Judgments nº T-700/18 of Tribunal General de la Unión Europea, October 10, 2019

• Resolution Date: October 10, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-700/18

(EU trade mark - Opposition proceedings - Application for EU word mark DUNGEONS - Earlier EU word mark DUNGEONS & DRAGONS - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001) In Case T-700/18,

Kalypso Media Group GmbH, established in Worms (Germany), represented by T. Boddien, lawyer,

applicant

v

European Union Intellectual Property Office (EUIPO), represented by G. Sakalaité-Orlovskiené, A. Folliard-Monguiral and H. O’Neill, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Wizards of the Coast LLC, established in Pawtucket, Rhode Island (United States),

ACTION against the decision of the Fourth Board of Appeal of EUIPO of 21 September 2018 (Case R 599/2018-4) relating to opposition proceedings between Wizards of the Coast and Kalypso Media Group,

THE GENERAL COURT (Ninth Chamber),

composed of S. Gervasoni, President, L. Madise (Rapporteur) and R. da Silva Passos, Judges,

Registrar: J. Palacio González, Principal Administrator,

having regard to the application lodged at the Court Registry on 26 November 2018,

having regard to the response lodged at the Court Registry on 21 February 2019,

further to the hearing on 27 June 2019,

gives the following

Judgment

Background to the dispute

1 On 18 September 2014, the applicant, Kalypso Media Group GmbH, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2 The trade mark for which registration was sought is the word sign DUNGEONS.

3 The goods in respect of which registration was sought are in Classes 9, 28 and 41 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, for each of those classes, to the following description:

- Class 9: ‘Computer software and computer programs for data processing, in particular computer game software, software for conducting of games; downloadable electronic game programs; electronic and machine-readable data carriers’;

- Class 28: ‘Games, including games for amusement arcades and electronic games and coin-operated games; playing cards; toys; toy figurines; models being toys’;

- Class 41: ‘Provision of online computer games and electronic publication services; games on the internet; providing information online relating to computer games and computer enhancements for games; publication of printed matter, texts and online publications, relating exclusively to computer games; photographer services and photographic composition for others; layout services (other than for advertising purposes); production of animation, audio recordings, music and video recordings; entertainment, relating exclusively to computer games; providing of non-downloadable online videos and digital music via the internet; translation and interpretation; none of the aforesaid services relating to providing and running of visitor attractions, public entertainment or hotels and/or temporary accommodation’.

4 The application was published in Community Trade Marks Bulletin No 206/2014 of 3 November 2014.

5 On 3 February 2015, Wizards of the Coast LLC filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based, inter alia, on the earlier EU word marks DUNGEONS & DRAGONS, registered respectively on 22 November 2009 and 11 July 2013 under the numbers 8 206 336 and 11 620 391 (respectively, ‘earlier mark No 8206336’ and ‘earlier mark No 11620391’).

7 The goods and services covered by earlier mark No 8206336 are in Classes 9, 28 and 41 and correspond, for 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 conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; interactive entertainment software, namely, computer game software, computer game programs, computer game cartridges, computer game discs; interactive multimedia game programs; downloadable software for use in connection with computers, portable gaming devices, console gaming devices, communication devices and mobile telephones; video game software, video game programs, video game cartridges, video game discs all for use in connection with computers, portable gaming devices, console gaming devices, communication devices and mobile telephones; video lottery terminals’;

- Class 28: ‘Toys, games and playthings; gaming machines including slot machines’;

- Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities’.

8 The goods and services covered by earlier mark No 11620391 are in Classes 9 and 41 and correspond, for each of those classes, to the following description:

- Class 9: ‘Downloadable electronic books and publications’;

- Class 41: ‘Online publication of electronic books and periodicals’.

9 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 207/2009 (now Article 8(1)(b) and (5) of Regulation 2017/1001).

10 On 30 January 2018, on the basis of the two earlier marks referred to in paragraph 6 above, the Opposition Division upheld the opposition to the registration of the trade mark applied for in respect of all the goods and services covered by that mark, on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. Thus, without examining the ground of opposition based on Article 8(5) of that regulation, the Opposition Division rejected the EU trade mark application in its entirety.

11 On 3 April 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

12 By decision of 21 September 2018 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal in its entirety. At the outset, in paragraph 10 of the contested decision, it stated that the applicant’s appeal would be examined solely in relation to earlier mark No 8206336. The Board of Appeal then found, first, in paragraph 12 of the contested decision, that since that earlier mark was an EU trade mark, the relevant territory for assessing the likelihood of confusion was that of the European Union and all its Member States. Secondly, in paragraph 14 of the contested decision, it endorsed the findings of the Opposition Division on the identical and/or similar nature of the goods and services covered by the signs at issue. Thirdly, in paragraphs 18 to 21 of the contested decision, it compared the signs at issue. In that regard, it found, inter alia, that, visually and phonetically, the degree of similarity between them was ‘above average’. It found that, conceptually, the signs at issue were similar to ‘an average degree’ for the English-speaking public on the basis of the meaning referred to by the Opposition Division, namely that, according to the Collins Dictionary, the concept conveyed by the word that the signs at issue have in common, ‘dungeon’, is that of ‘a dark underground prison in a castle’. Fourthly, in paragraphs 27 to 29 of the contested decision, it stated that the relevant public by reference to which the likelihood of confusion should be assessed was composed of average consumers in the European Union with an average level of attention. Fifthly, having stated, in paragraphs 22 and 32 of the contested decision, that, for the relevant public, earlier mark No 8206336 did not refer to the goods and services included in Classes 9, 28 or 41 for which that trade mark had been registered, it found, in paragraph 36 of the contested decision, that the level of inherent distinctiveness of the earlier mark was average. In the same paragraph of the contested decision, it concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 for all the goods and services covered by the trade mark applied for, at least for the English-speaking part of the relevant public. Finally, as stated in paragraph 38 of the contested decision, the Board of Appeal did not examine the ground for opposition based on Article 8(5) of Regulation 2017/1001 because it had upheld the opposition on the basis of Article 8(1)(b) of that regulation.

Forms of order sought

13 In its application, the applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs.

14 At the hearing, as noted in the minutes of the hearing, the applicant declared that it renounced its claims for annulment of the contested decision in so far as it concerns the ‘layout services (other than for advertising purposes)’ and ‘translation and interpretation’ services in Class 41 covered by the mark applied for.

15 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

16 The applicant puts forward a single plea, alleging infringement of Article 8(1)(b) of Regulation...