OPPOSITION No B 2 926 569

O2 Worldwide Limited, 20 Air Street, W1B 5AN London, United Kingdom (opponent), represented by Stobbs, Building 1000, Cambridge Research Park, CB25 9PD Cambridge, United Kingdom (professional representative)

a g a i n s t

Zero Seven Gaming Limited, 170, Pater House, Level 1 (Suite A184), Psaila Stree, BKR 9077 Birkirkara, Malta (applicant), represented by Christina Sillato Warrington, 170 Pater House, Psaila Street, Birkirkara, Malta (professional representative).

On 29/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 926 569 is upheld for all the contested services.

2. European Union trade mark application No 16 671 711 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 671 711 for the word mark ‘Guru.Casino’. The opposition is based on, inter alia, European Union trade mark registration No 10 245 942 for the word mark ‘GURU TV’. The opponent invoked Articles 8(1)(b) and 8(5) EUTMR in relation to this earlier right. In relation to the remaining earlier rights, the opponent also invoked Articles 8(1)(b) and 8(5)EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

On 21/06/2018 the applicant, within its observations filed with the Office, requested the opponent to submit the proof of use of its earlier marks on which the present opposition is based.

In the present case, the applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 European Union trade mark registration No 10 245 942.

1. The services

According to the notice of opposition, the opponent wished to base its opposition on all the goods and services for which the earlier EUTM No 10 245 942 is registered. Therefore, the services on which the opposition is based are, inter alia, the following:

Class 41: Education; providing of training; entertainment; sporting and cultural activities; interactive entertainment services; electronic games services provided by means of any communications network; entertainment services provided by means of telecommunication networks; information services relating to education, training, entertainment, sporting and cultural activities provided by means of telecommunication networks; provision of news information; television production services, television programming services; television production and television programming services provided by means of Internet protocol technology; provision of entertainment by means of television and Internet protocol television; provision of musical events; entertainment club services; discotheque services; presentation of live performances; night clubs; rental of music venues and stadiums; casino services; information and advisory services relating to the aforesaid; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network; Booking of seats for shows; books (publication of-); calligraphy services; digital imaging services; diving equipment (rental of skin-); education information; electronic desktop publishing; entertainment information; information (education-); information (entertainment-); information (recreation-); interpretation (sign language-); layout services, other than for advertising purposes; microfilming; modelling for artists; movie projectors and accessories (rental of-); providing on-line electronic publications [not downloadable]; providing on-line electronic publications, not downloadable; publication of books; publication of electronic books and journals on-line; publication of texts [other than publicity texts]; publication of texts, other than publicity texts; radio and television sets (rental of-); recorders (rental of video cassette-); recreation information; rental of audio equipment; rental of camcorders; rental of lighting apparatus for theatrical sets or television studios; rental of movie projectors and accessories; rental of radio and television sets; rental of show scenery; rental of skin diving equipment; rental of sports equipment [except vehicles]; rental of sports equipment, except vehicles; rental of stage scenery; rental of video cameras; rental of video cassette recorders; show scenery (rental of-); sign language interpretation; sports equipment (rental of-) [except vehicles]; sports equipment (rental of-), except vehicles; sports events (timing of-); stage scenery (rental of-); television sets (rental of radio and-); texts (publication of-), other than publicity texts; ticket agency services [entertainment]; timing of sports events; translation; videotaping.

The contested services are the following:

Class 41: Online gaming services; Information relating to computer gaming entertainment provided online from a computer database or a global communication network; Gambling services; Betting services; Casino services; Casino, gaming and gambling services; Providing casino facilities; Providing casino facilities [gambling]; Providing of casino and gaming facilities; Online casino services; Online gambling services; Gambling; Casino facilities [gambling] (Providing -).

The contested Online gaming services; Gambling services; Betting services; Casino services; Casino, gaming and gambling services; Providing casino facilities; Providing casino facilities [gambling]; Providing of casino and gaming facilities; Online casino services; Online gambling services; Gambling; Casino facilities [gambling] (Providing -) are included in, or overlap with, the opponent’s interactive entertainment services. Therefore, they are identical.

The remaining contested Information relating to computer gaming entertainment provided online from a computer database or a global communication network overlaps with the opponent’s information (entertainment-). Consequently, these services 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 services found to be identical are directed at the public at large. Since the services in question may have important financial consequences for their users, their degree of attention may vary from average to high, depending on the specialised nature of services, the frequency of their purchase and their price.

3. The signs

GURU TV	Guru.Casino
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 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 the signs 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.

Both marks are word marks. The earlier mark is registered for ‘GURU TV’ and the contested sign applies for ‘Guru.Casino’. Therefore, it is immaterial whether they are depicted in upper- or- lowercase letters or a combination thereof. For the same reasons they do not have element/s which is/are more dominant than the others.

The applicant argues that the word ‘GURU’ present in both signs is commonly used and insists on the fact that the terms ‘GURU’ and ‘TV’ of the earlier mark and ‘Guru’ and ‘Casino’ of the contested sign create full word marks and they will be understood in their entirety. However, in this regard, the Opposition Division notes that the signs in their entirety do not convey any clear meaning and, therefore, they will be regarded by the English-speaking consumers as a conjunction of two meaningful elements. Additionally, the punctuation mark (the full stop) placed in the middle of the contested sign confirms this finding.

