OPPOSITION No B 2 699 752

Brandhouse Limited, 3rd Floor, Windward House, La Route de la Liberation, St Helier  JE2 3BQ, Jersey (opponent), represented by Patent & Trade Mark Agency Koitel, Tina 26, 10126 Tallinn, Estonia (professional representative)

a g a i n s t

Darina Borisovna Denisova, 1-st Dubrovskaya street, bld. 1, block 1, flat 44, 109044 Moscow, Russian Federation (applicant), represented by Stavros Stavrinides, 31 Evagorou street, Evagoras complex, 5th floor, office 54, 1066 Nicosia, Cyprus (professional representative).

On 25/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 699 752 is upheld for all the contested services.

2.        European Union trade mark application No 15 088 371 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 088 371. The opposition is based on, inter alia, European Union trade mark registration No 11 367 951. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 11 367 951.

1. The services

The services on which the opposition is based are, inter alia, the following:

Class 41: Education; Providing of training, entertainment; Sporting and cultural activities; Instruction and training related to facilitating access for users to databases for gaming and gambling; Instruction and training in relation to communications for providing access to computer networks, local networks and global networks for players; Instruction and training for providing access to databases and allowing users to access databases; Gambling; Developing, organising, arranging and distributing games, lotteries and betting via telephone, video and online media; Gambling websites (gambling communities), online gaming and gambling via the Internet and other kinds of digital media. 

The contested services are the following:

Class 41: Providing casino facilities; Providing casino facilities [gambling]; Providing of casino and gaming facilities; Gambling; Gambling services; Game services provided on-line from a computer network; Timing of sports events; Provision of information relating to racing; Provision of information relating to jockeys; Provision of information relating to racehorses; Provision of information relating to sports; Provision of information relating to motor sports; Provision of information relating to motor racing; Racing information services; Handicapping for sporting events; Entertainment in the nature of wrestling contests; Entertainment in the nature of baseball games; Entertainment in the nature of basketball games; Entertainment in the nature of boxing contests; Entertainment in the nature of football games; Entertainment in the nature of soccer games; Entertainment in the nature of automobile races; Entertainment in the nature of golf tournaments; Entertainment in the nature of hockey games; Entertainment in the nature of gymnastic performances; Entertainment in the nature of tennis tournaments; Entertainment in the nature of ice hockey games; Entertainment in the nature of weight lifting competitions; Entertainment in the nature of track and field competitions; Entertainment in the nature of yacht races; Entertainment services in the nature of skating events; Providing wrestling news and information via a global computer network; Sporting results services; Betting services; Horses (Betting on -); Casino, gaming and gambling services; Dog races; Football pools services; Wagering services; On-line gaming services; Gaming services for entertainment purposes; Electronic game services and competitions provided by means of the internet.

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.

Gambling is identically contained in both lists of services and gambling services (listed twice) are identically contained in both lists of services despite the slight difference in their wording.

The earlier mark covers the broad category of services providing of entertainment, which includes the contested providing casino facilities; providing casino facilities [gambling]; providing of casino and gaming facilities; game services provided on-line from a computer network; entertainment in the nature of wrestling contests; entertainment in the nature of baseball games; entertainment in the nature of basketball games; entertainment in the nature of boxing contests; entertainment in the nature of football games; entertainment in the nature of soccer games; entertainment in the nature of automobile races; entertainment in the nature of golf tournaments; entertainment in the nature of hockey games; entertainment in the nature of gymnastic performances; entertainment in the nature of tennis tournaments; entertainment in the nature of ice hockey games; entertainment in the nature of weight lifting competitions; entertainment in the nature of track and field competitions; entertainment in the nature of yacht races; entertainment services in the nature of skating events; betting services; horses (betting on -); casino, gaming services; dog races; football pools services; wagering services; on-line gaming services; gaming services for entertainment purposes; electronic game services and competitions provided by means of the internet. Therefore, these services are identical.

Moreover, the Opposition Division observes that the earlier mark is also registered for sporting activities which is a broad category included in the class heading of Class 41 covering a wide range of services in this class. Indeed, it includes organisation of sports competitions of any kind, providing facilities for golf or tennis and other sports. Bearing this in mind and having regard to the fact that the sports leagues, sports teams or sports clubs that carry out activities such as organising sports competitions and events, under all probability also deal with aspects related to the handicapping for and timing of such sporting events, it has to be considered that the broad category of the applicant’s sporting activities includes the contested timing of sports events; handicapping for sporting events to which they are thus identical.

