OPPOSITION DIVISION
OPPOSITION No B 2 462 136
Optimus-Comunicações S.A., Lugar do Espido, Via Norte, 4470-901 Maia, Portugal
(opponent), represented by Cruz, Menezes & Associados – Soc. Advogados, RL.,
Rua Victor Cordon, n.º 10 A, 4.º e 5.º Pisos, 1249-202 Lisbon, Portugal (professional
representative)
a g a i n s t
Tournament Holdings N.V., Landhuis Joonchi, Kaya Richard J., Beaujon, Curaçao
(applicant), represented by Lincoln IP Limited, 9 Victoria Street, Aberdeen,
Aberdeenshire AB10 1XB, United Kingdom (professional representative).
On 24/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 462 136 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
Preliminary remark
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 part of the goods and services of European
Union trade mark application No 13 448 451 , namely against all the goods
and services in Classes 9 and 38. The opposition is based on Portuguese trade mark
registration No 514 136 . 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
Decision on Opposition No B 2 462 136 page: 2 of 7
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.
a) The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Mobile telephones and cards for mobile telephones; telecommunication
equipment, communication and transmitting apparatus; information broadcasting,
transmitting and receiving terminals (namely telephone centrals, telephone and
radiotelephony apparatus ); computers, including data magnetic media; parts and
accessories for all the above products
Class 38: Telecommunication services
The contested goods and services are the following:
Class 9: Computer software; computer programmes; computer games; computer
games programmes downloaded via the internet; computer programmes for
interactive games or quizzes; video game software; mobile phone applications; pre-
recorded media carrying electronic recordings of data including images, text,
graphics and sound; data carriers bearing or for use in bearing sound recordings,
video recordings, data, images, games, graphics, text, programs or information;
downloadable electronic media (sound and/or video recording media); software to
enable uploading, posting, downloading, displaying, blogging, sharing or otherwise
providing electronic media and information over the Internet and other
communications networks; podcasts; software to enable blogging and microblogging;
downloadable electronic media; downloadable video and sound recordings;
electronic publications provided on-line from databases or the Internet; CDs; DVDs;
videos; CD-ROMs and MP3s; mobile phone software; downloadable electronic
media for telephones; downloadable video and sound recordings for telephones;
computer accessories; screen savers; mouse mats; computer games downloaded
from the Internet for card games; parts and fittings for all the aforesaid goods.
Class 38: Broadcasting services; mobile communication services; mobile telephone
communication services; providing online and telecommunication facilities for real-
time interaction between users of computers, mobile and handheld computers, and
wired and wireless communication devices; transmission of interactive entertainment
software; transmission of information; broadcasting by television, radio and satellite;
broadcasting and transmission of programmes; message sending services;
electronic communication services; electronic mail and messaging services; video
messaging services; providing user access to the internet; providing access to a
global computer network; providing of access to platforms and portals on the
internet, in particular for real time interaction with other users playing online games;
provision of telecommunications access and links to computer databases and the
Internet; provision of telecommunication services to enable users to electronically
transmit messages, text, photographs, music, videos, multimedia content, audio,
animation and images via a global computer network; providing access to MP3
websites on the Internet; provision of wireless telecommunications via electronic
communication networks; electronic sending of data via the Internet; electronic
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transmission of audio and video files via communications networks; blogging and
microblogging services; chat room services; provision and operation of internet chat
rooms and on-line forums; chat room services for social networking; providing an
online community for users to share information, photos, blogs, opinions, notes and
audio and video content, to get feedback from their peers, to form virtual
communities, and to engage in social networking; providing on-line chat rooms for
transmission of messages among computer users; virtual chat rooms established via
text messaging; providing on-line electronic bulletin board services; providing chat
lines utilising the internet; provision of access time to web-sites featuring multimedia
materials; instant messaging services; providing users with access time to electronic
communications networks; provision of telecommunications links to computer
databases and websites on the Internet; radio and television broadcasting; advisory
and consultancy services relating to all the aforesaid services
Some of the contested goods and services are identical or similar to goods and
services on which the opposition is based. For reasons of procedural economy, the
Opposition Division will not undertake a full comparison of the goods and services
listed above. The examination of the opposition will proceed as if all the contested
goods and services were identical to those of the earlier mark which, for the
opponent, is the best light in which the opposition can be examined.
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 assumed to be identical are directed at
the public at large and business customers with specific professional knowledge or
expertise.
The degree of attention is likely to vary from average to high, according to the
specialised nature of some of the goods and services, the frequency of purchase and
their price.
Decision on Opposition No B 2 462 136 page: 4 of 7
c) The signs
Earlier trade mark Contested sign
The relevant territory is Portugal.
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 earlier mark is a figurative mark consisting of the combination of letters ‘wtf’
represented three times on three levels, with straight lines of differing length attached
to the letters ‘w’, ‘t’ and ‘f’. All those elements are in white colour against a black
rectangular background.
