OPPOSITION No B 2 668 583

Bigpoint GmbH, Drehbahn 47-48, 20354 Hamburg, Germany (opponent), represented by Beiten Burkhardt, Ganghoferstr. 33, 80339 Munich, Germany (professional representative)

a g a i n s t

Supercell Oy, Itämerenkatu 11, 00180 Helsinki, Finland (applicant), represented by Roschier Brands Attorneys Ltd., Keskuskatu 7 A, 00100 Helsinki, Finland (professional representative).

On 15/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 668 583 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 807 507, ’CLASH-A-RAMA’ (word mark).

The opposition is based on the following earlier rights:

• European Union trade mark registration No 10 264 356 ‘Skyrama’ (word mark) registered for goods in Class 28;

• European Union trade mark registration No 11 421 864 ‘rama’ (word mark) registered for goods and services in Classes 9 and 41;

• European Union trade mark registration No 9 636 937 ‘Ponyrama’ (word mark) registered for goods and services in Classes 9, 28, 38, 41 and 42;

• European Union trade mark registration No 9 266 231 ‘Farmerama’ (word mark) registered for goods and services in Classes 9, 28, 38 and 41;

• European Union trade mark registration No 11 014 883 ‘Fantasyrama’ (word mark) registered for goods and services in Classes 9, 16, 28, 38, 41 and 42;

• German trade mark registration No 30 2010 021 038 ‘Farmerama’ (word mark) registered for goods and services in Classes 9, 28, 38 and 41.

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 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.

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 11 421 864.

1. The goods and services

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

Class 9: Computer programs, in particular computer, video, online and browser games, and games programs for mobile telephones and other mobile terminals. 

Class 41: Conducting of games on the Internet, on the radio and on television; Entertainment, in particular computer, video, online and browser games on the Internet; Conducting games on the Internet via mobile telephones, other mobile terminals, portals and platforms; Online services regarding games; Film production, production of shows; Radio entertainment; Television entertainment.

The contested goods and services are the following:

Class 9: Pre-recorded motion picture, television, and animation films; animated cartoons; downloadable publications; downloadable movies and animations; computer software and computer game software; downloadable computer software and computer game software; data storage media; game software adapted for use with television receivers. 

Class 16: Printed publications; cartoon strips; comic books; newspapers, photographs, magazines, books, printed periodicals, newsletters, notebooks, and brochures.

Class 28: Electronic games; hand-held units for playing electronic games; action skill games; toys, games and playthings. 

Class 41: Entertainment services; providing on-line publications; presentation of movies, films, animations, and television programs; entertainment services in the nature of creation, development, and production of movies, films, animations, and television programs; electronic game services; providing on-line computer games; providing information on-line relating to computer games; provision of games by means of a computer based systems; providing entertainment information relating to computer games via information network.

Contested goods in Class 9 and services in Class 41

Some of the contested goods and services are identical to goods and services on which the opposition is based in the respective classes. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

Contested goods and services in Class 16 and 28

Although the goods and services in question are not identical, it is clear that some of the contested goods and services are similar to the goods 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 were similar to those of the earlier mark.

2. 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 presumed to be identical or similar are directed at the public at large. The degree of attention is average.  

3. The signs

rama	CLASH-A-RAMA
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 earlier mark is ‘rama’ and the contested mark is ‘CLASH-A-RAMA’.

Both signs are word marks, and therefore they do not have a more eye-catching, i.e. dominant element, contrary to what the opponent argues.

‘RAMA’ may be perceived by part of the relevant public as an incarnation of a Hindu god [online Collins Dictionary at

https://www.collinsdictionary.com/dictionary/english/rama_1 ].

It also means branch in Spanish, frame in Polish, Hungarian and Bulgarian, to arm, to man, to set up in Maltese, foliage in Portuguese, shoulder in Slovene.

However, these meanings are unlikely to be perceived in the contested sign given that the element ‘RAMA’ is part of a long expression consisting of a string of ten letters, linked together with two hyphens.

The element ‘A-RAMA’ (also -arama, -orama, -o’rama) is moreover an English term referring to a greater-than-usual number, volume, or variety of a specified thing used to form commercial names and other words for events and displays, e.g. sportorama

[https://www.collinsdictionary.com/dictionary/english/orama; https://www.collinsdictionary.com/dictionary/english/arama]

The element ‘CLASH’ of the contested sign is an English term meaning to make or cause to make a loud harsh sound, esp by striking together; to be incompatible, in conflict. [online Collins dictionary at

https://www.collinsdictionary.com/dictionary/english/clash ]

These concepts have no relation with the goods and services and therefore their distinctiveness is normal. This also holds true for ‘CLASH’ in the context of games, because even if some games’ titles contain this term, the existence of such titles on their own does not prove that consumers would be confronted with this word to such an extent that its otherwise normal distinctive character would be affected.

