Dino Dini's KICK OFF | Decision 2683285 - Firebrand Games Ltd v. Koo Games Ltd

Date Published: Sep 28, 2017

OPPOSITION No B 2 683 285

Firebrand Games Ltd, 123 St Vincent Street, Glasgow G2 5EZ, United Kingdom (opponent), represented by Clintons, 55 Drury Lane Covent Garden, London WC2B 5RZ, United Kingdom (professional representative)

a g a i n s t

Koo Games Ltd, Unit 11, Hove Business Centre Fonthill Road, Hove East Sussex BN3 6HA, United Kingdom (applicant).

On 22/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 683 285 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 679 336, namely against all the goods in Classes 9, 25 and 28.  The opposition is based on United Kingdom trade mark registrations No 2 412 402 and No 2 162 713. The opponent invoked Article 8(1)(b) EUTMR.

KICK OFF
Earlier trade marks	Contested sign

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The date of filing of the contested application is 14/10/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the United Kingdom from 14/10/2010 to 13/10/2015 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

United Kingdom trade mark registration No 2 412 402 ‘KICK OFF’

Class 9:        Computer software; computer programmes; tapes, discs, cards and wires; all being magnetic and/or bearing computer programmes; electronic memory units and optical discs; computer games; computer games programmes downloaded via the Internet, wireless telegraphy and electronic games (adapted for use with television receivers only)

United Kingdom trade mark registration No 2 162 713 ‘KICK OFF’

Class 9:        Computer software; computer programs; tapes, discs, cards and wires, all being magnetic and/or bearing computer programmes; electronic memory units and optical discs; computer games. 

On 08/09/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 13/11/2016 to submit evidence of use of the earlier trade marks. On 14/11/2016, within the time limit (since the deadline expired on Sunday), the opponent submitted the following evidence of use:

• 3 photographs showing a screen on which a video game can be seen. The terms ‘KICKOFF’, ‘KICK OFF’ and ‘Kick Off’ appear in the menu. The dates 1988 (on the first screenshot) and 2015 (on the third screenshot) are visible next to the copyright symbol.  

• A screenshot from the website everygamegoing.com presenting the game ‘Kick Off (2015) (ZX Vega, Preloaded)’.  

• A screenshot with a listing of ‘ZX Vega – Games’ from the website retrocomputerslimited.com including the name of the game ‘Kick Off’.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. However, even in an overall assessment of the evidence, the documents filed by the opponent do not provide the Opposition Division with any information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Although the opponent is not obliged to reveal the total volume of sales or turnover figures, it must at least provide some evidence regarding the commercial volume of use, which is one of the abovementioned factors relevant for evaluating the extent of use.

In its observations, the opponent indicates that ‘since 1980’s, KICK OFF has been available in Europe on a range of devices’, and that ‘it was the first sports game in the UK to sell over one million units’. However, these submissions are not supported by any objective evidence that could prove the turnover figures related to use of the marks or a certain amount of sales made during the relevant period. Such evidence could be in the form of, for example, invoices or accounting documents, such as business accounts or annual reports, relating to the relevant goods sold under the marks. Taking into account the characteristics of the goods for which the marks are registered, the opponent should have easily been able to produce evidence of commercial transactions. While it is true that the proprietor has a free choice as to the means of proving extent of use (08/07/2004, T 203/02, Vitafruit, EU:T:2004:225, § 37), it nonetheless has to show the reality of the commercial use of the marks, at least sufficiently to demonstrate that this use is not merely internal, sporadic or token.

The evidence filed by the opponent consists exclusively of five screenshots showing a computer game and websites including a reference to this game. Consequently, the Opposition Division finds it impossible to deduce from the material submitted that the opponent has seriously tried to acquire a commercial position in the relevant market for the trade marks at issue. In fact, the evidence, taken as a whole, does not allow the Opposition Division to conclude whether or not there were any actual sales of the goods in question on the market or to what extent those goods have been distributed.

Since the opponent has not provided any indications concerning the extent of the use of the earlier marks, the Opposition Division concludes that the evidence is clearly insufficient to prove that the earlier trade marks were genuinely used in the relevant territory during the relevant period of time.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.

COSTS

According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(ii) 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Ioana MOISESCU

Zuzanna STOJKOWICZ

Michele M. BENEDETTI-ALOISI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.