OPPOSITION No B 3 059 440

Bml Group Limited, The Experience Centre, Ta'Xbiex Seafront, XBX 1027 Ta Xbiex, Malta (opponent), represented by Otmore Limited, Otmore Limited No 2, Geraldu Farrugia Street, Zebbug ZBG 4351, Malta (professional representative)

a g a i n s t

Netbet Enterprises Ltd, 209 Marina Street, PTA 9041 Pieta, Malta (applicant), represented by Cabinet Bouchara Avocats, 17 rue du Colisée, 75008 Paris, France (professional representative).

On 17/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 059 440 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 and services of European Union trade mark application No 17 875 611 . The opposition is based on European Union trade mark registrations No 16 134 298 ‘European Championship of Roulette’ and No 16 134 306 . 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:

European Union trade mark registration No 16 134 298

Class 35: Advertising, marketing and promotional consultancy, advisory and assistance services; Distribution of advertising, marketing and promotional material; Loyalty, incentive and bonus program services; Provision of advertising space, time and media; Advertisement for others on the Internet; Advertisement via mobile phone networks; Business analysis, research and information services; Business assistance, management and administrative services; Advertising, marketing and promotional services; Marketing studies; Analysis of company behaviour; Business research; Business research and information services; Market reports and studies; Providing business information by way of computer terminals; Providing an on-line commercial information directory on the internet; Search engine optimisation; Search engine marketing services.

Class 38: Access to content, websites and portals; Computer communication and Internet access; Telecommunications consultancy; Communication of data by means of telecommunications.

Class 41: Services for the operation of computerised bingo; Providing of casino and gaming facilities.

European Union trade mark registration No 16 134 306

Class 35: Advertising, marketing and promotional consultancy, advisory and assistance services; Distribution of advertising, marketing and promotional material; Loyalty, incentive and bonus program services; Provision of advertising space, time and media; Advertisement for others on the Internet; Advertisement via mobile phone networks; Business analysis, research and information services; Business assistance, management and administrative services; Advertising, marketing and promotional services; Marketing studies; Analysis of company behaviour; Business research; Business research and information services; Market reports and studies; Providing business information by way of computer terminals; Providing an on-line commercial information directory on the internet; Search engine optimisation; Search engine marketing services.

Class 38: Access to content, websites and portals; Computer communication and Internet access; Telecommunications consultancy; Communication of data by means of telecommunications.

Class 41: Gambling; Casino, gaming and gambling services; Providing casino facilities [gambling]; Leasing of casino games; Services for the operation of computerised bingo; On-line gaming services; Providing of casino and gaming facilities; Gaming services for entertainment purposes; Organisation of tournaments.

The contested goods and services are the following:

Class 9: Computer software; Computer software programs; Computer game software, in particular software for gambling, games of chance, online betting games, lottery games, prediction games, games tournaments, gambling tournaments, casino game tournaments, poker game tournaments, online betting game tournaments, lottery game tournaments, prediction game tournaments, card games, electronic games, sports betting, competitions and games tournaments; Software for sports betting; Recording media and programs for gambling, casino games, games of chance, poker games, online betting games, lottery games, prediction games, card games, electronic games, sports betting, competitions and games tournaments; Computer software applications in connection with or featuring games, gambling games, casino games, games of chance, poker games, online betting games, lottery games, prediction games, card games, electronic games, sports betting, competitions and games tournaments; Computer programs for paying players online; Telecommunications terminals and multimedia terminals in connection with games, gambling, casino games, games of chance, poker games, online betting games, lottery games, prediction games, card games, electronic games, sports betting, competitions and games tournaments, and with sports news.

