OPPOSITION No B 2 417 809

Maternus Treff Süd Spielhallen GmbH, Friedrich-Breuer-Straße 104-112, 53225 Bonn, Germany (opponent), represented by RWZH Rechtsanwälte, Barthstrasse 4, 80339 München, Germany (professional representative)

a g a i n s t

Sony Computer Entertainment Europe Limited, 10 Great Marlborough Street, London W1F 7LP, United Kingdom (applicant), represented by Boult Wade Tennant, Verulam Gardens, 70 Gray's Inn Road, London WC1X 8BT, United Kingdom (professional representative).

On 19/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 417 809 is partially upheld, namely for the following contested goods and services:

Class 9: Computer game software and video game software; downloadable, interactive computer and video game programs via mobile computer terminals or via the internet; downloadable computer game software; none of the aforesaid in relation to casinos, gambling games and games of chance.

Class 28: Handheld computer games; hand-held electronic video games; hand-held units for playing electronic games; computer and video game consoles; controllers and peripherals for computer games and video games and computer games and video game consoles; none of the aforesaid in relation to casinos, gambling games and games of chance.

Class 41: Provision of computer and video games programs from a computer database or via the Internet; none of the aforesaid in relation to casinos, gambling games and games of chance.

2. Community trade mark application No 13 166 319 is rejected for all the above goods and services. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 13 166 319. The opposition is based on Community trade mark registration No 9 515 248 for the word mark ‘WILD’ and Community trade mark registration No 9 515 321 for the figurative mark . The opponent invoked Article 8(1)(a) and (b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 Community trade mark registration No 9 515 321.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 14: Jewellery, horological and chronometric instruments.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; trunks and bags in the class; trunks and travelling bags; umbrellas, sun umbrellas, parasols.

Class 28: Coin-operated automatic gaming machines for adults; coin-operated billiard tables; tokens for gaming; playing cards and dice for adults.

Class 34: Smokers' articles; matches.

Class 41: Casino facilities; games on the Internet; gaming services; rental of games apparatus.

The contested goods and services, following a restriction requested by the applicant on 16/01/2015, are the following:

Class 9: Computer game software and video game software; downloadable, interactive computer and video game programs via mobile computer terminals or via the internet; downloadable computer game software; none of the aforesaid in relation to casinos, gambling games and games of chance.

Class 28: Handheld computer games; hand-held electronic video games; hand-held units for playing electronic games; computer and video game consoles; controllers and peripherals for computer games and video games and computer games and video game consoles; bags and cases adapted for the aforementioned goods; none of the aforesaid in relation to casinos, gambling games and games of chance.

Class 41: Provision of computer and video games programs from a computer database or via the Internet; none of the aforesaid in relation to casinos, gambling games and games of chance.

As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in 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 game software and video game software; downloadable, interactive computer and video game programs via mobile computer terminals or via the internet; downloadable computer game software; none of the aforesaid in relation to casinos, gambling games and games of chance are highly similar to the opponent’s games on the Internet in Class 41. It is usual that the producer of game software also offers those games on the Internet either to be downloaded or to be played without the need of downloading them. Therefore, they coincide in nature, relevant public, distribution channels and producers/providers.

Contested goods in Class 28

The contested handheld computer games; hand-held electronic video games; hand-held units for playing electronic games; computer and video game consoles; controllers and peripherals for computer games and video games and computer games and video game consoles; none of the aforesaid in relation to casinos, gambling games and games of chance are similar to the opponent’s rental of games apparatus in Class 41 as they can have the same producers/providers and end users. Likewise these opponent’s services in Class 41 are in competition with the contested goods in Class 28 since they serve the same purpose and are offered to the same actual and potential customers.

The contested bags and cases adapted for the aforementioned goods; none of the aforesaid in relation to casinos, gambling games and games of chance are similar to the opponent’s bags in Class 18 as they have the same nature, purpose, method of use and can have the same distribution channels.

Contested services in Class 41

The contested provision of computer and video games programs via the Internet; none of the aforesaid in relation to casinos, gambling games and games of chance are included in the broad category of the opponent’s games on the Internet. Therefore, they are considered identical.

The contested provision of computer and video games programs from a computer database; none of the aforesaid in relation to casinos, gambling games and games of chance is highly similar to games on the Internet since they have the same nature, purpose, the same end users and method of use.

2. The signs

	WiLD
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 (judgment of 08/09/2008, C‑514/06 P ‘Armacell’, paragraph 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 Spanish-speaking part of the relevant public.

As a preliminary remark, account is to be taken that word marks do not claim any particular figurative element or appearance therefore differences in the use of lower or upper case letters are immaterial, even if lower case and upper case letters alternate. Consequently, the fact that the contested sign includes one lower case letter is irrelevant for the present comparison.

Visually, the signs are similar to the extent that they coincide in ‘WILD’. However, they differ in the verbal elements ‘JOKERS’ and ‘CASINO’, the figurative elements and the colours of the earlier mark.

Aurally, the pronunciation of the signs coincides in the syllable ‘WILD’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the syllables ‛JO‑KERS’ and ‘CA-SI-NO’ of the earlier sign, which have no counterpart in the earlier sign.

Conceptually, the element ‘JOKERS’ in the earlier mark will be perceived by the relevant public as ‘Naipe de la baraja francesa que tiene el valor que su poseedor quiere darle’ [playing card from the French deck able to be given any value the holder pleases’ (information extracted from Diccionarios on 11/11/2015 at http://www.diccionarios.com/detalle.php?palabra=joker&dicc_100=on&palabra2=&Buscar.x=77&Buscar.y=26). As regards the element ‘CASINO’, it will be perceived as ‘local especializado en la práctica de juegos de azar, y donde ocasionalmente hay espectáculos, bailes y otras diversiones’ [facilities specializing in games of chance and where, on occasions, performances, dances and other amusements are offered] (information extracted from Diccionarios on 11/11/2015 at http://www.diccionarios.com/detalle.php?palabra=casino&dicc_100=on&palabra2=&Buscar.x=0&Buscar.y=0).

