OPPOSITION No B 2 690 819

Miss World Limited, Ordnance House, 31 Pier Road, St Helier, Jersey (opponent), represented by Bear & Wolf IP LLP, Third Floor, 57 Farringdon Road, EC1M 3JB London, United Kingdom (professional representative)

a g a i n s t

Icon Gaming LTD, 1st Floor Sheraton House, Lower Road, WD3 5LH, Chorleywood, United Kingdom (applicant), represented by Nicholas Papapolitis, 5 Ventiri Str, 11528 Athens, Greece (professional representative).

On 19/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 690 819 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 14 890 123 , namely against all the goods and services in Classes 9, 41 and 42. The opposition is based on European Union trade mark registration No 151 340 and non-registered trade mark ‘MR WORLD’ (word) used in the course of trade in Belgium, Netherlands, Germany, Latvia, Denmark, Hungary, United Kingdom, Poland, Slovenia, Greece, Italy, Malta, Croatia, Spain, France, Ireland, Slovakia, Austria. The opponent invoked Article 8(1)(b) and Article 8(4) and (5) 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

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

Class 35: Advertising services.

Class 41: Entertainment services; production of television, films and video; organisation, sponsorship, running of contests; beauty contests; organisation of conferences and business meetings; organisation of exhibitions for cultural, educational and entertainment purposes.

The contested goods and services are the following:

Class 9: Data processing equipment, computer memory devices, computers, computer software regarding casino gaming products, computer programmes [programs], recorded, computer operating programs recorded, computer software recorded, computer programs, [downloadable software], computer game software, computer software applications downloadable, computer hardware, computers, interfaces for computers, magnetic data media, memory cards for video game machines, mobile telephones/cell phones/ cellular phones, sound recording strips, video screens, excluding apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, CDs, DVDs and other digital recording media.

Class 41: Gambling, game services provided on-line from a computer network, games equipment rental, operating lotteries.

Class 42: Computer programming, computer software design, installation of computer software, maintenance of computer software, research and development of new products for others, software as a service [SaaS], updating of computer software.

Some of the contested goods and services are identical or similar to services on which the opposition is based (e.g. the contested gambling is included in the broad category of the opponent’s entertainment services and thus the services are identical). For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

b) 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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase and their price.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 sign is a black and white figurative mark consisting of a depiction of a globe and underneath, the words ‘MR WORLD’. ‘MR’ is an abbreviation used in English as a conventional title of courtesy before the man’s surname or before the name of a place, profession, or activity or before an epithet to form a title applied to a male viewed as a representative of the thing indicated (found on https://www.merriam-webster.com/ on 19/12/2018). Thus, the verbal element ‘MR WORLD’, taken as a whole, will be understood by part of the relevant public (e.g. the English-speaking part of the public) as a reference to a man who is a representative of the world, or as a reference to a man called ‘WORLD’. The verbal element is distinctive for the part of the relevant public that understands it. It is also distinctive for the remaining part of the relevant public for which it is meaningless. The figurative element of a globe is considered non-distinctive for the relevant public as it will be perceived as a reference to the worldwide extent of the services at hand.

The sign has no elements that could be considered dominant (visually eye-catching).

The contested sign is a figurative mark in colour consisting of the words ‘Mr. GAMES’ and ‘WORLD’ placed on a green horizontal stripe against a reddish background which after a closer look appears to be a casino table. The verbal element ‘Mr. GAMES’ will be understood by part of the relevant public (e.g. the English-speaking part of the relevant public) as a reference to a man whose profession or activity is related to games, or as a reference to a man called ‘GAMES’. The word ‘WORLD’, by itself, and as depicted in the contested sign, will be understood by part of the relevant public (e.g. the English-speaking part of the relevant public) as the earth with its inhabitants and all things upon it (found on https://www.merriam-webster.com/ on 19/12/2018) and it is considered non-distinctive as it merely indicates that the goods and services are offered worldwide. Moreover, because of its size and position within the sign, its impact on the comparison of the signs is further limited. Indeed, the verbal element ‘Mr. GAMES’ is written in a bigger font and is placed above.

