JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
29 January 2015 (*)
(Community trade mark — Application for Community figurative mark ‘SPIN BINGO’ — Earlier Community word mark ‘ZITRO SPIN BINGO’— Relative ground for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑665/13,
Zitro IP Sàrl, established in Luxembourg (Luxembourg), represented by A. Canela Giménez, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Gamepoint BV, established in The Hague (Netherlands),
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 14 October 2013 (Case R 1388/2012-4) concerning opposition proceedings between Zitro IP Sàrl and Gamepoint BV,
THE GENERAL COURT (Seventh Chamber),
composed of M. van der Woude (Rapporteur), President, I. Wiszniewska-Białecka and I. Ulloa Rubio, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 16 December 2013,
having regard to the response lodged at the Registry on 25 April 2014,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 23 November 2010, Gamepoint BV filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 The mark in respect of which registration is sought is the figurative sign in colour reproduced below:
3 The goods and services for which registration was sought fall within Classes 9, 41 and 42 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, in relation to each of those classes, to the following description:
– Class 9: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for the conduction, distribution, conversion, storage, regulation and management of electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording disc; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers, software, in particular software for games, electronic games, action skill games; games apparatus, exclusively for use in connection with a TV or video screen, the aforesaid goods also for use on-line’.
– Class 41: ‘Education; providing of training; entertainment; opportunities for the playing of games whether or not by means of the Internet technology’.
– Class 42: ‘Design and development of computer software, in particular in connection with games and interactive games whether or not using the Internet and/or Internet technology; scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software’.
4 The application for a Community trade mark was published in Community Trade Marks Bulletin No 2011/037 of 23 February 2011.
5 On 19 May 2011, the applicant, Zitro IP Sàrl, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to the registration of the trade mark applied for with respect to all the goods and services referred to in paragraph 3 above.
6 The opposition was based on the earlier Community word mark No 9 058 868, ZITRO SPIN BINGO, filed on 27 April 2010 and registered on 22 December 2010 for the goods and services in Classes 9, 28 and 41 corresponding, for each of those classes, to the following description:
– Class 9: ‘Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording disc; automatic vending machines and mechanisms for coin-operated apparatus; data-processing equipment and computers; apparatus for games adapted for use with televisions receivers only; computer programs; automatic vending machines; computer hardware and software, in particular for bingo halls, casinos, automatic slot machines; electronic equipment for installations for arcade and gaming rooms; game programs; interactive game programs; betting terminals; downloadable electronic publications; cards or tokens included in class 9; telecommunications equipment’.
– Class 28: ‘Games and playthings; automatic slot machines; automatic games, except for those adapted for use with television receivers only; slot machines; arcade game machines, including machines for amusement arcades and gaming rooms; gaming machines operated by coins, tokens or any other means of pre-payment; automatic amusement machines; stand alone video output game machines; electronic hand-held game units; games equipment for casinos, bingo halls and other gaming halls’.
– Class 41: ‘Educational services; providing of training; entertainment; sporting and cultural activities; online games services; organization competitions; operating of lotteries; providing gaming house facilities; provision of gaming services; entertainment and recreation information, including an electronic bulletin board with information, news, advice, and strategies about electronic, computer and video games; casino services; providing amusement facilities; rental of recreational and gaming machines; amusement park services’.
7 The opposition was based on all the goods and services of the earlier Community trade mark. The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009.
8 On 31 May 2012, the Opposition Division partially upheld the opposition in respect of the goods and services in Classes 9, 41, and 42 as set out in the application for registration, in paragraph 3 above, with the exception of the following goods, which were considered to be different from the goods of the earlier trade mark:
– Class 9: ‘scientific, nautical, surveying, weighing, measuring, checking (supervision), regulation and management of electricity apparatus and instruments’.
– Class 42: ‘scientific and technological services and research and design relating thereto; industrial analysis and research services’.
9 On 27 July 2012, Gamepoint lodged an appeal at OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
10 By decision of 14 October 2013 (‘the contested decision’), the Fourth Board of Appeal of OHIM annulled that decision of the Opposition Division and rejected the opposition in its entirety. It held that, under Article 59 of Regulation No 207/2009, the action of Gamepoint was admissible only to the extent that the application for a Community trade mark has been partially rejected. The Board of Appeal held that the goods and services covered by the trade mark applied for, relevant for the purposes of the action, were either similar or identical to those designated by the earlier trade mark, except the ‘life-saving apparatus and instruments’, which were different from the goods designated by the earlier trade mark.
