OPPOSITION No B 2 731 183

Alexander John Hall, 4 The Ridings, Kingston St Michael, Chippenham SN14 6JG, United Kingdom (opponent), represented by Luke Watson, 24 Queen Square, Bath Somerset BA1 2HY, United Kingdom (professional representative)

a g a i n s t

Harry Macadam, c/o Farm Office, Little Wenham Hall, Colchester  CO7 6PZ, United Kingdom (applicant), represented by James Love Legal Limited, One Sceptre House, Hornbeam Square North, Harrogate  HG2 8PB, United Kingdom (professional representative).

On 26/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 731 183 is partially upheld, namely for the following contested services:

Class 41:         Betting, gaming and gambling services; providing betting and gaming services by means of a website and a global computer network; provision of betting and gaming services through a betting exchange platform; betting, gaming and gambling services provided through social network platforms; betting, gaming and gambling services provided through mobile telephone and tablet computer applications; entertainment services in the nature of on-line gaming and gambling; electronic betting and telephone gambling, gaming and betting services; offshore telephone betting services; remote betting, gaming and gambling services provided through telecommunication links; providing on-line computer games; provision of interactive games and interactive competitions; betting exchange services; provision of sports data, information and betting tips; providing audio content, video content and gaming information for wireless, cellular and mobile devices; information, advisory and consultancy services all relating to the aforesaid services.

2.        European Union trade mark application No 15 110 208 is rejected for all the above services. It may proceed for the remaining goods and 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 15 110 208. The opposition is based on UK trade mark registration No 3 090 552. The opponent invoked Article 8(1)(a) EUTMR.

PRELIMINARY REMARKS

For the sake of good order, the Opposition Division points out that the certificate of United Kingdom trade mark registration No 3 091 691 cannot be taken into account for the purpose of the present proceedings for the following reasons.

According to Rule 15(2)(b) EUTMIR, the notice of opposition shall contain a clear identification of the earlier mark or earlier right on which the opposition is based, namely:

i) where the opposition is based on an earlier mark within the meaning of Article 8(2)(a) or (b) EUTMR or where the opposition is based on Article 8(3) EUTMR, the indication of the file number or registration number of the earlier mark, the indication whether the earlier mark is registered or an application for registration, as well as the indication of the Member States including, where applicable, the Benelux, in or for which the earlier mark is protected, or, if applicable, the indication that it is a European Union trade mark.

In light of the above, since the number of the United Kingdom trade mark registration No 3 091 691 was not indicated in the notice of opposition, this earlier right cannot be considered as a basis of the opposition at hand.

Furthermore, on a separate note, it should be mentioned that in the notice of opposition the opponent only mentioned Article 8(1)(a) EUTMR as a ground of opposition. However, the Opposition Division considers that Article 8(1)(a) and (b) EUTMR are not to be interpreted as being two different relative grounds for refusal. Subparagraph (a) states that a EUTM application will be rejected in those cases where the signs are identical and the goods and/or services are also identical. Subparagraph (b) relates to those cases where the signs and the goods and/or services are either identical or similar. In such cases the comparison of the signs and goods and/or services only is not enough, and there must be an assessment of whether a likelihood of confusion exists.

In the present case, in spite of the fact that the opponent invokes identity between the signs and the goods and services, it is obvious that it also considers that there is a likelihood of confusion.

Consequently, the Opposition Division will examine Article 8(1) EUTMR as being only one ground for refusal taking into account all the relevant factors, i.e. identity between the signs and goods and services, similarity between the signs and goods and services, and whether a likelihood of confusion exists.

DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR AND LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

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.

1. The goods and services

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

Class 41: Gambling services; gambling.

The contested goods and services are the following:

Class 9:         Computer software and computer programs for gaming, gambling and betting; computer application software relating to or featuring gaming, gambling and betting; computer software for use on mobile telephones and handheld mobile devices; information recorded on computer media; computer software and computer programs for playing games; computer software and programs for use on computer networks including the internet; computer software downloadable from or distributed via the Internet; electronic number generators; electronic publications and information provided on-line from databases or the Internet (downloadable); downloadable electronic betting slips; electronic loyalty scheme cards; electronic cards for use in connection with promotion schemes; encoded cards; magnetically encoded cards; prepaid cards for allowing users to transfer financial value on-line via computer networks; prepaid cards for allowing users to pay for products and services available through the internet.

Class 36:         Financial services relating to gaming, gambling and betting; financial spread betting; electronic payment card services; electronic payment services; cashless payment services provided on-line from a computer database or the Internet; remote payment services; electronic transfer of money; issuing of vouchers; issuing of tokens, coupons and vouchers of value; conducting cashless payment transactions; financial loyalty reward schemes; financial incentive reward schemes; information, advisory and consultancy services all relating to the aforesaid services.

Class 41:         Betting, gaming and gambling services; providing betting and gaming services by means of a website and a global computer network; provision of betting and gaming services through a betting exchange platform; betting, gaming and gambling services provided through social network platforms; betting, gaming and gambling services provided through mobile telephone and tablet computer applications; entertainment services in the nature of on-line gaming and gambling; electronic betting and telephone gambling, gaming and betting services; offshore telephone betting services; remote betting, gaming and gambling services provided through telecommunication links; providing on-line computer games; provision of interactive games and interactive competitions; betting exchange services; provision of sports data, information and betting tips; providing audio content, video content and gaming information for wireless, cellular and mobile devices; non-downloadable publications in electronic form; information, advisory and consultancy services all relating to the aforesaid services.

