OPPOSITION No B 2 989 757

Blizzard Entertainment, Inc., 16215 Alton Parkway, Irvine, California 92618, United States of America (opponent), represented by FRKelly, 27 Clyde Road, Ballsbridge, Dublin 4, Ireland (professional representative)

a g a i n s t

Octagon Studio, Lohort Castle, Cecilstown, Cork, Ireland (applicant).

On 20/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 989 757 is upheld for all the contested goods.

2. European Union trade mark application No 17 067 307 is rejected in its entirety.

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

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 all the goods of European Union trade mark application No 17 067 307 . The opposition is based on, inter alia, European Union trade mark registration No 12 140 307 ‘WOW’. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 12 140 307.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 9: Computer game software, computer game discs, downloadable computer game software, computer game software downloadable from a global computer network, downloadable electronic games via the internet and wireless devices, interactive multimedia computer game program; all of the aforesaid goods related to video games, electronic games, computer games and interactive entertainment; none of the aforesaid goods being for use in connection with cosmetics or hair care or being for use with either cosmetics or hair care materials.

Class 16: Printed matter, namely, comic books, strategy guides, trading cards, manuals for computer games, coloring books, adhesive stickers, rub-on transfers, notebooks, stationery-type portfolios, posters, greeting cards, calendars, instructional leaflets, advertisement boards of paper or cardboard, catalogues, photographs, art prints.

The contested goods are the following:

Class 9: Augmented reality software; augmented reality software for use in mobile devices; augmented reality software for use in mobile devices for integrating electronic data with real world environments.

Class 16: Stickers; sticker books; sticker albums; cards; collectable cards; greetings cards; birthday cards; trading cards; collectable trading cards.

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

The contested augmented reality software; augmented reality software for use in mobile devices; augmented reality software for use in mobile devices for integrating electronic data with real world environments overlap with the opponent’s computer game software; none of the aforesaid goods being for use in connection with cosmetics or hair care or being for use with either cosmetics or hair care materials, as these goods could be augmented reality computer game software (not related to cosmetics or hair care). Therefore, they are identical.

Contested goods in Class 16

Trading cards; greetings cards; stickers are identically contained in both lists of goods (including synonyms). Therefore, they are identical.

The contested collectable trading cards are included in the broad category of the opponent’s trading cards. Therefore, they are identical.

The contested birthday cards are included in the broad category of the opponent’s greeting cards. Therefore, they are identical.

The contested cards include as a broader category the opponent’s trading cards. 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 collectable cards overlap with the opponent’s trading cards, as they might both be collectable trading cards. 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 sticker books; sticker albums are books in which are kept, inter alia, sticker collections. These contested goods are therefore at least similar to the opponent’s adhesive stickers, as they usually have the same producers, relevant public and distribution channels. Furthermore, they are complementary.

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 or at least similar are directed at the public at large as well as at business customers with specific professional knowledge or expertise in the IT sector. The degree of attention is considered to vary from average to higher than average depending on the specialised nature of the relevant goods.

3. The signs

WOW
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.

The coinciding element ‘WOW’ is meaningful (and could therefore be less distinctive) in certain territories, for example in those countries where English is commonly understood, where it would be perceived as an expression evoking, inter alia, surprise or amazement. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that would not perceive a meaning in it, for instance the Spanish-speaking part of the public. For this part of the public, the verbal element ‘WOW’ is meaningless and therefore distinctive, resulting in the greater distinguishing power of the coinciding element and possibly a greater likelihood of confusion.

The element ‘4D’ of the contested trade mark will be perceived by the relevant public as an abbreviation of ‘four-dimensional’ (or its corresponding translations in other languages, such as ‘cuatro dimensiones’ in Spanish), indicating, inter alia, an entertainment system combining 3D effects with physical effects such as rain, wind, temperature changes, strobe lights and vibrations. Bearing in mind that the relevant goods are augmented reality software and cards, stickers and albums, this element is non-distinctive for all the relevant goods, as it brings to mind one of the characteristics of the software, that is, that it reproduces an augmented four-dimensional reality, or of the cards, stickers and albums, namely that they relate to augmented reality technologies or are meant to be used with such technologies. Moreover, the symbol, ‘+’, that follows the element ‘4D’ is likely to be perceived as meaning ‘plus’, thus merely indicating the high quality of the 4D system referred to or that is a ‘new version’, and this element is, therefore, non-distinctive.

The element ‘WOW’ of the contested mark consists of bold slightly stylised characters; a stylised depiction of an eye is placed within the letter ‘O’ of the word ‘WOW’. However, the degree of distinctiveness of the figurative element (the eye) is considered lower than average in relation to all the relevant goods, as it could be perceived as alluding to the augmented visual experience of using the relevant goods. The letter ‘O’ is also underlined with a decorative stroke, the distinctiveness of which is also limited. Moreover, it also has to be borne in mind that 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).

The element ‘WOW’ and the depiction of an eye in the contested sign are the dominant elements, as they are the most eye-catching.

Visually and aurally, the signs coincide in the element (and its sound) ‘WOW’. However, they differ in the sequence ‘4D+’ and, visually, in the graphic depiction of the contested sign.

Therefore, also taking into account the abovementioned principles and the assessment of the distinctiveness of the elements of the signs, the marks are visually and aurally similar to above average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. In particular, the relevant public will perceive the meaning of the contested sign’s figurative element depicting an eye and also the meaning of the sequence ‘4D+’. Since the earlier mark will not be associated with any meaning, the signs are not conceptually similar.

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 relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on several elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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.

In the present case, the goods are identical or at least similar. They target both the general public and professionals; the public’s degree of attention may vary from average to higher than average.

The conflicting marks are visually and aurally similar to above average degree. In particular, the earlier trade mark’s sole verbal element, ‘WOW’, is entirely reproduced in the contested sign’s distinctive and dominant element.

The differences between the signs lie in the secondary and descriptive element ‘4D+’ and in the graphic depiction of the contested sign, which is of limited distinctiveness.

Taking all the above into account, the Opposition Division considers that the differences between the signs are clearly not sufficient to outweigh the similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical or at least similar goods, is likely to think that they come from the same undertaking or from economically linked undertakings, even when the degree of attention is above average. In particular, it is highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark configured in a different way (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), for example to commercialise a line of products related to four-dimensional experiences.

Considering all the above, there is a likelihood of confusion on the part of the public for which the element ‘WOW’ has no meaning, such as the Spanish-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 12 140 307. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier European Union trade mark registration No 12 140 307 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 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

Paloma PERTUSA MARTÍNEZ

Aldo BLASI

Irina SOTIROVA

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.