The contested sign is also a figurative sign, consisting of a square black background
containing the letter combination ‘WTN’ in bold, italic typescript and the text
‘WINNING TOURNAMENT NETWORK’ under it in a noticeably smaller italic
typescript.
The element ‘wtf’ of the earlier mark has no meaning for the relevant public and is,
therefore, distinctive.
The element ‘WTN’ of the contested sign does not bear any precise meaning for the
relevant consumer. Hence, it is distinctive. Giving the presence of the text ‘WINNING
TOURNAMENT NETWORK’, the element ‘WTN’ is likely to be perceived as the
acronym for that text. Moreover, the text ‘WINNING TOURNAMENT NETWORK’ is
expected to be understood at least by part of the relevant Portuguese consumers
who are familiar with the English language. In particular, as regard this part of the
public, that text can convey the idea of a telecommunication network. Bearing in mind
that the relevant services are telecommunications and broadcasting services, this
element is non-distinctive for these services, for that part of the relevant public. For
the remaining public who do not understand English, this text is distinctive.
The earlier mark has no element that could be considered clearly more dominant
than other elements.
The element ‘WTN’ in the contested sign is the dominant element as it is the most
eye-catching.
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Visually, the signs coincide in the letters ‘WT-‘ which are, however, displayed in
different ways within the marks, since in the earlier mark they are repeated three
times and are represented in slightly stylised lower case letters, whereas in the
contested mark are reproduced once and in capital letters. Furthermore, the signs
coincide in the black background.
The marks differ in the further letters ‘f’ and ‘N’ of the elements ‘wtf’ and ‘WTN’,
respectively, in the text ‘WINNING TOURNAMENT NETWORK’, and in their overall
layout.
As a result, the sings are deemed visually similar to a very low degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘WT-‘,
present identically in both signs. The pronunciation differs in all other aspects, that is
to say the differing letters ‘f/N’ and the text ‘WINNING TOURNAMENT NETWORK’.
Although this text is presented in small size, it will not go unnoticed and will be
pronounced by the relevant consumers. Consequently, the signs are aurally similar to
a low degree.
Conceptually, although part of the public in the relevant territory will perceive the
meaning of the text ‘WINNING TOURNAMENT NETWORK’ in the contested sign as
explained above, the other sign has no meaning for that part of the public. Since one
of the signs will not be associated with any meaning, for this part of the public the
signs are not conceptually similar.
For the remaining part of the relevant public who will not perceive any meaning in the
contested mark, neither of the marks bears any precise concept. 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.
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.
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. 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.
e) Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the
factors relevant to the circumstances of the case; this appreciation depends on
numerous elements and, in particular, on the degree of recognition of the mark on the
Decision on Opposition No B 2 462 136 page: 6 of 7
market, the association that the public might make between the two marks and the
degree of similarity between the signs and the goods and services (11/11/1997, C
251/95, Sabèl, EU:C:1997:528, § 22). In order to assess the degree of similarity
between the marks concerned, it is necessary to determine the degree of visual,
aural or conceptual similarity between them and, where appropriate, to assess the
importance to be attached to those various factors, taking account of the category of
goods or services in question and the circumstances in which they are marketed
(22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 27)
In the present case, the goods and services under comparison are assumed to be
identical. The signs have been found visually similar to a very low degree, aurally
similar to low degree and conceptually not similar.
As mentioned above, the signs coincide in the letters ‘WT-’. However, the third letter
of this elements ‘f/N’ are substantially different and the elements ‘wtf’ and ‘WTN’ are
arranged differently in the signs. Moreover, the contested sign include the additional
text ‘WINNING TOURNAMENT NETWORK’, that although small in size is still
perceivable within the mark. All the aforementioned aspects create a strong visual
difference that will produce a strikingly different overall impression.
Even taking into account that the relevant public does not always has the possibility
to compare marks side by side, and that they must place trust in the imperfect picture
that they have kept in mind, there are no reasons to consider that the consumer
would establish a link between the earlier mark and the contested mark and would
think that the relevant goods and services bearing the marks are offered by the same
undertaking or economically linked undertakings.
This is even more so where a high degree of attention is used while purchasing some
of the goods and services at issue.
Consequently, the Opposition Division finds that the differences between the signs
prevail over their similarities and will enable the relevant consumers to safely
distinguish between them, even assuming identity between the goods and services.
Considering all the above, even assuming that the goods and services at issue are
identical, there is no likelihood of confusion on the part of the public. Therefore, the
opposition must be rejected.
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 opponent is the losing party, it must bear the costs incurred by the
applicant in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the
applicant are the costs of representation, which are to be fixed on the basis of the
maximum rate set therein.
Decision on Opposition No B 2 462 136 page: 7 of 7
The Opposition Division
Plamen IVANOV Claudia ATTINA Keeva DOHERTY
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
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.