For the remaining part of the relevant public the words of the contested sign are meaningless and considered distinctive. The figurative element is considered weak for some of the goods and services, for example computer game software in Class 9 and gambling in Class 41.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although, the verbal elements of both signs belong to the English language, they may be understood in other parts of the relevant territory as they are not extremely sophisticated words. However, it is considered that the vast majority of the relevant public can be grouped into two categories: those who understand all the words and consequently perceive the concepts conveyed by the marks taken as a whole, and those for whom the signs, each taken as a whole, and their verbal elements are meaningless.

Contrary to what the opponent claims, the conceptual similarity cannot be established on the basis of the common word ‘WORLD’, since in the earlier sign it will be perceived either as a surname or as a word defining a man (as a representative) whereas in the contested sign, the word ‘WORLD’ will simply be understood literally, namely as referring to the earth with its inhabitants and all things upon it.

Likewise, the conceptual similarity cannot be established on the basis of the presence of the abbreviation ‘MR’/‘Mr.’ in both signs. This is because they stand for a title which in relation to the words that follow, in the present case, convey different concepts, namely 'WORLD' and 'GAMES', respectively.

In addition, even if for the part of the relevant public that understands the word elements of the signs, the figurative element of the earlier sign and the word ‘WORLD’ in the contested sign evoke a similar concept, it is not sufficient to establish any conceptual similarity, as these elements are non-distinctive and cannot indicate the commercial origin of the relevant goods and services. The attention of the relevant public as a whole will be attracted by the additional, distinctive and fanciful elements. Therefore, the signs are not similar conceptually, even for this part of the relevant public.

For the remaining part of the relevant public who will perceive concepts only in the figurative elements, the signs are also conceptually not similar.

Visually, the signs coincide in ‘MR’/‘Mr’ and ‘WORLD’. However, regardless of whether the word ‘WORLD’ in the contested sign is considered distinctive or not, depending on the part of the relevant public, it is, in any case, placed in a different position within the contested sign as compared to the earlier sign. Moreover, because of its size and position, it plays a secondary role in the overall impression of the contested sign and has a limited impact on the comparison of the signs as explained above. Further, the common letters ‘MR’/‘Mr’ occupy little space in the signs as compared to the elements that differentiate them and which will be definitely not overlooked. Further differences can be seen in the figurative elements and the stylisation of the signs, and in the fact that the earlier sign is a black and white figurative mark while the contested sign is depicted in colour.

Therefore, the signs are considered visually similar to a very low degree.

As regards the aural comparison, the General Court has already assessed that, only the dominant part of the mark would normally be pronounced when enunciated by consumers (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 44). Thus, the Opposition Division considers that the word ‘WORLD’ in the contested sign is unlikely to be pronounced on account of its subordinate position and smaller size, as well as its non-distinctive character for part of the relevant public.

Consequently, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the pronunciation of ‘MR’/‘Mr’. Consumers who understand the meaning of this verbal element will most probably pronounce it ‘MISTER’ (in English) while consumers for whom the elements ‘MR’/‘Mr’ are meaningless will probably spell these out as ‘M’ and ‘R’ in their respective languages. The signs differ in the pronunciation of the word ‘WORLD’ of the earlier sign and the word ‘GAMES’ of the contested sign.

Therefore, the signs are aurally similar to an average degree for part of the relevant public that will pronounce the elements ‘MR’/‘Mr’ as ‘MISTER’, but they are similar only to a low degree for the remaining part of the relevant public.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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 opponent, the earlier trade mark has a reputation and enjoys a high degree of distinctiveness as result of its long standing and intensive use in the European Union in connection with all the services on which the opposition is based. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

 An article from Wikipedia describing Mister World competition, its brief history, titleholders and award winners;

 An extract from the opponent’s website giving an overview of the Mister World contest.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

The article from Wikipedia submitted by the opponent describes solely brief history of a beauty contest, titleholders and award winners. The remaining evidence comes from the opponent itself and, anyhow, does not contain any indication of the degree of recognition of the trade mark by the relevant public. Although the opponent claims that the contest is known worldwide, the evidence does not indicate the sales volumes related to the trade mark, the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not show that the trade mark is known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that the mark has acquired the enhanced distinctiveness for any of the services at hand.

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 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, despite the presence of a non-distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

It has been assumed in the previous sections of the decision that the contested goods and services are identical to the opponent’s services. The signs are considered visually similar to a very low degree and aurally similar to a low degree (aurally similar to an average degree for part of the relevant public) and conceptually not similar. The earlier sign has normal distinctiveness.

