OPPOSITION No B 2 497 686

Sony Interactive Entertainment Europe Limited, 10 Great Marlborough Street, London W1F 7LP, United Kingdom (opponent), represented by Boult Wade Tennant, Verulam Gardens, 70 Gray’s Inn Road, London WC1X 8BT, United Kingdom (professional representative)

a g a i n s t

Steer Production Limited, 41 Chalton Street, London NW1 1JD, United Kingdom (applicant), represented by Theo Steer, Baarsjesweg 270 III, 1058 AD Amsterdam, the Netherlands (professional representative).

On 17/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 497 686 is partially upheld, namely for the following contested goods and services:

Class 9:                Application software.

Class 38:        Communication of information by electronic means; instant electronic messaging services; communication by electronic means; communication services for the electronic transmission of images; communication services for the transmission of information by electronic means; electronic transmission of messages and data; message sending and receiving services; transmission of information by electronic communications networks; transmission of messages and images; transmission of short messages.

Class 45:        On-line social networking services.

2.        European Union trade mark application No 13 531 793 is rejected for all the above goods and services. It may proceed for the remaining 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 13 531 793. The opposition is based on European Union trade mark registrations No 12 075 354 and No 11 071 131. 9, 16,

PRELIMINARY REMARK/PROOF OF USE

On 05/02/2016, the applicant requested that the opponent submit proof of use of the earlier marks on which the opposition is based, namely European Union trade mark registrations No 1 545 144, No 5 610 472, No 1 421 981, No 1 522 564, No 11 071 131 and No 12 075 354.

According to Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

On 14/07/2016, the opponent informed the Office that European Union trade mark registrations No 1 522 564, No 1 545 144, No 5 610 472 and No 1 421 981, subject to proof of use, were withdrawn as a basis for the opposition.

The opposition was initially based also on European Union trade mark registration No 1 522 564 and on Article 8(5) EUTMR. However, in its observations of 24/09/2015, the opponent informed the Office, first, that European Union trade mark registration No 1 522 564 was no longer relied upon as a basis for the opposition and, second, that Article 8(5) EUTMR was withdrawn as a basis for the opposition. Therefore, the abovementioned earlier right and ground will not be taken into consideration for the purposes of the present proceedings.

Therefore, the opposition proceedings will proceed on the basis of European Union trade mark registrations No 11 071 131 and No 12 075 354 on the basis of Article 8(1)(b) EUTMR only.

According to Article 42(2) and (3) EUTMR, the earlier mark can only be subject to a request for proof of use when it has been registered for not less than five years at the date of publication of the contested trade mark.

Therefore, in relation to the remaining earlier rights, No 11 071 131 and No 12 075 354, the request for proof of use cannot be taken into account because at the date of publication of the contested trade mark these marks had not been registered for at least five years. Therefore, the request for proof of use is inadmissible.

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.

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier European Union trade mark registration No 12 075 354, which is registered for a broader scope of goods and services than the other earlier mark.

1. The goods and services

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

Class 9:        Computers, computer peripherals; computer hardware; computer software; downloadable software applications; computer games software; video games software; motion tracking software; computer games cartridges; electronic handheld devices for the wireless receipt, storage and/or transmission of data and messages; digital music players; MP3 players; telecommunications apparatus; apparatus, instruments, software and media for recording, reproducing, carrying, organising, storing, processing, editing, extracting, encoding, decoding, encrypting, playing, manipulating, downloading, uploading, streaming, transmitting, broadcasting, receiving, retrieving and reproducing music, sound, images, text, signals, software, information, data and/or code; music, sounds, ringtones, images, games, text, signals, software, information, data and code provided by telecommunications networks, by online delivery and/or by way of the Internet and the world wide web; computer software for conducting and coordinating real-time and asynchronous communications among computer users sharing information and audio/video data via electronic communications networks; electronic publications [downloadable]; instruction manuals in electronic format; screensavers; wallpaper; digital photographic images; sound and/or video recordings; downloadable digital sound and/or video recordings; data carriers; magnetic and/or optical data carriers; memory cards; headphones; stereo headphones; in-ear headphones; loudspeakers; amplifiers; cameras; video cameras; apparatus, instruments and software for recording, storing, processing and editing images and video; apparatus for recording, transmission or reproduction of sound or images; headphones for consumer video game consoles for use with an external display screen or monitor; earphones for consumer video game consoles for use with an external display screen or monitor; keyboards for consumer video game consoles for use with an external display screen or monitor; software downloadable via the internet and mobile computer terminals; non-downloadable software for use on computers, mobile computer terminals, games consoles, electronic devices and mobile phones; bags and cases adapted or shaped to contain any of the aforementioned goods; parts and fittings for all the aforementioned goods.

