OPPOSITION No B 2 562 216

International Gaming Projects Limited, B2, Industry Street, Qormi QRM3000, Malta (opponent), represented by Baker & ºMckenzie, Paseo de la Castellana, 92, 28046 Madrid, Spain (professional representative)

a g a i n s t

iGenius, Via Daniele Manin 3, 20121 Milano, Italy (applicant), represented by Maria Letizia Bixio, via Firenze 47, 00184 Roma, Italy (professional representative).

On 26/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 562 216 is partially upheld, namely for the following contested goods and services:

Class 9:  Audiovisual equipment; apparatus, instruments and cables for electricity.

Class 41:  Entertainment.

Class 42:  Design services.

2.        European Union trade mark application No 13 963 335 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 963 335. The opposition is based on European Union trade mark registration No 9 515 313. The opponent invoked Article 8(1)(a) and (b) EUTMR.

PRELIMINARY REMARK

The contested trade mark has been partially rejected pursuant to a final opposition decision rendered on 26/07/2016 in opposition No 2 560 335.

On 14/11/2016, the opponent was invited to inform the Office on or before 14/01/2017 whether or not it maintained the opposition. On 05/01/2017 the opponent sent a letter confirming that it maintained the present opposition.

Hence, the Opposition Division will give a ruling on the opposition in relation with the goods and services for which the contested trade mark application was not rejected.

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 and services

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

Class 9: Video-game machines and apparatus; parts and fittings for all these goods, not included in other classes; computer programs, namely computer games, electronic components.

Class 28: Automatic slot machines; amusement and gaming machines; amusement and gaming electric and/or electronic machines, apparatus and installations.

The contested goods and services are the following:

Class 9: Scientific research and laboratory apparatus; navigation, guidance, tracking, targeting and map making devices; audiovisual equipment; apparatus, instruments and cables for electricity; magnets, magnetizers and demagnetizers; optical devices, enhancers and correctors.

Class 41: Publishing and reporting; education, entertainment and sports; translation and interpretation.

Class 42: Design services; science and technology services; testing, authentication and quality control.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the opponent’s list of goods in Class 9 to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 audiovisual equipment overlaps with the opponent’s video-game machines and apparatus to the extent that they all incorporate features involving hearing and sight, such as for e.g. DVD players. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested apparatus, instruments and cables for electricity are all devices or elements that operate according to the principles of electricity and electronics. Likewise, the opponent’s electronic components also operate according to the same principles as these contested goods. Furthermore, the opponent’s goods could also form part of the contested goods. Therefore, these goods share the same nature, the same distribution channels and could originate from the same producers and hence, they are similar.

The opponent argues that there is applicable identity between the contested goods in this class and those protected by the earlier mark because all of them are referred to as apparatus and devices related to technology.

However, the contested scientific research and laboratory apparatus; navigation, guidance, tracking, targeting and map making devices are a combination of apparatus and devices that serve either to investigate or conduct scientific experiments or tests within the field of science, have the purpose of plotting a route and directing a ship, aircraft, etc., whereas the opponent’s games and amusement machines in Classes 9 and 28, aim at providing amusement and distraction. The fact that they perform functions technically is not sufficient to establish a degree of similarity between them. This is even more the case in relation to the parts and fittings of the video-game machines and apparatus, computer programs and electronic components. They differ in their natures, usual origins, trade channels, methods of use and are neither complementary nor in competition with each other. Consequently, they are clearly dissimilar.

A degree of similarity can neither be established between the contested magnets, magnetizers and demagnetizers; optical devices, enhancers and correctors and the opponent´s goods due to their specific natures. As already explained, the latter consist of apparatus and machines which purpose is providing amusement and distraction as well as parts and fittings, computer programs and electronic components. On the other hand, the principal function of magnets, magnetizers and demagnetizers is the attraction of certain substances and the principal function of optical devices, enhancers and correctors is aiding vision. Therefore, they differ in their natures, usual origins, trade channels, methods of use and are neither complementary nor in competition with each other. Consequently, they are clearly dissimilar.

