OPPOSITION No B 2 790 205

Automaticos Jeronimo, S.L., C/ Maestro Falla, 6, 30140 Santomera (Murcia), Spain (opponent), represented by Intermark Patentes y Marcas, S.L.P. (also trading as Lidermark Patentes y Marcas), C/Obispo Frutos, 1B 2°A, 30003 Murcia, Spain (professional representative)

a g a i n s t

Geronimo Group Ltd., 590 Kingston Road, London SW20 8DN, United Kingdom (applicant), represented by Kancelaria Patentowa Rawa & Rawa Sp.J., ul. Stokrotkowa 52, 87-100 Toruń, Poland (professional representative).

On 12/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 790 205 is upheld for all the contested goods and services.

2.        European Union trade mark application No 15 349 368 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 349 368 for the figurative mark . The opposition is based on the following earlier marks:

• Spanish trade mark registration No 2 955 621 for the figurative mark , in Classes 37 and 39;

• Spanish trade mark registration No 3 571 353 for the figurative mark , in Classes 37 and 39;

• Spanish trade mark registration No 3 571 343 for the figurative mark , in Class 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 Spanish trade mark registrations No 3 571 353 and No 3 571 343.

1. The goods and services

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

Earlier Spanish trade mark registration No 3 571 353

Class 37: Services of installation and repair of automatic machines.

Class 39: Services of transport and distribution of automatic machines.

Earlier Spanish trade mark registration No 3 571 343

Class 41: Providing amusement arcade services; operating amusement arcades.

The contested goods and services are the following:

Class 28: Games (apparatus for -); slot machines [gaming machines]; counters for games; automatic gaming machines; chips for gambling; gaming machines for gambling; amusement machines, automatic and coin-operated; amusement apparatus for use in arcades; coin-operated amusement gaming machines; bill-operated gaming equipment; arcade games; coin-operated games; slot machines [gaming machines]; electronic arcade games (coin or counter operated apparatus).

Class 37: Repair of game machines and apparatus; providing information relating to the repair of game machines and apparatus.

Class 41: Games equipment rental; games equipment rental; providing slot machine parlors; providing amusement arcade services; providing of casino and gaming facilities; leasing of casino games; casino facilities [gambling] (providing -).

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 28

The contested games (apparatus for -); slot machines [gaming machines]; counters for games; automatic gaming machines; chips for gambling; gaming machines for gambling; amusement machines, automatic and coin-operated; amusement apparatus for use in arcades; coin-operated amusement gaming machines; bill-operated gaming equipment; arcade games; coin-operated games; slot machines [gaming machines]; electronic arcade games (coin or counter operated apparatus) are specifically related to the opponent’s services of installation and repair of automatic machines. In the gaming industry, it is common that manufacturers of gaming machines also provide installation and repair services. Consequently, the consumer may expect that the producer/provider of the goods and services in question originate from the same undertaking. Therefore, these contested goods are similar to the opponent’s services in Class 37, as they can have the same producer/provider, end users and distribution channels.

Contested services in Class 37

The contested repair of game machines and apparatus are included in the broad category of, or overlap with, the opponent’s services of repair of automatic machines. Therefore, they are identical.

‘Provision of information’ refers to providing a user with all necessary details (general or specific) about a matter or service. The contested providing information relating to the repair of game machines and apparatus are included in the opponent’s services of repair of automatic machines, since providing information is an inherent aspect of the services, and are thus identical.

Contested services in Class 41

Providing amusement arcade services are identically contained in both lists of services.

The contested games equipment rental; games equipment rental; providing slot machine parlors; providing of casino and gaming facilities; leasing of casino games; casino facilities [gambling] (providing -) are similar to the opponent’s providing amusement arcade services as they can have the same providers, end users and distribution channels.

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 found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise in the gaming industry.

The degree of attention is considered average, although some of the relevant services in Class 41 may require a high financial investment (e.g. providing slot machines parlors, providing of casino and gaming facilities) and in relation to these services the degree of attention will be higher than average.

3. The signs

Spanish trade mark registration No 3 571 353 Spanish trade mark registration No 3 571 343
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 element ‘JERÓNIMO’ of the earlier marks and the element ‘GERONIMO’ of the contested sign will be perceived by the relevant public as the same male name. Since these elements have no relation whatsoever with the goods and services in question, they are distinctive.

The word ‘AUTOMÁTICOS’ of the earlier marks will be understood by the relevant public as (of devices or machines) working by themselves with little or no direct human control. Bearing in mind that the relevant services relate to automatic machines and amusement arcades, this element is non-distinctive for these services.

