OPPOSITION No B 3 052 883

Sazka a.s., K Žižkovu 851, 190 93, Prague 9, Czechia (opponent), represented by Halaxová & Halaxová, Tetrapat, Jinonická 80, 158 00 Prague,
Czechia (professional representative)

a g a i n s t

Cavour Limited, Sovereign House, 14-16 Nelson Street, Douglas IM1 2AL,
Isle of Man, (applicant), represented by Grau Rechtsanwälte, Wilhelmstraße 16,
65185 Wiesbaden, Germany (professional representative).

On 20/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 883 is partly upheld, namely for all contested services in Class 35 (in its entirety).

2. European Union trade mark application No 17 203 902 is rejected for all the services in Class 35. It may proceed for the remaining services in Class 41.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services (in Classes 35 and 41) of European Union trade mark application No 17 203 902 (word mark: ‘Keno 24/7’). The opposition is based on the following earlier Czechia trade mark registrations:

 Nr. 207 414 (word mark: ‘KENO SAZKA’);

 Nr. 247 099 (word mark: ‘WWW.KENO.CZ‘);

 Nr. 356 199 (word mark: ‘KENO EXPRESS’).

The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION of earlier Czechia trade mark registration No 356 199

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

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

According to Article 7(4) EUTMDR, any filing, registration or renewal certificates or equivalent documents referred to in Article 7(2)(a), (d) or (e) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document.

According to Article 25(1) EUTMIR, when a translation of a document is to be filed, the translation must identify the document to which it refers and reproduce the structure and contents of the original document. Furthermore, according to the same provision, where a party has indicated that only parts of the document are relevant, the translation may be limited to those parts.

In the present case, the evidence filed by the opponent is not completely in the language of the proceedings.

The opponent filed, together with the opposition in the foreseen form, all the relevant data in the language of the proceedings with the exception of a translation of the list of services in Class 41.

On 14/06/2018 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit expired on 19/10/2018. The opponent did not submit the necessary translation.

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

It follows that the evidence filed by the opponent cannot be taken into account.

According to Article 8(1) and (7) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

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

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

a) The services

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

Czechia trade mark registration No 207 414

Class 41: Public prosecution of betting games.

Czechia trade mark registration No 247 099

Class 35: Advertisement activities, administration work, automated data processing.

The contested services in Classes 35 and 41 are the following (after applicant´s limitation in the letter of 10/07/2018):

Class 35: Business analysis, research and information services; business assistance, management and administrative services.

Class 41: Education services.

The relevant factors relating to the comparison of services include, inter alia, the nature and purpose of the 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 services in Class 35

The contested administrative services overlap with the opponent’s administration work in earlier Czechia trade mark registration No 247 099. Therefore, they are identical.

The remaining contested business analysis, research and information services; business assistance, management are similar to a low degree to advertisement activities in earlier Czechia trade mark registration No 247 099 as they have the same purpose. They usually coincide in producer and relevant public.

Contested services in Class 41

The contested education services have different natures and purposes from the opponent’s services. Furthermore, these contested services are neither complementary to nor in competition with the opponent’s services. Their distribution channels and methods of use are also different. Consumers would not think that these services come from the same undertaking or economically linked undertakings. Therefore, they are dissimilar.

b) Relevant public – degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical or similar to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness is average.

c) The signs

WWW.KENO.CZ	Keno 24/7
Earlier trade mark	Contested sign

The relevant territory is Czechia.

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).

Both signs are word marks, which are protected in all different typefaces.

The elements ‘WWW.’ and the top level domain ‘.CZ’ of the earlier trade mark are non-distinctive as common elements within an internet address.

The same applies for the element ‘24/7’ in the contested sign which just indicates that the services can be used at any time.

The common element ‘KENO’ of both signs will be understood by a part of the public as a gambling game, originally from the Chinese Empire. Since it has no meaning for the services, it is distinctive.

Visually and aurally, the signs coincide in their common element ‘KENO’. Since the other elements are non-distinctive, they cannot influence the outcome in a relevant manner. Therefore, the signs are visually and aurally similar to a high degree.

Conceptually, the above cited non-distinctive elements cannot influence the outcome in a relevant manner. The signs have the same concept if the common element ‘KENO’ is understood in the above cited sense; otherwise the outcome of the conceptual comparison is neutral.

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.

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 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 some non-distinctive elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; and 30/06/2004, T‑186/02, Dieselit, EU:C:2011:238, § 38).

The contested services are partly identical, partly similar to a low degree and partly dissimilar.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the services in Class 41 are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected in regard to those services.

Taking into account the high degree of visual and aural similarity, the neutral outcome of conceptual comparison (for part of the public), the not more than average degree of attention of the public, the average degree of distinctiveness of the earlier trade mark and the identity and similarity between the services, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld. This also applies for the services which are only similar to a low degree because of the relevant visual and aural similarities between the signs. This applies even more for the public understanding the signs with the same meaning.

The applicant has not submitted any observations. Therefore, its arguments cannot be examined.

Therefore, the opposition is partly well founded under Article 8(1)(b) 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. 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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Lars HELBERT

Peter QUAY

Gonzalo BILBAO TEJADA

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.