Class 28: Games; Games, in particular gambling games, casino games, games of chance, poker games, online betting games, lottery games, prediction games, card games, electronic games, sports betting, competitions and games tournaments; Games relating to sport; Card games; Games equipment, namely draw apparatus; Bingo cards; Dice; Articles for use in playing card games; Counters for games; Card games; Board games; Cloth for casino games; Casino fittings namely roulette tables, roulette wheels; Betting terminals; Games machines, prepaid and token-operated games machines; Apparatus for electronic games other than those adapted for use with television receivers only; Prepaid automatic games (machines) adapted for use with a television set; game unit; Interactive game machines; Parts and fittings for all the aforesaid goods; Electronic and digital apparatus for games, casino games, gambling and online betting; Terminals for games, bets and forecasts.

Class 35: Advertising; Direct mail advertising; On-line advertising on a computer network; Publication of publicity texts; Rental of advertising time; Rental of advertising space; Dissemination of advertising matter; Arranging newspaper subscriptions for others; Radio and television advertising; Hiring of publicity materials; Publicity columns preparation; Organisation of competitions, prize draws for commercial or advertising purposes via the Internet and all telecommunications systems; Arranging of advertising operations for commercial or advertising purposes via the Internet and all telecommunications systems; Arranging competitions for promotional and advertising purposes; Advertising via sponsorship.

Class 38: Providing and granting access to a multiple-user network system allowing access to information on games for money and betting via television, the Internet and other networks and media or communications channels; Telecommunication services; Dissemination and transmission of information and data by communication media and on all communication networks relating to games, in particular gaming, games of chance, on-line betting, lottery games, tips, game tournaments; Rental of access time to games spaces on a communication network; Electronic messaging; Providing access to electronic databases relating to games, in particular gaming, games of chance, on-line betting, lottery games, tips, game tournaments; Providing access to weblogs, Providing of a discussion space on a website; Providing chatrooms on communication networks of all kinds; Broadcasting of podcasts relating to games, in particular gaming, games of chance, on-line betting, lottery games, tips, game tournaments; Broadcasting of audiovisual and multimedia programmes, whether or not for interactive use relating to games, in particular gaming, games of chance, on-line betting, lottery games, tips, game tournaments; Communication through computer terminals; Leasing access time to a server, communication network, Internet or database.

Class 41: Entertainment; Providing of training; Leisure; Services relating to games, gambling, casino games, games of chance, poker games, online betting, lottery games, prediction games, card games, electronic games, sports betting, competitions and games tournaments; Game services provided on-line from a computer network; On-line casino services; the provision of games of skill; Providing amusement arcade services; Providing amusement arcade services; Casino services; Providing of information in the field of games, gambling, casino games, games of chance, poker games, online betting, lottery games, prediction games, card games, electronic games, sports betting, competitions and games tournaments; Production or realisation of entertainment and information broadcasts relating to games, gambling, casino games, games of chance, poker games, online betting, lottery games, prediction games, card games, electronic games, sports betting, competitions and games tournaments; Publication of works relating to games, gambling, casino games, games of chance, poker games, online betting, lottery games, prediction games, card games, electronic games, sports betting, competitions and games tournaments; Organisation, production and presentation of tournaments and competitions in connection with games, gambling, casino games, games of chance, poker games, online betting, lottery games, prediction games, card games, electronic games, games tournaments and sports betting; providing news, consultancy and advisory services relating to any of the aforesaid services; Providing of online electronic publications in particular in connection with games, gambling, casino games, games of chance, poker games, online betting, lottery games, prediction games, card games, electronic games, sports betting, competitions and games tournaments; Publication of electronic newsletters in particular in connection with games, gambling, casino games, games of chance, poker games, online betting, lottery games, prediction games, card games, electronic games, sports betting, competitions and games tournaments; Organisation and operation of entertainment, television entertainment, sporting activities, cultural activities, recreational services and recreational games; Publication of books, newspapers, periodicals and electronic media on the internet or via telecommunications systems of all kinds, relating in particular to games, casino games, competitions, sports predictions and betting, and sports information; Organisation, production and presentation of the aforesaid services, providing of all of the aforesaid services live or by television, by radio or online from computer databases or the internet or from portable, mobile, hand-held devices or from electronic tablets and telecommunications systems of all kinds.

