THE TRACE | Decision 2547613 - TRACE TV (Société Anonyme) v. Relentless Software Limited
Date Published: Sep 25, 2017
OPPOSITION No B 2 547 613
Trace Global, 73, rue Henri Barbusse, 92110 Clichy, France (opponent), represented by Ipsilon, Le Centralis, 63, avenue du Général Leclerc, 92340 Bourg-la-Reine, France (professional representative)
a g a i n s t
Relentless Software Limited, One Air Street, Brighton BN1 3FB, United Kingdom (applicant), represented by Sheridans, Seventy Six Wardour Street, London W1F 0UR, United Kingdom (professional representative).
On 28/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 547 613 is upheld for all the contested goods and services.
2. European Union trade mark application No 13 878 954 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 878 954. The opposition is based on European Union trade mark registration No 8 180 267 and French trade mark No 3 747 505. 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 marks, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The goods and services
It should be emphasised that there is not complete correspondence between the wording of the list of goods and services indicated in the notice of the opposition and the wording of the list of goods and services listed in the English translation of the registration certificate regarding French trade mark registration No 3 747 505. As there is a discrepancy in the wording, the Opposition Division will take into consideration those goods and services listed in the English translation of the registration certificate regarding the French trade mark, which, despite the different wordings, covers the same scope of goods and services as listed in the notice of opposition.
The goods and services on which the opposition is based are, inter alia, the following:
Earlier mark 1: European Union trade mark registration No 8 180 267
Class 28: Games, toys, plush toys; jigsaw puzzles; gymnastic and sporting articles (except clothing); decorations for Christmas trees (except lighting); playing cards.
Earlier mark 2: French trade mark registration No 3 747 505
Class 9: Computer software (recorded); computer programs (downloadable software); electronic publications (downloadable) ; compact optical disks ; compact disks (audio-video) ; magnetic disks, optical disks ; video tapes ; apparatus for the recording, transmission, reproduction of sounds and images ; video game cartridges ; game software.
Class 16: Printed publications.
Class 38: Provision of access to computer database and websites to others via a global communication network; radio, television and media programs (interactive or not).
Class 41: Games offered on line on a computer network; entertainment; organization of competitions (education or amusement); organization of exhibition for cultural purposes or educational; television entertainment; organization and driving of colloquiums, conferences, congresses, seminars.
The contested goods and services are the following:
Class 9: Computer software; Computer and video games software; Computer software downloaded or downloadable; Electronic publications; Computer software publications downloaded; Interactive entertainment software; Data recorded electronically from the Internet; Data recorded in machine readable form from the Internet; Discs, tapes, cartridges, cd-roms and other magnetic, electronic or optical media, all bearing computer games software or video games; Software and apparatus for downloading, transmitting, receiving, providing, publishing, extracting, encoding, decoding, reading, storing and organizing audiovisual, videographic and written data; Computer software for gathering, processing, monitoring, analysing, managing and / or reporting information; Computer software for gathering, processing, monitoring, analysing, managing and / or reporting information concerning usage and performance of software, applications, computer and video games, websites, virtual worlds and audio visual content; Computer software for gathering, processing, Analysing, managing and reporting information concerning online, internet and web site activity; Computer software for data mining, data query, data processing and data analysis; Computer software for designing, developing, modifying and improving computer software, applications, computer and video games, websites and audio visual content and the marketing, promotion, sale, distribution, monetisation and operation of the foregoing; Information stored on electronic, magnetic and/or by optical means; Publications in electronic form supplied on-line from a database or from facilities provided on the Internet or other networks (including websites); Electronic notice boards; Online database; Parts and fittings for all the aforesaid goods; Computer games; Video games; Computer software for computer games and video games; Computer software downloaded or downloadable; Downloaded software publications; Interactive entertainment software; Data recorded electronically from the Internet; Data recorded in machine readable form from the Internet; Discs, tapes, cartridges, CDS and other magnetic, electronic or optical media, all with games software or video games.
