OPPOSITION No B 3 093 649

Reflex Gaming Limited, 301 Bowbridge Road, NG24 4EQ Newark, United Kingdom (opponent), represented by Serjeants LLP, Dock, 75 Exploration Drive, LE4 5NU Leicester, United Kingdom (professional representative)

a g a i n s t

Dongguan Solid Model Technology Co., Ltd., Ma Ti Gang Industrial Zone, Da Ling Shan Town, Dongguan City, People’s Republic of China (applicant), represented by Arpe Patentes y Marcas S.L., C/Proción 7, Edificio América II, Portal 2, 1ºC, 28023 Madrid-Aravaca, Spain (professional representative).

On 22/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 093 649 is upheld for all the contested goods.

2. European Union trade mark application No 18 040 520 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 of European Union trade mark application No 18 040 520 (figurative mark). The opposition is based on European Union trade mark registration No 3 769 288 ‘REFLEX GAMING’ (word 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

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

Class 28: Toys, games and playthings; amusement, gaming, arcade and vending machines; hand-held or stand alone electronic games, video and amusement apparatus; computer games.

The contested goods are the following:

Class 28: Gyroscopes and flight stabilizers for model aircraft; drones [toys]; toy robots; scale model kits [toys]; scale model vehicles; toys; toy models; toy vehicles; controllers for toys; parlour games; parlor games.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The contested drones [toys]; toy robots; scale model kits [toys]; scale model vehicles; toys; toy models; toy vehicles; parlour games; parlor games are identical to the opponent’s toys, games and playthings, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include the contested goods.

Model aircraft are small unmanned aircraft or replicas of aircraft. They may be flying (such as toy gliders) or non-flying (static or shelf models). An aircraft gyroscope is a device that uses the Earth’s gravity to help determine its orientation. This can also be incorporated into flying model aircraft. Stabilisers help make aircraft easier to control while performing manoeuvres. The contested gyroscopes and flight stabilizers for model aircraft and the opponent’s toys (which include toy model aircraft) can coincide in producer, target the same relevant public and be distributed through the same channels. Furthermore, they are complementary. Therefore, they are similar.

The contested controllers for toys and the opponent’s toys usually coincide in producer, are distributed through the same channels, and target the same relevant public. Furthermore, they are complementary. Therefore, they are similar.

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 found to be identical or similar are directed at the public at large. The degree of attention is considered average.

c) The signs

REFLEX GAMING
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 words ‘reflex’ and ‘gaming’ are English words and will be understood by the part of the relevant public that understands English. Consequently, and in order to avoid doubts regarding a part of the public in the EU who may perceive one or both words as meaningless, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public in the EU that understands English.

The earlier trade mark is a word mark comprising two words. The word ‘REFLEX’ means, inter alia, ‘an action that is performed as a response to a stimulus and without conscious thought’ and ‘a person’s ability to respond quickly’ (information extracted from Oxford Dictionaries on 03/06/2020 at https://www.lexico.com/en/definition/reflex). Bearing in mind the relevant goods, the word ‘reflex’ may allude to the fact that the goods may enhance reflexes or that reflexes are necessary to use the relevant goods. Therefore, it has a low degree of distinctiveness.

‘GAMING’ is, inter alia, ‘the activity of playing computer games’ (information extracted from Collins Dictionary on 03/06/2020 at https://www.collinsdictionary.com/dictionary/english/gaming). This word is descriptive and non-distinctive in relation to toys, games and playthings; amusement, gaming, arcade and vending machines; hand-held or stand alone electronic games, video and amusement apparatus; computer games.

However, the combination of these words, ‘REFLEX GAMING’, does not evoke a clear or immediate concept or/ meaning for the relevant public. Therefore, as a whole, it has an average degree of distinctiveness, despite the limited, or even lack of, distinctiveness of the words comprising it, as described above.

The contested sign is a figurative mark composed of the verbal element ‘reflex’, depicted in stylised black italic lower-case letters, and an undefined figurative element.

The figurative element is not related in any way to the relevant goods and has an average degree of distinctiveness.

The considerations regarding the perception and distinctiveness of the verbal element ‘reflex’ of the earlier mark for the relevant public, apply equally for the contested sign.

The contested sign has no element that could be considered clearly more dominant than other elements. However, 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). Therefore, the consumer will refer to the contested sign by its verbal element ‘reflex’. Consequently, this will have a stronger impact on consumers than the figurative device.

Although the coinciding word ‘REFLEX’ has a low degree of distinctiveness in relation to the relevant goods, these considerations are not particularly relevant, as this verbal element is clearly recognisable in both signs and due to this the signs are similar, overall, as shown below.

Visually, the signs coincide in the verbal element ‘REFLEX’. They differ in the verbal element ‘GAMING’ of the earlier mark and in the figurative device of the contested sign, respectively.

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. When encountering the earlier mark, consumers will first perceive the word ‘REFLEX’, which is entirely reproduced as the sole verbal element in the contested sign. The differing verbal element ‘GAMING’ is the second word and is non-distinctive, and the figurative device in the contested sign has less impact on consumers than the verbal element.

Taking into account the position of the differing verbal element ‘GAMING,’ its limited capacity to indicate a commercial origin, and the fact that the first verbal element is reproduced entirely as an independent verbal element in the contested sign, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛REFLEX’, present identically in both signs. The pronunciation differs in the sound of the word ‛GAMING’ of the earlier mark, which has no counterpart in the contested sign. The figurative element in the contested sign will not be pronounced when referring to the contested sign verbally and is therefore not subject to a phonetic assessment.

Taking into account that the only word of the contested sign is pronounced identically to the first word in the earlier mark, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the differing word ‘GAMING’ will evoke a concept, both signs will be associated with the coinciding concept conveyed by the word ‘REFLEX’. Therefore, the signs are conceptually similar to a high degree.

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, despite the presence of weak and non-distinctive elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16). In addition, 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).

The goods are partly identical and partly similar. They target the public at large, which displays an average degree of attention.

The signs are visually similar to an average degree, and aurally and conceptually highly similar.

The coinciding word ‘REFLEX’ has more impact than the differing elements. In the earlier mark it is the first word and appears before the differing word ‘GAMING’. In the contested sign it has more impact on consumers than the figurative element.

Taking into account the positions of the coinciding and differing elements in the signs, as well as their impact on consumers and the fact that the only verbal element of the contested sign entirely reproduces the first word of the earlier mark, it is not possible to exclude a likelihood of confusion.

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).

It is common practice on the relevant market for companies to make variations of their trade marks, for example by altering their writing or adding verbal or figurative elements to them, in order to denote new product lines or endow their trade mark with a new image. Therefore, when encountering the conflicting signs, the relevant public will mentally register the fact that they share the element ‘REFLEX’ and perceive the contested sign as a variation of the earlier mark (or vice versa), and might be led to believe that the goods in question come from the same undertaking or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public that understands English. 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 3 769 288. It follows that the contested trade mark must be rejected for all the contested goods.

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, 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

Cynthia DEN DEKKER

Birute SATAITE-GONZALEZ

Erkki MÜNTER

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.