Some of the contested goods and services are identical or similar to services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services 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 and services assumed to be identical are directed at the public at large and at customers with specific professional knowledge or expertise.

The degree of attention ranges from average to above average depending on the exact nature and price of each of the goods and services in question.

c) The signs

a) EUTM No 16 134 298 European Championship of Roulette b) EUTM No 16 134 306
Earlier trade marks	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 English-speaking public would perceive the earlier mark a) and the word elements in the earlier mark b) as referring to a Europe wide competition of a specific gambling game. Considering that the goods and services in question, relate to gambling, either directly, or indirectly, it is considered that the word elements are weak at most.

The non-English speaking public would at least understand the meaning of the words EUROPEAN and ROULETTE, either because these words are commonly used and the public has been accustomed to understand them with their original meaning, or because the words have close equivalents in all the relevant languages. Since they can indicate the scope, place, origin or subject matter, and type of gambling game, to which all the goods and services relate, either directly, or indirectly, these word elements are considered weak at most also for this public. The meaning of the words CHAMPIONSHIP OF is not perceived and remain distinctive for this public.

The figurative element in earlier mark b) consists of an image depicting a section of a typical roulette gambling game table, with a crown on top of it and surrounded by a wreath of golden leaves. The colour sections are sequenced black-red-green-red-black and do not contain numbers. This whole figurative element, despite its stylisation is to be considered weak, as it contains elements such as the crown and wreath (both typical to indicate a winner of some competition) and the roulette table section (indicating the subject matter of the win, a gambling game). The mark b) has no element that could be considered clearly more dominant than other elements.

The contested sign contains, on a red rectangular background, the verbal element ‘ERT’ in white uppercase letters and, underneath it, the words EUROPEAN ROULETTE TOUR depicted in much smaller, hardly perceivable, letters. On the right, it is depicted a section of a typical roulette gambling game table with the colour sections sequenced black-red-black-green-red-black-red (starting from below) with numbers on them.

For the English speaking public, the words EUROPEAN ROULETTE TOUR, if already perceived due to their small size, are weak at most, as they describe the characteristics of the goods and services, all of which either are gambling games or are related to them directly or indirectly. In any case, due to their size, these words play a secondary role in the composition of the mark. The letter combination ‘ERT’ as such has no immediately perceptible inherent meaning. Only if the words underneath them are perceived, considering their very small size, the letters ‘ERT’ are perceived as the abbreviation of these words. Also the non-English speaking public in the whole Union would grasp the meaning of the words ‘EUROPEAN ROULETTE TOUR’, either because these words are commonly used and the public has been accustomed to understand them with their original meaning or because the words have close equivalents in all the relevant languages. Therefore, the considerations regarding the distinctiveness of these elements for the English-speaking part of the public equally apply for the non-English speaking part

The letters ‘ERT’ are distinctive on their own as mentioned. Their distinctiveness is only slightly diminished in case they are linked with the words underneath them, because this abbreviation is not a typical one and not in common use. The rectangular background is considered as a mere decorative background and has no distinctiveness on its own and merely serves a decorative function. The image of a roulette table, considering that all the goods and services relate either directly or indirectly to gambling is considered as weak at most.

The letters ‘ERT’ form the dominant element of the mark due to their large size and placement within the mark.

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 the words ‘EUROPEAN’ and ‘ROULETTE’, all found to be weak at most. The coinciding verbal elements are included in an expression that due to its size and position is secondary in the contested sign. The signs differ in their beginnings (‘European’ vs. ‘ERT’), and also in the remaining words ‘Championship of’, and ‘TOUR’.

The earlier mark b) and the contested mark further differ in their figurative elements, their respective placement in the marks, stylisation and overall setup.

