OPPOSITION No B 3 048 781

Magus Creativa Europe S.L., C/. Julio Rey Pastor, 17, 28702, San Sebastian de los Reyes, Madrid, Spain (opponent), represented by J. Lahidalga, Calle Arturo Soria, 243 Dpl. Esc. 4-1º Izd., 28033, Madrid, Spain (professional representative)

a g a i n s t

Everywear Games Oy, Mannerheimintie 12 B, 00100 Helsinki, Finland (applicant), represented by Asianajotoimisto Bird & Bird Oy, Mannerheimintie 8, 00100 Helsinki, Finland (professional representative).

On 26/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 781 is partially upheld, namely for the following contested goods and services:

Class 9: Computer programs; Application software; Computer programs downloadable from the internet; Games software; Games software; Games software; Downloadable electronic game programs; Downloadable or recorded computer game programs; Downloadable computer programs and computer game programs; Games software and games programs downloadable from the internet; Computer software and game programs downloadable from global computer networks; Computer software and game programs for use as application programming interface; Programs and software and games programs for smart phones, smart watches, smart clothing and mobile devices; Software for online gaming.

Class 41: Provision of on-line computer games; Providing on-line computer games via a computer database; Providing of mobile games by means of computer-based systems; Providing interactive social mobile games in a virtual environment; Providing interactive multi-player computer games via the internet and electronic communication networks.

2. European Union trade mark application No 17 545 104 is rejected for all the above goods and services. It may proceed for the remaining 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 17 545 104 ‘MICROPOLIS’ (word). The opposition is based on, inter alia, European Union trade mark registration No 10 729 382 . The opponent invoked Article 8(1)(a) and (b) and Article 8(6) EUTMR.

SUBSTANTIATION

The opponent based also its opposition on protected geographical indication ‘MICROPOLIX’ in Spain for the following goods and services:

Class 28: Games and toys; gymnastics and sports articles not included in other classes.

Class 35: Advertising; sale of items wholesale and retail and through global computer networks, business management.

Class 41: Education; training; entertainment services; sports and cultural activities.

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 protected designation of origin or protected geographical indication, the opposing party must submit evidence of the existence, validity and scope of protection of the earlier right. It must further show that it may prohibit the use of a subsequent trade mark. To prove the existence, validity and scope of protection of the earlier right, the opponent must submit pertinent documents emanating from the competent authority proving the application for, or the registration or grant (if the protected designation of origin or protected geographical indication was granted through administrative means other than registration) of, the right in question. Furthermore, to prove that the opponent is entitled to prohibit use of a subsequent trade mark under the relevant law, it must provide reference to and wording of any national law on which it bases its case. The wording is not required if the opposition is based on European Union legislation. The opponent must also prove that the case fulfils all the conditions under the relevant provisions.

Where the evidence concerning the filing or registration of the earlier protected designations of origin, protected geographical indications or the evidence concerning the content of the relevant national law is accessible from a source recognised by the Office, the opponent may provide such evidence by making a reference to that source. All of the official publications, national databases are acceptable to the extent that they originate from the Government or official body of the respective Member State, if they are publically accessible and free of charge. In addition, references to all of the EU official databases online are accepted (CPVO, E-Bacchus, E-Spirits, E-door, etc.).

In the present case, the notice of opposition was not accompanied by any evidence as regards the earlier protected geographical indication on which the opposition is based. The opponent provided a link to a Spanish Patent and Trade Mark Office search http://consultas2.oepm.es/ceo/jsp/busqueda/busqRapida.xhtml;jsessionid=vomYgZ9TU4OEHasv3Xofhz-Q.ConsultasC1 and relied on online substantiation. However, no information/reference regarding the ‘MICROPOLIX’ protected geographical indication or wording of any national law on which the opponent bases its case can be found under the link indicated by the opponent.

On 10/04/2018 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 15/08/2018.

The opponent did not submit any evidence concerning the substantiation of the earlier right.

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

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

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 10 729 382.

a) The goods and services

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

Class 28: Games and playthings; Gymnastic and sporting articles not included in other classes.

Class 35: Advertising; Wholesaling, retailing and sale via global computer networks of stationery, books, magazines, discs, printed publications, games and playthings, gymnastic articles, clothing, footwear and headgear; Business management.

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities.

The contested goods and services are the following:

Class 9: Computer programs; Application software; Computer programs downloadable from the internet; Games software; Games software; Games software; Downloadable electronic game programs; Downloadable or recorded computer game programs; Downloadable computer programs and computer game programs; Games software and games programs downloadable from the internet; Computer software and game programs downloadable from global computer networks; Computer software and game programs for use as application programming interface; Programs and software and games programs for smart phones, smart watches, smart clothing and mobile devices; Software for online gaming.

Class 41: Provision of on-line computer games; Providing on-line computer games via a computer database; Providing of mobile games by means of computer-based systems; Providing interactive social mobile games in a virtual environment; Providing interactive multi-player computer games via the internet and electronic communication networks.

Class 42: Design of games; Games design, in particular for smart phones, smart watches, smart clothing and mobile devices; Design of computer game software; Computer games software design, in particular for smart phones, smart watches, smart clothing and mobile devices; Development of computer game software; Computer programming of computer games; Computer programming of video games; Computer programming; Design and development of computer programs; Technical consultancy relating to computer programming; Computer software consultancy; Hosting digital content on the internet; Server hosting; Web site hosting; Updating and maintenance of computer software; Rental of software; Development of computer hardware for computer games.

