QUICKSPIN | Decision 2622101
Date Published: Sep 24, 2017
OPPOSITION No B 2 622 101
Danske Lotteri Spil A/S, Korsdalsvej 135, 2605 Brøndby, Denmark (opponent), represented by Zacco Denmark A/S, Arne Jacobsens Allé 15, 2300 Copenhagen S, Denmark (professional representative)
a g a i n s t
QuickSpin AB, Birger Jarlsgatan 58, 114 29 Stockholm, Sweden (applicant), represented by Advokatfirma DLA Piper Sweden KB, Kungsgatan 9, 103 90 Stockholm, Sweden (professional representative).
On 31/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 622 101 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 462 568, . The opposition is based on Danish trade mark registration No VR 2004 01 518, ‘QUICK’. The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication 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 Danish trade mark No VR 2004 01 518, ‘QUICK’.
The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.
The contested application was published on 06/10/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Denmark from 06/10/2010 to 05/10/2015 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:
Class 16: Paper, cardboard, printed matter, printing type and printing blocks, printed material for use in gaming, lotteries and betting, including printed matter concerning guides and rules.
Class 28: Lottery tickets and coupons for games, lotteries and betting; scratch tickets for games, lotteries and betting.
Class 41: Entertainment services, sporting activities, bookmaking services and cultural activities, organizing of games, betting and lotteries.
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.
On 21/07/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 26/09/2016 to submit evidence of use of the earlier trade mark. On 10/10/2016, at the request of the opponent, this time limit was extended until 26/11/2016. On 24/11/2016, within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
- Exhibit 1: declaration by ‘QUICK’ product coordinator Maiken Skare Helsinghoff attesting that the enclosed photographs of scratch tickets (Exhibit 2) show tickets sold in Denmark between 06/10/2010 and 05/10/2015 and giving the following details: a total of 117 820 900 ‘QUICK’ scratch tickets were sold by 3 200 distributors; at every sales point, the scratch tickets are displayed on the counter in a specially designed box with ‘QUICK’ written on it and with a transparent lid through which the scratch tickets are visible (Exhibit 3). When a scratch ticket is produced and marketed, the expiry date is automatically fixed to two years after the production date.
- Exhibit 2: 20 samples of scratch tickets (text in Danish), bearing the mark
, with expiry dates in 2012 (4 tickets), 2013 (4 tickets), 2014 (3 tickets), 2015 (4 tickets), 2016 (3 tickets) and 2017 (2 tickets) visible on the back of the scratch tickets.
- Exhibit 3: examples of in-store advertising (in Danish with an English translation of the relevant parts), dated 02/11/2012 (Calendar display), 17/01/2013 (Salestrip 1), 22/04/2014 (Quick display) and 20/05/2015 (Stickers), used in supermarkets located in Kvickly Frederikssund, Løkken, Ødsten and Odense, respectively (information originating from the opponent).
- Exhibit 4: declaration by ‘QUICK’ product coordinator Maiken Skare Helsinghoff, attesting that the enclosed posters (Exhibit 5) were used in the marketing of ‘QUICK’ products in Denmark between 06/10/2010 and 05/10/2015 and giving the following details: a total of 273 600 posters were distributed to 3 200 distributors, and they were displayed in conspicuous places.
- Exhibit 5: examples of six posters bearing the mark
- Exhibits 6-16: copies of articles published on websites and in newspapers, such as Ekstrabladet.dk, Markedsforing.dk, Bureaubiz.dk, retailnews.dk, Nordyjyske.dk, Fokebladetlemvig.dk and Fredericia Dagblad, referring to the holder and to ‘QUICK’ campaigns, lotteries, products, winners, etc., dated 2011, 2012, 2013 and 2015 (in Danish with an English translation of the relevant parts).
- Exhibits 17-24: copies of annual reports from Danske Lotteri Spil A/S for 2011, 2012, 2013 and 2014 (available to the public on the website www.nne.dk), providing some information about the holder’s activities in relation to ‘QUICK’ products, the launch of a new mobile site, etc. (in Danish with an English translation of the relevant parts).