Class 28: Games and playthings; Gymnastic and sporting articles not included in other classes; Decorations for Christmas trees; Electronic games apparatus; Hand-held computer games equipment; Home video game machines and hand-held video game machines; Parts and fittings for all the aforesaid goods; Board games; Electronic game machines; Equipment sold as a unit for playing card games; Electronic hand-held game units; Game equipment sold as a unit for playing aboard game, a card game; Stand-alone video output games machines, and manipulative puzzles; Playing cards; Card games; Three dimensional puzzles; Soft toys; Toys; Plush toys; Inflatable toys; Dolls; Playing cards; Action figures; Electronic amusement apparatus.
Class 41: Entertainment and education services, in the form of electronic, computer and video games provided by means of the internet, mobile telecommunications and other remote communications devices; Internet games (non downloadable); Organising of games; Games (not downloadable) played via a global computer network; Providing interactive and/or educational entertainment services; Education and entertainment services provided by computer networks, television, mobile telephone, cable and other electronic means; Presentation, preparation, editing and production of cinematographic, televisual, digital and motion picture films, radio and television programs; Publishing of computer and video games and computer and video games software; Provision of customised web pages for featuring game player information, including information regarding a player’s identity and the player’s preferences; Publishing of entertainment and/ or educational software; Arranging, organizing and conducting conferences and seminars for promotional purposes; Entertainment services in the form of television programmes, radio, cable, satellite and Internet programmes; Production and presentation of television programmes, shows, films, videos and DVDs; Games, online games, educational services relating to entertainment; Information relating to entertainment or education, provided on-line from a computer database or the Internet or by communications satellite, microwave or other electronic, digital or analogue media; Publishing; Organisation, production and presentation of events for educational, cultural or entertainment purposes; Organisation, production and presentation of competitions, contests, games, game shows, quizzes, fun days, exhibitions, shows, roadshows, staged events, live performances and participation events; Internet based games; Booking of tickets for entertainment events; Information and advisory services relating to any of the aforesaid services; providing on-line computer games; providing newsletters in the field of computer games via email; Advisory and consultancy services in connection with the foregoing.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The expression ‘in the form of’, used in the contested list of services in Class 41 to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection to only 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 goods in Class 9
The contested electronic publications include, as a broader category, the opponent’s electronic publications (downloadable). 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 publications in electronic form supplied on-line from a database or from facilities provided on the Internet or other networks (including websites) are included in the broad category of the opponent’s electronic publications (downloadable). Therefore, they are identical.
The contested computer software; computer and video games software; computer software downloaded or downloadable (listed twice); computer software publications downloaded; interactive entertainment software; data recorded electronically from the internet (listed twice); data recorded in machine readable form from the Internet (listed twice) discs (listed twice), tapes (listed twice), cartridges (listed twice); cd-roms and other magnetic, electronic or optical media, all bearing computer games software or video games; CDS and other magnetic, electronic or optical media, all with games software or video games; software for downloading, transmitting, receiving, providing, publishing, extracting, encoding, decoding, reading, storing and organizing audiovisual, videographic and written data; computer software for gathering, processing, monitoring, analysing, managing and / or reporting information; computer software for gathering, processing, monitoring, analysing, managing and / or reporting information concerning usage and performance of software, applications, computer and video games, websites, virtual worlds and audio visual content; computer software for gathering, processing, analysing, managing and reporting information concerning online, internet and web site activity; computer software for data mining, data query, data processing and data analysis; computer software for designing, developing, modifying and improving computer software, applications, computer and video games, websites and audio visual content and the marketing, promotion, sale, distribution, monetisation and operation of the foregoing; computer games; video games; computer software for computer games and video games; downloaded software publications; interactive entertainment software are all kinds of software that can be downloaded from the internet or recorded on a material support. They are identical to the opponent’s computer software (recorded); computer programs (downloadable software), as they are identically contained in (e.g. the contested computer software downloaded or downloadable and the opponent’s computer programs -downloadable software-), include (e.g. the contested data recorded electronically from the Internet and the opponent’s computer software), are included in the broad category of, or overlap with (e.g. the contested interactive entertainment software and the opponent’s computer software) the opponent’s goods.
