R | Decision 2376641 - Take-Two Interactive Software, Inc. v. NEXTCHANCE STOCKS, S.L.
Date Published: Sep 28, 2017
OPPOSITION No B 2 376 641
Take-Two Interactive Software, Inc., 622 Broadway, 3rd Floor, New York, NY 10012, United States of America (opponent), represented by Fieldfisher LLP, Riverbank House, 2 Swan Lane, London EC4R 3TT, United Kingdom (professional representative)
a g a i n s t
Nextchance Stocks, S.L., Paseo de la Castellana, 259 D, Planta 43 Sur, 28046 Madrid, Spain (applicant), represented by Roeb y Cia, S.L., Plaza de Cataluña, 4 - 1º, 28002 Madrid, Spain (professional representative).
On 30/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 376 641 is upheld for all the contested services.
2. European Union trade mark application No 12 586 897 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 12 586 897. The opposition is based on, inter alia, European Union trade mark registration No 8 274 144. The opponent invoked Article 8(1)(b), 8(5) and 8(4) 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 European Union trade mark registration No 8 274 144.
- The services
The services on which the opposition is based are the following:
Class 35: Advertising; business management; business administration; office functions; arranging, organizing and conducting events for advertising, commercial, marketing and promotional purposes; retail services connected with the sale of computer hardware, computer software, computer accessories and consumer electronics; retail services connected with the sale of recorded music and recorded movies; retail services connected with the sale of printed matter; retail services connected with the sale of clothing, footwear and headgear; retail service connected with the sale of phones and mobile phones; retail services connected with the sale of games, toys and playthings; marketing and promotion of special events and parties; information, advice and consultancy regarding the aforementioned services.
Class 38: Telecommunications; providing access to computer databases; providing access to computer networks; broadcasting, in particular by radio, television, satellite, cable networks and computer networks; rental of telecommunications equipment; streaming of music, audio and video material on the internet; information, advice and consultancy regarding the aforementioned services.
Class 41: Production, publication, distribution, public performance and rental of audio recordings; arranging of music concerts, music competitions, music festivals, music performances and music shows; production, publication, distribution, public performance and rental of video recordings, in particular of films, videos and television programs; arranging, organizing and conducting events for entertainment purposes, in particular computer game and video game conventions; providing amusement arcade services, in particular video game arcade services; rental of computer games and video games; rental of computer game equipment and video game equipment; record production, music distribution and music publishing services; production and distribution of motion pictures; arranging and conducting special events and parties; provision of downloadable sound, music, image, video and game files for retail purposes; information, advice and consultancy regarding the aforementioned services.
The contested services are the following:
Class 35: Advertising, dissemination of advertising texts, publication of advertisements; Rental of advertising space, sales promotion (for others), market studies; Opinion polling; Preparation, Design, Compilation and provision of statistical information.
Class 38: Telecommunications; Providing access to online forums for the transmission of messages between computer users; Providing access to databases; Providing access via computer networks to a digital platform for the dissemination of information, promotion and hiring of services.
Class 41: Entertainment, cultural and educational services; Providing information on matters related to recreational games, Cultural activities or Educational; Publishing, providing online electronic publications, not downloadable.
An interpretation of the wording of the list of services is required to determine the scope of protection of these services. The term ‘in particular’, used in the opponent’s list of services in Classes 38 and 41, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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 services in Class 35
Advertising is identically contained in both lists of services.
The contested dissemination of advertising texts, publication of advertisements are included in the broad category of the opponent’s advertising. Therefore, the services are identical.
The contested rental of advertising space, sales promotion (for others) are included in the broad category of, or overlap with, the opponent’s marketing and promotion of special events and parties. Therefore, the services are identical.
The contested market studies; opinion polling; preparation, design, compilation and provision of statistical information are included in the broad category of, or overlap with, the opponent’s business management. Therefore, the services are identical.
Contested services in Class 38
Telecommunications; providing access to databases are identically contained in both lists of services (including synonyms).
The contested providing access to online forums for the transmission of messages between computer users; providing access via computer networks to a digital platform for the dissemination of information, promotion and hiring of services are included in the broad category of the opponent’s providing access to computer networks. Therefore, they are identical.