As regards provision of information relating to racing; provision of information relating to jockeys; provision of information relating to racehorses; provision of information relating to sports; provision of information relating to motor sports; provision of information relating to motor racing; racing information services; providing wrestling news and information via a global computer network; sporting results services, the Opposition Division observes that they all consist in providing information (including news and results of sport events), regarding the general category of sport as well as specific sports and sportsmen. Therefore, although they might not share the same nature or the same purpose as the opponent’s sporting activities, the fact remains that they address the same public (i.a. sport amateurs). They can also be considered complementary since the provision of information relating to sport activities cannot be provided unless such sport activities are previously carried out with the result that one is important for the other and they are usually provided by the same entities (in particular, sports clubs or leagues and teams). They are, hence, similar.  

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 services in question relate to entertainment, in particular, gaming, betting and gambling services as well as sporting activities which are addressed at the public at large and at professionals in the entertainment and media field.

The degree of attention will vary from average to high, depending on the specialised nature of the services, the frequency of purchase and the amount of money they involve (08/09/2011, T-525/09, Metronia, EU:T:2011:437, § 47; 23/04/2011, T-179/10, Bingo Showal, EU:T:2011:177, § 19; 04/03/2010, T-564/08, Sudoku Samurai Bingo, EU:T:2010:74, § 18).

3. The signs

OLYBET	OLIMPBET
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.

The marks in question are not meaningful in certain territories, for example, in Spain. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The earlier trade mark is a word mark consisting of the single element ‘OLYBET’ which, as a whole, has no meaning in Spanish and, therefore, is distinctive.

The contested sign is also a word mark consisting of a single element ‘OLIMPBET’ which, likewise, has no meaning as a whole in the perception of Spanish-speaking consumers and hence, is distinctive.

It follows that the marks have no elements that could be considered more distinctive than other elements.

The marks, as word marks, have no element that could be considered as clearly more dominant (visually eye-catching) than others.

Visually, the signs coincide in ‘OL***BET’. However, they differ in the letters ‘Y’ of the earlier mark versus ‘I’ of the contested sign as well as in the additional letters ‘M’ and ‘P’ of the contested sign which have no counterparts in the earlier mark.

Considering that the differing letters are placed in the middle of the signs, they have a limited visual influence. Moreover, although the signs further differ in length, such difference is slight since it only concerns two letters and the signs are not short.

Therefore, the signs are visually similar to a high degree.  

Aurally, the marks in question ‘OLYBET’ and ‘OLIMPBET’, following Spanish pronunciation rules, will coincide in ‘OLI/Y’ and ‘BET’. They differ in the sound of the letters ‘M’ and ‘P’ of the contested sign, which have no counterparts in the earlier mark.  

As the differing letters are placed in the middle of the contested sign and are moreover, not the letters that will be emphasised when the marks are voiced, it is considered that they have a limited aural significance. In addition, the fact that both signs consist of two syllables provides them with a similar rhythm.

Therefore, the signs are aurally highly similar.

Conceptually, the signs as a whole do not have any meaning for the Spanish-speaking part of the public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 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

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 that connection, it is recalled that in the present case, the contested services are identical and similar to the services covered by the earlier mark. In addition, the distinctiveness of the earlier mark is normal.

Taking account of the fact that the signs coincide in the sequence of letters ‘OLI/Y**BET’ placed in the same order, it is considered that the similarities between the signs are enough to counteract the dissimilarities. Since 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) and the differing letters are placed in the middle of the signs, it cannot be excluded, even for the services in relation to which consumers pay a higher than average degree of attentiveness, that they overlook said dissimilarities.

Therefore, it is considered that the average Spanish-speaking consumer, relying on the imperfect recollection of the marks that he/she will have kept in mind, is likely to confuse the marks in question.

Considering all the above, there is a likelihood of confusion for the Spanish-speaking 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 No 11 367 951. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier European Union trade mark registration No 11 367 951 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Carmen SÁNCHEZ PALOMARES

Marine DARTEYRE

Julie GOUTARD

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.