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 goods in Class 9 are considered dissimilar to the earlier mark´s gambling services in Class 41. Apart from being different in nature, since services are intangible, whereas goods are tangible, they serve different needs. The opponent’s gambling services in Class 41 refer to the activity of betting money offered, for example, in casinos and betting shops. Furthermore, these goods and services have different methods of use. They are also normally provided or manufactured by different kinds of undertakings. Even though some of the contested goods such as computer software and computer programs for gaming, gambling and betting; computer application software relating to or featuring gaming, gambling and betting; computer software for use on mobile telephones and handheld mobile devices; computer software and computer programs for playing games; computer software and programs for use on computer networks including the internet; computer software downloadable from or distributed via the internet; downloadable electronic betting slips might be used in order to access the opponent´s services, this alone would not be conclusive for a finding of similarity between the goods and services. The contested goods have an ancillary character and would merely serve as tools providing the technical support for the services concerned. These goods and services are far removed from each other, since their production and provision require different specific areas of expertise. Consequently, consumers will not think that the responsibility for the production of these goods or provision of these services lies with the same undertaking. Moreover, the goods and services in question are not in competition. The same holds true insofar as the remaining contested goods are concerned, i.e. information recorded on computer media; computer software and computer programs for playing games; computer software and programs for use on computer networks including the internet; computer software downloadable from or distributed via the Internet; electronic number generators; electronic publications and information provided on-line from databases or the Internet (downloadable); downloadable electronic betting slips; electronic loyalty scheme cards; electronic cards for use in connection with promotion schemes; encoded cards; magnetically encoded cards; prepaid cards for allowing users to transfer financial value on-line via computer networks; prepaid cards for allowing users to pay for products and services available through the internet.

Contested services in Class 36

The contested services in this class are provided by financial institutions. There is a vast difference in the nature and purpose of those services vis-à-vis the opponent’s gambling services in Class 41. The latter require different types of knowledge and expertise in comparison to the contested financial and related services. They do not originate from the same undertakings and are not offered through the same commercial channels. Furthermore, they are neither complementary nor in competition. The mere fact that these services can be of interest to the same public, inter alia, financial services relating to gaming, gambling and betting; financial spread betting, is not sufficient in itself for a finding of similarity. Therefore, all of the contested services in Class 36 are dissimilar to the opponent’s services in Class 41.

Contested services in Class 41

The contested betting, gaming and gambling services; providing betting and gaming services by means of a website and a global computer network; provision of betting and gaming services through a betting exchange platform; betting, gaming and gambling services provided through social network platforms; betting, gaming and gambling services provided through mobile telephone and tablet computer applications; entertainment services in the nature of on-line gaming and gambling; electronic betting and telephone gambling, gaming and betting services; offshore telephone betting services; remote betting, gaming and gambling services provided through telecommunication links; providing on-line computer games; provision of interactive games and interactive competitions; betting exchange services; information, advisory and consultancy services all relating to the aforesaid services are identical to the opponent’s gambling services in Class 41, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

The contested provision of sports data, information and betting tips; providing audio content, video content and gaming information for wireless, cellular and mobile devices; information, advisory and consultancy services all relating to the aforesaid services are at least similar to a low degree to the opponent´s gambling services in Class 41, since the former can also entail the latter. The services can have the same purpose and users.

The contested services related to proving non-downloadable publications in electronic form; information, advisory and consultancy services all relating to the aforesaid services are dissimilar to the opponent’s gambling services in Class 41. These services do not coincide with the opponent’s gambling services as they have different nature, purpose and methods of use. The services have different origins, distribution channels and consumers.

2. The signs

ELITEBET	Elitebet
Earlier trade mark	Contested sign

The signs are identical. As both signs are word marks it is irrelevant whether they are written in lowercase, uppercase letters or a combination of both (31/01/2013, T-66/11, ‘Babilu’, EU:T:2013:48, § 57).

3. Global assessment, other arguments and conclusion

The signs were found to be identical, since they are both composed of the verbal element ‘ELITEBET’, and some of the contested services were found to be identical to the opponent’s services, namely:

Class 41:         Betting, gaming and gambling services; providing betting and gaming services by means of a website and a global computer network; provision of betting and gaming services through a betting exchange platform; betting, gaming and gambling services provided through social network platforms; betting, gaming and gambling services provided through mobile telephone and tablet computer applications; entertainment services in the nature of on-line gaming and gambling; electronic betting and telephone gambling, gaming and betting services; offshore telephone betting services; remote betting, gaming and gambling services provided through telecommunication links; providing on-line computer games; provision of interactive games and interactive competitions; betting exchange services; information, advisory and consultancy services all relating to the aforesaid services.

Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these services.

Furthermore, the following contested services were found to be similar to at least a low degree to those covered by the earlier trade mark, namely:

Class 41:         Provision of sports data, information and betting tips; providing audio content, video content and gaming information for wireless, cellular and mobile devices; information, advisory and consultancy services all relating to the aforesaid services.

It is a well-established case law and practice followed by the Office that the evaluation of likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (judgment of 29/09/1998, C-39/97, ‘Canon’, paragraph 17).

Bearing in mind the above principle and considering the identity between the signs the opposition is also successful insofar as it is directed against all the services found similar to a low degree, as the identity between the marks is enough for the consumers to be confused about the commercial origin of these services in question.

Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against these services.

Considering 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 UK trade mark registration No 3 090 552.

The rest of the contested goods and services are dissimilar. As the 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 goods and services cannot be successful.

For the sake of completeness, the Opposition Division would like to draw the opponent´s attention to the fact that all the arguments related to the alleged bad faith of the applicant have to be disregarded, as bad faith cannot be the subject of opposition proceedings, but rather cancellation proceedings.

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

Chantal VAN RIEL

Klaudia MISZTAL

Lucinda CARNEY

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.