OPPOSITION No B 2 517 962

Ubisoft Inc., 625 Third Street, San Francisco CA 94107, the United States of America (opponent), represented by Ubisoft Entertainment Société Anonyme, Marc Muraccini, 28, rue Armand Carrel, 93108 Montreuil sous Bois, France (employee representative)

a g a i n s t

Shenzhen DNS Industries Co. Ltd., 10/F Building B, Tianan High-Tech Venture Park, Tianan Cyber Park, Futian, Shenzhen, People’s Republic of China (applicant), represented by José Izquierdo Faces, Iparraguirre, 42 – 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 27/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 517 962 is partially upheld, namely for the following contested goods:

Class 9:        Downloadable electronic publications; downloadable music files; USB flash drives; downloadable image files.

Class 28:         Gaming machines; video game machines; video game joysticks; portable games with liquid crystal displays; computer game apparatus; controllers for game consoles; games; arcade video game machines; games (apparatus for -); amusement machines, automatic and coin-operated; battery-powered computer game with LCD screen; toys; parlour games; hand -held electronic games.

2.        European Union trade mark application No 13 555 438 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 555 438, namely against all the goods in Classes 9 and 28. The opposition is based on European Union trade mark registration No 3 726 271. 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.

1. The goods

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

Class 9:         Video games; computer games programs.

The contested goods, following the rejection of some goods in the course of the parallel proceedings No B 2 518 861, are the following:

Class 9:         Battery chargers; battery charge devices; downloadable electronic publications; downloadable music files; battery charging equipment; chargers for electric batteries; sockets and other contacts [electric connections]; USB flash drives; cell phone cases; downloadable image files; bags adapted for laptops.

Class 28:         Gaming machines; video game machines; video game joysticks; portable games with liquid crystal displays; computer game apparatus; controllers for game consoles; games; arcade video game machines; games (apparatus for -); amusement machines, automatic and coin-operated; battery-powered computer game with LCD screen; toys; parlour games; hand -held electronic games; shock absorption pads for protection against injury [sporting articles].

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 downloadable electronic publications; downloadable music files; downloadable image files are similar to the opponent’s computer games programs in Class 9. These goods can coincide in producer, end user and distribution channels. Furthermore they are complementary.

The contested USB flash drives and the opponent’s computer games programs are similar to a low degree, as they can coincide in end user, producer and distribution channels. Furthermore, they are complementary.

The contested battery chargers; battery charge devices; battery charging equipment; chargers for electric batteries are electrochemical cells that convert stored energy, which may be chemical or even solar, into electrical energy (i.e. batteries). These contested goods have clearly defined purposes, which are not those of video games and computer games programs. The goods do not have the same nature or purpose. It is not likely that they are manufactured by the same undertakings and distributed via the same retail channels. The goods are neither complementary nor in competition with each other. Therefore, these goods are considered dissimilar.

The contested sockets and other contacts [electric connections] are devices for conducting, transforming, accumulating, regulating or controlling electricity. They have different natures, intended purposes and methods of use from the opponent’s goods, which are video games; computer games programs. Their producers, distribution channels and relevant publics are also different. The mere fact that electricity is indispensable for the functioning of the earlier mark’s goods is not a relevant factor to find similarity between these goods. Therefore, they are dissimilar.

The contested cell phone cases; bags adapted for laptops and the opponent’s goods in Class 9 are deemed to be dissimilar, as they do not coincide in any of the criteria that may alone or in combination give rise to a degree of similarity between them. They differ in their purpose, nature and method of use. They do not have the same relevant public, usual producers or distribution channels. They are neither complementary nor in competition with each other.

Contested goods in Class 28

The contested gaming machines; video game machines; video game joysticks; portable games with liquid crystal displays; computer game apparatus; controllers for game consoles; games; arcade video game machines; games (apparatus for -); amusement machines, automatic and coin-operated; battery-powered computer game with LCD screen; toys; parlour games; hand -held electronic games are similar to the opponent´s video games in Class 9. The contested goods include toys and an array of objects related to gaming. The opponent´s goods cover video games. These goods are aimed at the same target audience. Moreover, they may well emanate from the same producers, be distributed via the same channels and some may be used in a complementary manner (for example video game joysticks and video games).

The contested shock absorption pads for protection against injury [sporting articles] and opponent´s earlier goods namely video games; computer games programs in Class 9 are dissimilar. These goods do not coincide in any of the criteria that may alone or in combination give rise to a degree of similarity between them. They differ in their purpose, nature and method of use. They do not have the same relevant public, usual producers or distribution channels. They are neither complementary nor in competition with each other.

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 earlier mark’s goods target public at large, including professionals whereas some of the contested goods target a professional public exclusively, namely arcade video game machines; games (apparatus for -); amusement machines, automatic and coin-operated in Class 28. Therefore, with respect to these goods, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 81). The remaining contested goods target the general public, just like the opponent’s goods. Therefore, with respect to those goods, the relevant public for assessing likelihood of confusion is the general public.