11 The Board of Appeal held, next, that there was a low degree of visual, aural and conceptual similarity between the signs at issue, despite the fact that they contain the expression ‘spin bingo’. It considered that expression to be descriptive of an essential characteristic of the relevant goods and services. On a visual level, the Board of Appeal held that the similarity was low, because, regarding the earlier sign, the public would pay attention to the more distinctive element ‘zitro’, which is devoid of any meaning in the relevant languages and is at the beginning of the sign. Concerning the contested sign, it held that, in the light of the descriptive meaning of the expression ‘spin bingo’, consumers will pay as much attention to the different colour elements of the device which are the circles and the reel on which there is a representation of a smiling face. On the aural level, the Board of Appeal held that the similarity was weak as well, in the light of the descriptive meaning of the expression ‘spin bingo’, and the fact that the public will pay attention to the more distinctive element ‘zitro’. On the conceptual level, the Board of Appeal held that the word ‘zitro’ was dominant and that it was not conceptually similar to the contested sign.
12 Finally, concerning the global assessment of the likelihood of confusion, the Board of Appeal, first of all, held that the distinctive character of the earlier trade mark ZITRO SPIN BINGO was average. It stated, secondly, that the similarity between the signs was limited to the expression ‘spin bingo’, which has a purely descriptive meaning, which cannot constitute the dominant element of the overall impression produced by the sign of a complex trade mark, and, therefore, which also cannot, in itself, form the basis of a likelihood of confusion. The Board of Appeal held in that regard that, although some of the goods and services are identical and assuming that the public’s level of attention is only average, the low degree of visual, aural and conceptual similarity between the signs excluded any likelihood of confusion, including a likelihood of association, which could not be based on elements which are not distinctive. Regarding the ‘life-saving apparatus and instruments’ of the trade mark applied for, the Board of Appeal held that one of the essential conditions for the application of Article 8(1)(b) of Regulation No 207/2009, namely similarity of the goods, was not satisfied.
Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
14 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The single plea in plea, alleging an infringement of Article 8(1)(b) of Regulation No 207/2009
15 The applicant restricts itself to contesting the finding, in paragraph 28 of the contested decision, that the expression ‘spin bingo’ is descriptive of an essential characteristic of the goods and services. It thus calls into question one of the elements on which the Board of Appeal based its visual, aural and conceptual comparison of the two signs at issue and, therefore, its analysis under Article 8(1)(b) of Regulation No 207/2009.
16 According to Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
17 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to that same line of case-law, the likelihood of confusion must be assessed globally according to the relevant public’s perception of the signs and the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
18 In the present case, the Board of Appeal held that the relevant public was constituted by the general public but also by professionals, and that the level of attention to be taken into account was normal, but higher than average on the part of the professionals. It also held that, since the earlier trade mark is a Community trade mark, the relevant public was constituted by consumers in all the Member States of the European Union. The definition of the relevant public is not contested by the applicant.
19 Moreover, where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, it should be noted that, in order for registration of a Community trade mark to be refused, it suffices that a relative ground for refusal under Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 76 and the case-law cited).
20 It should be noted that, in this case, the applicant also does not contest the conclusions relating to the similarity of the goods. The Board of Appeal held that the goods in Class 9 designated by the trade mark applied for were either identical, or similar, to the goods designated by the earlier trade mark, with the exception of ‘life-saving apparatus and instruments’; that the services in Class 41 were identical, and that the services in Class 42 were similar, to those designated by the earlier trade mark.
21 It is necessary, therefore, to examine whether the Board of Appeal was entitled to hold that the expression ‘spin bingo’ was descriptive of the goods and services concerned by the trade marks at issue.
22 Regarding the assessment of the descriptive character of the expression ‘spin bingo’, the Board of Appeal held, in paragraph 28 of the contested decision, first, that the word ‘bingo’ was a commonly known game, and that, in combination with the English word ‘spin’, which is part of the basic vocabulary of the English-speaking members of the relevant public, and means ‘to turn or turn rapidly’, that part of the public will assume that the numbers of the bingo game are spun. The Board of Appeal pointed out that, in the contested sign, that meaning was strengthened by the figurative element with the appearance of a reel. It noted that even if it does not grasp the correct meaning of the English word ‘spin’, the relevant public will, however, understand that it concerns an English word and will perceive it, in combination with the word ‘bingo’, as a specific version of the game of bingo.
