OPPOSITION No B 2 707 449

MSC Technologies Systems GmbH, Munzinger Straße 3, 79111 Freiburg im Breisgau, Germany (opponent), represented by Lorenz Seidler Gossel Rechtsanwälte Patentanwälte Partnerschaft mbB, Widenmayerstr. 23, 80538 München, Germany (professional representative)

a g a i n s t

Shenzhen Original World Technology Co. Ltd, Rm.201, Block A No.1 Qianwan First Road, Qianhai Shengang Cooperative Zone, Shenzhen Guangdong, People’s Republic of China (applicant), represented by Sakellarides Law Offices, Adrianou Str. 70, 10556 Athens, Greece (professional representative).

On 07/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 707 449 is partially upheld, namely for the following contested goods and services:

Class 9:        Video game cartridges; computer programs [downloadable software]; computer game software; downloadable music files; downloadable image files; Global Positioning System [GPS] apparatus; computer software applications, downloadable; memory cards for video game machines; transmitters of electronic signals; cabinets for loudspeakers.

Class 41:        Game services provided on-line from a computer network; providing on-line electronic publications, not downloadable; games equipment rental; educational services; entertainment information; organization of competitions [education or entertainment]; arranging and conducting of workshops [training]; providing amusement arcade services.

2.        European Union trade mark application No 15 005 192 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 005 192. The opposition is based on, inter alia, European Union trade mark registration No 6 549 307. 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 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 6 549 307.

1. The goods and services

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

Class 9:         Electric, electronic and optical equipment for the processing, sending, transmission, relaying, storage and output of messages, images, text, speech and data, all for computers, including computers and computer systems mainly consisting thereof, in particular supercomputers and systems; converters; microprocessors; electric installations, consisting of a combination of the aforesaid apparatus and equipment; parts of all the aforementioned apparatus and instruments; computer programs (including operating systems) recorded on data carriers, and program systems, databases and program libraries mainly consisting thereof; punched cards and punched tapes, punched with recorded data, magnetic data carriers equipped with recorded data, namely magnetic tapes, magnetic disks and core memory, optical recording media, all for use with computers, in particular with supercomputers and systems.

Class 16:        Printed matter, namely catalogues, pamphlets, manuals, packaging and advertising materials for computers.

Class 38:        Telecommunications; providing access to a global computer network; providing telecommunication connections to global computer networks, providing access to computer programs on data networks; communication by computer terminals; computer-aided transmission of messages and images; leasing of access time to global computer networks.

Class 42:        Development, creation, further development and maintenance (improving and updating) of computer programs, computer program systems, databases and program libraries and the rental or leasing thereof subject to special contractual conditions (leasing by licence); preparation of electronic DP systems analysis and testing of electronic DP systems; data capture and processing machine-captured data for others; technical consultancy, providing of expertise, engineering and programming; rental of electronic data processing systems, technical project management in the field of electronic data processing, updating of software, consultancy in the field of computer hardware, computer hardware and software consultancy, computer systems analysis, design of computer systems, computer programming, electronic data processing consultancy, configuring computer networks by means of software, technical project management in the field of electronic data processing, rental of computers, computer software maintenance.

The contested goods and services are the following:

Class 9:         Video game cartridges; computer programs [downloadable software]; computer game software; downloadable music files; downloadable image files; Global Positioning System [GPS] apparatus; computer software applications, downloadable; memory cards for video game machines; transmitters of electronic signals; cabinets for loudspeakers.

Class 41:         Subtitling; game services provided on-line from a computer network; providing on-line electronic publications, not downloadable; videotaping; games equipment rental; educational services; entertainment information; organization of competitions [education or entertainment]; arranging and conducting of workshops [training]; providing amusement arcade services.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The terms ‘in particular’ and ‘including’, used in the opponent’s list of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods 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 goods.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under 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 video game cartridges; memory cards for video game machines are included in the broad category of, or overlap with, the opponent’s magnetic disks and core memory, all for use with computers. Therefore, they are identical.

The contested computer programs [downloadable software]; computer game software; computer software applications, downloadable are included in the broad category of, or overlap with, the opponent’s computer programs (including operating systems) recorded on data carriers, and program systems, databases and program libraries mainly consisting thereof. Therefore, they are identical.

The contested transmitters of electronic signals; global positioning system [GPS] apparatus are included in the broad category of, or overlap with, the opponent’s electric, electronic and optical equipment for the processing, sending, transmission, relaying, storage and output of messages, images, text, speech and data, all for computers. Therefore, they are identical.

The contested downloadable music files, downloadable image files are similar to the opponent’s printed matter, namely catalogues, pamphlets, manuals, packaging and advertising materials for computers in Class 16. The contested goods can, for example, be audio books, which may include short periods of music and pictures/images to separate different chapters; therefore, such goods would have the same purpose as printed matter in Class 16. They can coincide in their producer and end user. Furthermore, they are in competition.

The contested cabinets for loudspeakers are similar to the opponent’s electric, electronic and optical equipment for the processing, sending, transmission, relaying, storage and output of messages, images, text, speech and data, all for computers. The purpose of the contested goods is to hold parts of an apparatus that produces sound, speech or music, for instance a computer. Therefore, these goods are complementary, can be manufactured by the same producers, can use the same distribution channels and target the same consumers.

Contested services in Class 41

The contested game services provided on-line from a computer network; games equipment rental, providing amusement arcade services are similar to a low degree to the opponent’s computer programs (including operating systems) recorded on data carriers, and program systems, databases and program libraries mainly consisting thereof in Class 9. The earlier mark covers computer programs that could be used by those providing various entertainment services, such as games equipment rental. Therefore, the contested services and the opponent’s goods can be manufactured/rendered by the same entities, can use the same distribution channels and target the same consumers. In addition, they are complementary and in competition.

