OPPOSITION No B 2 919 952

Bluff International Ltd., Ingles Manor, Castle Hill Avenue, Folkestone, CT20 2RD, United Kingdom (opponent)

a g a i n s t

Michael Caselli, 271A Kensington High Street, London, W8 6BD, United Kingdom (applicant), represented by Bristows LLP, 100 Victoria Embankment, London, EC4Y 0DH, United Kingdom (professional representative).

On 02/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 919 952 is partially upheld, namely for the following contested goods and services:

Class 9: Computer software; computer software downloadable from the Internet; computer software for gaming, gambling and competitions; computer software for the provision and management of on-line games, including games involving gambling and competitions; computer software for gaming machines and gambling machines; computer games and electronic games, including games involving gambling and competitions; interactive computer programmes and computer games; electronic and computer hardware and apparatus relating to gaming, gambling and competitions, other than gaming machines for gambling; electronic publications and electronic information provided online and downloadable from the Internet, a computer database or other telecommunications networks; electronic publications and electronic information provided online and downloadable from the Internet, a computer database or other telecommunications networks relating to gaming, gambling, entertainment, sports entertainment and sports results services; computer software for creating searchable databases of information and data; computer software for the collection, editing, organisation, storage and transmission of information and data.

Class 16: Printed publications; magazines; books; newsletters; instructional and teaching materials; stationery; note pads; pens; pencils.

Class 28: Games; games involving gambling; casino games; poker chips; articles and apparatus for use in games, including games involving gambling, casino games and games being competitions; board games; card games; scratch cards for playing lottery games; dice games; coin-operated games; playing cards; dice; articles and apparatus for use in board games, card games, dice games and coin-operated games.

Class 41: Arranging, organising, provision, management and administration of entertainment services; entertainment services; provision of online publications (non-downloadable); presentation and production of poker competitions, tournaments, games and gaming; provision of the aforesaid services in electronic or computerised form; publishing services; electronic publishing services; provision of information and provision of information online relating to entertainment services; provision of information relating to all the aforesaid services; provision of information relating to entertainment services; provision of the aforesaid services online from the Internet, a computer database or other telecommunications networks.

2. European Union trade mark application No 16 431 413 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 431 413, for the figurative sign , namely against all the goods and services in Classes 9, 16, 28 and 41. The opposition is based on Benelux trade mark registration No 983 537, for the word mark ‘BLUFF’. 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.

1. The goods and services

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

Class 9: Computer hardware; computer software; computer peripherals; electronic data processing equipment; computer networking and data communications equipment; computer components and parts.

Class 16: Printed publications; books; music sheets; music scores; periodical magazines; printed matter; photographs; stationery.

Class 41: Production of radio and television shows and programmes; film production services; film distribution; provision of non-downloadable films and television programs via a video-on- demand service.

The contested goods and services are the following:

Class 9: Computer software; computer software downloadable from the Internet; computer software for gaming, gambling and competitions; computer software for the provision and management of on-line games, including games involving gambling and competitions; computer software for gaming machines and gambling machines; computer games and electronic games, including games involving gambling and competitions; interactive computer programmes and computer games; electronic and computer hardware and apparatus relating to gaming, gambling and competitions, other than gaming machines for gambling; electronic publications and electronic information provided online and downloadable from the Internet, a computer database or other telecommunications networks; electronic publications and electronic information provided online and downloadable from the Internet, a computer database or other telecommunications networks relating to gaming, gambling, entertainment, sports entertainment and sports results services; computer software for creating searchable databases of information and data; computer software for the collection, editing, organisation, storage and transmission of information and data.

Class 16: Printed publications; magazines; books; newsletters; instructional and teaching materials; stationery; note pads; pens; pencils; beer mats of paper.

Class 28: Games; games involving gambling; casino games; poker chips; articles and apparatus for use in games, including games involving gambling, casino games and games being competitions; board games; card games; scratch cards for playing lottery games; dice games; coin-operated games; playing cards; dice; articles and apparatus for use in board games, card games, dice games and coin-operated games.

Class 41: Arranging, organising, provision, management and administration of gaming, gambling and entertainment services; gaming services; gambling services; casino services; interactive gaming, gambling and casino services; entertainment services; provision of online publications (non-downloadable); pay to play games services; peer to peer interactive games and gaming services; interactive poker games and gaming including single and multi player gaming formats; presentation and production of poker competitions, tournaments, games and gaming; educational or entertainment games played online; information services relating to sports odds and sports results; provision of the aforesaid services in electronic or computerised form; publishing services; electronic publishing services; provision of information and provision of information online relating to gaming, gambling and entertainment services; provision of information relating to all the aforesaid services; provision of information relating to sport and to entertainment services; provision of the aforesaid services online from the Internet, a computer database or other telecommunications networks.

