OPPOSITION No B 2 706 656

Allthingstogether UK Limited, Headstock Rise, Hoo, Rochester, ME3 9LZ, United Kingdom (opponent)

a g a i n s t

Mystery Makers ApS, Hammerensgade 6, 1267, Copenhagen K, Denmark, (applicant), represented by Njord Law Firm Advokatpartnerselskab, Pilestræde 58 1112  Copenhagen K, Denmark (professional representative).

On 07/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 706 656 is upheld for all the contested goods, namely:

Class 28:        Games and playthings; electronic games.

2.        European Union trade mark application No 15 054 349 is rejected for all the contested goods. It may proceed for the remaining goods and services which were not opposed.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 054 349. The opposition is based on European Union trade mark registration No 14 609 671. The opponent invoked Article 8(1)(a), (b) and 8(5), 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

Preliminary remark

The opposition was initially based on Class 28 Electronic games and playthings; hand-held electronic games; parts and fittings for all the aforesaid goods. Subsequent to the opposition being filed the earlier relied upon registration (European Union trade mark registration No 14 609 671) was limited. Therefore, the goods on which the opposition is now based are the following:

Class 28:        Electronic games and playthings; hand-held electronic games; parts and fittings for all the aforesaid goods; none of the aforesaid being sports toys, games or playthings or equipment therefor.

The contested goods are the following:

Class 28:        Games and playthings; electronic games.

Contested goods in Class 28

The contested games and playthings; electronic games include, as a broader category, the opponent’s electronic games and playthings; none of the aforesaid being sports toys, games or playthings or equipment therefor. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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

	THE KING’S SECRET
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is a figurative mark consisting of a stylised letter ‘K’ placed within a hexagon and the verbal element ‘KINGGS’. Both of these elements are white on a black rectangular background. The word ‘KINGGS’ is likely to be perceived as a misspelling of the word ‘KINGS’, which is also present in the form of ‘KING’S’ in the contested sign, being the plural of King which is defined as ‘a man who is the most important member of the royal family of his country, and who is considered to be the Head of State of that country’ (information extracted from Collins English dictionary https://www.collinsdictionary.com/dictionary/english/king on 24/08/2017). It is considered that neither element (the word or figurative letter) is clearly more distinctive or dominant than the other.  However when signs consist of both verbal and figurative components, 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).

The contested sign is a word mark, namely ‘THE KING’S SECRET’. Of course, ‘THE’ is the English definite article which has no trade mark relevance in the context of the contested sign. Therefore, it has no distinctive character per se. Since the word King includes the possessive “’S” followed by ‘SECRET’ it means something kept by the King from public knowledge, hidden or concealed. Since the sequence is not descriptive of the goods in question it is distinctive. There is no single element considered to be more distinctive than another in the contested sign.

Visually, the signs coincide in the word ‘KINGS’. However, they differ in that the earlier trade mark has an additional ‘G’ and a figurative ‘K’ device which are not present in the contested sign. Further, the contested sign also includes ‘THE’, an apostrophe and ‘SECRET’. Since the letter ‘G’ will be considered to be a common misspelling and the presence of the apostrophe could go unnoticed, the signs are considered to be visually similar to a low degree.  

Aurally, the pronunciation of the signs coincides in the word “KINGS’, present identically in both signs. The pronunciation differs in the word ‘The’ present before ‘KING’S’ and the word ‘SECRET’ after it. The figurative device containing the K will not be enunciated and so plays no part in the aural assessment.

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

Conceptually, the public in the relevant territory will perceive the earlier mark the ‘KINGGS’ as the plural form of the word ‘King’. With regard to the contested sign, it will be understood to refer to not just a ‘King’ but to his secret. Since both marks will be associated with a King, they are conceptually similar to an average degree.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

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). This is known as the interdependency principle.

In the present case the goods have been found to be identical and they are directed at the public at large who will pay an average degree of attention.

With regard to the marks they are conceptually and aurally similar to an average degree, and visually similar to a low degree. 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). The Opposition Division finds this to be the case here. Whilst the marks differ in certain elements it is concluded that the group of letters ‘KINGS’ would be recalled from each mark and that once the relevant public encounters ‘THE KING’S SECRET’ they will believe, particularly for identical goods, that they are economically connected.

Considering all the above, there is a likelihood of confusion on the part of the English-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 14 609 671. 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 grounds of the opposition, namely Article 8(1)(a) and 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. 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

Ioana MOISESCU

Mark KING

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.