DECISION

of the First Board of Appeal

of 9 January 2017

In Case R 99/2016-1

Sony Interactive Entertainment Europe Limited
10 Great Marlborough Street London W1F 7LP United Kingdom	Applicant / Appellant

represented by BOULT WADE TENNANT, Verulam Gardens 70 Gray's Inn Road, WC1X 8BT London, United Kingdom

v

Maternus Treff Süd Spielhallen GmbH
Friedrich-Breuer-Straße 104-112 53225 Bonn Germany	Opponent / Respondent

represented by RWZH RECHTSANWÄLTE, Barthstrasse 4, 80339 München, Germany

APPEAL relating to Opposition Proceedings No B 2 417 809 (European Union trade mark application No 13 166 319)

The First Board of Appeal

composed of Ph. von Kapff as a single Member having regard to Article 135(2) and (5) EUTMR, Article 1(c)(2) BoA-RP and Article 10 of the Decision of the Presidium on the organisation of the Boards of Appeal as currently in force, and to the First Board’s Resolution No 3 of 9 March 2012 on decisions by a single Member

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 12 August 2014, Sony Computer Entertainment Europe Limited, which on 29 July 2016 changed the name to Sony Interactive Entertainment Europe Limited (‘the applicant’), sought to register the word mark (‘the contested mark’):

WiLD

for the following list of goods and services as amended (‘the contested goods and services’):

Class 9 - Computer game software and video game software; downloadable, interactive computer and video game programs via mobile computer terminals or via the internet; downloadable computer game software; none of the aforesaid in relation to casinos, gambling games and games of chance;

Class 28 - Handheld computer games; hand-held electronic video games; hand-held units for playing electronic games; computer and video game consoles; controllers and peripherals for computer games and video games and computer games and video game consoles; bags and cases adapted for the aforementioned goods; none of the aforesaid in relation to casinos, gambling games and games of chance;

Class 41 - Provision of computer and video games programs from a computer database or via the Internet; none of the aforesaid in relation to casinos, gambling games and games of chance.

2. The application was published on 26 September 2014.

3. On 10 October 2014, Maternus Treff Süd Spielhallen GmbH (‘the opponent’) filed an opposition against the registration of the published trade mark application for trade mark applied for goods and services. The grounds of opposition were those laid down in Articles 8(1)(a) and (b) EUTMR.

4. The opposition was based on the following earlier rights:

A. Word mark

WILD

registered as a European Union trade mark No 9 515 248 with a filing date of 11 November 2010 and a registration date of 20 December 2012 for the following goods and services:

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.

B. Figurative mark

registered as a European Union trade mark No 9 515 321 with a filing date of 11 November 2010 and a registration date of 20 September 2011 for the following goods and services (‘the earlier goods and services’):

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.

5. By decision of 19 November 2015 (‘the contested decision’), the Opposition Division partially refused the trade mark applied for, for all the contested goods and services with the exception of ‘bags and cases adapted for the aforementioned goods; none of the aforesaid in relation to casinos, gambling games and games of chance’ on the grounds that there was a likelihood of confusion.

6. On 18 January 2016, the applicant filed an appeal against the contested decision and on 18 March 2016 the statement of grounds.

7. Observations in reply from the opponent were received on 27 April 2016 and 29 June 2016.

8. Following communications sent to the parties by the Board of Appeal, the applicant restricted the list of goods and services to the following wording:

Class 9 - Computer game software and video game software; downloadable, interactive computer and video game programs via mobile computer terminals or via the internet; downloadable computer game software; all of the aforesaid in relation to an action game delivered via the PlayStation games network or played on PlayStation games consoles, that is not the purpose of earning money or gambling; none of the aforesaid in relation to casinos, gambling games and games of chance;

Class 28 - Handheld computer games; hand-held electronic video games; hand-held units for playing electronic games; computer and video game consoles; controllers and peripherals for computer games and video games and computer games and video game consoles; bags and cases adapted for the aforementioned goods; all of the aforesaid in relation to an action game delivered via the PlayStation games network or played on PlayStation games consoles, that is not the purpose of earning money or gambling; none of the aforesaid in relation to casinos, gambling games and games of chance;

Class 41 - Provision of computer and video games programs from a computer database or via the Internet; all of the aforesaid in relation to an action game delivered via the PlayStation games network or played on PlayStation games consoles, that is not the purpose of earning money or gambling; none of the aforesaid in relation to casinos, gambling games and games of chance.

9. After several extensions of time, the opponent withdrew the opposition on 6 December 2016 and stated that no decision on costs was necessary.

Reasons

10. As a result of the withdrawal of the opposition, the opposition and the appeal proceedings have lost their purpose and must be closed. The contested decision has no effect.

11. The contested EUTM application may proceed to registration for the goods as limited.

Costs

12. No decision on costs is required based on the statement of the opponent and according to Article 85(5) EUTMR. That also applies for reasons of equity, according to Article 85(2) EUTMR, since the withdrawal of the opposition is a consequence of the limitation.

Order

On those grounds,

THE BOARD

hereby:

1. Takes note of the withdrawal of the opposition and that the contested decision does not take effect;

2. Closes the opposition and appeal proceedings and declares that the EUTM application may proceed for the goods as limited;

3. Takes note that no decision on costs is required.

Signed Ph. von Kapff

Registrar: Signed H. Dijkema