23 Secondly, the Board of Appeal held, also in paragraph 28 of the contested decision, that, regarding the goods and services relevant for the purposes of the appeal procedure in Classes 9, 41, and 42, consumers will assume that they can be used or supplied in order to play the game of spin bingo (for example, game apparatus; apparatus for recording, transmission or reproduction of sound or images; data carriers; software; opportunities for the playing of games, entertainment), that they concern the installation or development of devices to play the game (for example, electronic equipment for installations for arcade and gaming rooms; design of computer hardware and software), or that they provide information about the game (for example, teaching apparatus, education, providing of training).
24 The applicant claims, in essence, that the expression ‘spin bingo’ cannot be classified as descriptive of the goods and services at issue, and that Gamepoint, by choosing it, was solely influenced by the earlier trade mark ZITRO SPIN BINGO. In support of its position, it puts forward four arguments.
25 First, the expression ‘spin bingo’ is not descriptive of the game of bingo, on the ground that, in the game of bingo, the balls do not turn or spin, in contrast to slot machines with reels.
26 Secondly, the meaning of the expression ‘spin bingo’ is not clear, and suggests at most a rotating object which could be any of the following: reels, a fortune wheel, a roulette, a bingo drum, or also refer to the balls in the bingo drum. Similarly, the expression ‘spin bingo’ does not refer to any particular game with specific features.
27 Thirdly, the applicant claims that the expression ‘spin bingo’ has never been used in order to describe bingo, and no games (slot machines with reels or roulettes) have ever been classified using the term ‘spin’.
28 Fourthly, the applicant claims that, even assuming that the figurative element of the trade mark applied for resembles a reel, it is in any event the expression ‘reels bingo’ which is descriptive, and not ‘spin bingo’. It states in that regard that, in another of its trade marks, the expression ‘spin bingo’ is used in relation to a wheel of fortune.
29 First of all, it should be noted that, according to the case-law, a sign is descriptive where there is a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgments of 4 March 2010 in Monoscoop v OHIM (SUDOKU SAMURAI BINGO), T‑564/08, EU:T:2010:74, paragraph 15 and the case-law cited; and of 17 October 2012 in MIP Metro v OHIM — J. C. Ribeiro (MISS B), T‑485/10, EU:T:2012:554, paragraph 29 and the case-law cited).
30 It should also be noted that a sign’s descriptiveness can only be assessed, first, by reference to the way in which it is understood by the relevant public and, secondly, by reference to the goods or services concerned (see judgment in SUDOKU SAMURAI BINGO, paragraph 29 above, EU:T:2010:74, paragraph 16 and the case-law cited).
31 Regarding the applicant’s first argument that the expression ‘spin bingo’ has no connection with the characteristics of the game of bingo, it should be pointed out, first of all, that the Board of Appeal correctly held, in paragraph 28 of the contested decision, that the word ‘bingo’ refers to a commonly known game of chance, in which the players cross out numbers on cards while an announcer draws numbers randomly, the winner being the first person to have crossed out all his numbers. Thus, the word ‘bingo’ is descriptive of the aim and characteristics of the corresponding game of chance (see, to that effect, judgments in SUDOKU SAMURAI BINGO, paragraph 29 above, EU:T:2010:74, paragraphs 20 and 23; and 13 April 2011 in Zitro IP v OHIM — Show Ball Informática (BINGO SHOWALL), T‑179/10, EU:T:2011:177, paragraph 32). That is besides not contested by the applicant who focuses his argument on the expression ‘spin bingo’.
32 Next, it should be noted, as the Board of Appeal found, that the English word ‘spin’ refers to the movement of rotation, and that, in the contested sign, that meaning is strengthened by the figurative element with the appearance of a reel which can be turned. Such movements increase the impression associated with the unpredictable and fortuitous effect of chance, characteristic of the game of bingo. The applicant, itself, emphasizes this aspect of chance when it claims that the expression ‘spin bingo’ refers rather to slot machines, in which pictures turn and are aligned on reels.
33 Finally, it is necessary to uphold the Board of Appeal’s finding, in paragraph 28 of the contested decision, that the relevant public will perceive the expression ‘spin bingo’ as a specific version of the game of bingo. It is possible to conceive a version of the game of bingo with numbers which turn, in particular where they are written on balls in a drum which is turned, to adopt the example given by the applicant itself. The applicant acknowledges that the drum containing bingo balls also turns, just like the balls, which follow the movement of the drum.
