OPPOSITION No B 3 062 203

Bauer Consumer Media Limited, Media House, Peterborough Business Park Lynch Wood, PE2 6EA, Peterborough, United Kingdom (opponent), represented by Boult Wade Tennant LLP, Salisbury Square House,8 Salisbury Square, EC4Y 8AP, London, United Kingdom (professional representative)

a g a i n s t

Beijing ELEX technology Co.,Ltd, 6th Floor, Block C, Truth Plaza, No.7 ZhiChun Road, Haidian District 100191, Beijing, People’s Republic of China (applicant), represented by Sławomir Krzysztof Nowicki, Podczachy 27 99-300, Kutno, Poland (professional representative).

On 31/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 203 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 893 217 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 893 217 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 4 512 166 for the word mark ‘EMPIRE’. 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 4 512 166.

a) The goods and services

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

Class 9: Ring tones, video content and audio content, images, graphics and music via the internet, wired and wireless networks for use in downloading to wireless and hand held devices; pre-recorded CDs, videos and DVD’s; computer games supplied online by means of multi-media electronic broadcast or network transmission; computer games; video game; computer games for use with games player machines; video games for use with games playing machines; DVD games; DVD games for use with game playing machines; iDVDs; memory cards for use with mobile telephones containing video content, audio content, images, graphics and music; all the aforesaid goods being related to the film and television industry or to films and television programmes.

Class 41: Gamin services; gaming services for entertainment purposes; gaming machine and entertainment services; amusement arcade gaming machine rental services; arranging of games; electronic games services provided by means of the Internet; electronic games services provided by means of a telecommunication systems; internet games ( non downloadable); provision of games by means of a computer-based system; provision of games by means of a telecommunication bases systems; services for the organisation of games; telephones games; publishing services; services relating to the publication printed matter; periodical publication; printed publications, books and magazines; publication of material which can be accessed form databases or the internet; provision of information of recessing via communication and computer networks; electronic publishing,; television entertainment services; television broadcasting of information relating to television programmes and films; organisation of competition and awards; arranging and  conducting competitions; arranging and conducting awards ceremonies; presentation of awards for achievement, education and training services; arranging and conducting courses, conferences, exhibitions, events and seminars; organizing, conducting, production of shows, events, displays and parties; organisation of events for cultural, entertainment and sporting purposes; organisation of competitions; organisation of quizzes; organisation of sporting competitions and sports events; publication of printed matter.

The contested goods and services are the following:

Class 9: Computer game software; computer software applications, downloadable; computer programs, recorded; computer software, recorded; computer programs [downloadable software].

Class 41: Game services provided on-line from a computer network; layout services, other than for advertising purposes; providing on-line electronic publications, not downloadable; on-line publication of electronic books and journals; film production, other than advertising films; games equipment rental; providing amusement arcade services; entertainment information; publication of books; entertainment services.

Contested goods in Class 9

Computer game software are identically contained in both lists of goods (including synonyms).

The contested computer software applications, downloadable; computer programs, recorded; computer software, recorded; computer programs [downloadable software] are identical to the earlier computer games, either because they are identically contained in both lists (including synonyms) or because the earlier goods are included in, or overlap with, the contested goods.

Contested services in Class 41

The contested layout services, other than for advertising purposes; providing on-line electronic publications, not downloadable; on-line publication of electronic books and journals; publication of books are included in the broad category of the earlier publishing services. Therefore, they are identical.

Entertainment services are identically contained in both lists of services (including synonyms).

The contested game services provided on-line from a computer network; film production, other than advertising films; games equipment rental; providing amusement arcade services; entertainment information are included in the broad category of the earlier entertainment services. 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 goods and services found to be identical are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

EMPIRE
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 ‘EMPIRE’ and the word ‘ORIGIN’ of the contested sign are not meaningful in certain territories, for example in those countries where English or French are not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for whom the signs are meaningless, such as the Czech and the Slovak-speaking part of the public.

As already seen, the word elements of the signs have no meaning for the part of the public taken into account for the sake of the present analysis. Thus, they are distinctive.

The word ‘EMPIRE’ in the contested sign is the dominant element as it is the most eye-catching. This is due to the fact that it is written in fanciful yellow letters that are the double of the size of the letter which compose the term ‘ORIGIN’, that is also placed in a secondary position below the word ‘EMPIRE’. Moreover, the first letter ‘E’ of ‘empire’ is even larger and highly stylized.

Visually, the signs coincide in the letters ‘EMPIRE’, although in the case of the contested sign, depicted using fanciful letters. However, they differ in the additional word ‘ORIGIN’, which is in any case secondary in the contested sign, and in the black background on which the verbal elements of the contested sign are placed.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories taken into account for the sake of brevity, the pronunciation of the signs coincides in the sound of the letters ‛EMPIRE’, present identically in both signs and that in the contested sign constitute the dominant element. The pronunciation differs in the sound of the letters of the secondary element ‘ORIGIN’ of the contested sign.

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

Conceptually, neither of the signs has a meaning for the public in the relevant territories taken as examples. 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 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

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services covered by the trade marks in dispute have been found identical. They are directed at the public at large whose degree of attention is expected to be average.

As regards the signs, they are visually and aurally similar to an average degree. In fact, the earlier mark ‘EMPIRE’ is entirely included in the contested sign, which is a figurative mark made of the word ‘EMPIRE’ followed by the word ‘ORIGIN’, which due to its size and position is secondary.

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).

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).

As the goods and services are identical and between the signs there is a visual and aural similarity to an average degree and in the absence of any other factor, a likelihood of confusion exists on the part of the public, who speaks Czech or Slovak, though not necessarily only. 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 4 512 166. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier European Union trade mark registration No 4 512 166 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it 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.

The Opposition Division

Valeria ANCHINI

Andrea VALISA

Edith Elisabeth VAN DEN EEDE

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.