OPPOSITION Nо B 3 104 257

 

Tvi-Televisão Independente, S.A., Rua Mário Castelhano, 40 Queluz de Baixo, 2749-502 Barcarena, Portugal (opponent), represented by Garrigues Ip, Unipessoal Lda., Avenida da República, 25 - 1º, 1050-186 Lisboa, Portugal (professional representative) 

 

a g a i n s t

 

Netent Product Services Ltd, Level One, Spinola Park Mikiel Ang. Borg Street, Spk1000 St. Julians, Malta (applicant), represented by Advokatbyrån Gulliksson Ab, Carlsgatan 3, 211 20 Malmö, Sweden (professional representative).

On 13/10/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 104 257 is upheld for all the contested goods and services.

2.	European Union trade mark application No 18 115 507 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 18 115 507 ‘Wilderland’ (word mark). The opposition is based on inter alia, national trade mark registration (Portugal) No 606 242, ‘WONDERLAND’ (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.

 

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 national trade mark registration (Portugal) No 606 242, ‘WONDERLAND’ (word mark).

 

a) The goods and services

 

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

 

Class 35: Organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes.

Class 41: Theme park and amusement park services; entertainment services in the form of shows in amusement parks; organization of entertainment shows; production of shows; production of radio and television programs; services consisting of conducting radio and television programs; fun services in the form of television programs.

The contested goods and services are the following:

Class 9: Interactive computer game programs; Software and applications for mobile devices; Entertainment software; Computer gaming software; Computer game software, downloadable.

Class 41: Entertainment services, namely providing interactive entertainment services, gambling services and game services provided online from a computer network. 

The Opposition Division takes note that the list of services in class 41 of the contested mark has been limited as of 05/02/2020, by request of the applicant’s representative.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these services.

  

The term ‘namely’ used in the applicant’s list of services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

 

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.

 

Contested goods in Class 9

 

The contested interactive computer game programs; software and applications for mobile devices; entertainment software; computer gaming software; computer game software, downloadable in class 9 all concern software. Software is a broad category of goods that also include entertainment software, used for example in relation to entertainment services. Furthermore, the contested interactive computer game programs; computer gaming software; computer game software, downloadable, have the same purpose as mentioned above, i.e. to entertain the user. The goods in class 9 are therefore similar to a low degree to the opponents organization of entertainment shows in Class 41, as the goods and services are complementary, they target the same relevant public and are provided by the same companies.

Contested services in class 41

The contested entertainment services, namely providing interactive entertainment services, gambling services and game services provided online from a computer network concern various entertainment services provided online, which could include online games, videos and gambling. These services are considered similar to the earlier production of shows, as these can also be interactive and relating to gambling or gaming. The aforementioned services in class 41 are found to be similar to at least an average degree, as they can be complementary, they target the same relevant public and are provided by the same companies.

b) Relevant public — degree of attention

  

The average consumer of the category of goods and services 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 similar to differing degrees are directed at the public at large as well as business customers with specific professional knowledge or expertise, this is especially the case for the opponents production of shows. The degree of attention is considered to vary from average to above average, given that the amounts of money to gamble with and to produce shows can be considerable.

c) The signs

 

WONDERLAND	Wilderland
Earlier trade mark	Contested sign

 

 

The relevant territory is Portugal.

 

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 verbal elements ‘WONDERLAND’ and ‘WILDERLAND’ are meaningless for the vast majority of the public in the relevant territory. Therefore, for this part of the public the marks are meaningless terms and are considered to have a normal degree of distinctive character. As the verbal elements of the marks are not meaningful for the vast majority of the public in the relevant territory, the Opposition Division finds it appropriate to focus the comparison on this part of the public.

Visually, the signs coincide in their first letter, namely ‘W’, and their last seven letters, that is, ‘-DERLAND. However, they differ in their second and third letters, namely ‘ON’ of the earlier mark and ‘IL’ of the contested sign. Since the differences between the marks are preceded and followed by letters that do constitute coincidences between them, the visual impact of the differing letters is somehow diluted. Both marks contain ten letters of which the marks share eight letters. Furthermore, the length of the signs may influence the effect of the differences between the marks. In this case, the same length of the signs means that the public will not easily notice the difference in just two letters amidst identical letters.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛W**DERLAND’, present identically in both signs. The pronunciation differs in the sound of their second and third letters, namely ‘ON’ of the earlier mark and ‘IL’ of the contested sign. Given the number of the same letters within the marks and the fact that both their beginning and ending are the same, it is likely that the difference between the marks can go unnoticed by the relevant public.

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

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

 

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.

 

e) Global assessment, other arguments and conclusion

 

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.

The contested goods have been found similar to a low degree and the contested services have been found similar to at least an average degree and they target both the public at large and a more professional public, whose level of attention varies from average to above average. The earlier mark is deemed to have a normal degree of distinctiveness. The signs have been found to be visually and aurally similar to an average degree. Whilst their conceptual aspect does not influence the assessment of the similarity of the signs.

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).

Therefore, the difference between the signs is not enough to counteract the similarities and to safely exclude a likelihood of confusion. It can be reasonably concluded that consumers will not be able to distinguish between the marks in dispute for the goods and services that are similar to differing degrees, even for those found similar to a low degree. Indeed, when balancing in all the aforementioned factors they will perceive them as having the same origin.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 606 242, ‘WONDERLAND’ (word mark). It follows that the contested trade mark application must be rejected for all the contested goods and services.

As the earlier right, European Union trade mark registration No 606 242, ‘WONDERLAND’ 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 right 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, 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

 

 

Inés GARCÍA LLEDÓ

Dagny JOHANSSDOTTIR

Vanessa PAGE

 

 

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.