OPPOSITION No B 2 712 878

adp Gauselmann GmbH, Merkur-Allee 1-15, 32339 Espelkamp, Germany (opponent), represented by adp Gauselmann GmbH, Wolfgang Schröder, Paul-Gauselmann-Straße 1, 32312 Lübbecke, Germany (employee representative)

a g a i n s t

Eagle Investment SICAV plc, acting on behalf of ITT FUND, Alpine House, Naxxar Road, San Gwann SGN9032, Malta (applicant), represented by Pavel Hrášek, Týnská 1053/21, 11000 Praha, Czech Republic (professional representative).

On 21/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 712 878 is partially upheld, namely for the following contested goods and services:

Class 9: Games software; Software programs for video games; Interactive video game programs; Electronic components for gambling machines; Games cartridges for use with electronic games apparatus.

Class 28: Electronic games; Electronic hand-held game units; Handheld computer games; Counters for games.

         Class 41: Gambling; Operating lotteries; Organising and conducting lotteries.

2.        European Union trade mark application No 15 405 566 is rejected for all the above goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 405 566 ‘MAD MECHANICS’, namely against some of the goods and services in Classes 9, 28 and 41. The opposition is based on European Union trade mark registration No 13 892 609 ‘Golden Mechanics’. The opponent invoked Article 8(1)(a) and (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: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus; Musical jukeboxes and parts for the aforesaid automatic machines; Automatic cash dispensers, automatic money counting and money changing machines; Coin-operated mechanisms; Computer and video games software; Games software for use on any computer platform, including electronic entertainment and games consoles; Computer game programs; Computer games programs; Video games (software); Computer games provided through a global computer network or supplied by means of multi-media electronic broadcast or through telecommunications or electronic transmission or via the Internet; Computer games, leisure and recreational software, video games and computer software, all being provided in the form of storage media; Programs for operating electric and electronic apparatus for games, amusement and/or entertainment purposes; automatic lottery machines; computer software for computer games on the Internet; Online games (software), in particular for online betting games, online prize games, online gambling games, online games of skill and online casino games; computer software in the form of an app for mobile devices and computers; Calculating apparatus in coin-operated machines and parts for the aforesaid goods; Apparatus for recording, transmission, processing or reproduction of data, including sound or images, including parts for all the aforesaid goods, except radio sets, television receivers, hi-fi systems, video recorders, telephone apparatus, fax machines and telephone answering machines; Computer hardware and software for casino and amusement arcade games, for gaming machines, slot machines or video lottery gaming machines or games of chance via the Internet; Electric, electronic, optical or automatic apparatus, for identifying data carriers, identity cards and credit cards, bank notes and coins; Electric, electronic or optical alarm and monitoring installations, including video cameras and apparatus for image transmission and image processing; Data processing apparatus and computers, including data processing apparatus and computers being components for data networks and parts facilitating data network communications; Electric wiring harnesses; Circuit boards, printed circuit boards (electronic components) and combinations thereof, being assemblies and parts for apparatus, included in class 9.

