Judgments nº T-381/19 of Tribunal General de la Unión Europea, May 13, 2020

• Resolution Date: May 13, 2020
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-381/19

(EU trade mark - Opposition proceedings - Application for EU word mark City Mania - Earlier EU word mark City Lights - Relative ground for refusal - No likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001) In Case T-381/19,

adp Gauselmann GmbH, established in Espelkamp (Germany), represented by P. Koch Moreno, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by S. Palmero Cabezas, acting as Agent,

defendant,

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

Gameloft SE, established in Paris (France),

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 11 April 2019 (Case R 976/2018-2), relating to opposition proceedings between adp Gauselmann and Gameloft,

THE GENERAL COURT (Fifth Chamber),

composed of D. Spielmann, President, U. Öberg and R. Mastroianni (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 21 June 2019,

having regard to the response lodged at the Court Registry on 27 September 2019,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

1 On 17 October 2016, Gameloft SE 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 Registration as a mark was sought for the word sign City Mania.

3 The goods in respect of which registration was sought fall, after the restriction made in the course of the proceedings before EUIPO, within Classes 9 and 28 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: ‘Game software for desk top, lap top or palm top computers, for mobile telephones, for consoles, for organisers, fixed or portable; Video game software adapted for use with television receivers only; Computer and video games software; CD-ROMs, program memory cartridges; Data carriers containing data for computers, mobile phones, organisers, fixed or portable, or video game consoles; Sound and video recording media for electronic games apparatus’;

- Class 28: ‘Video game equipment other than those adapted for use with television receivers only’.

4 The trade mark application was published in European Union Trade Marks Bulletin No 2016/207 of 2 November 2016.

5 On 13 January 2017, the applicant, adp Gauselmann GmbH, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on the earlier EU word mark City Lights, registered on 4 December 2016 under number 015126841 and covering, inter alia, goods in Classes 9 and 28 corresponding, 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; Compact discs, DVDs and other digital recording media; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus; Musical jukeboxes and parts for the aforesaid automatic machines; Automatic cash dispensers, automatic money counting and money changing machines; Coin-operated mechanisms; Computer and video games software; Games software for use on any computer platform, including electronic entertainment and game consoles; Computer game programs; Video games (software); Computer games provided through a global computer network or supplied by means of multimedia electronic broadcast or through telecommunications or electronic transmission or via the Internet; Computer games, leisure and recreational software, video games and computer software, all being provided in the form of storage media; 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), in particular for online betting games, online prize games, online gambling games, online games of skill and online casino games; 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 apparatus 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 circuit boards (electronic components) and combinations thereof, being assemblies and parts for apparatus, included in Class 9’;

- Class 28: ‘Games; Toys; Gymnastic and sporting articles not included in other classes; Decorations for Christmas trees; Gaming apparatus (including coin-operated apparatus); Coin-operated arcade games (machines); Games for amusement arcades (included in Class 28); Coin-operated video gaming apparatus; Video games adapted for us with external screens or monitors only; Casino fittings, namely roulette tables, roulette wheels; Coin-operated automatic gaming machines and gaming machines, in particular for gaming arcades, with or without a prize payout; Electronic or electrotechnical gaming apparatus, automatic...