- Exhibit 25: printouts from Danske Spil’s Facebook profile (12 examples), showing the mark
- Exhibit 26: printouts from the Internet Archive Wayback Machine of the holder’s website www.danskespil.com/quick/ (12 examples), showing the mark
- Exhibit 27: declaration by ‘QUICK’ product coordinator Maiken Skare Helsinghoff, attesting that the report regarding traffic on www.danskespil.dk/quick/ between 01/01/2010 and 18/09/2016 (Exhibit 28) shows the number of users of the page, including page views, unique page views, average time spent on the page and bounce rate.
- Exhibit 28: report from Google Analytics regarding page views for www.danskespil.com/quick/. The figures for page views relate to the period from 20/09/2012 to 18/09/2016, since, before then, Danske Spil used a different web analytics product, which they no longer have access to. The report shows that, during that period, the holder’s page (excluding subpages) was accessed 11 238 099 times, thus exposing these users to Danske Lotteri Spil’s use of ‘QUICK’ for scratch tickets and games.
Article 42 EUTMR requires proof of genuine use of the earlier mark. In accordance with Rule 22(3) EUTMIR, the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the opponent’s trade mark for the relevant goods and services.
These requirements for proof of use are cumulative (05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43). This means that the opponent is obliged not only to provide information in relation to but also to prove the fulfilment of each of these requirements. However, the sufficiency of the evidence regarding the place, time, extent and nature of use has to be considered in view of the entirety of the evidence submitted. A separate assessment of the various relevant factors, each considered in isolation, is not suitable (17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 31).
As far as the declarations by ‘QUICK’ product coordinator Maiken Skare Helsinghoff (Exhibits 1, 4 and 27) are concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.
However, this does not mean that such statements do not have any probative value at all.
The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.
Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declarations are supported by the other items of evidence.
Place of use
The exhibits show that the place of use is Denmark. This can be inferred from the language of the documents (Danish), from the information in the declaration by ‘QUICK’ product coordinator Maiken Skare Helsinghoff (Exhibit 2), the extracts from articles and the annual reports (Exhibits 6-24), and from the names of some cities in Denmark. Therefore, the evidence relates to the relevant territory.
Time of use
The declarations by ‘QUICK’ product coordinator Maiken Skare Helsinghoff (Exhibits 1, 4 and 27) attesting to the use of the mark ‘QUICK’ are supported by examples of scratch tickets (Exhibit 2), posters (Exhibit 5), extracts from articles (Exhibits 6-16), printouts showing the opponent’s Facebook profile (Exhibit 25) and annual reports (Exhibits 17-27) dated within or providing information relating to the relevant period. Therefore, it is considered that most of the evidence submitted is dated within the relevant period.
Extent of use
As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.
The declaration by ‘QUICK’ product coordinator Maiken Skare Helsinghoff indicates that, between 06/10/2010 and 05/10/2015, a total of 117 820 900 ‘QUICK’ scratch tickets were sold by 3 200 distributors (Exhibit 1) and a total of 273 600 posters were used in the marketing of ‘QUICK’ products in Denmark. These figures are not supported by any invoices or other documents. However, the examples of ‘QUICK’ scratch tickets (Exhibit 2) and posters (Exhibit 5), showing actual goods on which the mark was used; the information provided in the extracts from articles (Exhibits 6-16) referring to ‘QUICK’ campaigns, lottery winners, prizes, agencies for marketing ‘QUICK’, 20 years’ presence in the market, etc.; the annual reports (Exhibits 17-24) referring to ‘QUICK’ scratch tickets, ‘QUICK’ advent calendars, ‘QUICK’ mobile games, advertisements, the opponent’s activities in the gaming market, the launch of the mobile site, etc.; and the printouts from Danske Spil’s Facebook profile (Exhibit 25), when taken together with the printouts from the Internet Archive Wayback Machine (Exhibit 26) and the report from Google Analytics regarding page views for www.danskespil.com/quick/ during the period from 20/09/2012 to 18/09/2016 (Exhibit 28), show that the mark ‘QUICK’ has been continuously used by the opponent during the relevant period in the field of lottery games and, therefore, provides the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use of the earlier mark.
