OPPOSITION No B 3 062 918

IGT UK Interactive Limited, 3rd Floor 10 Finsbury Square, EC2A 1AF London, United Kingdom (opponent), represented by Armin Herlitz, Seering 13-14, 8141 Premstätten, Austria (employee representative)

a g a i n s t

Ahmet Celebi, Tower Road 126, Brighton Appartment Nş.1, SLM1605 Sliema, Malta (applicant), represented by WH Partners, Level 5, Quantum House, 75 Abate Rigord Street, XBX 1120 Ta’Xbiex, Malta (professional representative).

On 16/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 918 is upheld for all the contested goods.

2. European Union trade mark application No 17 902 923 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 902 923 for the word mark ‘SLOT SYNDICATE’. The opposition is based on European Union trade mark registration No 13 018 593 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.

a) The goods and services

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

Class 28: Electric and electronic coin and token-operated entertainment machines and amusement machines; electric and electronic apparatus for games, amusement or entertainment purposes; coin-operated gaming machines, entertainment machines and lottery machines; automatic gaming machines; the aforesaid automatic machines and apparatus operating in networks.

Class 41: Providing on-line computer games; casino services; operating a jackpot system involving one or more automatic slot machines, namely a jackpot or prize with a fixed minimum value which increases until the jackpot is won.

The contested goods and services are the following:

Class 28: Slot machines [gaming machines].

Class 41: Casino, gaming and gambling services; online casino services; casinos.

Contested goods in Class 28

The contested slot machines [gaming machines] overlap with the opponent’s automatic gaming machines; the aforesaid automatic machines and apparatus operating in networks. Therefore, they are identical.

Contested services in Class 41

The contested casino, casinos and the opponent’s casino services are synonymous and are, therefore, identical.

The contested gaming and gambling services include, as a broader category, the opponent’s casino services. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested online casino services overlap with the opponent’s providing on-line computer games. 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 will be average.

c) The signs

	SLOT SYNDICATE
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.

As correctly pointed out by the applicant, the common element ‘SLOT’ refers, in English, to a type of gaming machine, namely a slot machine. However, the element has no meaning for the non-English-speaking public in the European Union and is, therefore, not generic for them. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking public to avoid unnecessary considerations regarding the non-distinctiveness of the element ‘SLOT’ from the point of view of the English-speaking public.

The element ‘SLOT’ included in both marks has no meaning for the relevant goods and services for the relevant public specified above and is, therefore, distinctive.

The element ‘THE’ of the earlier mark has no meaning for the relevant public and is, therefore, also distinctive.

The element ‘SYNDICATE’ of the contested sign will allude to the idea of a ‘trade union’ or ‘union, association’ for a part of the relevant public. For another part of the relevant public, it will have no meaning. In either case, as the element has no clear meaning for the relevant goods and services, it is distinctive.

The earlier mark has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

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). Consequently, although the stylisation of the earlier mark is quite elaborate and distinctive, it has a lesser impact on the consumer than the verbal element of the earlier trade 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. Consequently, the fact that the coinciding element ‘SLOT’ is placed in the prominent position at the beginning of the contested sign plays an important role in this case.

Visually, the signs coincide in ‘SLOT’. This coinciding element is clearly separate in both marks and is distinctive. However, the signs differ in the stylisation, colours (red and black), the element ‘THE’ of the earlier mark and in the element ‘SYNDICATE’ of the contested sign.

Therefore, the signs are visually similar to a lower-than-average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛SLOT’, present identically in both signs. The pronunciation differs in the sound of the letters ‛THE’ v ‘SYNDICATE’ which have no counterpart in the trade mark of the other party.

Therefore, the signs are aurally similar to a lower-than-average degree.

Conceptually, a part of the public will perceive a meaning in the contested sign as explained above, whereas the other sign has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. For another part of the public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the 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 non-English-speaking public. Therefore, the distinctiveness of the earlier mark must be seen as normal for this part of the public.

For the above reasons the degree of distinctiveness of the earlier trade mark is not very low, as asserted by the applicant.

e) Global assessment, other arguments and conclusion

The goods and services are identical. The earlier trade mark’s degree of distinctiveness is average and the level of attention of the relevant public will also be average.

The marks are visually and aurally similar to a lower-than-average degree on account of the coinciding distinctive element ‘SLOT’. Conceptually, the marks are either not similar or the conceptual comparison is neutral. The coinciding element ‘SLOT’ is clearly visually separate from the other element in both marks and thus plays an independent distinctive role from the point of view of the relevant public.

Although the coincidences in the signs are less obvious than the differences, a likelihood of confusion still exists, as the coinciding element plays an independent distinctive role in both signs.

Moreover, 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). In this case, the identity of the goods and services outweighs the lesser degree of similarity of the marks.

Furthermore, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. 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). The relevant public is likely to perceive the contested sign as a modification of the earlier trade mark based on the same core element ‘SLOT’.

Considering all the above, there is a likelihood of confusion on the part of the non-English-speaking public of the European Union. 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 13 018 593. It follows that the contested trade mark must be rejected for all the contested goods and 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 applicant is the losing party, he 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, 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

Marzena MACIAK

Vít MAHELKA

Cindy BAREL

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.