The element ‘WILD’ of the signs has no meaning for most of the relevant public. However, taking into account the goods and services concerned, it is conceivable that part of the relevant public perceives it as ‘(of a card, such as a joker or deuce in some games) able to be given any value the holder pleases’ (information extracted from the Collins English Dictionary on 02/11/2015 at http://www.collinsdictionary.com/dictionary/english/wild) due to the use of this element in English in the context of some card games of chance.

The figurative elements of the earlier mark represent a joker’s hat, playing cards and coins or tokens and may be associated with games and provision of games.

Taking into account the abovementioned visual, aural and, for part of the public, conceptual coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The element ‘JOKERS’ of the earlier mark will be associated with a certain playing card. Bearing in mind that the relevant goods and services are games on the Internet, rental of games apparatus and bags, it is considered that this element is weak for a part of these goods and services, namely for those related to card games. The public understands the meaning of the element and will not pay as much attention to this weak element as to the other more distinctive elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The element ‘WILD’ of the conflicting signs will be associated by part of the relevant public with a way of playing a card or deuce giving it any value the holder pleases. Bearing in mind that the relevant goods and services are games software, games, games apparatus and rental thereof and bags and cases as well as provision of games programs, it is considered that this element is weak for a part of these goods and services, namely for those related to card games. The part of the relevant public who understands the meaning of that element will not pay as much attention to this weak element as to the other more distinctive elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The element ‘CASINO’ of the earlier mark will be associated by the relevant public with facilities specializing in games of chance and where, on occasions, performances, dances and other amusements are offered. Bearing in mind that the relevant goods and services are games on the Internet, rental of games apparatus and bags, it is considered that this element is non-distinctive for all these goods and services except for bags and cases. The public understands the meaning of the element and will not pay as much attention to this non-distinctive element as to the other more distinctive elements of the mark. Consequently, the impact of this non-distinctive element is limited when assessing the likelihood of confusion between the marks at issue.

The figurative elements of the earlier mark representing a joker’s hat, playing cards and coins or tokens may be associated with games and provision of games therefore it is considered that these elements are weak for part of the goods and services found to be identical or similar, namely, games on the Internet, rental of games apparatus. Consequently, the impact of these weak elements is limited when assessing the likelihood of confusion between the marks at issue.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

4. 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 a part of the goods and services in question, namely those related to card games for the relevant public understanding the meaning of ‘WILD’. For that part of the public for whom the term ‘WILD’ has no meaning the mark has a normal degree of distinctiveness, despite the presence of some non‑distinctive and weak elements in the mark as stated above in section c) of this decision.

5. 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 are directed at the public at large. The degree of attention of the relevant public is average.

6. Global assessment, other arguments and conclusion

The goods and services have been found to be identical, highly similar and similar. The signs are similar to the extent that they coincide in the verbal element ‘WILD’ which is distinctive for all the goods and services for at least a significant part of the relevant public.

Although the coincidences in the signs are less obvious than the differences, a likelihood of confusion still exists, as the coinciding element plays for at least part of the public an independent distinctive role in both signs. In the contested mark it is the only element whereas in the earlier sign is it located in a central position of the sign and its layout (each letter of the verbal element in a different card) helps emphasizing said independent role.

Even though the visual differences may be significant due to the additional verbal and figurative elements of the earlier mark, account is taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place trust in the imperfect picture of them that he or she has kept in mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’, para. 26). Therefore a consumer with an average degree of attention and wishing to repeat a purchase experience might focus on the central, distinctive element of the previous earlier mark to try to repeat said experience or to avoid it, if it proved negative.

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. 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 (judgment of 14/07/2005, T-312/03 ‘Selenium- Ace’, paragraph 37; decision of 19/12/2011, R 0233/2011-4, ‘Best Tone’ paragraph 24; decision of 13/12/2011, R 0053/2011-5 ‘Jumbo’, paragraph 59).

Since the non-coinciding verbal elements are ‘JOKERS’ (weak for part of the goods and services) and ‘CASINO’ (non-distinctive for all the goods and services, except for bags and cases), the coincidence in the central verbal element, distinctive for all the goods and services for a significant part of the public, might be perceived by the consumer as a sign that both marks distinguish goods and services from the same undertaking or from economically-linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partially well founded on the basis of the opponent’s Community trade mark registration No 9 515 321.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar and highly similar to those of the earlier trade mark except for bags and cases adapted for the aforementioned goods; none of the aforesaid in relation to casinos, gambling games and games of chance given that the non-coinciding verbal elements are distinctive for these goods and sufficient to exclude the likelihood of confusion.

The opponent has also based its opposition on the following earlier trade mark:

• Community trade mark registration No 9 515 248 for the word mark ‘WILD’

Since this mark covers a narrower scope of goods and services and indeed is restricted ‘solely to games of chance’ whereas the contested mark excludes goods and services related to ‘games of chance’, the outcome cannot be different with respect to goods for which the opposition has already been rejected. In particular, no likelihood of confusion exists with respect to bags and cases adapted for the aforementioned goods; none of the aforesaid in relation to casinos, gambling games and games of chance given that the indicated CTM No 9 515 248 is not registered for Class 18.

For the sake of completeness, it must be mentioned that the opposition must also fail in so far as based on grounds under Article 8(1)(a) CTMR because the goods and services are obviously not identical.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Beatrix STELTER

LORENA MARTINEZ CARRION

Martin EBERL

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.