The contested providing on-line electronic publications, not downloadable; educational services; entertainment information; organization of competitions [education or entertainment]; arranging and conducting of workshops [training] are similar to either a low or an average degree to the opponent’s printed matter, namely catalogues, pamphlets, manuals, packaging and advertising materials for computers. The contested services are related to entertainment, cultural and teaching activities that require the use of printed material. Therefore, they can be manufactured/rendered by the same entities, can use the same distribution channels and target the same consumers as the opponent’s goods. In addition, they are complementary.

The contested subtitling and videotaping are dissimilar to the opponent’s goods in Classes 9 and 16 and services in Classes 38 and 42. The contested services are essentially related to entertainment (e.g. the production of shows, television programmes and movies) and cultural activities (e.g. concerts and karaoke events). They have nothing relevant in common with the opponent’s goods or services in Classes 9, 16, 38 and 42, since they have distinct natures and purposes and they do not originate from the same industry, let alone from the same undertakings. Furthermore, they are neither complementary nor in competition.

2. 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 (to various degrees) are directed both at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention will vary from average to higher than average depending on the price and sophistication of the goods and services; in particular, the services in Class 41 will attract a higher degree of attention.

3. The signs

Galaxy	clash of galaxy
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.

The coinciding element ‘GALAXY’ 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.

Both signs are word marks, ‘Galaxy’ (the earlier trade mark) and ‘clash of galaxy’ (the contested sign). In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether it is presented in upper or lower case characters, or in a combination thereof. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43).

‘GALAXY’, present in both signs, will be understood as ‘a system of millions or billions of stars, together with gas and dust, held together by gravitational attraction’ (information extracted from Oxford Dictionary on 31/03/2017 at www.en.oxforddictionaries.com/definition/us/galaxy).

Concerning the additional verbal elements of the contested sign, the word ‘clash’ means ‘a violent confrontation’ (information extracted from Oxford Dictionary on 31/03/2017 at www.en.oxforddictionaries.com/definition/us/clash) and ‘of’ is a preposition indicating an association between two entities, typically one of belonging. Therefore, the whole expression ‘clash of galaxy’ will be understood as ‘a violent confrontation of galaxy’, that is, ‘a violent confrontation of a system of millions or billions of stars held together by gravitational attraction’. The expression ‘clash of’ in the contested sign qualifies the word ‘GALAXY’.

Although the coinciding element ‘GALAXY’ and the other verbal elements of the contested sign, namely ‘clash’ and ‘of’, are meaningful for the relevant public, they are not descriptive, allusive or otherwise weak for the relevant goods and services.

The signs, one consisting of one word and one consisting of three words, have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the word ‘GALAXY’. However, they differ in the expression ‘clash of’ present in the contested sign, which means that the signs differ in their number of words/letters.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‛GA-LA-XY’, present identically in both signs. The pronunciation differs in the syllables ‛CLASH-OF’, present in the contested sign, which have no counterparts in the earlier mark. Therefore, the lengths of the signs when pronounced (i.e. their total number of syllables) are different.

Therefore, the signs are aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs have a coinciding element, that is, ‘GALAXY’, they will be associated with similar meanings. As explained above, the expression ‘clash of’ qualifies the word ‘galaxy’.

Therefore, the signs are conceptually highly similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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.

According to the opponent the earlier trade mark enjoys a high degree of distinctiveness.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• decision of 26/10/2004, BPatG, 32 W (pat) 083/03, Pizza Galaxy / Galaxy (Exhibit 1),
• decision of 22/07/2010, No B 1 526 394 (Exhibit 2).

Exhibit 1 is in German and was not translated into the language of the proceedings. Exhibit 2 is in English and confirms that ‘the word GALAXY has no meaning in relation to the goods and services at hand, the distinctiveness of the earlier mark must be seen as normal’.

The opponent did not submit any other documents that could provide evidence of enhanced distinctiveness, such as a survey on the mark’s recognition, invoices, price lists, an affidavit, turnover and sales figures, press cuttings or advertisements; the opponent submitted only the abovementioned decisions.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

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 goods and 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.

5. Global assessment, other arguments and conclusion

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.

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.

As concluded above, the contested goods are partly identical or partly similar, and the contested services are partly identical, partly similar (to various degrees) and partly dissimilar, to the opponent’s goods and services. The signs are visually similar to an average degree, aurally similar to an average degree and conceptually highly similar. Furthermore, the earlier mark has a normal degree of distinctiveness. Considering that the public in question includes the public at large and professionals, and that their degree of attention will vary from average to higher than average, the signs could be confused with each 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).

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 spite of the expression ‘clash of’ of the contested sign, which is not present in the earlier mark, the relevant consumers (including professionals) might be led by the visual, aural and conceptual commonalities in the word ‘Galaxy’ to believe that the identical and similar goods and services under the two marks come from the same undertaking or economically linked undertakings.

This possibility is even greater because the expression ‘clash of’ of the contested sign qualifies the coinciding, distinctive word ‘GALAXY’, as mentioned above. It should be noted that consumers tend to remember the similarities rather than the dissimilarities between signs.

Consequently, the Opposition Division finds that the dissimilarities between the signs are insufficient to counteract the visual, aural and conceptual similarities between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 6 549 307. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (to various degrees) to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

The opponent has also based its opposition on the following earlier trade mark: German trade mark registration No 2 046 278 for the word mark ‘GALAXY’.

Since this mark is identical to the one which has been compared and covers a narrower scope of goods and services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

COSTS

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

Jessica LEWIS

Michal KRUK

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.