Accordingly, the term ‘GURU’ present in both signs will be understood as ‘a person who some people regard as an expert or leader or a religious and spiritual leader and teacher’ (information obtained from Collins English Dictionary on 24/01/2019 at https://www.collinsdictionary.com/dictionary/english/guru) by the relevant public. As it is not by itself descriptive, allusive or otherwise weak for the relevant services, it is distinctive.

The second element ‘TV’ of the earlier mark will be associated with ‘television’. Bearing in mind the relevant opponent’s services in Class 41, in particular, information (entertainment-); interactive entertainment services, including digital equipment like smart TVs, it is considered that this element is weak for them.

The word ‘Casino’ of the contested sign will be associated with a building or room where people play gambling games such as roulette (information obtained from Collins English Dictionary on 24/01/2019 at https://www.collinsdictionary.com/dictionary/english/casino). Taking into consideration that all the contested services refer sensu stricto to various casino services, the term ‘Casino’ is non-distinctive in relation to them.

Visually and aurally, the signs coincide in the distinctive element ‘GURU’ present at their beginning. This aspect is of a great important because consumers generally tend to focus on the first element of a sign when being confronted with 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.

The signs differ in their elements occupying the second position within the signs, ‘TV’ and ‘Casino’ respectively, and which have been considered to be weak and non-distinctive for all the opponent’s services and all the contested services. Therefore, they will have a limited impact on the relevant public when assessing the degree of similarity between the signs. It is highly likely that the full stop sign placed in the middle of the contested sign will go unnoticed to the relevant public as far as the visual and aural comparison is concerned. Bearing this in mind, the signs are considered visually and aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with a similar meaning due to the main coincidence in the distinctive element ‘GURU’. The elements occupying a second position within the signs, ‘TV’ of the earlier mark and ‘Casino’ of the contested sign, will be given less importance by the consumers as an indicator of commercial origin in relation to the relevant services due to their limited distinctiveness, as explained above. Consequently, consumers will afford more trade mark significance to the first and distinctive element of the signs ‘GURU’ and this coincidence generates a high degree of conceptual similarity between the signs.

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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global Assessment’).

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 weak element for all the relevant services, as stated above in section c) of this decision.

e) 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, Sabel, EU:C:1997:528, § 22.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

In the present case, the conflicting services have been found identical.

The earlier mark enjoys an average degree of distinctiveness.

The signs are visually, aurally and conceptually similar to a high degree. As correctly argued by the opponent, the main similarity between the signs results from the fact that they contain the identical term ‘GURU’ at their beginnings. The differences between the signs are limited to the additional elements ‘TV’ of the earlier mark and ‘Casino’ of the contested mark which, as mentioned above, have been found weak and non-distinctive in relation to all the relevant services. Therefore, the coincidences in the first element of the signs has a stronger impact for the public, as this is, usually, the part of the signs that first catches the attention of consumers.

Additionally, the coinciding element in question, ‘GURU’, is normally distinctive for all the relevant services. Therefore, the relevant English-speaking consumers might legitimately assume that the contested sign is a new version or brand-line, originating from the same undertaking responsible for the ‘GURU’ goods and services branded under the earlier mark.

Account should also be taken of the normal degree of distinctiveness of the earlier mark and the fact that average consumers only 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).

Furthermore, the global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). This principle applies to the present case because, as mentioned above, the services in question are identical.

Therefore, taking into account the aforementioned, and in particular interdependence principle, it is considered that there is a strong coincidence between the signs with a decisive impact. The similarities pointed out above are clearly enough to outweigh the differences between the signs and they are likely to lead the relevant public to believe that the conflicting identical services come from the same undertaking or economically linked undertakings, despite a possible higher level of attention for some of the relevant services.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. Among others, the applicant quotes the following decisions: No B 2 177 437 PALOMA (word mark) v PALOMA (word mark), No B 180 481 MILES (word mark) v MILESTONE (word mark), No B 233 454 TAPAS (figurative mark) v TAPARICA (figurative mark).

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. As mentioned by the applicant in the observations, the above-mentioned oppositions have been either rejected in their entirety because of the dissimilarities of goods and services (e.g. B 2 177 437 PALOMA (word mark) v PALOMA (word mark)), or there was no likelihood of confusion found because of the clear visual, aural and conceptual dissimilarities between the signs (e.g. B 180 481 MILES (word mark) v MILESTONE (word mark)).

As explained above, in the present case, the signs are visually, aurally and conceptually similar to a high degree due to their first, common and distinctive element ‘GURU’, whereas the differences between the signs are limited to the elements which are either weak or non-distinctive in relation to the relevant services.

Considering all the above, there is a likelihood of confusion, including a likelihood of association on 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 10 245 942. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier European Union trade mark registration No 10 245 942, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark registration No 10 245 942 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 grounds of the opposition, namely Article 8(5) 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 (former 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.

The Opposition Division

Marta GARCÍA COLLADO

Monika CISZEWSKA

Carlos MATEO PÉREZ

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.