OPPOSITION No B 2 723 602
Winga S.r.l., Borgo Omero Masnovo, 2, 43121 Parma, Italy (opponent), represented by Maschietto Maggiore Besseghini Studio Legale, Via Vivaio 6, 20122 Milan, Italy (professional representative)
a g a i n s t
Fibra Expansió S.L., Av. Onze de Septembre 22, 17230 Palamós, Spain (applicant).
On 30/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 723 602 is upheld for all the contested services.
2. European Union trade mark application No 15 350 846 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 15 350 846. The opposition is based on European Union trade mark registration No 8 967 929. The opponent invoked Article 8(1)(b) and Article 8(5) 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 services
The services on which the opposition is based are the following:
Class 38: Telecommunications; telephone services; television services; all these services being dedicated to the managing of public games of the account department of State Monopoly and other national authority with the same power, through the provision of access on the web and other digital media (including mobile) to take part of games, lotteries, bets and prize competition.
Class 41: Publishing of electronic publications; publication of text books; providing a computer game that may be accessed by users on a global network and/or the Internet; providing interactive multi-player computer games via the Internet and electronic communication networks; games services provided on-line from a computer network; organising of games; gambling services; education; providing of training; entertainment; sporting and cultural activities; television entertainment.
The contested services are the following:
Class 38: Telecommunication services.
The contested telecommunication services are also covered under the earlier mark. Therefore, they are identical.
- 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 are directed at the public at large as well as at business customers with specific professional knowledge or expertise. The degree of attention is deemed average.
- The signs
| WINGA | VINGA |
|
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
While a small part of the relevant public may associate ‘VINGA’ with a Swedish island or a small Romanian city, this word and WINGA’ in the earlier mark are, in general, not understood or otherwise associated with meaning in certain parts of the relevant territory, for example, in the French-, Dutch-, English-, Spanish-, Italian-, or German-speaking parts. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the aforementioned parts of the public. In view of the fact that these words have no meaning for the public under analysis, the signs are distinctive. In addition, each sign being constituted of a single word, they do not have any element that could be considered clearly more eye-catching (dominant) than other elements.
Visually, the signs coincide in the verbal sequence ‘*-I-N-G-A’. However, they differ in their initial letters, ‘W’ and ‘V’ respectively’ albeit that a certain similarity can be drawn from these two letters as well considering the way they are formed. Therefore, the signs are visually highly similar.
Aurally, irrespective of the different pronunciation rules in different parts of the territory under analysis, the pronunciation of the signs coincides in the sound of the letters ‛*-I-N-G-A’, present identically in both signs. The pronunciation differs in the sound of the letters ‛W’ of the earlier mark and ‘V’ of the contested sign albeit that this difference is hardly perceptible in some parts of the territory under analysis such as the Dutch-speaking part. Therefore, the signs are aurally highly similar or even near-identical.
Conceptually, neither of the signs has a meaning for the public under analysis in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
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
According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).
According to the same line of case-law, 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). In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).
In the present case, the services are identical and the signs are visually and aurally similar to a high degree (or even aurally near-identical), and there is no concept to assist the public under analysis further in distinguishing one mark from the other.
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).
Considering all the above, there is a likelihood of confusion on the part of the
French-, Dutch-, English-, Spanish-, Italian-, or German-speaking parts 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 967 929. 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 due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
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 ground of the opposition, namely Article 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
| Sandra IBÁNEZ | Martina GALLE | Pedro JURADO MONTEJANO |
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.