OPPOSITION No B 2 904 970

Mega Spielgeräte GmbH, Im Dachsstück 15, 65549 Limburg, Germany (opponent), represented by Wolfgang Schröder, Paul-Gauselmann-Straße 1, 32312 Lübbecke, Germany (employee representative)

a g a i n s t

Zitro IP S.àr.l, 17 Boulevard Royal, 2449 Luxembourg, Luxembourg (applicant), represented by Canela Patentes y Marcas S.L., Girona 148 1-2, 08037 Barcelona, Spain (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 904 970 is upheld for all the contested goods, namely:

Class 9: Apparatus for recording , transmission or reproduction of sound or images; magnetic data carriers, recording discs; data processing equipment and computers; computer programs; computer hardware and software, in particular for bingo halls, casinos, automatic slot machines; games programmes; interactive-game programs; video lottery games with or without prize payouts, or games of chance via telecommunications networks or the internet or telecommunications networks (computer software); games of chance, with or without the awarding of prizes, for use in telecommunications devices (computer software); bingo games for betting machines (software).

Class 28: Games, bingo games; automatic coin-operated games; automatic games other than those adapted for use with television receivers only; slot machines; arcade game machines, including machines for amusement arcades and gaming rooms; gaming machines operated by coins, tokens or any other means of pre-payment; automatic amusement machines; free-standing video games apparatus; games equipment for casinos, bingo halls and other gaming halls; automatic gaming machines for amusement arcades and betting establishments; slot machine housings.

2. European Union trade mark application No 16 421 604 is rejected for all the contested goods. It may proceed for the remaining, uncontested goods.

3. The applicant bears the costs, fixed at EUR 320.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 421 604 , namely against some of the goods in Classes 9 and 28. The opposition is based on European Union trade mark registration No 13 797 758 ‘Wild Frog’, for goods and services in Classes 9, 28 and 41. The opponent invoked Article 8(1)(a) and (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.

1. The goods

The goods on which the opposition is based are, inter alia, 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; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; musical jukeboxes and parts for the aforesaid automatic machines; automatic cash dispensers, automatic money counting and money changing machines; coin-operated mechanisms; computer and video games software; games software for use on any computer platform, including electronic entertainment and games consoles; computer game programs; computer games programs; video games (software); computer games provided through a global computer network or supplied by means of multi-media electronic broadcast or through telecommunications or electronic transmission or via the internet; computer games, leisure and recreational software, video games and computer software, all being provided in the form of storage media; programs for operating electric and electronic apparatus for games, amusement and/or entertainment purposes; automatic lottery machines; computer software for computer games on the internet; online games (software), in particular for online betting games, online prize games, online gambling games, online games of skill and online casino games; computer software in the form of an app for mobile devices and computers; calculating apparatus in coin-operated machines and parts for the aforesaid goods; apparatus for recording, transmission, processing or reproduction of data, including sound or images, including parts for all the aforesaid goods, except radio sets, television receivers, hi-fi systems, video recorders, telephone apparatus, fax machines and telephone answering machines; computer hardware and software for casino and amusement arcade games, for gaming machines, slot machines or video lottery gaming machines or games of chance via the internet; electric, electronic, optical or automatic apparatus, for identifying data carriers, identity cards and credit cards, bank notes and coins; electric, electronic or optical alarm and monitoring installations, including video cameras and apparatus for image transmission and image processing; data processing apparatus and computers, including data processing apparatus and computers being components for data networks and parts facilitating data network communications; electric wiring harnesses; circuit boards, printed circuit boards (electronic components) and combinations thereof, being assemblies and parts for apparatus, included in Class 9.

Class 28: Toys; toys; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; gaming apparatus (including coin-operated apparatus); coin-operated arcade games (machines); games for amusement arcades (included in Class 28); coin-operated video gaming apparatus; video games adapted for use with external screens or monitors only; casino fittings, namely roulette tables, roulette wheels; coin-operated automatic gaming machines and gaming machines, in particular for gaming arcades, with or without a prize payout; electronic or electrotechnical gaming apparatus, automatic gaming machines, gaming machines, slot machines operated by coins, tokens, banknotes, tickets or by means of electronic, magnetic or biometric storage media, in particular for commercial use in casinos and amusement arcades, with or without a prize payout; automatic gaming machines and gaming machines, in particular for commercial use in casinos and gaming arcades, with or without a prize payout; coin-operated gaming machines and/or electronic money-based gaming apparatus (machines), with or without prizes; housings adapted for gaming machines, gaming apparatus and automatic gaming machines, operated by means of coins, tokens, tickets or by means of electronic, magnetic or biometric storage media, in particular for commercial use in casinos and gaming arcades, with or without a prize payout; electronic games; electronic game entertainment apparatus and accessories; video output game machines; drawing apparatus for prize games and lotteries, draws or raffles; housings of metal, plastic and/or wood for coin-operated automatic machines; apparatus for games (including video games), other than adapted for use with external screens or monitors only; electropneumatic and electric pulling machines (gaming machines); gaming tables, in particular for table football, billiards, sliding games; arrows and flying discs (toys); electric, electronic or electromechanical apparatus for bingo games, lotteries or video lottery games and for betting offices, networked or unnetworked; LCD games consoles; automatic gaming machines; including all the aforesaid automatic machines, machines and apparatus operating in networks; apparatus and devices for accepting and storing money, being fittings for the aforesaid automatic machines, included in Class 28.

