OPPOSITION No B 2 581 364
Novapress SA, 127, avenue Ledru Rollin, 75011 Paris, France (opponent), represented by Jacobacci & Coralis, 14/16, rue Ballu, 75009 Paris, France (professional representative)
a g a i n s t
Damiano Vitulli, Via delle Isole Curzolane 151, 00139 Rome, Italy (applicant), represented by Alessandro Marescotti, Via Sistina, 121, 00187 Roma, Italy (professional representative).
On 29/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 581 364 is upheld for all the contested goods.
2. European Union trade mark application No 13 477 575 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 of European Union trade mark application No 13 477 575. The opposition is based on, inter alia, French trade mark No 4 012 604. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be rejected.
The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, French trade marks No 4 012 604, No 3 029 684 and No 3 045 213.
In the present case the contested trade mark was published on 17/06/2015.
Earlier trade mark No 4 012 604 was registered on 14/06/2013. Therefore, the request for proof of use is inadmissible, as far as this earlier right is concerned.
As far as the remaining earlier rights are object of a proof of use request, the request was filed in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.
On 26/04/2016, the opponent was given two months to file the requested proof of use for these earlier rights.
According to Rule 22(2) EUTMIR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition. The opponent did not provide any evidence of proof of use in respect to the relevant earlier rights.
Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR, as far as earlier rights No 3 029 684 and No 3 045 213 are concerned. The examination will proceed only on the basis of French trade mark No 4 012 604.
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 goods
The goods on which the opposition is, inter alia, based are the following:
Class 9: Apparatus and recording carriers, transmission, the reproduction of sound, images and data; equipment for data processing; computer software (recorded); computers; downloadable electronic publications; apparatus for games video of consumption; programmes for apparatus for games video of consumption; electronic circuits, magnetic disks, optical disks, magneto-optical discs, magnetic tapes, cards of memory read-only, cartridges of memory read-only, CD-ROMs, and dvd rom containing of programmes for; apparatus for games video of consumption; carriers of containing storage of programmes for apparatus for games video of consumption; controllers, joysticks and cards of memory for apparatus for games video of consumption; parts for apparatus of game video of consumption; programmes for apparatus for games portable at displays at liquid crystals; electronic circuits, magnetic disks, optical disks, magneto-optical discs, magnetic tapes, cards of memory read-only, cartridges of memory read-only, CD-ROMs, and dvd rom containing of programmes for apparatus tor games portable at displays at liquid crystals; holders of containing storage of programmes for apparatus for games portable at displays at liquid crystals; programmes for apparatus for games video of arcade; electronic circuits, magnetic disks, optical disks, magneto-optical discs, magnetic tapes, holders of containing storage of programmes for video game machines of arcade; piece for video game machines of arcade; computer; data processing programs; electronic circuits, magnetic disks, disks optics for processing of data, magnetic optical discs, magnetic tapes, CDROMs, dvd rom containing of programmes for computers; carriers of containing storage of programmes for computers; game programs for telephone cellular; computer games software fixed, portable or of pocket, for telephone portable, for; tablets, for consoles, for organiser fixed or mobiles; apparatus for games adapted for use with television receivers only; computer software for video games and computer program games; Cd rom’s, program memory cartridges; data bearing record carriers, intended for computers, to mobile phones, to tablets, to organiser fixed or mobiles, or to consumer video game players; sound recording carriers and video for apparatus for games electronic.
The contested goods are the following:
Class 9: Video games software.
The contested video games software and the opponent’s computer software for video games and computer program games are identical as they overlap to the extent that they both are software for video games.
- 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 found to be identical are directed at the public at large. The degree of attention is average.
- The signs
| NOVA GAME | NOVA VOYAGER |
|
Earlier trade mark |
Contested sign |
The relevant territory is France.
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 coinciding element ‘NOVA’ of the signs, due to a certain proximity with the French term ‘novateur’ may be associated with the concept of ‘newness’ and ‘novelty’ by the relevant French public. Furthermore, in the astronomy the word ‘NOVA’ also refers to the appearance of a bright ‘new’ star, in particular known for the phenomena ‘supernova’. However, as this term is more scientific, it is less likely that it will come to the mind of the consumers of the relevant goods. Therefore, taking into account the nature of the goods in question, software products, and the associations that the word ‘NOVA’ may trigger in relation to them, for instance of novelty or innovation, this term is considered of a slightly lower than average distinctiveness since it might be suggestive to the nature of the goods as innovative and new.
