Steamplay | Decision 2713413
Date Published: Sep 24, 2017
OPPOSITION No B 2 713 413
Valve Corporation, 10900 NE 4th Street, Suite 500, Bellevue, WA 98004-4359, United States (of America) (opponent), represented by Casalonga Alicante, S.L., Avenida Maisonnave, 41-6C, 03003 Alicante, Spain (professional representative)
a g a i n s t
Wolf Herwegh Vonk, Atlantic Suites #1202 Europort Road, Gibraltar GX11 1AA, Gibraltar (applicant).
On 24/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 713 413 is upheld for all the contested services, namely
Class 41: Education, entertainment and sports.
Class 42: Design services; IT services; Science and technology services; Testing, authentication and quality control.
2. European Union trade mark application No 15 140 346 is rejected for all the contested services. It may proceed for the remaining services.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the services of European Union trade mark application No 15 140 346, namely against all the services in Classes 41 and 42. The opposition is based on, inter alia, European Union trade mark registrations Nos 4 310 629 and 11 727 534. The opponent invoked Article 8(1)(b) EUTMR.
Preliminary Remark
On 06/06/2016 the opponent filed a notice of opposition against all the services in Classes 36, 41 and 42 of the contested trade mark application No 15 140 346. However, with its submissions sent on 30/11/2016, the opponent informed the Office that it limits the extent of the opposition to the services in Classes 41 and 42.
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 registrations Nos 4 310 629 and 11 727 534.
- The goods and services
The goods and services on which the opposition is based are the following:
European Union trade mark registration No 4 310 629
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; computer software for the management, transmission, storage and sharing of computer game programs and electronically stored information across computer networks to users, for downloading and use of games by users.
Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.
Class 41: Education; providing of training; entertainment; sporting and cultural activities.
European Union trade mark registration No 11 727 534
Class 9: Electronic software updates, namely, downloadable computer software and associated data files for updating computer software in the field of games, provided by computer and communication network; video games; computer game programs downloadable via the internet; computer game software for use on mobile and cellular phones; computer software for the management, transmission, storage and sharing of computer game programs and electronically stored information across computer networks to users, for downloading and use of games by users.
Class 35: On-line retail store services featuring computer software namely, game software, video games, computer games, game programs, computer software tools and related merchandise; distributorship services in the field of computer software namely, game software, video games, computer games, game programs and computer software tools.
Class 41: Entertainment services, namely, providing online games and in mobile wireless form; entertainment services, namely, providing temporary use of non-downloadable computer games; providing a web site through which people locate information about tournaments, events, and competitions in the video and computer game field.
Class 42: Programming of video and computer software; providing a website and web based services for online management of personal computer game software.
Class 45: Social networking services in the field of gaming provided via a website and web based services.
The contested services are the following:
Class 41: Education, entertainment and sports.
Class 42: Design services; IT services; Science and technology services; Testing, authentication and quality control.
An interpretation of the wording of the list of services is required to determine the scope of protection of these services.
The term ‘namely’, used in the opponent’s list of services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.
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 41
The contested services Education, entertainment are identically contained in the opponent’s list of services (including synonyms) of earlier trade mark No 4 310 629.
The contested services sports are despite a different wording identical to the services sporting activities of the opponent’s earlier trade mark No 4 310 629.
Contested services in Class 42
The contested IT services include, as a broader category the opponent’s services Programming of video and computer software of earlier trade mark No 11 727 534. 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 Design services are similar to the opponent’s services Programming of video and computer software of earlier trade mark No 11 727 534 as the services coincide in their distribution channels, they are addressed at the same end-users and can be provided by the same companies that deal with IT issues. Therefore, these services are similar.
The contested Science and technology services are similar to the services Programming computer software of the earlier trade mark No 11 727 534, as the services coincide in its nature, are addressed to the same end-users and can be rendered by the same enterprises.
The remaining contested services Testing, authentication and quality control are similar to the opponent’s services Programming of video and computer software of earlier trade mark No 11 727 534. The Testing, authentication and quality control consists of broad categories of services, which may be applied to several technical and scientific areas as well as in the IT-field. Thus it can be part of the programming of computer software process too. In addition, software dedicated to testing, authentication and quality control can be programmed, and in this case the services would have the same nature and purpose and could be offered or rendered by the same undertakings. Therefore, these services are similar.
- 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 both at the public at large as well as at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the price, (specialised) nature and conditions of the purchased services.
- The signs
STEAM | Steamplay |
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 common element ‘STEAM’ is meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as the public in Ireland, Malta and the United Kingdom.
Both marks are word marks and in the case of word marks, it is the word as such that is protected and not its written form.
The earlier mark consists of the string of letters ‘STEAM’, whereas the contested mark consists of the conjoined word ‘STEAMPLAY’.
Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).
The word ‘STEAM’ forming the earlier mark and placed at the beginning of the contested sign will be understood by the English-speaking public as ‘the hot mist that forms when water boils’ (www.collinsdictionary.com). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
The additional word ‘play’ in the contested sign will be understood inter alia in the sense of ‘When you play the ball or play a shot in a game or sport, you kick or hit the ball’ (www.collinsdictionary.com). Bearing in mind that the relevant services are e.g. entertainment and sporting activities (in Class 41) and IT services (Class 42), this element is weak for these services, namely for all the services in Class 41 and some of the services in Class 42, whereas it is normal distinctive for some other services, as the Science and technology services; Testing, authentication and quality control in Class 42. Therefore, the element ‘STEAM’ is the more distinctive element at least for part of the services of the contested sign, namely for all the services in Class 41 and part of the services in Class 42.
Visually, the signs coincide in the distinctive element ‘STEAM’ of which the earlier mark is made of and which is placed at the beginning of the contested mark. However, they differ in the element ‘PLAY’ in the contested mark found to be less distinctive for part of the services.
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.
Therefore, the signs are similar at least to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛STEAM’, present identically in both signs. The pronunciation differs in the sound of the letters ‘PLAY’ of the contested mark, which have no counterparts in the earlier sign.
Therefore, the signs are similar at least to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The English-speaking part of the public will associate both marks with a similar meaning (‘the hot mist that forms when water boils’). As the additional element ‘play’ is weak at least for part of the services, the signs are conceptually similar at least to an average 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.
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.
- Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
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).
In the present case, the services are partially identical and partially similar and are directed at the public at large as well as at a specialised public whose attention varies between average and high. For procedural economy it is assumed that the earlier mark enjoys at least an average degree of inherent distinctiveness.
The signs are visually, aurally and conceptually similar at least to an average degree due to the distinctive element ‘STEAM’ which forms the entire earlier mark and which constitutes the beginning of the contested sign. The difference lies in the additional sequence of letters ‘PLAY’ found to be weak for part of the services and placed at the end of the contested sign where the public will pay less attention as consumers generally tend to focus on the beginning of a sign when they encounter a trade mark.
Furthermore, 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).
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), for example by adding the element ‘play’ to designate a variation of the services.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public in the European Union. 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 registrations No 4 310 629 and No 11 727 534. 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 marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.
As the earlier right ‘STEAM’ 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).
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
Lars HELBERT | Sigrid DICKMANNS | 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.