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).

According to the same line of case-law, 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).

Two marks are similar when, from the point of view of the relevant public, they are at least partly identical as regards one or more relevant aspects (23/10/2002, T-6/01, Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, § 30). The coincidence must be, therefore, ‘relevant’ from the perspective of the consumer who usually perceives a mark as a whole and does not proceed to analyse its various details (judgment of 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). Moreover, it should be noted that a composite trade mark cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the composite mark, unless that component forms the dominant element within the overall impression created by the composite mark. That is the case where this component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (23/10/2002, T-6/01, Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, § 33).

In the present case, both signs contain an abbreviation of the English word Mister and the word ‘WORLD’. However, the elements ‘MR’/'Mr' occupy rather little space as compared to the elements that differentiate the signs. In addition, the word ‘WORLD’ is less visually eye-catching in the overall impression of the contested sign and, consequently, plays a secondary role because of its size and position. The public’s attention will not be held solely by the element ‘WORLD’ in any of the signs. On the contrary, all the elements comprising the marks contribute to forming the images that the relevant public will not confuse. Indeed, the differentiating elements such as the typeface, the position of the verbal elements in the signs, the colours and the figurative elements are clearly perceivable and suffice to distinguish clearly one sign from the other.

Moreover, even if the signs are aurally similar to an average degree for the part of the public that will pronounce ‘MR’/'Mr' as ‘MISTER’, the signs and their respective word elements 'MR WORLD' and 'Mr. GAMES' convey different concepts for this part of the relevant public. In this regard, the Opposition Division notes that aural and visual similarities may be counteracted by conceptual differences which distinguish the marks in question. For there to be such a counteraction, at least one of the marks in question must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately (16/01/2008, T‑112/06, Idea, EU:T:2008:10, § 76 ). In the case at hand, the verbal elements ‘MR WORLD’ and ‘Mr. GAMES’ possess, for this part of the relevant public, specific albeit different semantic contents, which the public is capable of grasping immediately.

Therefore, even considering that an average degree of attention will be displayed by the public at large when purchasing at least part of the goods and services, as well as taking into account that the goods and services are assumed to be identical, the striking differences between the signs are sufficient to counteract their similarities.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected insofar as based on Article 8(1)(b) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar as based on this article.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

a) The right under the applicable law

According to Article 95(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Article 7(2)(d) EUTMDR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide, inter alia, evidence of its acquisition, continued existence and scope of protection, including where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50).

The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the applicant to exercise the right of defence.

As regards the provisions of the applicable law, the opponent must provide a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence (Article 7(2)(d) EUTMDR). The opponent must provide the reference to the relevant legal provision (Article number and the number and title of the law) and the content (text) of the legal provision by adducing publications of the relevant provisions or jurisprudence (e.g. excerpts from an official journal, a legal commentary, legal encyclopaedias or court decisions). If the relevant provision refers to a further provision of law, this must also be provided to enable the applicant and the Office to understand the full meaning of the provision invoked and to determine the possible relevance of this further provision. Where the evidence concerning the content of the relevant national law is accessible online from a source recognised by the Office, the opponent may provide such evidence by making a reference to that source (Article 7(3) EUTMDR).

According to Article 7(4) EUTMDR, any provisions of the applicable national law governing the acquisition of rights and their scope of protection as referred to in Article 7(2)(d) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

Where the opponent relies on national case-law to prove its case, it must also provide the Office with the relevant case-law in sufficient detail and not merely by reference to a publication somewhere in the legal literature.

In the present case, the opponent did not submit any information on the legal protection granted to the type of trade sign invoked by the opponent, namely non-registered trade mark for any of the territories. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the opponent.

According to Article 7(4) EUTMDR, translations submitted after the expiry of the relevant time limits must not be taken into account. According to Article 7(5) EUTMDR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted in or that have not been translated into the language of the proceedings, within the time limit set by the Office. It follows that the evidence filed by the opponent cannot be taken into account.

Therefore, the opposition is not well founded under Article 8(4) EUTMR.

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

Martina GALLE

Anna BAKALARZ

Katarzyna ZANIECKA

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.