OPPOSITION No B 3 064 030

Ubisoft Entertainment, Société Anonyme, 107, Avenue Henri Fréville, 35207 Rennes cedex, France (opponent), represented by Marc Muraccini, 28, rue Armand Carrel, 93108 Montreuil sous Bois, France (employee representative)

a g a i n s t

Onur Kaya and Özcan Ayik, Zietenstr. 25, 28217 Bremen, Germany (applicants).

On 04/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 064 030 is upheld for all the contested services, namely

Class 41: Entertainer services; Amusement park services; Television entertainment; entertainment services provided by art galleries; Game services provided on-line from a computer network; Entertainment services; Organisation of sports competitions; Organisation of competitions [education or entertainment].

2. European Union trade mark application No 17 874 206 is rejected for all the contested services. It may proceed for the remaining goods and services.

3. The applicants bear the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 874 206 (figurative mark ), namely against some of the services in Class 41. The opposition is based on European Union trade mark registration No 3 204 419 (word mark ‘RAINBOW SIX’). 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.

a) The goods and services

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

Class 9: Computer game software; video games.

Class 41: Entertainment; sporting activities; organisation of competitions (education and/or entertainment).

The contested services are the following:

Class 41: Entertainer services; Amusement park services; Television entertainment; entertainment services provided by art galleries; Game services provided on-line from a computer network; Entertainment services; Organisation of sports competitions; Organisation of competitions [education or entertainment].

Entertainment services; Organisation of competitions [education or entertainment]; entertainment services; are identically contained in both lists of services (including synonyms).

The contested organisation of sports competitions are included in the broad category of, or overlap with, the opponent’s services sporting activities. Therefore, they are identical.

The contested entertainer services; amusement park services; television entertainment; entertainment services provided by art galleries; game services provided on-line from a computer network are included in the broad category of, or overlap with, the opponent’s services entertainment. Therefore, they are identical.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, or terms and conditions of the goods and services purchased.

c) The signs

RAINBOW SIX
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 common element RAINBOW is 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 such as Malta, Ireland and the United Kingdom.

The element ‘Rainbow’ in both signs will be understood as such by the relevant public; as it is not descriptive or otherwise weak, it is fully distinctive for the relevant services.

The element ‘Six’ of the earlier sign will be associated with the number six. This element is also to be considered to be distinctive.

The verbal element ‘ENERGY’ in the contested mark will be understood as being full of energy and is considered to be weak for the relevant services in Class 41.

Given that the ampersand is placed between brackets and is not between two words, the element (&) will not be understood as a sign for the word ‘and’, but rather as a figurative element. Due to its small size and position in the mark it clearly plays a secondary role. In addition it does not convey any meaning on its own that enables the consumer to memorise it by. For these reasons, it has very limited, if any, impact on the comparison.

As regards the contested sign, it is composed of distinctive verbal elements and less distinctive figurative elements. Therefore, the verbal elements are more distinctive than the figurative elements.

The verbal element ‘RAINBOW’ in the contested sign is the dominant element as it is the most eye-catching.

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).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. 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.

Visually, the signs coincide in ‘RAINBOW’, which is the first of two verbal elements in the earlier sign and is the dominant and most distinctive element in the contested sign. They differ in the rest, namely the graphical stylisation of that element in the contested sign, the very limited graphical elements in the contested sign, and the further element ‘ENERGY’.

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

Aurally, the pronunciation of the signs coincides in the syllables ‛rain‑bow’, present identically in both signs. The pronunciation differs in the syllables ‘en-ner-gy’ of the contested mark and ‘six’ of the earlier mark. The graphical elements of the contested sign, including the ampersand symbol (due to its secondary role), have no effect on the way that sign will be pronounced.

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

Conceptually, although the signs as a whole do not have a clear meaning for the public in the relevant territory, the element ‘RAINBOW’, included in both signs, will be associated with the meaning explained above. To that extent, the signs are conceptually highly similar.

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.

e) Global assessment, other arguments and conclusion

The services are identical, the level of attention of the relevant consumers is considered to be average to high. The signs are conceptually highly similar and visually and aurally similar to an above average degree. The degree of distinctiveness of the earlier mark is average.

Account is taken of the fact that 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). 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).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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).

There are striking similarities between the signs since they both include the distinctive element ‘RAINBOW’, which is placed first in the earlier mark and is the dominant element of the contested sign. Therefore, the differences between the signs are not sufficient to rule out a likelihood of confusion.

As the services are identical and due to the aural and visually above average similarity and conceptual high similarity, a likelihood of confusion exists.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of 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 3 204 419. It follows that the contested trade mark must be rejected for all the contested services.

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 applicants are the losing party, they 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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Tu Nhi VAN

Lars HELBERT

Konstantinos MITROU

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.