In other parts of the relevant territory the signs are meaningless.

Visually, and aurally the signs coincide in ‘RAMA’, which is the entire earlier sign. However, this four-letter element is preceded by six differing letters/sounds and, visually, also two hyphens, ‘CLASH-A-’, placed at the beginning of the contested mark.  

It should be emphasised that in word signs the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (judgments of 15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009 T-109/07, Spa Therapy, EU:T:2009:81, § 30).

In the present case, however, the only coincidence concerns the end of the contested sign. There are significant differences in the beginning, length and rhythm of the signs.

Therefore, the signs are visually and aurally similar to a low degree.

Conceptually, as seen above, there may be an average degree of conceptual similarity on the part of the Spanish, Polish, Hungarian, Bulgarian, Maltese, Portuguese, Slovene-speaking part of the public, or those who recognise ‘RAMA’ in the context of Hinduism, if they perceive the same concept in the contested sign as in the earlier one.

However, as explained above, the concepts of ‘RAMA’ might not be recognised in the contested mark even in those languages where there is a meaning, in which case the signs are conceptually not similar. In English, the signs are conceptually not similar, on account of the differing concepts in ‘CLASH’ and ‘A-RAMA’.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

5. Global assessment, other arguments and conclusion

The goods and services are presumed to be identical and similar and the earlier mark is included in the contested mark, as also pointed out by the opponent.

However, the four-letter earlier mark only appears at the end of the contested mark, which consists of a ten-letter term. These four letters are furthermore connected to the rest of the letters in the contested mark by a hyphen.

The English-speaking public can clearly differentiate between the signs, given the differing concepts of ‘CLASH’ and ‘-A-RAMA’. The part of the public not perceiving any meaning in any of the signs is also unlikely to get confused, given the different length and beginning of the signs.

It remains necessary to consider the part of the public which recognises a concept in the earlier sign. However, even this public might not recognise a concept in the contested one. The meanings conveyed by the earlier mark (eg. branch, frame, shoulder) will not necessarily be perceived in the contested mark, since the term appears in the end of the sign, linked with a hyphen. In case consumers perceive the same concept in both marks, this conceptual similarity would still be offset by the visual and aural differences due to the length of the contested sign and its additional elements being placed in the beginning of the sign.

Consequently, it is considered that the reasonably well informed and reasonably observant and circumspect consumers can safely distinguish between the signs and a likelihood of confusion can be excluded.

The opponent also based its opposition on other earlier marks, namely ‘Skyrama’, ‘Ponyrama’, ‘Farmerama’ and ‘Fantasyrama’. However these marks are even further apart from the contested sign than the mark compared above, given that they contain additional, differing elements in their beginning, e.g. ‘Sky’/’Pony’/’Farmer’/’Fantasy’. It should be noted that some of these marks cover a broader scope of goods and services; however the differences between the signs can safely exclude a likelihood of confusion.

It remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word component ‘RAMA’ constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the goods and services identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65.

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’, a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

The opponent filed the following evidence:

• Registration certificate of the earlier German trade mark ‘Farmerama’;
• Screenshots relating to websites bigpoint.de, bigpoint.com, farmerama.de and skyrama.com from 19/11/2016;
• List of periods of use of the opponent’s earlier marks, Farmerama, Skyrama, Fantasyrama, Ponyrama, Farmerama harvest time, Aquarama prepared by the opponent;
• Undated screenshots from Amazon.de (1) and from RTLspiele.de (1), about the availability of the ‘Farmerama’ game;
• Screenshot showing search results for ‘Farmerama’.

This evidence is, however, not sufficient to prove use of the opponent’s earlier marks. The documents, to some extent, show presence in Germany (from the website extensions), and the marks are displayed on the screenshot. However, there is no information on the commercial extent of use of the marks. Two screenshots showing the offering of goods for sale does not prove that actual purchase has happened. The mere existence of websites bearing the name of the earlier marks in their domain names does not prove that the relevant goods and services were put on the market either.

Therefore, in the present case, the opponent failed to prove that it uses a family of ‘RAMA’ marks.

Considering all the above, even assuming that the goods and services are identical or similar, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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.

The Opposition Division

Francesca DRAGOSTIN

Marianna KONDAS

Michaela SIMANDLOVA

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.