or ‘marks in a series’. In its view, this circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when encountering the contested mark, which contains the same word element as the earlier marks, will be led to believe that the goods and services identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T‑194/03, ‘Bainbridge’.

When the opposition to a Community trade mark is based on several earlier marks and those marks display characteristics that give grounds for regarding them as forming part of a single ‘series’ or ‘family’, a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

First, the proprietor of a series of earlier registrations must submit proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

In the present case, the opponent failed to prove that it uses a family of ‘JOKERS WILD’ or ‘WILD’ marks, and moreover that it uses such a family in the same fields as those covered by the contested trade mark.

The opponent refers to various previous decisions of the Court of Justice of the European Union to support its arguments. However, the outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. In this case, the previous decisions are not comparable, since the layouts of the signs and, in particular, the elements that dominate the overall impressions they create are different.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

According to Article 85(1) CTMR, 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 Rule 94(3) and (7)(d)(ii) CTMIR, 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

Beatrix STELTER

LORENA MARTINEZ CARRION

Martin EBERL

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, 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 (Article 2(30) CTMFR) has been paid.