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

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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under 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

Computer software and computer hardware are identically contained in both lists of goods (including synonyms).

The contested computer software downloadable from the Internet; computer software for gaming, gambling and competitions; computer software for the provision and management of on-line games, including games involving gambling and competitions; computer software for gaming machines; computer games and electronic games, including games involving gambling and competitions; interactive computer programmes and computer games; computer software for creating searchable databases of information and data; computer software for the collection, editing, organisation, storage and transmission of information and data are included in the broad category of, or overlap with, the opponent’s computer software. Therefore, they are identical.

The contested apparatus relating to gaming, gambling and competitions, other than gaming machines for gambling overlaps with the opponent’s computer peripherals, as the contested goods include equipment such as specific joysticks, remote controls, etc., which are computer peripherals. Therefore, they are identical.

The contested gambling machines; electronic hardware overlaps with the opponent’s computer hardware. Therefore, they are identical.

The contested electronic publications and electronic information provided online and downloadable from the Internet, a computer database or other telecommunications networks; electronic publications and electronic information provided online and downloadable from the Internet, a computer database or other telecommunications networks relating to gaming, gambling, entertainment, sports entertainment and sports results services are similar to the opponent’s computer software because they have the same distribution channels. Moreover, they have the same producers and target the same relevant public. In addition, they are considered complementary.

Contested goods in Class 16

Printed publications; books and stationery are identically contained in both lists of goods.

The contested magazines include, as a broader category, the opponent’s periodical magazines. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested newsletters; instructional and teaching materials are included in, or overlap with, the opponent’s printed matter. Therefore, they are identical.

The contested note pads; pens; pencils are included in the broad category of the opponent’s stationery. Therefore, they are identical.

The contested beer mats of paper are dissimilar to the opponent’s goods and services in Classes 9, 16 and 41. The contested goods are very specific. Even if they may have the same nature as some of the opponent’s goods in Class 16, they do not have the same purpose, method of use or distribution channels. The end users and producers or providers of the goods and services under comparison are also different. Moreover, they are not complementary or in competition.

Contested goods in Class 28

The contested games; games involving gambling; casino games; poker chips; articles and apparatus for use in games, including games involving gambling, casino games and games being competitions; board games; card games; scratch cards for playing lottery games; dice games; coin-operated games; playing cards; dice; articles and apparatus for use in board games, card games, dice games and coin-operated games are similar to the opponent’s computer hardware and computer software in Class 9. The Court has found that these goods are complementary inasmuch as the software and hardware in Class 9 are essential for the functioning of the electronic or online games of chance. Furthermore, it stated that the nature of the opponent’s goods is the same as that of electronic or online games of chance and they may have the same distribution and manufacturing channels. Furthermore, since the hardware and software can be intended for gaming, they may be used in the same establishments as those in which games of chance are kept, namely casinos and amusement arcades, and may be purchased by the same professionals (19/04/2016, T‑326/14, HOT JOKER / JOKER et al., EU:T:2016:221, § 54).

Contested services in Class 41

The contested arranging, organising, provision, management and administration of entertainment services; entertainment services; provision of the aforesaid services in electronic or computerised form; provision of information and provision of information online relating to entertainment services; provision of information relating to all the aforesaid services; provision of information relating to entertainment services; provision of the aforesaid services online from the Internet, a computer database or other telecommunications networks are similar to the opponent’s production of television shows, because the purpose of the opponent’s services is to entertain viewers watching TV shows online. Therefore, their end users and their providers are the same.

The contested presentation and production of poker competitions, tournaments, games and gaming; provision of the aforesaid services in electronic or computerised form; provision of information relating to all the aforesaid services; provision of the aforesaid services online from the Internet, a computer database or other telecommunications networks are similar to the opponent’s production of television shows because the contested services can be filmed. Therefore, their purpose, end users and providers may be the same, as well as their distribution channels.

The contested provision of online publications (non-downloadable); provision of the aforesaid services in electronic or computerised form; publishing services; electronic publishing; provision of information relating to all the aforesaid services; provision of the aforesaid services online from the Internet, a computer database or other telecommunications networks are similar to the opponent’s computer software in Class 9. Even if they are of different natures, they have similar purposes. Moreover, they target the same relevant public and often they have the same producers/providers.

The contested arranging, organising, provision, management and administration of gaming and gambling services; gaming services; gambling services; casino services; interactive gaming, gambling and casino services; pay to play games services; peer to peer interactive games and gaming services; interactive poker games and gaming including single and multi player gaming formats; educational or entertainment games played online; information services relating to sports odds and sports results; provision of the aforesaid services in electronic or computerised form; provision of information and provision of information online relating to gaming and gambling services; provision of information relating to all the aforesaid services; provision of information relating to sport; provision of the aforesaid services online from the Internet, a computer database or other telecommunications networks are related to gambling, gaming and sport. They refer to the activity of offering betting money, for example in casinos and betting shops (e.g. betting on sport games, etc.).

