OPPOSITION DIVISION

OPPOSITION No B 2 814 997

The Pokemon Company International, Inc., Suite 1900, 333 108th Avenue NE,

Bellevue, Washington 98004, United States of America (opponent), represented by

CMS Cameron McKenna Nabarro Olswang LLP, Cannon Place, 78 Cannon St,

London EC4N 6AF, United Kingdom (professional representative)

a g a i n s t

BNP Paribas Lease Group, SA, 46-52 rue Arago, 92800 Puteaux, France

computer programs; recorded computer software; application

software; application software for mobile phones; computer

software applications, downloadable; interfaces for computers;

data processing equipment; electronic publications,

downloadable.

Class 38: Telecommunication services; communication by computer;

providing access to databases; message sending; computer

aided transmission of messages and images; data

transmission; transmission of data, messages and information;

transmission of messages, data and content via the internet

2. European Union trade mark application No 15 780 951 is rejected for all the

above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

Preliminary remark

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95

have been repealed and replaced by Regulation (EU) 2017/1001 (codification),

Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)

2017/1431, subject to certain transitional provisions. All the references in this

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The opposition is based on European Union trade mark registration No 15 618 093

‘TRAIN ON’. 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

The contested goods and services are the following:

Class 9: Software; application software for wireless devices; recorded

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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 software; recorded computer software include, as broader categories,

the opponent’s computer game software. Since the Opposition Division cannot

dissect ex officio the broad categories of the contested goods, they are considered

The contested recorded computer programs include, as a broader category, the

opponent’s video 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 application software overlaps with the opponent’s computer game

software. 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 application software for mobile phones overlaps with the opponent’s

broad category of the contested goods, they are considered identical to the

In computing, an interface is a shared boundary across which two or more separate

components exchange information. The exchange can be between software,

computer hardware, peripheral devices, or a combination of these. Some computer

hardware devices, such as touchscreens, can both send and receive data through

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In computing, an interface may refer to software or hardware. When referring to

another computer over a network. When referring to hardware, an interface is a

overlap with the opponent’s interactive electronic game software. Since the

Opposition Division cannot dissect ex officio the broad category of the contested

goods, they are considered identical to the opponent’s goods.

Data processing equipment is electrically operated equipment that accumulates,

processes and stores data. Such equipment includes computers and any peripherals

used in this process. The contested data processing equipment and the opponent’s

computer game software can have the same producers, relevant public and

distribution channels. Furthermore, they are complementary. Therefore, they are

similar.

Electronic publications include the digital publication of e-books and digital

magazines and the development of digital libraries, catalogues and encyclopaedias.

publications, downloadable and the opponent’s electronic game software can have

transmission; transmission of data, messages and information; transmission of

messages, data and content via the internet and other communications networks;

transmission and distribution of data or audiovisual images via a global computer

network or the internet; electronic transmission of data; operation of a

telecommunications network; communications via multinational telecommunication

networks; providing access to information on the internet all facilitate communication

by remote means and fall under the broader category of telecommunication services.

The opponent’s computer game software may feature multiplayer capabilities

allowing more than one person to use it and, in that sense, to communicate with each

other. Consequently, the abovementioned contested services and the opponent’s

natures are different, the relevant public might be the same and they are

‘software’ and ‘computer programmes’ in Class 9.

According to Article 33(2) EUTMR, the goods and services for which the protection of

the trade mark is sought must be identified by the applicant with sufficient clarity and

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Article 33(5) EUTMR, the use of general terms, including the general indications of

the class headings of the Nice Classification, must be interpreted as including all the

use of such terms or indications will not be interpreted as comprising a claim to

broad categories of computer programs and software, respectively, the interpretation

of the literal meaning of the term has to be taken into consideration when evaluating

the relevant factors in the comparison of the relevant goods and services.

By their nature, goods are generally dissimilar to services. This is because goods are

articles of trade, wares or merchandise. Their sale usually entails the transfer in title

of something physical. Services, on the other hand, consist of the provision of

intangible activities. Therefore, the contested satellite transmission; transmission of

data, sound and images via satellites; satellite transmission of data via an on-line

global computer network and the opponent’s goods in Class 9 have different natures.

They also have different purposes and methods of use, since all the opponent’s

goods relate only to games, namely to computer, electronic or video game programs

or software. By contrast, the aim of the contested satellite transmission; transmission

global computer network is to transmit messages, information, data, sound and

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 or similar are

directed at the public at large and at business customers with specific professional

knowledge or expertise.

The degree of attention is considered average.

The relevant territory is the European Union.

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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

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 coinciding element ‘TRAIN ON’ is meaningful in certain territories, for example in

those countries where English is understood. Consequently, the Opposition Division

finds it appropriate to focus the comparison of the signs on the English-speaking part

of the public such as the public in Ireland, Malta and the United Kingdom.