Class 28: Toys; Toys; Gymnastic and sporting articles not included in other classes; Decorations for Christmas trees; Gaming apparatus (including coin-operated apparatus); Coin-operated arcade games (machines); Games for amusement arcades (included in class 28); Coin-operated video gaming apparatus; Video games adapted for use with external screens or monitors only; Casino fittings, namely roulette tables, roulette wheels; Coin-operated automatic gaming machines and gaming machines, in particular for gaming arcades, with or without a prize payout; Electronic or electrotechnical gaming apparatus, automatic gaming machines, gaming machines, slot machines operated by coins, tokens, banknotes, tickets or by means of electronic, magnetic or biometric storage media, in particular for commercial use in casinos and amusement arcades, with or without a prize payout; Automatic gaming machines and gaming machines, in particular for commercial use in casinos and gaming arcades, with or without a prize payout; Coin-operated gaming machines and/or electronic money-based gaming apparatus (machines), with or without prizes; Housings adapted for gaming machines, gaming apparatus and automatic gaming machines, operated by means of coins, tokens, tickets or by means of electronic, magnetic or biometric storage media, in particular for commercial use in casinos and gaming arcades, with or without a prize payout; Electronic games; Electronic game entertainment apparatus and accessories; Video output game machines; Drawing apparatus for prize games and lotteries, draws or raffles; Housings of metal, plastic and/or wood for coin-operated automatic machines; Apparatus for games (including video games), other than adapted for use with external screens or monitors only; Electropneumatic and electric pulling machines (gaming machines); Gaming tables, in particular for table football, billiards, sliding games; Arrows and flying discs (toys); Electric, electronic or electromechanical apparatus for bingo games, lotteries or video lottery games and for betting offices, networked or unnetworked; LCD games consoles; Automatic gaming machines; Including all the aforesaid automatic machines, machines and apparatus operating in networks; Apparatus and devices for accepting and storing money, being fittings for the aforesaid automatic machines, included in class 28.

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities; Rental of automatic slot machines and entertainment machines for casinos; Arranging and conducting games; Gambling; Operating of lotteries; Operating games on the Internet, including online and being applications for smartphones; On-line games (over the Internet); provision of entertainment and/or educational content for apps for mobile devices and computers; Conducting quizzes by means of smartphone applications; Providing casino facilities (gambling), betting offices; Operating gaming establishments, arcades and/or online Internet casinos and betting platforms; Gambling services via the Internet.

The contested goods and services are the following:

Class 9: Games software; Software programs for video games; Interactive video game programs; Electronic components for gambling machines; Games cartridges for use with electronic games apparatus; Coin-operated musical automata [juke boxes]; Automated teller machines [ATM].  

Class 28: Games; Electronic games; Apparatus for games; Arcade games; Electronic hand-held game units; Handheld computer games; Lottery wheels; Slot machines [gaming machines]; Automatic gaming machines; Coin-operated amusement machines; Bill-operated gaming equipment; LCD game machines; Counters for games; Amusement apparatus for use in arcades; Arcade game machines.  

Class 41: Gambling; Operating lotteries; Organising and conducting lotteries; Games equipment rental; Casino services; Providing casino facilities; Leasing of casino games; Providing casino facilities [gambling]; Providing of casino and gaming facilities; Casino, gaming and gambling services; Providing amusement arcade services; Video arcade services.

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

The terms ‘in particular’ and ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

Contested goods in Class 9

The contested games software includes, as a broader category, the opponent’s computer and video games software. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Software programs for video games are identically contained in both lists of goods (including synonyms).

The contested interactive video game programs are included in the broad category of the opponent’s computer and video games software. Therefore, they are identical.

The contested electronic components for gambling machines and games cartridges for use with electronic games apparatus include, as a broader category, the opponent’s circuit boards, printed circuit boards (electronic components) and combinations thereof, being assemblies and parts for apparatus, included in class 9. 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 coin-operated musical automata [juke boxes] are identically contained in both lists of goods (including synonyms).

The contested automated teller machines [ATM] are included in the broad category of the opponent’s data processing equipment. Therefore, they are identical.

Contested goods in Class 28

The contested games include, as a broader category the opponent’s electronic games. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods they are considered identical to the opponent’s goods.

Electronic games; apparatus for games; arcade games; automatic gaming machines; coin-operated amusement machines are identically contained in both lists of goods (including synonyms).

The contested electronic hand-held game units; handheld computer games; bill-operated gaming equipment; LCD game machines; are included in the broad category of the opponent’s apparatus for games (including video games), other than adapted for use with external screens or monitors only. Therefore, they are identical.

The contested lottery wheels consist of revolving drums or hollow cylinders in which lottery tickets are mixed and from which the winning numbers are drawn. The opponent’s electric, electronic or electromechanical apparatus for bingo games, lotteries or video lottery games and for betting offices, networked or unnetworked are all apparatus related to games of chance. Since some of the opponent’s goods could be or emulate lottery wheels  the goods under comparison overlap and are therefore identical.

