OPPOSITION No B 2 592 536

Elite Gaming A/S, Valhøjs Allé 179, 2610 Rødovre, Denmark (opponent), represented by Zacco Denmark A/S, Arne Jacobsens Allé 15, 2300 Copenhagen S, Denmark (professional representative)

a g a i n s t

El Corte Ingles S.A., Hermosilla 112, 28009 Madrid, Spain (applicant), represented by J.M. Toro, S.L.P., Viriato, 56 - 1º izda, 28010 Madrid, Spain (professional representative).

On 25/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 592 536 is upheld for all the contested goods and services, namely:

Class 28: Games and playthings, except card games.

Class 35: Wholesaling, retailing and sale via global computer networks of games, playthings.

2. European Union trade mark application No 14 270 912 is rejected for all the aforesaid contested goods and services. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 270 912, namely against some of the goods and services in Classes 28 and 35. The opposition is based on, inter alia, Danish trade mark registration No VR 200 400 974. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Danish trade mark registration No VR 200 400 974.

1. The goods and services

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

Class 9: Machines, apparatus and automatic slot machines for use in gaming, lotteries, betting and competitions, including computerised terminals for providing games, as well as number draw- and prize draw machines.

Class 28: Automatic and coin operated amusement machines, -apparatus and slot machines for use in games, lotteries, betting and competitions, including non-gambling games machines; lottery tickets and gaming coupons.

Class 35: Advertising; business management; business administration, administration including providing of business concepts; office functions, consulting services relating to the aforesaid services.

Class 41: Entertainment; sporting and cultural activities, organisation of games and lotteries; collection of information relating to game instructions/manuals and results for providing games and lotteries, betting and competitions via the Internet, consulting services related to the aforesaid services.

Class 43: Restaurants, including cafés, cafeterias, snack-bars, bar services; services for providing food and drink, consulting services relating to the aforesaid services.

The contested goods and services, after limitation on 02/06/2016, are the following:

Class 28: Games and playthings, except card games.

Class 35: Wholesaling, retailing and sale via global computer networks of games, playthings.

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 28

The contested games and playthings, except card games include, as a broader category the opponent’s automatic and coin operated amusement machines, -apparatus and slot machines for use in games, lotteries, betting and competitions, including non-gambling games machines. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The same applies to other services that consist exclusively of activities revolving around the actual sale of goods such as wholesaling and sale via global computer networks.

Therefore, the contested wholesaling, retailing and sale via global computer networks of games, playthings are similar to a low degree to the opponent’s automatic and coin operated amusement machines, -apparatus and slot machines for use in games, lotteries, betting and competitions, including non-gambling games machines since the contested games and plaything is a broad category which entails all amusement items.

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 and similar to a low degree are directed at the public at large and at business customers. The attention paid by consumers during the purchase of those goods is deemed to vary from average to high, depending on the nature, price and sophistication of the goods and services (e.g. a higher than average degree of attention will be paid to goods that have an impact on the economic activities of business customers, such as slot machines for use in games, lotteries, betting and competitions sold to professionals).

3. The signs

PITTEN
Earlier trade mark	Contested sign

The relevant territory is Denmark.

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 earlier mark consists of the word ‘PITTEN’. In Danish the word ‘PITTEN’ is the definite form of the word ‘PIT’, which directly refers to and is short for the English expression ‘pit stop’, meaning the area at a Formula 1 circuit where cars make a short stop to get tyres changed or a minor repair performed during the race (definition taken on 03/11/2016 from the Danish online dictionary at www.ordbogen.com). Consequently, the syllable ‘TEN’ in the earlier mark will be understood by the relevant public merely as the definite article ‘the’. Since ‘PITTEN’ has no direct meaning in relation to the goods and services in question for the relevant public, it has an average degree of distinctiveness

The contested sign is a figurative mark consisting of the word ‘PIT’, written in a rather standard font in yellow upper case letters with the reflection of spotlights in the middle of each letter. The letters are individually surrounded by a black border. As explained above, ‘PIT’ is perceived as ‘pit stop’ in Danish. Since it has no direct meaning in relation to the goods in question, it has an average degree of distinctive character. The marks have no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘PIT’. They constitute the entirety of the contested sign and are fully included in the earlier mark. They differ in the letters ‘TEN’ of the earlier mark and in the figurative elements of the contested sign, namely the stylisation of the font and the colours (yellow/white body and black borders).

The first parts of the conflicting marks are identical and it has to be borne in mind that consumers generally tend to focus on the beginning of a sign when encountering 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.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘P-I-T-’, present identically in both signs. The pronunciation differs in the sound of the letters ‘TEN’ of the earlier mark, which have no counterparts in the contested sign. However, it is considered that the second syllable is pronounced with stressed less.

Therefore, the signs are aurally similar to a high degree.

Conceptually, the public in the relevant territory will perceive the earlier mark as ‘the pit’ and the contested sign as ‘pit’, both directly referring to the ‘pit stop’ in Formula 1 racing in Danish. Therefore, the signs are conceptually identical, since they refer to the same concept.

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 claimed that the earlier trade mark enjoys a high degree of distinctiveness but did not file any evidence in order to prove such a claim.

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 clear and direct 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, C251/95, Sabèl, EU:C:1997:528, § 22).

The contested goods and services are identical and similar to a low degree. The degree of attention will therefore vary from average to high.

The similarity between the signs arises from the letters ‘PIT’. The Opposition Division notes that the figurative nature of the contested sign, namely its font in yellow and white with a black border, and the ending of the earlier mark, ‘-TEN’, do not result in a significant striking difference between the earlier mark and the contested sign. The figurative elements therefore have a limited impact on the overall impression produced by the contested sign on the relevant public.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Bearing in mind the aforesaid, it is considered that the differences between the signs, which are mostly confined to TEN of the earlier mark and the figurative elements of the contested sign, are insufficient to enable the average consumer to safely distinguish between the signs so as to exclude likelihood of confusion, even where the public has a high degree of attention.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Danish trade mark registration No VR 200 400 974. It follows that the contested trade mark must be rejected for all the identical goods.

It also has to be noted that likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442). In the present case, and taking into account this principle, the contested trade mark must also be rejected for the services found to be similar to a low degree to the goods of the earlier trade mark, as the clear similarities between the signs offset the low degree of similarity between the goods and services.

The contested trade mark must be rejected for all the contested goods and services.

As the aforesaid earlier right, No VR 200 400 974, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

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

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

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

The Opposition Division

Fabian GARCÍA QUINTO

Cynthia DEN DEKKER

Carmen SÁNCHEZ PALOMARES

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 Opposition 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.