In view of the above, it can be clearly seen that that the owner has seriously tried to acquire a commercial position in the relevant market by using its mark ‘QUICK’ within the relevant period. Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark in Denmark.
Nature of use
In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.
The evidence submitted in the exhibits listed above shows that the earlier sign was used in such a way as to establish a clear link between the goods and the undertaking responsible for their marketing. Therefore, the Opposition Division considers that the evidence shows use of the sign as a trade mark.
As can be seen from the evidence, the mark ‘QUICK’ was referred to in the articles and annual reports in the form in which it is registered, namely as a word mark, ‘QUICK’ (Exhibits 6-16 and Exhibits 17-24), and has been used for scratch tickets, posters, Danske Spil’s Facebook profile and lotteries on the opponent’s website www.danskespil.com/quick/ as a figurative mark, (Exhibits 2, 5, 25 and 26). Since the stylisation of the word ‘QUICK’ as used and the coloured background are of a rather decorative nature, the Opposition Division considers that these differences do not alter the distinctive character of the mark in the form in which it was registered.
In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR. The evidence submitted is also sufficient to demonstrate that the mark was used publicly and outwardly.
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).
Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.
However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services covered by the earlier trade mark.
According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
According to case-law, when applying the abovementioned provision the following should be considered:
…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.
Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.
(14/07/2005, T-126/03, Aladin, EU:T:2005:288.)
In the present case, the earlier mark was registered for broad categories of goods in Class 16; however, the evidence proves genuine use only for stickers. These goods can be considered to fall within the objective sub-category printed material for use in gaming and lotteries, included in the list of goods in Class 16 of the earlier mark. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark for printed material for use in gaming and lotteries in Class 16. In relation to the goods in Class 28 and services in Class 41, the evidence shows genuine use of the trade mark only for lottery tickets for games; scratch tickets for lotteries and organizing of games and lotteries, respectively.
Consequently, the Opposition Division considers that the evidence shows genuine use of the trade mark for the following goods and services:
Class 16: Printed material for use in gaming and lotteries.
Class 28: Lottery tickets for games; scratch tickets for lotteries.
Class 41: Organizing of games and lotteries.
Therefore, the Opposition Division will only consider the abovementioned goods and services in its further examination of the opposition.
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 goods and services
The goods and services on which the opposition is based are the following:
Class 16: Printed material for use in gaming and lotteries.
Class 28: Lottery tickets for games; scratch tickets for lotteries.
Class 41: Organizing of lotteries.
The contested goods and services are the following:
Class 9: Computers; computer games; software; computer systems; computer hardware; games software; programs (computer -) [downloadable software]; games software; electronic lottery apparatus; portable computers; information technology and audiovisual equipment; scientific research and laboratory apparatus, educational apparatus and simulators; audio/visual and photographic devices; data storage devices; games software; downloadable electronic game programs; games software.
Class 28: Games; counters for games; slot machines [gaming machines]; slot machines [gaming machines]; games (apparatus for -); electronic games; roulette wheels; roulette tables; ascenders [mountaineering equipment]; toys, games, playthings and novelties.
Class 41: Amusement arcades; gambling; amusement arcade services; amusement arcade services; operating of lotteries; operating of lotteries; prize draws [lotteries]; operating of lotteries; operating lotteries; gambling; gambling; casino facilities [gambling] (providing -); gaming services for entertainment purposes; casino, gaming and gambling services; entertainment; entertainment services; interactive entertainment services; entertainment, sporting and cultural activities; on-line gaming services; electronic games services provided by means of a global communication network; providing interactive multi-player computer games via the internet and electronic communication networks. None of the aforesaid services in the field of indoor cycling.