The opponent’s services in Class 41 are related to the radio and audiovisual sectors. In addition to their different natures, purposes and methods of use, the abovementioned contested services and the opponent’s services do not have the same relevant public, distribution channels or providers. Moreover, they are not in competition or complementary. Therefore, they are clearly dissimilar. The same reasoning applies when comparing the contested services with the opponent’s goods in Class 16 (printed matter and stationery).

As regards the opponent’s goods in Class 9, in particular computer software, even if they can be used to access the contested services, this alone would not be conclusive for a finding of similarity between the goods and services. The opponent’s goods have an ancillary character, in that they are mere tools providing technical support for the services concerned. These goods and services are far removed from each other, since their production and provision require different specific areas of expertise. The opponent’s goods and the contested services clearly differ in their natures, producers/providers and distribution channels. Consumers will not think that responsibility for the production of these goods or provision of these services lies with the same undertaking. The goods and services in question are not in competition.

Therefore, as correctly held by the applicant, the abovementioned contested services are dissimilar to the opponent’s goods and services in Classes 9, 16 and 41.

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 or similar are directed at the public at large and at business consumers with specific professional knowledge or expertise.

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

BLUFF
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 word ‘BLUFF’, present in both signs, will be understood by the relevant public as the action of bluffing at cards, in particular in the game of poker. Bearing in mind the goods and services at issue, this word is weak for the goods and services related to poker and playing cards in general. The word has a normal degree of distinctiveness in relation to the other goods and services (e.g. computer software, publishing services).

The earlier mark is a single-word mark, ‘BLUFF’.

The contested sign is a figurative mark in black with the word element ‘BLUFF’ depicted in bold upper case letters. To the left of this element, there is a figurative element depicting a deck of cards, the first visible card on the top being an ace of spades.

As regards the figurative element in the contested sign, the deck of cards is non‑distinctive in relation to all the goods and services involving a deck of cards (e.g. playing cards, card games). For the remaining goods and services with no relation to playing cards, this element is distinctive.

Moreover, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the verbal element ‘BLUFF’ of the contested sign has more impact on consumers than its figurative element.

There is no element that can be considered more dominant in the contested sign.

Visually, the signs coincide in the word element ‘BLUFF’, which is the sole verbal element of the contested sign and the sole element of the earlier mark. However, they differ in the figurative element of the contested sign.

As explained above, the verbal element of the contested sign has more impact on the consumer than its figurative element.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘BLUFF’, which constitute the sole verbal element of the contested sign and the entire earlier mark. Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the same meaning but the contested sign contains an additional meaning, 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 claimed that the earlier trade mark enjoys enhanced 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for some of the goods and services in question, that is for goods and services related to playing cards and poker. The mark has a normal degree of distinctiveness for the remaining goods and services in relation to which it has no meaning from the perspective of the public in the relevant territory.

5. Global assessment, other arguments and conclusion

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 goods and services found to be identical or similar are directed at the public at large and business consumers. The degree of attention will vary from average to high.

The signs are aurally identical, visually highly similar and conceptually similar to an average degree. The earlier mark’s distinctiveness is low in relation to goods and services related to playing cards and poker, and normal for the remaining goods and services.

The verbal element of the contested sign is weak in relation to the same goods and services as the earlier mark. Moreover, for these goods and services, the figurative element of the contested sign is non-distinctive, as it is the depiction of a deck of cards. Therefore, the verbal element ‘BLUFF’ of the contested sign is the most distinctive part of the sign in all scenarios.

Moreover, the earlier mark is fully reproduced in the contested sign. As a rule, when the earlier trade mark is wholly incorporated in the contested sign and performs an independent and distinctive role therein, this is an indication that the two signs are similar (13/06/2012, T‑519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T‑260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T‑179/11, Seven Summits, EU:T:2012:254, § 26).

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54). Therefore, the sole difference between the signs, namely the additional figurative element of the contested sign, is clearly not sufficient to avoid a likelihood of confusion between the marks.

In that context, it should be noted that, although the distinctive character of the earlier mark must be taken into account for the purposes of assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Accordingly, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered. Granting excessive importance to the fact that the earlier mark has only a weak distinctive character would have the effect that the similarity of the marks at issue would be disregarded in favour of the distinctive character of the earlier mark. As the contested sign reproduces the entire earlier mark, the similarities between the signs and the goods and services at issue outweigh the fact that the earlier mark is weak for some of the goods and services.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Benelux trade mark registration No 983 537.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Marta GARCÍA COLLADO

Cindy BAREL

Eva Inés PÉREZ SANTONJA

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.