OPPOSITION No B 2 613 076

Imply Tecnologia Eletrônica Ltda, Rodovia Imply Tecnologia 1.111, Santa Cruz do Sul Rio Grande do Sul 96815 911, Brazil (opponent), represented by Esther Urteaga Pintado, C/ Príncipe de Vergara, 31, 28001 Madrid, Spain (professional representative)

a g a i n s t

Immersive Play Brands Limited, 5 New Street Square, London EC4A 3TW, United Kingdom (applicant), represented by Taylor Wessing LLP, 5 New Street Square, London EC4A 3TW, United Kingdom (professional representative).

On 11/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 613 076 is upheld for all the contested goods and services.

2.        European Union trade mark application No 14 599 799 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 599 799. The opposition is based on European Union trade mark registration No 12 528 105.  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 and services

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

Class 9:  Computer terminals for banking purposes; Payment terminals, money dispensing and sorting devices; Interactive terminals; Automatic ticket dispensing machines; Digital boards; Touch panels; Electronic display panels; Communications equipment; Computer networking and data communications equipment; Data communications software; Junction boxes [electricity]; Energy control devices; Electronic display boards; Information display terminals; Access control systems (Automatic -).

Class 28: Bowling machines; Slot machines (gaming devices); Bowling apparatus and machinery; Bowling balls; Electronic games; Arcade games.

Class 41: Games equipment rental; Organization of sports competitions; Organising of entertainment competitions; Entertainment; Rental of electronic game equipment; Advisory services relating to entertainment; Advisory services relating to the organisation of sporting events.

The contested goods and services are, after a limitation, the following:

Class 9: Entertainment software; Computer programs for video and computer games; computer application software for mobile and cellular phones, handheld computers and portable and handheld digital electronic devices; software for computer games; interactive entertainment software for use with computers.

Class 28: Children's toys; Children's talking toys; plush toys; toy cars; toy vehicle tracks; toy action figures; Children's games.

Class 41: Entertainment services in the nature of providing video footage; Production of films; Production of radio and television programs; Production of television shows; Publication of books; Editing or recording of sounds and images; production of sound recordings; interactive entertainment; entertainment services.

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 goods in Class 9 are different kinds of software used for entertainment, games as well as for a number of different communication devices. The earlier mark covers data communications software meaning that all of these goods coincide in their nature (namely they give instructions to a computer to enable it to perform a certain task) and indeed there is also a certain overlap as concerns their purpose given that all of the software relies on relaying data. Given that the fields are not so divergent, the distribution channels are usually the same as are the end-users thus leading to the goods being at least similar. 

Contested goods in Class 28

The contested children’s games are identical to the electronic games from the earlier right to the extent that ‘games’ is a broad term including electronic versions intended for children.

The contested children’s toys; children’s talking toys; plush toys are material objects for children to play with and are intended to amuse, engage and in some cases may help in learning. ‘Plush’ merely refers to the item being made of some kind of fabric. Together with the contested toy cars; toy vehicle tracks; toy action figures they are at least similar to the bowling apparatus from the earlier right given that all of these goods are used to play with, to use and engage and are stocked in the same shops or at least in close proximity. Moreover such goods are usually produced by the same manufacturers and aimed at the same consumers.

Contested services in Class 41

Entertainment services are equally designated by both marks and the contested interactive entertainment included within this broad term. Given that such a broad term cannot be dissected ex-officio, all these services are identical. 

The contested production of films; production of radio and television programs; production of television shows are similar to entertainment services as designated by  the earlier mark since all of the contested services relate to making different forms of entertainment whether it be visual or aural. It is usual for such services to derive from the same producers and they target the same consumers. The same assertions apply to the contested editing or recording of sounds and images; production of sound recordings given that these may also be used for similar visual and aural productions. The contested entertainment services in the nature of providing video footage should be understood in the sense of ‘namely’ thus effectively limiting to the specific services mentioned and to which the same assertions and conclusion apply.

The contested publication of books is similar to a low degree to entertainment from the earlier mark due to coinciding distribution channels and their complementary relationship. 