Class 42: Design of games; design services; computer graphics services; computer hardware development; hosting services and software as a service and rental of software; software development, programming and implementation; computer programming; computer programming of computer games; computer programming of video and computer games; homepage and webpage design; web portal design; advisory services relating to computer software used for graphics; providing information, advice and consultancy services in the field of computer software; design, maintenance, rental and updating of computer software; design, creation, hosting and maintenance of internet sites for third parties.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to 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.
Contested goods in Class 9
The contested computer games; software; games software (listed four times); programs (computer -) [downloadable software]; electronic lottery apparatus; downloadable electronic game programs have some points in common with the opponent’s lottery tickets for games. It cannot be excluded that some companies might offer electronic, online or downloadable versions of lottery games. The goods under comparison may have the same general purpose (i.e. enabling the user to play lottery games using paper or electronic lottery tickets), distribution channels and relevant public. Moreover, they may be offered by the same undertakings. Therefore, they are considered similar to a low degree.
The contested computers; computer systems; computer hardware; portable computers; information technology and audiovisual equipment; scientific research and laboratory apparatus, educational apparatus and simulators; audio/visual and photographic devices; data storage devices are not sufficiently closely related to any of the opponent’s goods and services in Classes 16, 28 and 41. These goods have different natures and, in most cases, different purposes from the goods and services of the earlier mark. Furthermore, they are neither in competition with each other nor complementary. Therefore, they are dissimilar.
Contested goods in Class 28
The contested games include, as a broader category, the opponent’s scratch tickets for lotteries. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested electronic games (listed twice) are similar to a high degree to the opponent’s scratch tickets for lotteries, which can be provided in the form of online or mobile scratch tickets. They have the same purpose and target the same relevant public. Furthermore, they can be provided by the same service providers and be complementary or in competition with each other.
The contested counters for games; slot machines [gaming machines]; slot machines [gaming machines]; games (apparatus for -) are different kinds of games and gaming machines that can have the same purpose, are offered by same undertakings and target the same public as the opponent’s lottery tickets for games. Moreover, they can be in competition with each other. Therefore, they are similar.
The contested roulette wheels; roulette tables are inseparable parts of a roulette game. Since the contested goods and the opponent’s lottery tickets for games both relate to games, they have the same purpose and may have the same producers, distribution channels and relevant public. Therefore, they are similar to a low degree.
The contested ascenders [mountaineering equipment] are mechanical devices used for ascending on a rope. As climbing equipment, they have nothing in common with the opponent’s goods and services in Classes 16, 28 and 41, which all relate to lotteries. Therefore, they are dissimilar.
Similarly, the contested toys, playthings and novelties, which are objects designed to be played with or ornaments or other objects that are sold as presents or souvenirs, are dissimilar to the opponent’s goods in Classes 16, 28 and 41, which all relate to lotteries. Although they may have similar purposes, namely to entertain their users and provide them with some fun, their natures, manufacturers and distribution channels differ. Moreover, they target different relevant consumers and are neither in competition nor complementary to each other.
Contested services in Class 41
The opponent’s organizing of lotteries consists in providing of a type of gambling game that involves the drawing of numbers for a prize offered to purchasers. This service is included in or overlaps with the contested services, such as amusement arcades; gambling (listed three times); amusement arcade services (listed twice); operating of lotteries (listed four times); prize draws [lotteries]; gaming services for entertainment purposes; casino, gaming and gambling services; entertainment; entertainment services; interactive entertainment services; entertainment, on-line gaming services; electronic games services provided by means of a global communication network; providing interactive multi-player computer games via the internet and electronic communication networks none of the aforesaid services in the field of indoor cycling to the extent that they all are gaming and gambling entertainment services and can encompass lottery games (including provided online). Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical.
The contested casino facilities [gambling] (providing -) are, by definition, complementary to gambling. These services are considered similar to the opponent’s organizing of lotteries, since, in addition to having the same purpose, namely providing a particular kind of gambling game, they can have the same service providers and relevant public.