The basic English word ‘GAME’ of the earlier sign, due to its common use in the relevant IT field, will be understood by the relevant consumers as ‘a contest with rules, the result being determined by skill, strength, or chance’ (Collins Dictionary Online) in its global sense or more specifically, as a short reference to a video or computer game, bearing in mind the specification of the goods in question. Since the goods relate to software developed for gaming purposes, this word ‘GAME’ describes their nature and it is considered weak in relation to them; consequently, it will be paid less attention by the relevant consumers, in particular gamers, than the other element of the sign that merely suggests to their characteristics.
The word ‘VOYAGER’ will be understood by the French public as the verb ‘to travel’. Even though this term on its own is not particularly descriptive to the nature of the goods, it might suggest the characteristics of the relevant video games software, as a product based on the travelling experience of the gamer, as a plot of the game, or as a virtual travelling via special game equipment and software. Therefore, this word may be also considered of a somewhat limited distinctiveness when related to the goods in question.
The signs have no elements that could be considered clearly more dominant than other elements.
Visually, the signs coincide in their first verbal elements ‘NOVA’ and differ in their second verbal elements, ‘GAME’ and ‘VOYAGER’. As may be seen, the signs have similar structures, both word marks consisting of two individual verbal elements. Furthermore, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Bearing in mind the findings about the distinctiveness of the verbal elements, as explained above, the signs are found visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of their first verbal elements, ‛NOVA’, present identically in both of them. The pronunciation differs in the sound of the remaining differentiating verbal elements ‘GAME’ and ‘VOYAGER’. However, taking into account the distinctiveness of these elements, as referred to above, the signs are similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. To the extent that both signs may be perceived as a reference to innovative and new, even though this concept was considered not particularly distinctive in relation to the goods, the signs are similar to a low degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 view of what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as slightly below average for the goods in question.
- Global assessment, other arguments and conclusion
The goods are found identical and the degree of attention of the relevant public is considered to be average.
The signs show some similarities in their structures; as discussed above, they are represented in two individual verbal elements, where both signs coincide in their first verbal element ‘NOVA’ and feature another verbal element with a descriptive (to some extent) character in relation to the goods in question; in particular, the word ‘GAME’ in the earlier mark will be associated with a computer/video game since it is a very common term among the relevant public. Furthermore, the differentiating word ‘VOYAGER’ may allude to the concept of travelling as referred to above in section c). In addition, although the earlier mark’s distinctiveness was considered slightly below the average, this is still not sufficient to exclude the likelihood of confusion as the marks in question do not contain any other differentiating or additional elements that may help consumers safely distinguish between them.
Firstly, 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). It cannot be ruled out that in a case of purchase, the relevant public may tend to memorise the first verbal element of a sign, namely the verbal element ‘NOVA’ that both marks contain as an individual first elements.
Furthermore, 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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). This would be due to the fact that the relevant public in the field of computer and video software games is accustomed to see on the market new extensions of video games or new lines of products that may bear any of the conflicting signs, as well as additional descriptions referring to characteristics of the new extension/new line. Therefore, even if the relevant consumer does not directly confuse the trade marks in question, a possible association between the signs may lead to a wrong assumption of the same origin of the identical products.
Given the nature of the goods as computer and video software games, the visual impression for marks covering such products is held to be particularly relevant because these goods are normally purchased after a comprehensive examination of their respective specifications and technical characteristics, firstly upon the basis of information that appears in specialist catalogues or on the internet, and then at the point of sale. Therefore, even if consumers are able to compare the relevant products bearing the trade marks in question, a likelihood of confusion cannot be still excluded since the two signs create similar overall impressions in consumers’ mind.
On the other hand, 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 identity of the goods in the present case will offset the differences between the signs in question.
In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include ‘NOVA’. In support of its argument the applicant refers to several trade mark registrations or illustrations of such marks in France, for instance: ‘NOVA Performance’, ‘Arte Nova’, ‘NOVAXEL’, ‘Nova Vita’, etc.
The Opposition Division notes that the existence of several trade mark registrations or use of such designations 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 on its own that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘NOVA’. Under these circumstances, the applicant’s claims must be set aside.
The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.
In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.
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 French trade mark No 4 012 604. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.
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
| Volker
MENSING |
Patricia
LOPEZ FERNANDEZ DE CORRES |
Frédérique
SULPICE |
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.