The earlier mark is a word mark, ‘TRAIN ON’. Although the element ‘TRAIN ON’

consists of the word ‘TRAIN’ and the preposition or adverb ‘ON’, it will not be

dissected by the relevant public and will be perceived as an indivisible semantic unit,

namely a phrasal verb meaning to carry on training or to focus on something

quirky, since it does not specify with respect to what one should focus or carry on

Paribas Leasing Solutions’.

Regarding the element ‘Train’ON’, it cannot be excluded that a part of the relevant

public will perceive the apostrophe at the end of the word ‘Train’ as indicating that the

ending ‘-ing’ has been omitted; the remaining part of the relevant public will perceive

or the provider of the services. Its distinctiveness is average. Furthermore, ‘Leasing

Solutions’ will be perceived by the relevant public as meaning solving a problem or

dealing with a difficult situation related to leasing; therefore, it is non-distinctive in

relation to the relevant goods and services because it may refer to the subject matter

of the goods and services.

Visually, the signs coincide in the distinctive element ‘TRAIN ON’/‘Train’ON’, which

is at the beginnings of the signs, as stated above. The difference in the use of lower

or upper case letters is immaterial. The signs differ in the apostrophe at the end of

the element ‘Train’ and in the element ‘by BNP Paribas Leasing Solutions’ in the

contested sign, which have no counterparts in the earlier mark. ‘BNP Paribas’ has an

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This means that in general the beginning of a sign has a significant influence on the

general impression made by the mark (15/12/2009, T-412/08, Trubion,

Applying the above rule, account must be taken of the fact that the contested sign is

the provision of the services.

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

Aurally, the apostrophe at the end of the element ‘Train’ does not affect the

pronunciation; therefore, the element ‘Train’ON’ will be pronounced identically in both

signs. The pronunciation differs in the sound of the letters ‛by BNP Paribas Leasing

Solutions’ of the contested sign, which has no counterpart in the earlier mark. The

first part, ‘BNP Paribas’, has an average degree of distinctiveness; however, the

second part, namely the expression ‘Leasing Solutions’, lacks distinctiveness.

The identically pronounced element ‘Train’ON’ is at the beginning of the contested

sign and will be pronounced before the other verbal element. Moreover, since the

split it into parts rather than refer to it in its entirety.

manufacturing the goods or providing the services; its first part, ‘BNP Paribas’, is

meaningless and its second part, ‘Leasing Solutions’, is non-distinctive and does not

significantly affect the conceptual comparison of the signs.

Since the marks convey an identical meaning in their coinciding element ‘TRAIN ON’

and the only differing expression, ‘by BNP Paribas Leasing Solutions’, is partly

meaningless and partly non-distinctive, the marks are conceptually similar to a high

degree.

As the signs have been found similar in at least one aspect of the comparison, the

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

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be seen as normal.

e) Global assessment, other arguments and conclusion

customers with specific professional knowledge or expertise.

The signs are visually and aurally similar to an average degree and conceptually

similar to a high 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.

In the present case, the element ‘TRAIN ON’/‘Train’ON’ is distinctive for the relevant

goods and services; it is the only element of the earlier mark and is entirely contained

in the contested sign.

As stated above in section c) of this decision, in general the beginning of a sign has a

The remaining element of the contested sign, namely ‘by BNP Paribas Leasing

Solutions’, due to its secondary position and the non-distinctiveness of the words

‘Leasing Solutions’, cannot outweigh the similarity between the signs resulting from

the coinciding element ‘TRAIN ON’/‘Train’ON’. This element, which essentially

reproduces the entire earlier mark, not only retains an independent and distinctive

role in the contested mark but is also the mark’s first element. The other components

of the mark, some of them completely non-distinctive, cannot exclude the existence

of a likelihood of confusion.

Therefore, it is highly conceivable that the relevant public would be likely to believe

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 the present case, it is

considered that the average degree of visual and aural similarity and the high degree

of conceptual similarity between the signs are sufficient to offset the low degree of

similarity between some of the goods and services.

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confusion on the part of the English-speaking part of the public and therefore the

opposition is partly well founded on the basis of the opponent’s European Union

confusion for only part of the relevant public of the European Union is sufficient to

goods and services found to be identical or similar (including to a low degree) 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.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must

bear the fees and costs incurred by the other party. According to

Article 109(3) EUTMR, where each party succeeds on some heads and fails on

different apportionment of costs.

subject to appeal was taken. Furthermore, a written statement of the grounds for

appeal must be filed within four months of the same date. The notice of appeal will be

deemed to have been filed only when the appeal fee of EUR 720 has been paid.