The contested slot machines [gaming machines] include, as a broader category the opponent’s slot machines operated by coins. 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 counters for games are included in the broad category of the opponent’s toys. Therefore, they are identical.

The contested amusement apparatus for use in arcades; arcade game machines overlap with the opponent’s arcade games since some of the opponent’s games are apparatus and machines for use in arcade. Therefore, they are identical.

Contested services in Class 41

Gambling; operating lotteries; organising and conducting lotteries; casino services (listed twice); providing casino facilities (listed twice); providing casino facilities [gambling] are identically contained in both lists of services (including synonyms).

The contested providing gaming facilities; gaming and gambling services; providing amusement arcade services; video arcade services are included in the broad category of the opponent’s gambling. Therefore, they are identical.

The contested games equipment rental; leasing of casino games is included in the broad category of the opponent’s entertainment. Therefore, they are identical.

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 in Classes 9 and 41 found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. The goods in Class 28 are directed at the public at large.

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase and their price.

3. The signs

Golden Mechanics	MAD MECHANICS
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 a word mark formed by the two words ‘Golden’ and ‘Mechanics’.

The contested mark is a word mark formed by the two words ‘Mad’ and ‘Mechanics’.

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.

The different elements ‘golden’ and ‘mad’ are meaningful in certain territories, for example, in those countries where English is understood. The element ‘mechanics’ is meaningful in all the territories of the European Union due to the proximity of the equivalent words in the official languages in the relevant territories such as ‘mecánica’ in Spanish ‘mécanique’ in French, ‘meccanica’ in Italian, ‘mecânica’ in Portuguese, ‘механика’ in Bulgarian. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as Ireland and the United Kingdom.

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The element ‘mechanics’ will be perceived by the relevant public as referring to ‘the branch of science, divided into statics, dynamics, and kinematics, concerned with the equilibrium or motion of bodies in a particular frame of reference’ and also to ‘the working parts of a machine’. Bearing in mind that some of the relevant goods and services are related to ‘machines’, this element is weak for part of these goods and services, namely for ‛Coin-operated musical automata [juke boxes]; Automated teller machines [ATM] in Class 9, ‘Games; Apparatus for games; Arcade games; Lottery wheels; Slot machines [gaming machines]; Automatic gaming machines; Coin-operated amusement machines; Bill-operated gaming equipment; LCD game machines; Amusement apparatus for use in arcades; Arcade game machines in Class 28, and Games equipment rental; Casino services; Providing casino facilities; Leasing of casino games; Providing casino facilities [gambling]; Providing of casino and gaming facilities; Casino, gaming and gambling services; Providing amusement arcade services; Video arcade services’ in Class 41. This is because all the aforesaid goods and services can be related with the mechanics that are needed in order for the machine part of the above mentioned game machines to operate.

The element ‘golden’ will be understood as ‘something bright yellow in colour’ and ‘something made of gold’. This term may allude to certain characteristics of the goods and services covered by the earlier mark. In particular, the public may associate the word ‘golden’ with luxurious goods and services. The term ‘golden’ therefore has suggestive connotations with regard to the goods and services covered by the earlier mark and is therefore, weak for the goods and services at hand.  

The element ‘mad’ will be understood as ‘insane, foolish or angry’. This term, considering that it is an adjective that qualifies the name ‘mechanics’ has suggestive connotations and should be considered as weak with regard to the goods and services covered by the contested mark.  

The marks, being word marks have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the word ‘Mechanics’ which is weak for part of the relevant goods and services, and differ in their first words, ‘Golden’ and ‘Mad’ which are also weak as explained above. The marks are visually similar to a low degree for the goods and services for which the common element ‘mechanics’ is weak and of an average degree for the goods and services for which the word ‘mechanics’ is of normal distinctiveness.

