OPPOSITION DIVISION

OPPOSITION No B 2 774 290

Boost Up International Limited, P.O. Box 957 Offshore Incorporation Centre, Road

Town, Tortola, British Virgin Islands (opponent), represented by Appelhagen

Rechtsanwälte Steuerberater PartGmbB, Theodor-Heuss-Str. 5 A, 38122

Braunschweig, Germany (professional representative)

a g a i n s t

Steelseries ApS, Dirch Passers Allé 27, 5. Sal, 2000 Frederiksberg, Denmark

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark

application No 15 523 418 ‘ARCTIS’. The opposition is based on European Union

trade mark registration No 7 089 097 ‘ARCTIC’. The opponent invoked Article 8(1)(b)

EUTMR.

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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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

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.

Decision on Opposition No B 2 774 290 page: 2 of 6

a) The goods

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

Class 9: Apparatus for recording, transmission or reproduction of sound or

playing video games; audio and visual headsets for use in playing

video games.

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

Before starting the comparison, it should be noted that the applicant

argues that the two marks in dispute are used for dierent goods, namely

that the contested EUTM is used exclusively in relation to gaming and

that allows the user to talk and listen while keeping their hands free. The

contested headsets for use with computers; gaming headsets adapted for use in

reasonably well informed and reasonably observant and circumspect. It should also

Decision on Opposition No B 2 774 290 page: 3 of 6

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 found to be similar are directed at the public at large.

The degree of attention is considered average.

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).

Since the signs in question are composed of the terms which are meaningful in

certain territories, for example in those countries where English is understood, the

Opposition Division finds it appropriate to focus the comparison of the signs on the

English-speaking part of the public.

The earlier mark consists of the word ‘ARCTIC’ that refers to the polar region located

at the northernmost part of Earth or to the weather conditions meaning very cold. In

any case and contrary to the applicant’s arguments, the word ‘ARCTIC’ does not

relate in any way to the goods found to be similar and, therefore, has a normal

degree of distinctiveness.

The contested sign consists of the word ‘ARCTIS’ which is a fanciful term that alludes

contested sign. Therefore, the signs are visually and aurally similar to a high degree.

Decision on Opposition No B 2 774 290 page: 4 of 6

Conceptually, reference is made to the previous assertions concerning the semantic

content conveyed by the marks. As both signs will evoke closely related meanings,

they are considered conceptually highly similar.

As the signs have been found similar in at least one aspect of the comparison, the

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 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

Likelihood of confusion implies some interdependence between the relevant factors

and, in particular, a similarity between the trade marks and between the goods or

services. Accordingly, a lesser degree of similarity between the goods or services

may be offset by a greater degree of similarity between the marks, and vice versa.

In the present case, the goods are similar and the marks have been found visually,

ties.

In its observations, the applicant argues that the earlier trade mark has a low

distinctive character given that many trade marks include the word element

‘ARCTIC’. In support of its argument the applicant refers to examples of such trade

marks in the vehicle industry, graphic paper production or investment banking.

The Opposition Division notes that the existence of several trade mark registrations

is not per se particularly conclusive, as it does not necessarily reflect the situation in

the market. In other words, on the basis of register data only, it cannot be assumed

that all such trade marks have been effectively used. It follows that the evidence filed

does not demonstrate that consumers have been exposed to widespread use of, and

Decision on Opposition No B 2 774 290 page: 5 of 6

‘ARCTIC’ and in consequence there is no practical risk of confusion. However, the

Opposition Division notes that the purpose of the present opposition proceedings is

to determine a likelihood of confusion between the contested sign and the earlier

mark as it was registered and/or applied for. Additionally, since the applicant did not

file an explicit, unambiguous and unconditional request for proof of use during the

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 7 089 097 ‘ARCTIC’. It follows that the contested

trade mark must be rejected for all the contested goods.

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.

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 2 774 290 page: 6 of 6

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.