The contested sporting and cultural activities are services related to the organisation of a variety of sporting, musical, literary and other related events. They are completely different in nature from the opponent’s goods and services in Classes 16, 28 and 41, which all relate to lotteries. These contested services and the opponent’s goods and services are provided by different undertakings, target different publics and are neither complementary nor in competition with each other. Therefore, they are considered dissimilar.
Contested services in Class 42
The contested design of games; design services; computer graphics services; computer hardware development; hosting services and software as a service and rental of software; software development, programming and implementation; computer programming; computer programming of computer games; computer programming of video and computer games; homepage and webpage design; web portal design; advisory services relating to computer software used for graphics; providing information, advice and consultancy services in the field of computer software; design, maintenance, rental and updating of computer software; design, creation, hosting and maintenance of internet sites for third parties are, in general, computer programing and computer design services, provided by specialists or companies specialising in computer programming and developing computer software and hardware for customers’ needs. They have a completely different nature and purpose from the opponent’s services in Classes 16, 28 and 41, which relate to a particular kind of gambling game. Although the opponent’s lottery games can be provided online, the services offered by opponent are gaming services, not programming services. Moreover, the providers, relevant consumers and distribution channels of the contested services and the opponent’s goods and services in Classes 16, 28 and 41 are also different. Therefore, they are considered dissimilar.
- 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 or similar (to different degrees) are directed at the public at large. The degree of attention is deemed average.
- The signs
QUICK | |
Earlier trade mark | Contested sign |
The relevant territory is Denmark.
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).
When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.
The earlier mark is a word mark consisting of a verbal element, ‘QUICK’.
The contested sign is a figurative mark, consisting of a verbal element, ‘QUICKSPIN’, written in stylised white upper case letters on an orange rectangular background.
The Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Moreover, according to settled case-law, the relevant Danish-speaking consumers generally also understand English in addition to Danish (17/01/2012, T-522/10, HELL, EU:T:2012:9, § 59).
Therefore, the Opposition Division considers that the relevant Danish-speaking public will be able to instantly identify the two words composing the contested sign ‘QUICKSPIN’ as the English words ‘QUICK’ and ‘SPIN’, essentially because they are both words known to them, and, when taken together, these words do not form a conceptual unit that would be any different from the sum of their parts.
The word ‘QUICK’, which forms the earlier mark and the first word of the contested sign, will be perceived as meaning, inter alia, ‘immediate or prompt; performed or occurring during a comparatively short time’ (information extracted from Collins English Dictionary on 21/08/2017 at http://www.collinsdictionary.com/dictionary/english/). This word alludes to general attributes of the relevant goods and services in Classes 16, 28 and 41, all of which relate to lottery games, as the relevant public may perceive it as referring to a ‘quick result’ or ‘quick win’, or as indicating that the goods and services are quick to use. Therefore, the word ‘QUICK’ is considered weak and its distinctiveness is low in relation to these goods and services.
The word ‘SPIN’ of the contested sign will be perceived as meaning, inter alia, ‘to rotate or cause to rotate rapidly, as on an axis’ (information extracted from Collins English Dictionary on 21/08/2017 at https://www.collinsdictionary.com/dictionary/english/). The word ‘SPIN’ is weak in relation to some of the relevant goods in Class 28, such as roulette wheels or slot machines [gaming machines], which might have spinning parts or involve a spinning action. However, for the remaining goods and services, it contains no clear informative or suggestive indication as regards their essential characteristics and, therefore, its distinctiveness is average.
Given the syntax of the contested sign ‘QUICKSPIN’, comprising an adjective, namely ‘QUICK’, and a verb, namely ‘SPIN’, the defining word in the combination is the second component, ‘SPIN’, as the word ‘QUICK’ merely serves as a modifier thereof. For this reason, the relevant consumers will attribute more trade mark significance to the word ‘SPIN’ than to the word ‘QUICK’, even in relation to the goods for which the distinctiveness of the element ‘SPIN’ is low. For the remaining goods and services, the word ‘SPIN’ is also considered the most distinctive element of the contested sign.
