OPPOSITION No B 3 054 313

Zitro IP S.àr.l, 17, Boulevard Royal, 2449 Luxembourg, Luxembourg (opponent), represented by Canela Patentes y Marcas, S.L., Girona, 148 1-2, 08037 Barcelona, Spain (professional representative)

a g a i n s t

Trefl S.A., ul. Plac Dwóch Miast 1, 81-731 Sopot, Poland (applicant), represented by Kancelaria Prawa Własności Przemysłowej i Prawa Autorskiego Teresa Czub & Krzysztof Czub Rzecznicy Patentowi Spółka Partnerska, ul. Reduta Żbik 5, 80-761, Gdańsk, Poland (professional representative).

On 22/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 054 313 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 653 916 for the word mark ‘BRICK TRICK’. The opposition is based on European Union trade mark registration No 15 293 459 for the word mark ‘BRYKE’ and European Union trade mark registration No 16 540 411 for the figurative mark . 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 15 293 459.

a) The goods and services

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

Class 9: Apparatus for recording, transmission or reproduction of sound or images solely for installations for arcades and gaming rooms, gaming stations and gaming machines; magnetic data carriers, recording discs; data processing equipment and computers; computer programs; computer hardware and software, in particular for bingo halls, casinos; casings for CPUs (Central Processing Units); games programmes; interactive-game programs; electronic publications, downloadable; telecommunication equipment.

Class 20: Furniture for apparatus for recording, transmission and reproduction of sound and images; furniture for data processing equipment and computers; furniture casings for amusement and games machines.

Class 28: Games, playthings, toys not related to table tennis and tennis; automatic slot machines; automatic games other than those adapted for use with television receivers only; coin slot machines; arcade game machines, including machines for amusement arcades and gaming rooms; gaming machines operated by coins, tokens or any other means of pre-payment; automatic amusement machines; free-standing video games apparatus; electronic hand-held game units; games equipment for casinos, bingo halls and other gaming halls; apparatus for games adapted for use with television receivers only; automatic gaming machines for amusement arcades and betting establishments; betting terminals; cards or counters for games included in this class.

The contested goods are the following:

Class 9: Programs for computers; data recorded on electronic data carriers, holograms, information and teaching materials recorded on photographic film and film stock; electronic publications, downloadable; electronic, optical and magneto-optical data carriers; apparatus and equipment for processing and transmission of data; apparatus and equipment for reproduction, transmission and/or reproduction of sound and/or images.

Class 28: Games; manual toys, mobile toys, electronic toys, toys with sound and/or image playing, transmission and reproduction apparatus, remote control toys, educational toys; toy bricks; manipulative puzzles; games; board games, electronic games, games, other than those adapted for use with a television set, educational games, instructional games, parlour games, card games; puzzle cards; counters for games; boards, counters, figurines, cards and other accessories for games and toys.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large. The degree of attention is average.

c) The signs

BRYKE	BRICK TRICK
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 contested sign ‘BRICK TRICK’ is meaningful in English. Bearing in mind that the earlier mark is meaningless, the existence of any concept in the contested sign would counteract the similarities between the signs. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public which perceives no meaning in the contested mark such as the French- Spanish-, Portuguese- or Italian-speaking parts of the public as this is the most advantageous scenario for the opponent. The contested sign is, therefore, distinctive to a normal degree. Contrary to the opponent’s assertions, the contested mark has no dominant element because it is a word mark, by definition word marks are written in standard typeface.

The earlier mark is a word mark ‘BRYKE’. It has no meaning for the relevant public and is, therefore, normally distinctive.

Visually, the signs coincide in the letters ‘BR**K*’ albeit the letter ‘K’ are in different positions in the signs being the penultimate letter in the earlier mark and the final one of the first word in the contested sign. However, they differ in the letters ‘Y’ and ‘E’ of the earlier mark and in ‘I’ and ‘C’ in the first element of the contested sign. They also differ in the distinctive second word ‘TRICK’ of the contested sign. The opponent argues that the principle that the beginning of a sign catches the consumers’ attention should apply in the present case. While it is true that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark it must be stressed that this argument cannot hold in all cases and does not affect the principle that the assessment of the similarity of marks must take account of the overall impression created by them.

Moreover, account is taken of the fact that the alphabet is made up of a limited number of letters, which, are not all used with the same frequency, so that it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. (25/03/2009, T 402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C 193/09 P, ARCOL / CAPOL, EU:C:2010:121). Considering the difference in the number of words of the signs and the fact that they coincide in only three out of the ten letters that form the contested sign it is concluded that the signs are visually similar to a very low degree.

Aurally, irrespective of the different pronunciation rules for different parts of the public taken into consideration, for a part of the public the pronunciation of the signs is very similar in the first syllable of each mark as for example for the Spanish-speaking public (‛BRY’ of the earlier mark and ‘BRIK’ of the contested sign). For another part of the public it is even identical (‘BRIK v BRIK’) as for example the French-speaking public. Therefore, for a part of the public the pronunciation differs in the second syllable ‘KE’ of the earlier mark plus the pronunciation of the second word ‘TRIK’ of the contested sign. However, for the French public it differs only in the latter. Taking into account the fact that, at least, for the French public the sound of the signs coincide identically in their first syllables, it is concluded that the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the relevant public under analysis in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of 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.

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

e) Global assessment, other arguments and conclusion

The appreciation of the likelihood of confusion depends on numerous elements and, in particular, on the recognition of the trade mark on the market, on the association that the relevant public might make between the two marks and on the degree of similarity between the signs and the goods (recital 11 of the EUTMR). 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, Sàbel, EU:C:1997:528, § 22).

The goods are assumed to be identical. The public’s degree of attention is average. The earlier mark has a normal degree of distinctiveness. The signs are visually similar to a very low degree and aurally to an average degree. Conceptually, the signs do not trigger a semantic content for the part of the public under analysis.

Although for the French public the signs coincide aurally in the first element of the contested sign that constitutes the earlier mark in its entirety, the similarities are not sufficient to lead to a likelihood of confusion even for this part of the public because in general the differences between the signs outweigh their commonalities and, in particular the visual differences are quite striking. This is also true for the remaining part of the public for which the contested sign is meaningless (e.g. the Italian-, Portuguese- and Spanish-speaking etc) because for them the aural differences can be, or are even, higher. As regards the English part of the public as explained above the contested sign triggers a semantic content that helps to differentiate the signs even further.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on European Union trade mark registration No 16 540 411 for the figurative mark . However, this other earlier right invoked by the opponent is less similar to the contested mark because it contains further - figurative - elements, which are not present in the contested trade mark. Therefore, the outcome cannot be different No likelihood of confusion exists either with respect to this earlier mark.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Benoit VLEMINCQ

María del Carmen COBOS PALOMO

Kieran HENEGHAN

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.