OPPOSITION No B 2 644 683

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

Salomon SAS, Les Croiselets, 74370 Metz-Tessy, France (holder).

On 14/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 644 683 is upheld for all the contested goods, namely 

Class 9:        Interactive software; game software; computer software; interactive multimedia computer programs; software for mobile telephones and tablets.

2.        International registration No 1 271 693 is refused protection in respect of the European Union for all of the contested goods. It may proceed for the remaining services.

3.        The holder bears the costs, fixed at EUR 320.

REASONS:

The opponent filed an opposition against some of the goods and services of international registration designating the European Union No 1 271 693, namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 11 425 601. 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, inter alia, the following:

Class 9:        Musical jukeboxes and parts for the aforesaid automatic machines; automatic cash dispensers, automatic money counting and money changing machines; coin-operated apparatus (mechanisms for -); software for computer games; games software for use on any computer platform, including electronic entertainment and games consoles; computer game programs; 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); 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 equipment 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 board assemblies (electronic components) and combinations thereof being assemblies and equipment parts, included in class 9.

The contested goods are the following:

Class 9:        Interactive software; game software; computer software; interactive multimedia computer programs; software for mobile telephones and tablets.

The contested interactive software; game software; interactive multimedia computer programs are included in the broad category of, or overlap with, the opponent’s computer game programs. Therefore, they are identical.

The contested computer software includes, as a broader category, the opponent’s computer game programs. 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 software for mobile telephones and tablets overlap with the opponent’s computer software in the form of an app for mobile devices and computers, taking into account that a mobile application software or mobile app is an application software designed to run on mobile devices such as smartphones and tablet computers. 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 found to be identical are directed at the public at large. The degree of attention is considered to be average.

3. The signs

Seven	SEVEN R
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘SEVEN’ of both marks is a very basic English word, which will be understood in all Member States by almost all the relevant public as the natural number following six and preceding eight. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the consumers who understand this term, which is the more important part of the relevant public.

Visually and aurally, the signs coincide because the earlier mark and its sound are totally reproduced in the contested sign. Moreover, since the public reads from left to right, the part placed at the left of the sign (the initial part) is the one that first catches the attention of the reader. Consequently, consumers will tend to focus on the word ‘SEVEN’ which is the first element of the contested sign

Taking into account that the signs only differ in the second element ‘R’ of the contested sign and its sound, the signs are considered visually and aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a coincident meaning, the signs are highly similar.

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

The goods, found identical, are directed at the public at large whose degree of attention is considered to be average.

The signs are similar to a high degree as regards the three aspects of comparison, namely from the visual, aural and conceptual points of view. It is recalled that the earlier mark is totally reproduced in the initial part of the contested sign and the difference between the signs is limited to the second element of the contested sign consisting of a sole letter.

Account must also be 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).

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 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).

Considering all the above, there is a likelihood of confusion at least for the largest 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 11 425 601. 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(1)(a) 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 holder 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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Sandra IBAÑEZ

Benoit VLEMINCQ

Martina GALLE

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.