34 The applicant’s first argument must therefore be rejected.
35 Regarding its second argument, relating to a lack of clarity and precision of the expression ‘spin bingo’, it should be noted, first of all, that, in general, the mere combination of elements, each of which is descriptive of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics. However, such a combination may not be descriptive, within the meaning of that provision, provided that it creates an impression which is sufficiently far removed from that produced by the combination of those elements. That is the case where there is a perceptible difference between the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts (see judgment of 25 February 2010 in Lancôme v OHIM, C‑408/08 P, ECR, EU:C:2010:92, paragraphs 61 and 62 and the case-law cited).
36 Next, it follows from paragraph 31 above, that the word ‘bingo’ is descriptive of the corresponding game of chance, and, from paragraph 32 above, that it is not contested that the English word ‘spin’ alludes to a rotating object or to the action of spinning something. In that regard, the applicant itself acknowledges that the combination of the words ‘spin’ and ‘bingo’ implies that in that game of bingo, something is spinning, which only confirms the finding, in paragraph 28 of the contested decision, that the relevant public will assume that the numbers of the game of bingo are spun, or, at the very least, where it does not have a sufficient knowledge of English, that it concerns a variation of the game of bingo.
37 Contrary to the applicant’s claims, the lack of precision concerning exactly what turns or the effect of that rotation on the game is irrelevant for the purposes of the relevant public’s perception, in so far as, in any event, even consumers with an average degree of attention would be capable of identifying immediately, and without further thought, the specific characteristics of the game, namely that something turns in the game of bingo, as the applicant itself acknowledges.
38 Finally, concerning the term ‘spin’, OHIM correctly points out that the public is often confronted with terms and expressions or acronyms which it regards as descriptive even if it does not grasp the exact meaning of them (HTML, Wi-Fi and ISDN). In addition, the public will not perceive them as an indication of the commercial origin of the relevant goods and services.
39 It is, therefore, necessary to reject the applicant’s second argument.
40 Regarding its third argument, relating to the fact that the expression ‘spin bingo’ has never been used to describe the game of bingo, it suffices to find in that regard that the case-law requires only a sufficiently direct and concrete connection between the sign, on the one hand, and the characteristics of the goods and services, on the other hand, such as to permit the public concerned to perceive immediately, and without further thought, a description of one of the characteristics of the goods and services at issue. In addition, it is not necessary, in order to be classified as descriptive, for the sign to be actually used, in business, for descriptive purposes. It suffices that it is capable of being used for such purposes (see, to that effect, judgment of 12 February 2004 in Koninklijke KPN Nederland, C‑363/99, ECR, EU:C:2004:86, paragraph 97). Therefore, it is not necessary to establish the existence of a common or usual name in the sector concerned.
41 In any event, it follows from paragraphs 31 to 39 above, that the combination of the words ‘spin’ and ‘bingo’ is not so unusual that the combination of the two terms produces an impression which is sufficiently removed from that produced by the mere combination of meanings of the two elements, to the extent that it is no longer descriptive of the goods and services at issue. It is necessary, therefore, to reject the applicant’s third argument.
42 Regarding its fourth argument, according to which other expressions would have been more appropriate in order to describe the goods and services at issue, it should be noted that the Board of Appeal was not called upon to rule on the descriptive or more descriptive character of those other expressions. In so far as it follows from the assessment made in paragraphs 31 to 41 above that the Board of Appeal was entitled to hold that the expression ‘spin bingo’ was descriptive of the goods and services at issue in the present case, the fact that other terms or expressions could also have been descriptive or more descriptive of those goods and services, is not relevant for the purposes of the present dispute. Moreover, it is apparent from the case-law that it is irrelevant, for the purpose of assessing the descriptive character of a sign, whether or not there exist synonyms allowing the same characteristics of goods and services at issue to be designated (see, to that effect, judgment in Koninklijke KPN Nederland, EU:C:2004:86, paragraph 40 above, paragraph 101).
43 The applicant’s fourth argument must therefore be rejected.
44 Consequently, the applicant’s single plea in law is unfounded. Accordingly the action must be dismissed in its entirety.
Costs
45 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Dismisses the action of Zitro IP Sàrl;
2. Orders Zitro IP Sàrl to pay the costs.
Van der Woude | Wiszniewska-Białecka | Ulloa Rubio |
Delivered in open court in Luxembourg on 29 January 2015.
[Signatures]