Therefore, the signs are visually similar to at most a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the words ‘EUROPEAN’, and ‘ROULETTE’ all found to be weak at most. The marks differ aurally in all other word elements, such as ‘ERT’, ‘Championship of’ and ‘TOUR’. The marks therefore differ in their length, rhythm and intonation. Moreover, due to its small size and position at the bottom of the mark, the element ‘EUROPEAN ROULETTE TOUR’ most likely will not be pronounced.

Therefore, the signs are aurally similar at most to a low degree if not dissimilar.

Conceptually, for the public that understands all the word elements, namely the ‘European Championship of Roulette’ and ‘ERT EUROPEAN ROULETTE TOUR’, and considering the level of distinctiveness of all these elements as examined above, the marks are similar only to a low degree owing to the only coinciding words ‘EUROPEAN’ and ‘ROULETTE’, while noting the clear differences in the word elements ‘Championship of’ vs. ‘ERT’ and ‘TOUR’, taking also into account the clear conceptual differences of the wreath and crown in the figurative elements of earlier mark b) and the contested mark. The same conclusion also applies for the public that perceives only words such as ‘EUROPEAN’, ‘ROULETTE’ and ‘TOUR’ together with the figurative elements, considering that the remaining elements are not associated with any meaning.

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 marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se.

Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as low for al the goods and services for the public perceiving all the elements in the marks.

For the public that perceives only some of the word elements and all the figurative elements, the distinctiveness of the earlier marks must be seen as normal, despite the presence of a less distinctive element in the marks as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The goods and services have been assumed identical.

This assessment does not amount to taking into consideration only one component of a complex trade mark and comparing it with another mark, but such a comparison must, on the contrary, be made by examining the marks in question, each considered as a whole (06/10/2005, C 120/04, Thomson Life, EU:C:2005:594, § 29; 28/04/2004, C 3/03 P, Matratzen + Matratzenmarkt Concord (fig.), EU:C:2004:233, § 32).

The signs are similar to the extent that they share the word elements ‘EUROPEAN’ and ‘ROULETTE’, placed in different positions in the signs, which are at most weak. However, the abovementioned coincidences alone are not sufficient for finding a likelihood of confusion. Furthermore, the considerable differences between the signs caused by the additional and/ different verbal elements, such as ‘Championship Of’, ‘ERT’ and ‘TOUR’, together with the differing figurative elements (in case of earlier mark b)) are particularly relevant when assessing the likelihood of confusion between them.

It has been confirmed by case-law that consumers generally only refer to the dominant elements in trade marks (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and in any case, that they tend to shorten marks containing several words, it is highly likely that the contested sign will aurally be referred to by only the verbal element ‘ERT’, creating this way a clear difference with the opponent’s marks.

In the present case, the beginnings of the signs are different. The earlier marks start with the word ‘EUROPEAN’, while the contested sign starts with a letter combination ‘ERT’, which is moreover the most distinctive and dominant verbal element in the mark. 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. Even if part of a public perceives a slightly descriptive meaning in the first element of the contested sign as described, which moreover is the most distinctive and dominant element in that mark, the sequence remains with sufficient distinctiveness on its own, and which differs clearly of that of the earlier marks considering also the endings of the signs are different, in addition to the figurative elements, which will not go unnoticed.

It should be noted that ‘(…) assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components’ (12/06/2007, C‑334/05 P, Limoncello, EU:C:2007:333, § 41).

The differences create a significant visual, aural and conceptual distance between the signs at issue for all types of public. The conceptual similarity, albeit low, is not sufficient for a finding of likelihood of confusion or association even with regard to identical goods and services. This is because the contested sign is sufficiently removed from the earlier marks and any existing similarity is diluted in the overall impression created by the signs The Opposition Division considers that, despite the assumed identity of the goods and services at issue, even persons with only an average level of attention will not confuse the marks.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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, 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

Rosario GURRIERI

Erkki MÜNTER

Christophe DU JARDIN

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.