The public’s degree of attentiveness, irrespectively of whether the general public or the professional public is concerned, may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods, as some of the goods are normally purchased on an infrequent basis for a very specific purpose and their price could also be relatively high.

3. The signs

DRIVER
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 Community 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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the relevant public.

The earlier mark is a word mark composed of the term ‘DRIVER’. In case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether a word mark is represented in lower or upper case or a combination of those letters.

The contested sign is a slightly figurative mark composed of the sequence of letters ‘iDrivever’ written in a black fairly standard typeface. All the letters are presented in lower case but the second letter ‘D’ which is written in upper case.

The marks under comparison have no element which could be considered clearly more dominant (visually eye-catching).

Regarding the contested sign, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). With respect to the term ‘iDrivever’, the letter ‘i’ will be dissected not only due to its meaning in relation to the goods as take, as referred to below, but also because of the upper case letter that is following. Having said that, it should be pointed out that most likely part of the relevant public might perceive the first letter ‘i’ as a very commonly used in the electronic or internet context as an abbreviation for internet or interactive. The meaning of the letter ‘i’ as the abbreviation of the word ‘internet’ is well known in the field and it has been already acknowledged by several decisions of the Boards (see, among others, decisions of 18 July 2003, R 682/2002-2, ‘I-CARD’, para. 16, of 22 October 2008, R 902/2008-2, ‘ITEST’, paras 18 and 19, of 14 February 2008 , R 660/2007-1, ‘Iplayer’, para. 14, of 19 April 2004, R 758/2002-2, ‘ITUNES’, para. 11, of 9 July 2003, R 438/2002-4 ‘IPUBLISH’, para. 12). As mentioned, the letter ‘i’ also corresponds to an abbreviation for the word ‘interactive’, and such a meaning should be also taken into account insofar it might be related to the goods at stake. The word ‘interactive’ according to the Oxford English Dictionary Online means ‘pertaining to or being a computer or other electronic device that allows a two-way flow of information between it and a user, responding immediately to the latter's input’. Thus, the addition of the simple letter ‘i’ in front of the element ‘Drivever’ describes a characteristic of the goods to some consumers of computing and entertainment, e.g. video games in Class 9, toys in Class 28. Therefore, the letter ‘i’ is a rather weak element for the relevant goods, as it refers to the nature of those goods (e.g. downloadable music files via Internet or interactive games). Consequently, for this part of the relevant public the most distinctive part of the contested sign is ‘Drivever’. For the rest of the relevant public who will not associate the letter ‘i’ with any concept, the contested sign has no elements which could be perceived as more distinctive.

Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘-D-R-I-V-E-’ which constitutes the first five letters of the earlier mark and for part of the relevant public for the reasons set forth above the beginning of the most distinctive element of the contested sign. They also coincide in their last letters ‘R’. However, they differ in the additional first letter ‘i’, which is however weak as explained above, and the letters ‘-V-E-’ at the end of the contested mark, which are a repetition of the preceding letters which the marks have in common. The stylisation of the contested sign is so minimal that it does not serve to distance the contested sign visually from the earlier mark.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘-D-R-I-V-E(-*-*)-R’ present in both marks, and to that extent the signs are aurally similar. The pronunciation differs in the sound of both the first letter ‘i’ and the letters ‘-V-E-’ of the contested mark, which have no counterpart in the earlier sign.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Part of the public in the relevant territory will perceive the meaning of the element ‘i’ of the contested sign, as explained above. The other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the relevant public. However, the concept is rather weak and therefore the impact of the concept evoked by the mark is limited. For the remaining part of the relevant public that will not perceive the contested sign with any meaning the conceptual comparison remains neutral.

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 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As it has been concluded, the goods at stake are partly similar to different degrees and partly dissimilar. The earlier mark has a normal degree of distinctiveness. The relevant public is the public at large and the professional public whose level of attention varies from average to high. The signs are visually and aurally similar to an average degree whereas from the semantic perspective the signs are either not similar or the conceptual comparison must remain neutral. In view of all the relevant factors, it is considered that the similarity of the signs outweighs the low similarity between some of the goods. Consequently, there is a likelihood of confusion with respect to similar goods to all degrees, even for the professional public with high level of attention.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English-speaking part of the relevant public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 3 726 271. 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.

It follows from the above that the contested trade mark must be rejected for downloadable electronic publications; downloadable music files; USB flash drives; downloadable image files in Class 9 and gaming machines; video game machines; video game joysticks; portable games with liquid crystal displays; computer game apparatus; controllers for game consoles; games; arcade video game machines; games (apparatus for -); amusement machines, automatic and coin-operated; battery-powered computer game with LCD screen; toys; parlour games; hand -held electronic games in Class 28 that were found to be similar to different degrees to those of the earlier trade mark.

The rest of the contested goods, namely battery chargers; battery charge devices; battery charging equipment; chargers for electric batteries; sockets and other contacts [electric connections]; cell phone cases; bags adapted for laptops in Class 9 and shock absorption pads for protection against injury [sporting articles] in Class 28 are dissimilar. As 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 cannot be successful.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Saida CRABBE

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.