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 and similar to varying degrees are directed at both the public at large (as is the case with the goods in Class 28) and business customers with specific professional knowledge or expertise (as in Class 41, for example) The degree of attention may vary from average (for toys, for example, in Class 28) to high (as in Class 41) given that the public’s degree of attentiveness may vary depending on the price and the impact on a final product and the envisaged profit (as would be the case with production services).

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).

It should firstly be pointed out that the earlier mark includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

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 this regard, the element ‘imply’ has no meaning for non-English speakers as is the case with the contested sign, which has no meaning as a whole and in this scenario both verbal components are distinctive. The fact that certain letters are depicted in bold in the contested sign may lead part of the public to perceive ‘i play’ within the sign, which would render it weak in conjunction with the goods in Class 9 which may all be used for the purposes of playing as is the case with the goods in Class 28 and likewise for some of the services in Class 41 which may relate to gaming services, for example. Though ‘i play’ may be considered as a fairly basic English expression, it cannot be held that non-English speakers (such as the French, Spanish, Portuguese) would pick up on this in the sign despite its depiction since consumers generally perceive signs as a whole and for those who are not English speakers they are unlikely to dissect the sign into different language components. If a significant part of the relevant public for the goods or services at issue may be confused as to the origin of the goods, this will be sufficient to establish a likelihood of confusion. It is not necessary to establish that all actual or potential consumers of the relevant goods or services are likely to be confused. In view of this premise, the Opposition Division finds it appropriate to focus on this part of the public for whom the contested sign has no separate elements and will be seen as ‘immplay’.

The blue circular device with an ‘i’ in the middle is used in many fields of trade to indicate ‘information’ namely that information can be found via clicking or following the sign post. However, in the context of the earlier sign it will most probably be taken as the initial letter of ‘imply’. In any event, no direct correlation can be made with the goods and services at issue which would also render this element distinctive. This is however counterbalanced by the fact that it performs a secondary role in the sign. This is due to the fact that a figurative device cannot generally take precedence over a verbal element which usually has a stronger impact on the consumer as they tend to 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).

For the sake of completeness, it is worth noting that there is no element more dominant than the others in either of the signs.

Visually, the signs coincide in the contested sign’s ‘im*pl*y only differing in the second ‘m’ and the letter ‘a’. Though they also differ in the circular figurative device featuring the letter ‘i’ and in the shading of the letters in the contested sign, these differences are, as explained above, not sufficient to detract attention from the verbal constituents. Therefore, weighing up the foregoing, the signs are visually similar to at least an average degree.

Aurally, it is highly improbable that the ‘i’ from the figurative device will be pronounced given that it is contained in a figurative device, which is not usually pronounced. Moreover, as explained above, it will probably be taken as a reference to the verbal constituent and consequently the earlier sign will be referred to as ‘imply’ and the contested sign as ‘immplay’. The signs are aurally highly similar given that the extra letter ‘m’ has little (if any) impact thus leaving only the sound of the ‘a’ in the contested sign to differentiate them and even then, given its positioning amongst other sounds, its significance is diminished.  

Conceptually, neither of the signs has a clear meaning for the public in question. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. In the event that the device with the letter ‘i’ is perceived as referring to ‘information’ this would render the marks conceptually not similar.

Given that the signs show similarities, the examination 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

As established, the contested goods and services vary from identical through to varying degrees of similarity and are aimed at the public at large and professionals with a degree of attention between average and high. In this regard, it should be noted that 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 who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54). In this sense, the signs have been found to be visually similar to at least an average degree and aurally, to a high degree with no concept linking the signs. Indeed, the similarities between the signs combined with an imperfect recollection give rise to a likelihood of confusion. Indeed, 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). In these circumstances therefore, there is a likelihood of confusion on the 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. It follows that the contested trade mark must be rejected for all the contested goods and services even for those found similar to a low degree in view of the explained similarities between the signs.

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

Marta GARCÍA COLLADO

Vanessa PAGE

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.

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.