The contested goods are the following:

Class 9: Apparatus for recording , transmission or reproduction of sound or images; magnetic data carriers, recording discs; data processing equipment and computers; computer programs; computer hardware and software, in particular for bingo halls, casinos, automatic slot machines; games programmes; interactive-game programs; video lottery games with or without prize payouts, or games of chance via telecommunications networks or the internet or telecommunications networks (computer software); games of chance, with or without the awarding of prizes, for use in telecommunications devices (computer software); bingo games for betting machines (software).

Class 28: Games, bingo games; automatic coin-operated games; automatic games other than those adapted for use with television receivers only; slot machines; arcade game machines, including machines for amusement arcades and gaming rooms; gaming machines operated by coins, tokens or any other means of pre-payment; automatic amusement machines; free-standing video games apparatus; games equipment for casinos, bingo halls and other gaming halls; automatic gaming machines for amusement arcades and betting establishments; slot machine housings.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The terms ‘in particular’ and ‘including’, used in the applicant’s and opponent’s lists of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

Contested goods in Class 9

Magnetic data carriers, recording discs; data processing equipment and computers; computer programs are identically contained in both lists of goods (including synonyms).

The contested video lottery games with or without prize payouts, or games of chance via telecommunications networks or the internet or telecommunications networks (computer software) are included in the broad category of the opponent’s video games (software). Therefore, they are identical.

The contested games programmes include, as a broader category, or overlap with the opponent’s computer games programs. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested games of chance, with or without the awarding of prizes, for use in telecommunications devices (computer software) overlap with the opponent’s online games (software), in particular for online betting games, online prize games, online gambling games, online games of skill and online casino games. Therefore, they are identical.

The contested apparatus for recording, transmission or reproduction of sound or images are included in the broad category or overlap with the opponent’s apparatus for recording, transmission, processing or reproduction of data, including sound or images, including parts for all the aforesaid goods, except radio sets, television receivers, hi-fi systems, video recorders, telephone apparatus, fax machines and telephone answering machines. Therefore, they are identical.

The contested bingo games for betting machines (software) are included in the broad category of or overlap with the opponent’s computer and video games software. Therefore, they are identical.

The contested interactive-game programs overlap with the opponent’s computer games programs. Therefore, they are identical.

The contested computer hardware and software, in particular for bingo halls, casinos, automatic slot machines include, as a broader category, the opponent’s computer hardware and software for casino and amusement arcade games, for gaming machines, slot machines or video lottery gaming machines or games of chance via the Internet. 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 goods in Class 28

Automatic amusement machines are identically contained in both lists of goods (including synonyms).

The contested games include, as a broader category, the opponent’s electronic games. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested bingo games overlap with the opponent’s electronic games. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested automatic coin-operated games overlap with the opponent’s games for amusement arcades (included in Class 28). Therefore, they are identical.

The contested gaming machines operated by coins include, as a broader category, the opponent’s coin-operated arcade 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.

The contested slot machines; arcade game machines, including machines for amusement arcades and gaming rooms; gaming machines operated by coins, tokens or any other means of pre-payment; games equipment for casinos, bingo halls and other gaming halls; automatic gaming machines for amusement arcades and betting establishments are included in the broad category of or overlap with the opponent’s automatic gaming machines and gaming machines, in particular for commercial use in casinos and gaming arcades, with or without a prize payout. Therefore, they are identical.

The contested free-standing video games apparatus is included in the broad category of the opponent’s video output game machines. Therefore, they are identical.

The contested slot machine housings are included in the broad category of the opponent’s housings of metal, plastic and/or wood for coin-operated automatic machines. Therefore, they are identical.

The contested automatic games other than those adapted for use with television receivers only overlap with the opponent’s apparatus for games (including video games), other than adapted for use with external screens or monitors only. Therefore, they are identical.

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 found to be identical are directed at the public at large and business customers with specific professional knowledge or expertise of the casino industry.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

3. The signs

Wild Frog
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

All the elements of which the marks are composed are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as the public in the United Kingdom.

The earlier mark is a word mark, ‘Wild Frog’. The contested mark is a figurative mark, composed of the verbal element ‘Jumping’, depicted in green italic title case letters with purple and white borders, and ‘Frog’, depicted in slightly smaller italic title case letters in shades of golden yellow and brown with purple borders.