Contested services in Class 41

The contested entertainment services include all types of amusement and distraction activities and, in this sense, have connection points with the opponent´s amusement and gaming machines in Class 28 to the extent that the latter can be provided for entertainment by these contested services. Therefore, these goods and services are complementary to each other, target the same public and can originate from the same providers. Consequently, they are similar.

However, the contested publishing and reporting, education, sports, translation and interpretation services do not coincide with any of the opponent´s goods. Indeed, the latter are apparatus and machines which purpose is providing amusement and distraction and these contested services involve activities relating to issuing texts such as news and articles to be delivered to the public, teaching, practicing sports and translating and interpreting texts. Therefore, they differ in their natures, usual origins, trade channels, methods of use and are neither complementary nor in competition with each other and though the relevant public may coincide in some cases, this would not be sufficient to find any degree of similarity on its own. Consequently, they are clearly dissimilar.

Contested services in Class 42

The contested design services consist of activities which purpose is outlining, sketching or drawing something to be done or constructed. In this sense, design services are very broad and include also the designing of hardware and software. To this extent, they can include the design of the opponent’s computer programs, namely computer games. In this sense, they can coincide in producer and end users. Furthermore, they can also be complementary. Therefore, they are similar.

The contested science and technology services, testing, authentication and quality control differ from the opponent´s goods. These contested services concern the study of the nature and behaviour of the material and physical universe, the application of science and engineering for practical uses and the evaluation and management of quality whereas the opponent´s goods consist of apparatus and machines that have the function of providing amusement and distraction as well as their parts and fittings and computer programs and electronic components. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs, they differ in their natures, usual origins, trade channels, methods of use and are neither complementary nor in competition with each other. Although the relevant public may coincide in some cases, this would not be sufficient to find any degree of similarity on its own. Consequently, they are clearly dissimilar.

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 some of the design related services at business customers with specific professional knowledge or expertise. The relevant public’s level of attention will vary between average and higher than average, depending on the price of the relevant goods and services and on the frequency of their purchase.

3. 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. In the present case, the word ‘GENIUS’ is an English word which will be understood also by other parts of the relevant public such as the French-speaking part of the public. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the English and French-speaking part of the relevant public.

The earlier mark is a figurative mark consisting of the word element ´GENIUS´, written in fanciful stylized green letters with a capital ‘G’ which, due to its size, in comparison with the rest of the letters written in low letter case, has more relevance in the overall impression rendered by the sign. Two orange small distinctive rhombus are depicted on top of the vowel ‘i´ and underneath the letter ‘s´ respectively. They play an ornamental role.

The contested sign is a figurative mark depicting the word ‘iGenius’, written in slightly stylized letters with a capital ‘G’ that somewhat stands out in contrast with the rest of the letters written in low letter case.

According to the applicant, the relevant public will focus its attention on the first letter of the contested mark, namely the letter ‘i’, which will be perceived with different words depending on the technology sector.

To this extent, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04 ‘Respicur’, EU:T:2007:46, § 57).

In the present case, though the applicant’s argument may be true, the most likely scenario to happen will be that the initial letter ‘I’ of the contested sign will be associated with ‘internet’ as it is the commonplace acronym universally used for such purpose. Bearing in mind that the relevant goods and services are either related to the information technology field or may be provided and/or rendered through internet, this acronym is non-distinctive for these goods and services. Consequently, its impact is limited when assessing the similarity between the marks at issue. To this extent, in the word combination of the contested mark ‘iGenius’, the word ‘Genius’ is the distinctive element.

The marks coincide in the distinctive element ‘GENIUS’, which is an English word meaning ‘an exceptional and natural capacity of intellect or ability, a person having such capacity’ (information extracted from Wordreferece.com on 24/05/2017 at http://www.wordreference.com/definition/genius). In addition, this word is very close to the equivalent word ‘génie’ in French which hence is likely to be associated with such meaning by a part of the relevant public.