The contested electronic notice boards are boards displaying messages and images used in different places, such as railway stations, public places, universities and general stores, for giving information. They are included in the broad category of, or overlap with, the opponent’s apparatus for the transmission, reproduction of images. Therefore, they are identical.
The contested apparatus for downloading, transmitting, receiving, providing, publishing, extracting, encoding, decoding, reading, storing and organizing audiovisual, videographic and written data is data processing apparatus. These contested goods are similar to the opponent’s computer software (recorded), as they have the same producers, relevant public and distribution channels. Furthermore they are complementary.
The contested online database is a database accessible from a local network or the internet hosted on websites and made available as software as a service product accessible via a web browser. This product is similar to the opponent’s computer software, as they have the same public and distribution channels. Moreover, they are complementary.
The contested information stored on electronic, magnetic and/or by optical means are similar to the opponent’s electronic publications (downloadable), as they have the same purpose. They can coincide in producer and relevant public. Furthermore, they are in competition.
The contested parts and fittings for all the aforesaid goods [computer software; computer and video games software; computer software downloaded or downloadable; electronic publications; computer software publications downloaded; interactive entertainment software; data recorded electronically from the internet (listed twice); data recorded in machine readable form from the internet (listed twice); discs (listed twice), tapes (listed twice), cartridges (listed twice), cd-roms and other magnetic, electronic or optical media, all bearing computer games software or video games; software and apparatus for downloading, transmitting, receiving, providing, publishing, extracting, encoding, decoding, reading, storing and organizing audiovisual, videographic and written data; computer software for gathering, processing, monitoring, analysing, managing and / or reporting information; computer software for gathering, processing, monitoring, analysing, managing and / or reporting information concerning usage and performance of software, applications, computer and video games, websites, virtual worlds and audio visual content; computer software for gathering, processing, analysing, managing and reporting information concerning online, internet and web site activity; computer software for data mining, data query, data processing and data analysis; computer software for designing, developing, modifying and improving computer software, applications, computer and video games, websites and audio visual content and the marketing, promotion, sale, distribution, monetisation and operation of the foregoing; information stored on electronic, magnetic and/or by optical means; publications in electronic form supplied on-line from a database or from facilities provided on the internet or other networks (including websites); electronic notice boards; online database] are parts and fittings related to software, electronic publications, recorded information and apparatus for reproduction and transmission of images. They are similar to the opponent’s computer software (recorded); computer programs (downloadable software); electronic publications (downloadable); apparatus for the transmission, reproduction of images, as they have the same producers, distribution channels and relevant public. Furthermore, in some cases, they can be complementary.
Contested goods in Class 28
The contested games; playing cards (listed twice); card games; toys are identically contained in both lists of goods (including synonyms, i.e. the contested card games and the opponent’s playing cards).
The contested gymnastic and sporting articles not included in other classes; decorations for Christmas trees include, as broader categories, the opponent’s gymnastic and sporting articles (except clothing); decorations for Christmas trees (except lighting). 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 three dimensional puzzles; soft toys; plush toys; Inflatable toys; dolls; action figures; manipulative puzzles are included in the broad category of the opponent’s toys. Therefore, they are identical.
The contested playthings include, as a broader category, the opponent’s playing cards. 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 apparatus; hand-held computer games equipment; home video game machines and hand-held video game machines; board games; electronic game machines; equipment sold as a unit for playing card games; electronic hand-held game units; game equipment sold as a unit for playing aboard game, a card game; stand-alone video output games machines, electronic amusement apparatus are included in the broad category of the opponent’s games. Therefore, they are identical.
The contested parts and fittings for all the aforesaid goods [games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; electronic games apparatus; hand-held computer games equipment; home video game machines and hand-held video game machines] are similar to the opponent’s games, toys, gymnastic and sporting articles (except clothing); decorations for Christmas trees (except lighting); playing cards, as they have the same producers, distribution channels and relevant public. Furthermore, in some cases, they can be complementary.
Contested services in Class 41
The contested entertainment is identically contained in both lists of services.
