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
(applicant), represented by Baker & Mckenzie Advokatbyrå KB, Vasagatan 7, 101
23 Stockholm, Sweden (professional representative).
On 17/10/2017, the Opposition Division takes the following
1. Opposition No B 2 774 290 is upheld for all the contested goods.
2. European Union trade mark application No 15 523 418 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
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)
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
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.
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
images; magnetic data carriers; data-processing equipment and
computers; computer hardware and components thereof, computer
accessories, and CPU coolers and fans for computers being
components of the aforesaid goods.
The contested goods are the following:
Class 9: Headsets for use with computers; gaming headsets adapted for use in
playing video games; audio and visual headsets for use in playing
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 dierent goods, namely
that the contested EUTM is used exclusively in relation to gaming and
computer/video games whereas the earlier trade mark covers for example
basic functions and components of computer hardware. However, this
information has no prevailing impact on the assessment of the similarity of
the goods concerned, because, for the purpose of opposition proceeding,
the goods must be compared only as they appear in the registry.
A headset is a hardware device that connects to a telephone or computer
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
playing video games; audio and visual headsets for use in playing video games are
similar to the opponent’s apparatus for recording, transmission or reproduction of
sound or images. This is because these goods are very common accessories of the
apparatus and instruments registered under the earlier mark. The respective goods
are therefore directed at the same public and are usually sold in the same outlets.
Consumers would certainly attribute their manufacture to the same or economically
linked undertakings. Indeed manufacturers of apparatus for recording, transmission
or reproduction of sound or images (as registered under the earlier mark) often also
manufacture at least some of the parts which are necessary for their operation.
Therefore it is very likely that these companies also manufacture the accessories
which are commonly used with the aforementioned apparatus (such as microphones,
headphones, loudspeakers etc.).
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
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.
c) The signs
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). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
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
to the meanings as described above. For example, it is not unlikely that the contested
sign could be perceived as a misspelling of the earlier mark and accordingly it would
convey the same concept. In any case, as it is not descriptive or otherwise weak for
the relevant goods, the distinctiveness of the word ‘ARCTIS’ has to be seen as
Visually and aurally, the signs coincide in five out of six letters/sounds. They differ
only in the final letter/sound ‘C’ of the earlier mark and the final letter/sound ‘S’ of the
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
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 in question from the perspective of the public in the
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
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,
aurally and conceptually similar to a high degree. The degree of attention is average.
Consequently, in the presence of highly similar signs and similar goods, the
consumers, who 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), will very possibly think that the
similar goods originate from the same companies or from companies with economic
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
have become accustomed to, trade marks that include the word element ‘ARCTIC’.
Under these circumstances, the applicant’s claims must be set aside.
Furthermore, the applicant argues that the opponent’s goods are marketed with
letter/number combinations, (such as P614, P533PENTA), instead of the mark
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
proceedings, the opponent was not under any obligation to submit proof that its
earlier trade mark had been put to genuine use in the relevant territory.
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
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 7 089 097 ‘ARCTIC’. It follows that the contested
trade mark must be rejected for all the contested goods.
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 ATTINÁ Arkadiusz GORNY Birgit FILTENBORG
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
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.