Class 16:        Printed matter; books; stationery; printed markers for use with software applications; packaging; labels; pamphlets; printed instruction manuals.

Class 28:        Toys, games, puzzles and playthings; electronic games; gaming apparatus; gaming apparatus for use with television receivers and/or monitors; handheld electronic games; gaming apparatus [other than adapted for use with television receivers]; protective carrying cases specially adapted for handheld video games other than those adapted for use with an external display screen or monitor; games; controllers for game consoles; game controllers for consumer video game consoles for use with an external display screen or monitor; interactive educational games for use with television receivers and/or monitors; bags and cases adapted or shaped to contain any of the aforementioned goods; parts and fittings for all the aforementioned goods.

Class 41:        Gaming services; provision of on-line entertainment; electronic games services provided by means of the Internet; provision of computer and video games and computer and video game programs from a computer database or via the Internet; games services provided on-line from a computer network; providing on-line computer games; providing information relating to on-line computer games; providing downloadable music files via the Internet; Internet games services [non-downloadable]; organising of games; entertainment and educational services; games publishing; providing on-line electronic publications [not downloadable]; providing pre-recorded audio and/or video products, information in the field of computer and video games, and related commentary, interactive features and articles, via the Internet and other electronic communications networks; information services, printed reports and on-line information services in the fields of computer and video games and entertainment; organising on-line computer games, video games, audio and video events; television, radio and on-line broadcasting; providing audio, video, graphics, text and other multimedia content in the fields of computer and video games, entertainment and sporting events via communications networks; providing educational information in the fields of computer and video games and entertainment via communications networks.

The contested goods and services are the following:

Class 9:        Application software.

Class 35:        Advertisement via mobile phone networks; advertising by transmission of on-line publicity for third parties through electronic communications networks; dissemination of advertising for others via the internet; dissemination of advertising for others via an on-line communications network on the internet; advertising by transmission of on-line publicity for third parties through electronic communications networks; compilation of advertisements; promoting the goods and services of others; publication of publicity texts.

Class 38:        Communication of information by electronic means; instant electronic messaging services; communication by electronic means; communication services for the electronic transmission of images; communication services for the transmission of information by electronic means; electronic transmission of messages and data; message sending and receiving services; transmission of information by electronic communications networks; transmission of messages and images; transmission of short messages.

Class 45:        On-line social networking services.

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 application software is identically contained in the opponent’s list of goods, albeit with a slightly different wording.

Contested services in Class 35

All the contested services in Class 35 are advertising services, which consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity.

The same applies to the comparison of advertising services with goods that can be used as a medium for disseminating advertising, such as software in Class 9, goods in Class 16 and services in Class 41. They have different nature and purpose, and do not have the same producers and distribution channels. Likewise, they have nothing in common with the opponent’s goods in Class 28. Therefore, advertising is dissimilar to all the opponent’s goods and services.

Contested services in Class 38

The opponent’s mobile phones are devices that convert voice and other sound signals into a form that can be transmitted to remote locations and that receive waves and convert them back into sound signals. The contested telecommunication services allow people to communicate with one another by remote means. Consumers use telephones when they want to communicate with others.