The contested entertainment and education services, in the form of electronic, computer and video games provided by means of the internet, mobile telecommunications and other remote communications devices; internet games (non downloadable); organising of games; games (not downloadable) played via a global computer network; providing interactive and/or educational entertainment services; entertainment services provided by computer networks, television, mobile telephone, cable and other electronic means; presentation, preparation, editing and production of cinematographic, televisual, digital and motion picture films, radio and television programs; provision of customised web pages for featuring game player information, including information regarding a player’s identity and the player’s preferences; entertainment services in the form of television programmes, radio, cable, satellite and Internet programmes; production and presentation of television programmes, shows, films, videos and DVDs; games, online games; organisation, production and presentation of events for cultural or entertainment purposes; organisation, production and presentation of competitions, contests, games, game shows, quizzes, fun days, exhibitions, shows, roadshows, staged events, live performances and participation events; internet based games; booking of tickets for entertainment events; providing on-line computer games are included in, or overlap with, the broad category of the opponent’s entertainment. Therefore, they are identical.
The contested organisation, production and presentation of events for educational purposes include, as a broader category, the opponent’s organization of exhibition for cultural purposes or educational. 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 arranging, organizing and conducting conferences and seminars for promotional purposes are included in the broad category of the opponent’s organization and driving of conferences, seminars (including synonyms). Therefore, they are identical.
The contested education services provided by computer networks, television, mobile telephone, cable and other electronic means; educational services relating to entertainment are closely connected to the opponent’s organization and driving of colloquiums, conferences, congresses, seminars. The opponent’s services, which can also be provided online and through other electronic means, are often organised for educational purposes, and it is common for the same undertakings to provide such services. These services may be complementary and use the same distribution channels. Consequently, these services are considered similar.
The contested publishing of computer and video games and computer and video games software; publishing of entertainment and/ or educational software; publishing are similar to the opponent’s computer software (recorded) in Class 9, as they have the same purposes, producers and relevant public.
The contested information relating to entertainment or education, provided on-line from a computer database or the internet or by communications satellite, microwave or other electronic, digital or analogue media are simply auxiliary services for the opponent’s entertainment. They have the same purposes, distribution channels and relevant public and they are offered through the same undertakings. Furthermore, they can be complementary. Therefore, they are similar.
The contested information relating to education, provided on-line from a computer database or the Internet or by communications satellite, microwave or other electronic, digital or analogue media are similar to the opponent’s organization and driving of colloquiums, conferences, congresses, seminars. They can have the same purposes, distribution channels, relevant public and producers. Furthermore, they can be complementary.
The contested information and advisory services relating to any of the aforesaid services [entertainment and education services, in the form of electronic, computer and video games provided by means of the internet, mobile telecommunications and other remote communications devices; internet games (non downloadable); organising of games; games (not downloadable) played via a global computer network; providing interactive and/or educational entertainment services; education and entertainment services provided by computer networks, television, mobile telephone, cable and other electronic means; presentation, preparation, editing and production of cinematographic, televisual, digital and motion picture films, radio and television programs; publishing of computer and video games and computer and video games software; provision of customised web pages for featuring game player information, including information regarding a player’s identity and the player’s preferences; publishing of entertainment and/ or educational software; arranging, organizing and conducting conferences and seminars for promotional purposes; entertainment services in the form of television programmes, radio, cable, satellite and Internet programmes; production and presentation of television programmes, shows, films, videos and DVDs; games, online games, educational services relating to entertainment; Information relating to entertainment or education, provided on-line from a computer database or the Internet or by communications satellite, microwave or other electronic, digital or analogue media; publishing; organisation, production and presentation of events for educational, cultural or entertainment purposes; organisation, production and presentation of competitions, contests, games, game shows, quizzes, fun days, exhibitions, shows, roadshows, staged events, live performances and participation events; Internet based games; booking of tickets for entertainment events]; advisory and consultancy services in connection with the foregoing (in relation to all the services listed above and to providing on-line computer games; providing newsletters in the field of computer games via email); providing newsletters in the field of computer games via email are advisory and information services related to entertainment and educational activities. They are similar to the opponent’s entertainment; organization and driving of colloquiums, conferences, congresses, seminars, as they can have the same purposes, distribution channels, relevant public and producers. Furthermore, they can be 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 goods and services in Classes 9 and 41 found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The goods in Class 28 are directed at the public at large.