The words ‘SALAS DE JUEGO’ (‘amusement arcades’ in English) of earlier mark (2) will be understood by the relevant public. Bearing in mind that the relevant services relate to automatic machines and amusement arcades, this element is non-distinctive for these services.

As regards the element composed of the figure ‘777’ in earlier mark (2), the opponent claims that it is an element of common use in the market to refer to games and elements relative to games. In support of this claim, it refers to several European Union and Spanish trade mark registrations that include the element ‘777’ in relation to amusement arcade services and the like in Class 41. The Opposition Division acknowledges that the figure ‘777’ is commonly used in gambling as a symbol of luck. Bearing in mind that the relevant services relate to automatic machines and amusement arcades, this element is also non-distinctive for these services. The relevant public knows the semantic meaning of this element and will not pay much attention to it than to the other distinctive element of the mark, ‘JERÓNIMO’.

The element ‘GROUP’ of the contested sign will be understood by the relevant public since it is very close to the equivalent word in the official language in the relevant territory (‘grupo’ in Spanish). This element would be perceived, in general, as a mere reference to a commercial organization consisting of several companies under a common ownership. Bearing in mind that the goods and services in question cover the manufacturing, repair and rental of gaming machines, as well as the provision of casino and gaming facilities, this element would be perceived as simply referring to the existence of several companies (probably rendering those various services) under the control of the proprietor of the trade mark. Therefore, the distinctiveness of this element is very limited, if any, in the contested sign.

The element ‘GERONIMO’ of the contested sign is accompanied by a  figurative element depicting a capital letter ‘G’ with a crest of feathers that will most likely be perceived, at least by a part of the relevant public, as an allegoric reference to the well-known Apache warrior Geronimo, the last American Indian warrior to formally surrender to the United States. This element is distinctive in relation to the relevant goods and services.

Although the figurative element in the contested sign is the dominant element (the most eye-catching) by virtue of its central position and size, it must be considered that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). This is particularly the case for the contested sign, in which the verbal element ‘GERONIMO’ will retain the attraction of the relevant public, also considering that the figurative element will be perceived as an allegoric depiction to the historic character, at least by a part of the public.

Visually, the signs coincide in the string of letters ‘*ERONIMO’, which is the most distinctive verbal element of the signs, only differing in the initial letters, ‘J’ of the earlier marks and ‘G’ of the contested sign. They further differ in the additional verbal elements of the signs, which are either non-distinctive or have a very limited distinctiveness, as explained above, and in the figurative elements of the signs, namely the accent mark (on top of the letter ‘O’ in ‘JERÓNIMO’) and the orange colour present in the earlier marks and the big letter ‘G’ with a crest of feathers against a red background in the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables, ‘JE/GE-RO-NI-MO’, present identically in both signs, which is the most distinctive verbal element of the signs. Although the signs contain additional verbal elements, as described above, since they have a very limited distinctiveness, it is very likely that they will not be pronounced. Similarly, the big letter ‘G’, easily perceived as the initial letter of the element ‘GERONIMO’, is not likely to be pronounced.

Therefore, the signs are aurally highly similar, if not identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, the signs are 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.

4. Distinctiveness of the earlier marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of some non-distinctive elements in the marks as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Evaluating 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 (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods and services are partly identical and partly similar to the opponent’s services. The earlier marks have a normal distinctiveness and the degree of attention of the relevant public varies from average to high.

The signs are visually similar to an average degree and aurally highly similar or even identical, on account of the most distinctive verbal elements of the signs, namely the coinciding elements ‘JERÓNIMO/GERONIMO’. The additional verbal elements of the signs are non-distinctive, as explained above. The figurative element in the contested sign, although dominant, because of its features, will most likely be perceived as an allegoric depiction of the historic character ‘GERONIMO’, the element that will retain the attention of the relevant public when naming the trade mark. In addition, the signs are conceptually highly similar.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. In the present case, when encountering the conflicting signs, it is very likely that the relevant public, even when displaying a higher than average degree of attention, will associate the contested sign with the earlier marks, thinking that it designates a new product line and services from the opponent. The presence of the element ‘GROUP’ in the contested sign would increase the mental link between the conflicting signs.

Therefore, there is a likelihood of confusion because the differences between the signs are confined to non-distinctive or secondary elements and aspects.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registrations No 3 571 353 and No 3 571 343. It follows that the contested trade mark must be rejected for all the contested goods and services.

As these earlier rights lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Vanessa PAGE

Marta GARCÍA COLLADO

Richard BIANCHI

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.