There is a link between the opponent’s goods in Class 9, such as mobile phones (telecommunication apparatus), and all the contested services in Class 38 (telecommunication services). They are similar because they are complementary, and, furthermore, even though they have a different, their purposes and distribution channels are the same.

Contested services in Class 45

The contested on-line social networking services allow users to create, post, comment on and read from their own interest-specific forums, often within the realm of virtual communities through computer communication. They have a certain connection with the opponent’s computers in Class 9. There is a complementary relationship between these goods and services because the goods are essential for the provision of the services. Consequently, they are similar to a low degree.

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 various degrees are directed at the public and at customers with specific professional knowledge or expertise in IT and publishing matters. The degree of attention may vary from average to high, depending on the specialised nature of the goods and services and their price.

3. The signs

PS4
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 consisting of the letters ‘PS’ and the number 4.

The contested sign is a figurative mark consisting of the verbal elements ‘PS’, in standard black upper case characters, and a figurative element of 12 blue, pink, yellow and green arrowheads pointing in different directions and overlapping each other to form a star.

The letters ‘PS’, included in both signs, do not have any meaning in relation to the relevant goods; therefore, they are considered distinctive.

The number ‘4’ will be understood to indicate a version number in relation to the goods and services. Therefore, as an indication of a characteristic of the goods and services, it is considered a weak element.

The figurative element of the contested sign is of a purely decorative nature and therefore is less distinctive than the word element of the mark.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘PS’, the most distinctive element of both signs. However, they differ in the number 4 of the earlier mark, which is considered weak, and in the figurative element of the contested sign, which is considered purely decorative.

When signs consist of both verbal and figurative components, as does the contested sign, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, consumers will focus on the verbal element ‘PS’ and, due to the standard stylisation of its letters, will recognise the identity between that element and the first two letters of the earlier mark.

The beginning of the earlier mark and the first element of the contested sign are identical, as they both consist of the letters ‘PS’, which is considered a distinctive element. It is important to consider that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. Therefore, the fact that the signs have identical first parts is important when assessing the signs.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the letters ‘PS’, present identically as a distinctive element in both signs. The pronunciation differs in the sound of the number 4 of the earlier mark, which has no counterpart in the contested sign and is considered weak.

Therefore, the signs are aurally similar to an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element 4, included in the earlier mark, will be associated with the meaning explained above. The figurative element of the contested sign will be perceived as such. To that extent, the signs are conceptually dissimilar, although their dissimilarity is based on a weak and a non-distinctive element.

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 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 concluded above, the goods are partly identical, partly similar to various degrees and partly dissimilar. The degree of attention of the relevant public may vary from average to high and the distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to an average degree, due to the coincidence in the verbal element ‘PS’, the most distinctive element of both of the signs. The signs are short signs, and their differences are limited to one number (which is weak) and a figurative element (which is purely decorative and less distinctive than the verbal element of the sign).

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). 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).

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).

Having regard to the principle of interdependence, according to which a higher degree of similarity between the marks counteracts a lower degree of similarity between the conflicting goods and services and vice versa, it is reasonable to find that this also applies to the services found to be similar to a low degree. For the reasons explained above, the additional elements in the earlier mark and the contested sign are not of such a nature or of sufficient importance as to rule out a likelihood of confusion, as they are confined to a weak and a non-distinctive element.

It follows from the above that the contested sign must be rejected for the goods and services found to be identical or similar to various degrees to those of the earlier trade mark.

The rest of the contested 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 services cannot be successful.

The opponent also based its opposition on earlier European Union trade mark registration No 11 071 131 ‘PS’, which has a narrower scope of protection than the trade mark compared above. Therefore, the outcome cannot be different with respect to the goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

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

Francesca CANGERI SERRANO

María Clara  IBÁÑEZ FIORILLO

Janja FELC

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.