Contested services in Class 41
The contested entertainment services include, as a broader category, the opponent’s arranging, organizing and conducting events for entertainment purposes, in particular computer game and video game conventions. 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 cultural services include, as a broader category, the opponent’s arranging of music concerts, music competitions, music festivals, music performances and music shows. 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 providing information on matters related to recreational games, cultural activities or educational include, as a broader category, or overlap with the opponent’s information regarding the aforementioned services [arranging of music concerts, music competitions, music festivals, music performances and music shows; arranging, organizing and conducting events for entertainment purposes, in particular computer game and video game conventions; music publishing 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 educational services and publishing, providing online electronic publications, not downloadable are similar to the opponent’s music publishing services, as they can coincide in producer, end user and distribution channels. Furthermore, they are complementary.
- 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 services found to be identical or similar are directed at the public at large as well as at business customers with specific professional knowledge or expertise.
The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased services.
- The signs
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 earlier mark is figurative and depicts an italic black upper case letter ‘R’ and a white five-pointed star, set against a white square with rounded corners.
The contested sign is figurative and depicts a golden upper case letter ‘R’ with a black five-pointed star placed in its central part, set against a black square with rounded corners.
Both marks will be recalled as being composed of single letter ‘R’s and five-pointed stars set against squares with rounded corners.
Single letters or single numbers are not devoid of any distinctive character (09/09/2010, C-265/09 P, α, EU:C:2010:508; 09/07/2008, T-302/06, E, EU:T:2008:267). However, the distinctive character of single-letter trade marks may generally be more difficult to establish (05/11/2011, T-378/12, X, EU:T:2013:574, § 43). In the present case, being individual letters, the signs have only a low degree of inherent distinctive character, and the letters will normally be seen in conjunction with further elements such as their figurative features.
The five-pointed stars in both signs will be associated with an indication of excellence and, therefore, are considered weak elements. The relevant public that understands the meaning of these elements will not pay as much attention to these weak elements as to the other, more distinctive, elements of the mark. Consequently, the impact of these weak elements is limited when assessing the likelihood of confusion between the marks at issue.
The squares with rounded corners in both signs are less distinctive, as they are figurative elements of a purely decorative nature.
The signs under comparison have no elements which 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).
Visually, the signs coincide in containing a single letter ‘R’ and a five-pointed star, set against a square with rounded corners. However, they differ in the font and size of the letter ‘R’s, which is italic in the earlier mark and larger in the contested sign, in the position of the star, at the bottom right in the earlier mark and replacing the central hole of the letter ‘R’ in the contested sign, and in the colours, black and white in the earlier mark and black and orange in the contested sign.
Taking into account the limited impact of the figurative elements and bearing in mind that both signs depict the same upper case letter ‘R’ in a very similar manner, they are visually similar to an 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 letter ‛R’, present identically in both signs. Therefore, the signs are aurally identical.
Conceptually, as both signs will be perceived as a single letter ‘R’ and a five-pointed star inside a square with rounded corners, the signs are conceptually identical.
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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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 services 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 elements in the mark as stated above in section c) of this decision.
- 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).
The contested services are considered identical or similar to the opponent’s services and they target the public at large and professionals, whose degree of attention is average to high. The earlier mark has a normal degree of distinctiveness.
The signs under comparison are aurally and conceptually identical, and visually similar to an average degree.
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).
In the present case, the signs have in common the upper case letter ‘R’, the five-pointed stars and the squares with rounded corners.
The way the letter ‘R’ appears in each sign is determinant. As mentioned above, the letter ‘R’ is depicted very similarly in both signs and creates similar overall impressions. Stylised single-letter marks depicting the same letter will be confused when the stylisation coincides in characteristic elements, which is the case in the present situation, as both letters are depicted using a standard font, each sign has the same figurative adornments and the star is in the same colour as the background.
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 essential elements, namely the single letter ‘R’s, the five-pointed stars and the squares with rounded corners, are present in both signs. Moreover, there are no further differing elements that can help the relevant public to distinguish them. In such circumstances it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand or a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
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 8 274 144. It follows that the contested trade mark must be rejected for all the contested services.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As earlier right EUTM No 8 274 144 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and 8(5) EUTMR.
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 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 Rule 94(3) and (6) and Rule 94(7)(d)(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
Fabian GARCIA QUINTO | Loreto URRACA LUQUE | Gueorgui IVANOV |
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.