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

The contested goods in Class 9 cover various software and programs and are considered similar to the opponent’s games in Class 28 since the goods may, above all, have common consumers, distribution channels and manufacturers specialising in the games industry. This conclusion of the Opposition Division is to a certain extent backed up by the findings of the Court in its judgment (19/04/2016, T-326/14, ECLI:EU:T:2016:221, Hot Joker/Joker, § 49-54), where it was found that these goods are complementary inasmuch as the software and hardware in Class 9 are essential for the functioning of the electronic or on-line games of chance, which in the present case, are covered by the broad category of the opponent’s games in Class 28. Furthermore, the Court stated that the nature of those goods, namely ‘hardware and software’, is the same as that of electronic or on-line games of chance and they may have the same distribution and manufacturing channels.

Contested services in Class 41

The contested provision of on-line computer games; providing on-line computer games via a computer database; providing of mobile games by means of computer-based systems; providing interactive social mobile games in a virtual environment; providing interactive multi-player computer games via the internet and electronic communication networks are included in the broad category of the opponent’s entertainment. They are identical.

Contested services in Class 42

The contested design of games; games design, in particular for smart phones, smart watches, smart clothing and mobile devices; design of computer game software; computer games software design, in particular for smart phones, smart watches, smart clothing and mobile devices; development of computer game software; computer programming of computer games; computer programming of video games; computer programming; design and development of computer programs; technical consultancy relating to computer programming; computer software consultancy; hosting digital content on the internet; server hosting; web site hosting; updating and maintenance of computer software; rental of software; development of computer hardware for computer games are considered dissimilar to all the goods and services on which the opposition is based in Classes 28, 35 and 41 since they do not have any relevant points of contact that could justify finding a level of similarity between them. In particular, whereas the relevant public of the contested services is the commercial or business undertaking, albeit in the games and entertainment field, that of the games and entertainment covered by the earlier mark is the general public. The goods and services have different natures and purposes. They are distributed through different channels and are not in competition.

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 goods found to be similar are directed at the public at large and at business customers with specific professional knowledge or expertise, and the services found to be identical are directed at the public at large.

The degree of attention will vary from average to high depending on the specialised nature of the goods and services, their price and the frequency of purchase.

c) The signs

	MICROPOLIS
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 verbal elements of the marks, taken as a whole, are meaningless in the relevant territory and considered distinctive for all the goods and services at hand. And although the element ‘MICRO’, as such, is understood by a significant part of the relevant public as very small, or relating to a specific area, rather than a general one, firstly, it is not clear whether consumers will dissect it from the verbal elements of both marks where they constitute rather an inseparable whole, and secondly, there is no clear link between the element ‘MICRO’ and the goods and services at hand. Therefore, it is considered distinctive.

As regards the figurative element of the earlier sign, although it plays a dominant role in the sign, it needs to be noted 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).

As regards the letter ‘M’ placed on the figurative element, it will be merely perceived as an initial letter of the word that follows, i.e. ‘MICROPOLIX’.

Visually, the signs coincide in ‘MICROPOLI*’ which makes up most of the contested sign and the verbal element of the earlier sign. They signs differ in the last letter of the verbal elements ‘X’ vs. ‘S’ and the figurative element with the letter ‘M’ of the earlier sign. However, these elements cannot be attributed too much impact on the comparison of the signs for the reasons explained above.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in ‘MICROPOLI*’, but for example for Spanish-, or French-speaking consumers it coincides entirely in the elements ‘MICROPOLIS’ vs. ‘MICROPOLIX’. As regards the single letter ‘M’ of the earlier sign, it will be perceived by the relevant public as an initial letter of the word that follows and is unlikely to be pronounced at all.

Therefore, the signs are aurally highly similar or identical depending on the part of the relevant public.

Conceptually, neither of the signs has a meaning as a whole. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. As regards in particular the letter ‘M’ placed on the figurative element in the earlier sign and its conceptual significance, it will perceived only as an initial letter of the word ‘MICROPOLIX’ by the relevant public.

However, since both signs may be associated with the concept of ‘MICRO’ by some consumers, the signs are conceptually similar to an average degree for this part of the relevant public.

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 goods and 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.

e) Global assessment, other arguments and conclusion

It has been established that the contested goods and services are partly identical and similar to the opponent’s goods and services and partly dissimilar. The signs are similar to the extent that they coincide in ‘MICROPOLI’. The distinctiveness of the earlier mark is average.

The common element ‘MICROPOLI’ makes up most of the contested sign and of the distinctive, and only, word of the earlier sign. The figurative element of the earlier sign, for its part, although it is clearly visible, is not enough to draw the consumer's attention away from the coincidences in the word components of the signs. The difference in letters ‘X’ vs. ‘S’ may easily go unnoticed, as 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), in particular as it is placed at the end of the verbal elements where consumers tend to pay less attention. This is because 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. As regards the single letter ‘M’ in the earlier sign, it will be merely perceived as an initial letter of the word ‘MICROPOLIX’ as explained above.

Consequently, while it is true that the trade marks have certain differences, they do not allow the public to safely distinguish between the marks.

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 European Union trade mark registration No 10 729 382.

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

The rest of the contested 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 services cannot be successful.

The opponent has also based its opposition on the European Union trade mark registrations No 4 646 246 and No 8 262 131 . The other earlier rights invoked by the opponent cover goods such as decorations for Christmas trees in Class 28, which are clearly different to those applied for in the contested trade mark in Class 42 and found dissimilar. This is because they do not have any relevant points of contact that could justify finding a level of similarity between them. They have different purposes, natures and methods of use. The relevant public, distribution channels and manufacturers/providers are also different. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the signs and the services are obviously not identical.

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

Katarzyna ZANIECKA

Anna BAKALARZ

Begoña URIARTE VALIENTE

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.