The capital letters ´G´ of both marks are more prominent and are have therefore more relevance in the overall impression that they both render. However, neither of the signs have dominant elements.

Visually, the signs coincide in the letter sequence ‘Genius’, written with a capital ´G´, which has more relevance within both marks due to its size. This coinciding word element constitutes the only word element of the earlier sign and the more distinctive element of the contested mark. However, they differ in the stylization of their letters, in the colour combination and in the two orange rhombuses depicted in the earlier sign as well as in the first letter ‘i’ of the contested mark, that the public will most likely associate with internet and hence, is not distinctive.

Since the marks coincide in the only word element of the earlier sign that also constitutes the distinctive element of the contested sign, they are similar to, at least, an average degree.

Aurally, the pronunciation of the signs coincides in the distinctive word formed of the syllables /GE/NIUS/’, present in both. The pronunciation differs in the sound of the first letter ‘i’ of the contested mark which may be pronounced either with the French pronunciation /i/ or with the English pronunciation /aɪ/ which will be associated with internet, as explained above, and is hence non-distinctive.

Therefore, the signs are highly similar.

Conceptually, although, for a part of the public, the signs as a whole do not have any meaning, the non-distinctive first letter of the contested mark ‘i’ will be associated with ‘internet’, as already explained above.

In this sense, for the part of the public that will not associate the word element ‘GENIUS’ with any meaning, the signs are not conceptually similar because the earlier sign will not be associated with any meaning.

However, as also indicated, the distinctive element ‘GENIUS’, is an English word with a meaning and is also very close to the equivalent French word ‘génie’ which, for this reason, is likely to be associated with this meaning by a part of the relevant public.

Therefore, for the part of the public that will understand the word element ‘GENIUS’, 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 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 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

A likelihood of confusion (including a likelihood of association) 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.

The conflicting goods and services are identical, similar and dissimilar. The consumer’s level of attention will vary from average to higher than average.

Visually the signs in conflict have been found similar to at least, an average degree, aurally highly similar and conceptually, they are highly similar for the part of the public that will perceive a meaning in the word ‘GENIUS’ and not conceptually similar for the part of the public that will only associate the first letter ‘i’ of the contested mark with the word ‘internet’.

The trade marks at issue coincide in the distinctive word element ‘GENIUS’, which plays a leading role in both and is written with a capital ‘G’ that stands out of the overall impression rendered by the signs. Furthermore, it is the only word element of the earlier mark and the distinctive element of the contested sign.

On the other hand, the differences between the signs in conflict are the non-distinctive letter ‘i’, placed at the beginning of the contested sign, the different stylizations of the letters, the colours and the small orange rhombus in the earlier sign which play an ornamental role. To this extent, the relevant public will not pay as much attention to these elements. Therefore, the main differences between the signs are confined to ornamental and non-distinctive elements and will not have a significant impact on the public’s perception.

In this sense, account is taken of the fact that average consumers 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) and even consumers with a high level of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

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.

Furthermore, in the current case, the goods and services at issue target the general public though some of the design related services in Class 42 are only addressed at specialists. However, likelihood of confusion cannot be safely excluded for these consumers because even consumers with a high level of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).

The fact that the only word element of the earlier mark is fully included in the contested sign that starts with an ‘i’ that will be associated with ‘internet’, may lead consumers to legitimately believe that the contested trade mark is a brand variation of the earlier trade mark in the internet version. In this sense, the relevant public may believe that the goods and services at issue come from the same undertaking or from economically-linked undertakings.

In its observations, the applicant indicates that the word ‘Genius’ is a common word represented in more than 200 trade marks in Europe. To demonstrate this statement, it submits a list of the most significant ones.

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 data concerning a register 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 ‘Genius’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English and French-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 9 515 313. 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 the goods and services found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods and services 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 and services cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods and services because the goods and services are obviously not identical.

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 shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Lilya YORDANOVA

Patricia LOPEZ FERNANDEZ DE CORRES

Denitza STOYANOVA-VALCHANOVA

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.