OPPOSITION DIVISION
OPPOSITION No B 2 801 390
Take-Two Interactive Software, Inc., 622 Broadway, 3rd Floor, New York NY 10012,
United States of America (opponent), represented by Fieldfisher LLP, Riverbank
House 2 Swan Lane, London, City of London EC4R 3TT, United Kingdom
(professional representative)
a g a i n s t
Hong Kong Netease Interactive Entertainment Limited, 1/F, Xiu Ping Commercial
Bldg, 104 Jervois Street, Sheung Wan, Hong Kong Special Administrative Region of
the People’s Republic of China (applicant), represented by Metida Law Firm
Zaboliene and Partners, Business center Vertas, Gynéjų str. 16, 01109 Vilnius,
Lithuania (professional representative).
On 20/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 801 390 is upheld for all the contested goods and services.
2. European Union trade mark application No 15 713 407 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
PRELIMINARY REMARKS
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 15 713 407 (word mark ‘Dream City Story’). The
opposition is based on, inter alia, European Union trade mark registration
No 12 687 695 (word mark ‘CITY STORIES’). The opponent invoked Article 8(1)(b)
and Articles 8(4), (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
Decision on Opposition No B 2 801 390 page: 2 of 7
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 12 687 695.
a) The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Computer and video game programs and software; downloadable computer
and video game programs and software; downloadable digital materials, namely, ring
tones, wallpapers, screensavers, digital music files, and graphics, videos, films,
multimedia files, live action programs, motion pictures, and animation in the field of
video games and computer games, all delivered via global computer networks and
wireless networks; pre-recorded digital media featuring computer games and video
games, ring tones, wallpapers, screensavers, digital music files, and graphics,
videos, films, multimedia files, live action programs, motion pictures, and animation in
the field of video games and computer games.
Class 41: Entertainment services, namely, providing online games, providing a
website featuring computer games and video games, and news, information, tips,
hints, contests, computer interface themes, enhancements, audio-visual content,
music, films, videos, television programs, animated series, and other multimedia
materials in the field of computer games and video games; providing information,
news and commentary in the field of computer games and video games.
The contested goods and services are the following:
Class 9: Computer game software; Computer game discs; Downloadable computer
game programs; Computer game software downloadable from a global computer
network; Electronic games software for wireless devices; Interactive multimedia
computer game programs; Recorded computer game programs; electronic game
software for hand-held electronic devices.
Class 41: Entertainment services, namely, providing on-line computer games;
Providing computer games that may be accessed via a global computer network;
Providing information on-line relating to computer games and computer
enhancements for games; Electronic games services provided by means of the
internet; Organization of competitions [education or entertainment]; Providing on-line
electronic publications, not downloadable; providing on-line entertainment in the
nature of game shows; Game services provided on-line from a computer network or
mobile phone network; Game services provided by means of communications by
computer terminals or cellular phone; Information relating to computer gaming
entertainment provided on-line from a computer database or a global communication
network.
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 term ‘namely’, used in the both lists of goods and services to show the
relationship of individual goods and services to a broader category, is exclusive and
restricts the scope of protection only to the goods and services specifically listed.
Decision on Opposition No B 2 801 390 page: 3 of 7
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
Computer game software; Downloadable computer game programs; Computer game
software downloadable from a global computer network are identically contained in
both lists of goods (including synonyms).
The contested electronic games software for wireless devices; interactive multimedia
computer game programs; recorded computer game programs; electronic game
software for hand-held electronic devices are included in the broad category of, or
overlap with, the opponent’s computer and video game programs and software.
Therefore, they are identical.
The contested computer game discs are included in the broad category of, or overlap
with, the opponent’s pre-recorded digital media featuring computer games and video
games. Therefore, they are identical.
Contested services in Class 41
Entertainment services, namely, providing on-line computer games are identically
contained in both lists of services (including synonyms).
The contested providing information on-line relating to computer games and
computer enhancements for games; information relating to computer gaming
entertainment provided on-line from a computer database or a global communication
network are included in the broad category of, or overlap with, the opponent’s
providing information, news and commentary in the field of computer games and
video games. Therefore, they are identical.
The contested providing computer games that may be accessed via a global
computer network; electronic games services provided by means of the internet;
providing on-line entertainment in the nature of game shows; game services
provided on-line from a computer network or mobile phone network; game services
provided by means of communications by computer terminals or cellular phone
overlap with the opponent’s entertainment services, namely, providing online games.
Therefore, they are identical.
The contested providing on-line electronic publications, not downloadable are similar
to the opponent’s providing information, news and commentary in the field of
computer games and video games as they may coincide in provider, end user and
distribution channels.
The contested organization of competitions [education or entertainment] are similar to
the opponent’s entertainment services, namely, providing online games, providing a
website featuring computer games and video games, and news, information, tips,
hints, contests, computer interface themes, enhancements, audio-visual content,
music, films, videos, television programs, animated series, and other multimedia
materials in the field of computer games and video games as they may coincide in
provider, end user and distribution channels.
Decision on Opposition No B 2 801 390 page: 4 of 7
b) 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 is considered to be average.
c) The signs
CITY STORIES Dream City Story
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).
Both signs are word marks. In the case of word marks, the word itself is protected;
therefore the use of upper or lower case character is irrelevant.
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 elements ‘City’ and ‘story/ies’ are meaningful in certain territories, for
example in those countries where English 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 United Kingdom.
The verbal elements in both signs will be understood as such by the relevant public,
namely city as a ‘a large or important municipality’, story as a ‘a short account of an
amusing, interesting, or telling incident, whether real or fictitious’ and dream as a ‘a
series of images, thoughts, and emotions, often with a story-like quality, generated by
mental activity during sleep’ (see for all definitions the Oxford English Dictionary). As
they are not descriptive, allusive or otherwise weak for the relevant goods and
services, they are distinctive.
Visually, the signs coincide in ‘City Stor*’, they only differ in the ending of the word
‘story/stories’ and in the additional word ‘dream’ at the beginning of the contested
sign.
Therefore, the signs are highly similar.
Decision on Opposition No B 2 801 390 page: 5 of 7
Aurally, the pronunciation of the signs coincides in the syllables ‛Ci-Ty Sto-’, present
identically in both signs and is highly similar in the syllables ‘-ries’ versus ‘-ry’. The
pronunciation differs in the syllable ‛dream’ of the contested mark, which has no
counterpart in the earlier sign.
Therefore, the signs are highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As the signs will be associated with a similar
meaning, 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.
d) 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
clear 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.
e) Global assessment, other arguments and conclusion
The goods and services are identical and similar. The earlier mark is almost entirely
reproduced in the contested mark, the only difference is the use of singular or plural
of the word “story”. The signs are conceptually, visually and aurally highly similar.
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).
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).
Considering all the above, there is a likelihood of confusion on the part of the
English-speaking part of the public. As stated above in section c) of this decision, a
Decision on Opposition No B 2 801 390 page: 6 of 7
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 12 687 695. It follows that the contested trade mark
must be rejected for all the contested goods and 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 as claimed by the opponent. The result
would be the same even if the earlier mark enjoyed an enhanced degree of
distinctiveness.
As the earlier right ‘CITY STORIES’ leads to the success of the opposition and to the
rejection of the contested trade mark for all the goods and 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).
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 grounds of the opposition,
namely Article 8(4) and (5) EUTMR.
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Claudia MARTINI Lars HELBERT Tobias KLEE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
Decision on Opposition No B 2 801 390 page: 7 of 7
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.