The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase and their price.
- The signs
TRACE | |
Earlier trade marks | Contested sign |
The relevant territory is the European Union and France.
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.
In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the relevant public (also in relation to European Union trade mark No 8 180 267), for which the coinciding element ‘TRACE’ is meaningful and has, therefore, an impact on the conceptual perception of the signs.
Both of the earlier marks are word marks composed of the sole word ‘TRACE’. Being word marks, they have no elements that could be considered more distinctive or more dominant than other elements.
The word ‘TRACE’, included in both the earlier and contested signs, is a French word meaning ‘track, print, trace’. Although it is meaningful for the relevant public, as it is not descriptive, allusive or otherwise weak for the relevant goods and services, it enjoys a normal degree of distinctiveness.
The contested sign is a figurative mark consisting of the words ‘the TRACE’ in slightly stylised white letters (the word ‘the’ is in lower case letters and the word ‘TRACE is in upper case letters) and a figurative element (i.e. a depiction of a red fingerprint) within a black rectangular background.
As the word ‘the’ is written in extremely small characters, it is overshadowed by the other verbal and figurative elements of the contested sign, to the extent that a part of the relevant public will not consider it relevant and will disregard it. The following comparison will focus on this part of the public.
The depiction of a red fingerprint in the contested sign positioned behind the first two letters of the word ‘TRACE’ reinforces the concept of the word ‘TRACE’ and is neither descriptive nor allusive of, or otherwise weak for, the relevant goods and services.
The black rectangular background of the contested mark is a commonplace shape used in labels and is, therefore, purely decorative. Consequently, this figurative element has only a limited impact in the comparison of the trade marks.
Furthermore, 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, since 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; 19/12/2011, R 233/2011-4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Visually, the signs are similar to the extent that the earlier marks coincide entirely with the word element ‘TRACE’ of the contested sign. On the other hand, they differ in the figurative elements and slight stylisation of the verbal element ‘TRACE’ of the contested sign. As explained above, the figurative elements of the contested sign have less impact on the consumer than the verbal components. Moreover, the stylisation of the word ‘TRACE’ of the contested sign is not elaborate and, as consumers are well accustomed to the stylisation of verbal elements in marks, it will be perceived as merely a decorative depiction of the word element.
Therefore, the signs are visually similar to a high degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘TRACE’, present identically in both signs, and, thus, the marks are aurally identical.
Conceptually, the marks are identical, insofar as both marks refer to the concepts of the word ‘TRACE’ and because the figurative element of the contested mark (i.e. the depiction of a fingerprint) merely reinforces the concept of the word element ‘TRACE’.
- Distinctiveness of the earlier marks
The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, their distinctiveness must be seen as normal.
- Global assessment, other arguments and conclusion
The goods and services covered by the trade marks in dispute are partly identical and partly similar. The degree of attention may vary from average to high.
The signs are visually similar to a high degree and aurally and conceptually identical.
The differences between the signs are linked to only the figurative elements of the contested sign, which will have a minor impact on consumers, as explained in section c). This makes the fact that the marks coincide in the distinctive word ‘TRACE’ very relevant in this case.
Consequently, the Opposition Division finds that the dissimilarity caused by the additional figurative elements in the contested sign is outweighed by the similarity arising from the fact that the earlier signs are solely constituted by the word ‘TRACE’, which is fully reproduced in the contested sign. The high degree of visual similarity and the aural and conceptual identity between the signs will induce the relevant public, even that with a high degree of attention, to believe that the relevant goods and services come from the same undertaking or at least from economically linked undertakings.
Considering all the above, there is a likelihood of confusion on the part of the French-speaking part of the public. 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.
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
María Belén IBARRA DE DIEGO | Angela DI BLASIO | Andrea VALISA |
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.