The applicant maintains that the coinciding element ‘FROG’ is of limited distinctiveness, since a large number of games have names containing this word. In support of its argument, the applicant refers to several names containing this word used for various electronic games, and it submitted extracts from several gaming websites. Moreover, the applicant maintains that several games, such as ‘FROGGER for SEGA’, ‘ROAD FROG’ and ‘FROG RUN’, were launched between 1981 and 1984, and nowadays the phrase ‘frog games’ indicates a plurality of games, a type of game in fact, all of them based on a frog. The applicant also submitted extracts from Wikipedia and the International Arcade Museum.

Firstly, it should be noted that there is no definition in any well-known English dictionary, such as the Collins, Oxford or Cambridge dictionaries, that defines the word ‘frog’ as identifying a specific game. The applicant did not submit any evidence in this regard, such as an extract from the relevant dictionary. Even the extracts from Wikipedia and the International Arcade Museum do not refer to the word ‘frog’ but to the word ‘frogger’.

Secondly, regarding the fact that there are several (online) games with frogs and containing the word ‘FROG’ in their names, it should be noted that extracts from the websites where the games are available do not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘FROG’ and will associate that word with a specific type of (online) game.

Therefore, contrary to the applicant’s arguments, the Opposition Division considers that the coinciding element ‘FROG’ will be understood by the relevant public, inter alia, as ‘a small creature with smooth skin, big eyes, and long back legs which it uses for jumping’ (information extracted from Collins Dictionary on 17/09/2018 at https://www.collinsdictionary.com/dictionary/english/frog). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive to an average degree.

Considering the meaning of the element ‘WILD’, namely that it refers, inter alia, to ‘animals in natural surroundings [that] are not looked after by people’ (information extracted from Collins Dictionary on 17/09/2018 at https://www.collinsdictionary.com/dictionary/english/wild), it can be concluded that the earlier mark will be perceived by the relevant public as referring to a small creature that lives in its natural habitat. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive to an average degree.

As regards the contested mark, considering the meaning of the verbal element ‘Jumping’, namely ‘something or somebody which deliberately pushes [you] into the air so that you drop towards the ground’ (information extracted from Collins Dictionary on 17/09/2018 at https://www.collinsdictionary.com/dictionary/english/jump), the relevant public will perceive the mark as referring to a small creature that is jumping. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive to an average degree.

Since the earlier mark is a word mark, it has no element that could be considered clearly more dominant than other elements.

As regards the contested sign, the applicant maintains that the verbal element ‘Frog’ of the contested mark is written in characters of a much smaller size than the element ‘Jumping’ and in addition it is in various shades of golden yellow and brown, which are less eye-catching than the green colour of the word ‘Jumping’. The Opposition Division agrees that the coinciding element, ‘FROG’, is depicted in slightly smaller letters in the contested mark, but it does not agree that its position is less dominant. Both verbal elements in the contested mark are depicted in the same style of italic title case letters and there is no reason why green should be considered more eye-catching than golden yellow and brown. Therefore, the Opposition Division considers that the contested mark has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the verbal element ‘FROG’. However, they differ in the verbal elements ‘WILD’ of the earlier mark and ‘JUMPING’ of the contested mark. The signs also differ in the colours and stylisation of the contested mark.

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

Aurally, the pronunciation of the signs coincides in the word ‛FROG’, present identically in both signs. The pronunciation differs in the sound of the letters ‛WILD’ of the earlier sign and ‘JUMPING’ of the contested mark.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

Although the applicant argues that there is no conceptual link between the signs, as ‘JUMPING FROG’ conjures up images typical of children’s tales, whereas ‘WILD FROG’ will be associated with wildlife in nature, it did not submit any evidence to support such a conclusion.

Therefore, as the signs will be associated with similar meanings, as both evoke the concept of a ‘frog’ and the remaining elements merely define a characteristic of the particular frog without changing the meaning of the word, the signs are conceptually similar to an average degree.

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 did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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 goods 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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

The goods are identical. The degree of attention of the relevant public, composed of the public at large and business customers, may vary from average to higher than average.

The signs have the word ‘FROG’ in common, which is distinctive to an average degree for all the relevant goods. The signs differ in the verbal elements ‘WILD’ of the earlier mark and ‘JUMPING’ of the contested mark. The signs also differ in the colours and stylisation of the contested mark.

Although more attention is usually paid to the beginning of a trade mark, in the present case, the conceptual similarity is decisive, as the marks refer to the same concept of a frog, and their first elements merely specify the characteristic of the particular frog: in the contested sign it is jumping and in the earlier mark it is a wild frog. On account of this conceptual link, it could be assumed that the marks simply identify different games from the same producer, in particular as the differing concepts of jumping and wild do not adequately distinguish the frogs from each other.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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, § 17).

In the present case, the identity between the goods offsets the average degree of visual, aural and conceptual similarity between the signs.

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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 797 758. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) 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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (formerly Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Michaela SIMANDLOVA

Francesca DRAGOSTIN

Rasa BARAKAUSKIENE

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.