Aurally, , the pronunciation of the signs coincides in the sound of the sequence of letters ‘Mechanics’, weak for part of the relevant goods and services and present identically in both signs, and differs in the sound of the sequences of letters ‘Golden’ and ‘Mad’, which are also weak, in the earlier and contested marks, respectively.

The marks are aurally similar to a low degree for the goods and services for which the common element ‘mechanics’ is weak and of an average degree for the goods and services for which the word ‘mechanics’ is of normal distinctiveness.

Conceptually, the signs are similar to a low degree to the extent that they share the concept of the word ‘mechanics’ which, as explained above, is weak for part of the relevant goods and services. The conceptual similarity is average for the goods and services for which the word ‘mechanics’ was found to be normally distinctive. The signs are not conceptually similar as far as they refer to the concepts of ‘golden’ and ‘mad’.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for a part of the goods and services in question, namely Coin-operated musical automata [juke boxes]; Automated teller machines [ATM] in Class 9, Games; Apparatus for games; Arcade games; Lottery wheels; Slot machines [gaming machines]; Automatic gaming machines; Coin-operated amusement machines; Bill-operated gaming equipment; LCD game machines; Amusement apparatus for use in arcades; Arcade game machines in Class 28, and Games equipment rental; Casino services; Providing casino facilities; Leasing of casino games; Providing casino facilities [gambling]; Providing of casino and gaming facilities; Casino, gaming and gambling services; Providing amusement arcade services; Video arcade services in Class 41. The mark has a normal degree of distinctiveness for the remaining goods and services, for which the meaning of the word ‘mechanics’ has no relation to the goods and services.

5. Global assessment, other arguments and conclusion

The goods and services are identical. The comparison of the signs has shown that, because of the meaning the word ‘mechanics’ has in relation to part of the relevant goods and services, and the weak character of the words ‘golden’ and ‘mad’, the level of similarity of the signs in all the levels is lower than average for these goods and services.

For the remaining goods and services, namely goods related to software and programmes, which do not involve any kind of mechanical structure that may need maintenance by specialised ‘mechanics’, the level of similarity is average because the first elements of the signs, namely ‘golden’ and ‘mad’ are not particularly distinctive but the word ‘mechanic’, although placed at a second place, is identically repeated in both sigs.

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). Therefore, in the case at hand, as the goods and services are identical, a likelihood of confusion exists for the average consumers that have no chance to make a direct comparison between different marks, for the goods and services mentioned above for which the word ‘mechanics’ is weak, namely for ‛ Games software; Software programs for video games; Interactive video game programs; Electronic components for gambling machines; Games cartridges for use with electronic games apparatus; in Class 9, Electronic games; Electronic hand-held game units; Handheld computer games; Counters for games in Class 28 and Gambling; Operating lotteries; Organising and conducting lotteries in Class 41.

Likelihood of confusion does not exist for the goods and services for which the word ‘mechanics’ has no relation to, namely for Coin-operated musical automata [juke boxes]; Automated teller machines [ATM] in Class 9; Games; Apparatus for games; Arcade games; Lottery wheels; Slot machines [gaming machines]; Automatic gaming machines; Coin-operated amusement machines; Bill-operated gaming equipment; LCD game machines; Amusement apparatus for use in arcades; Arcade game machines in Class 28, and Games equipment rental; Casino services; Providing casino facilities; Leasing of casino games; Providing casino facilities [gambling]; Providing of casino and gaming facilities; Casino, gaming and gambling services; Providing amusement arcade services; Video arcade services in Class 41. 

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-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 13 892 609. 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 to those of the earlier trade mark and related to the word ‘mechanics’.

The opposition is not successful insofar as the remaining goods and services, for which the common word ‘mechanics’ is of normal distinctiveness.  

For the sake of completeness, it must be mentioned that the opposition can not be successful as based on grounds under Article 8(1)(a) EUTMR because the signs 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 will 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

Martin EBERL

Anna POLITI

Swetlana BRAUN

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.