The orange rectangular background of the contested sign performs an ornamental role within the sign, thus bringing the verbal element of the mark to the attention of the public, and will be perceived as a purely decorative element by the relevant consumers.
The marks under comparison have no elements which could be considered more dominant (visually eye-catching) than other elements.
Visually, the marks coincide in ‘QUICK’, which constitutes the earlier mark in its entirety and is reproduced at the beginning of the contested sign, ‘QUICKSPIN’. However, the signs differ in the second element, ‘SPIN’, of the contested sign, as well as in its stylisation and the decorative orange rectangular background.
Although, as correctly stated by the opponent, consumers generally tend to focus on the initial part of a sign when encountering a trade mark, the specific circumstances of the case may allow a different conclusion to be drawn (07/05/2009, T-185/07, CK Creaciones Kennya, EU:T:2009:147, § 45). In the present case, the distinctiveness and the significance of the coinciding and differing elements also have to be taken into account. Since the signs coincide in the element ‘QUICK’, which is considered weak (for the reasons explained above), and differ in the element ‘SPIN’, which is the most significant and, for most of the goods and services, also the most distinctive element of the contested sign, this differing element will be the one that will attract and retain consumers’ attention.
Moreover, regard must also be had to the fact that the contested sign is much longer (it consists of nine letters, whereas the earlier mark consists of five) and this difference will not go unnoticed by the relevant consumers. In addition, the contested sign is presented against an orange rectangular background, which, albeit decorative in nature, will contribute to some extent (due to the eye-catching properties of the orange colour) to attracting the relevant consumers’ attention.
Therefore, the signs are considered visually similar to a lower than average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters /QUICK/, present identically in both signs. The pronunciation differs in the sound of the letters /SPIN/ of the contested sign, which have no counterparts in the earlier mark. Considering that the letters /SPIN/ result in an additional syllable at the end of the contested sign and taking into account the weight attributed to the coinciding element /QUICK/ (as explained above), the signs are considered aurally similar to at most an average degree.
Conceptually, the public in the relevant territory will perceive the words ‘QUICK’, contained in both signs, and ‘SPIN’, included in the contested sign, as having the meanings referred to above. Taking into account the syntax of the contested sign as a whole, its conceptual interpretation (as explained above) and the fact that the differing element ‘SPIN’ of the contested sign will, in any case, be attributed more trade mark significance than the weak coinciding element ‘QUICK’, the signs are considered conceptually similar to a low degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all of the relevant goods and services in Classes 16, 28 and 41.
- Global assessment, other arguments and conclusion
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).
As concluded above, the contested goods and services are partly identical, partly similar (to different degrees) and partly dissimilar to the opponent’s goods and services, and they target the public at large, which has an average degree of attention. The degree of distinctiveness of the earlier mark is low.
The signs are visually similar to a lower than average degree, aurally similar to at most an average degree and conceptually similar to a low degree on account of the verbal element ‘QUICK’, which constitutes the earlier mark in its entirety and is the first element of the contested sign. The signs differ in the second element, ‘SPIN’, and in the stylisation and colour of the contested sign.
Moreover, account must also be taken of the fact that the distinctiveness of the coinciding element ‘QUICK’ is considered low; therefore, the differing element ‘SPIN’ of the contested sign is the only distinctive element for at least part of the goods and services; and is the element that will be attributed most trade mark significance by the relevant Danish-speaking consumers. Therefore, it can be concluded that the differences between the marks are clearly perceptible and counteract the similarities that arise from the fact that the marks have a weak element, as indicated above, in common.
Consequently, it can be concluded that, despite the similarities between the marks under comparison, the differences between them are sufficiently striking and outweigh the commonalities to such an extent that a likelihood of confusion, including a likelihood of association, on the part of the relevant public with an average degree of attention can be excluded, even in relation to the identical goods and services.
Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public.
Therefore, the opposition must be rejected.
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.
The Opposition Division
Janja FELC | Rasa BARAKAUSKIENE | Judit NÉMETH |
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.