RULING ON OPPOSITION No B 997 413
Opponent: Astra Games Limited
Bridgend, Mid Glamorgan CF31 3UX
Representative: Wynne-Jones, Laine & James LLP
Cheltenham, Gloucestershire GL50 1JJ
Trade Mark: SLOTTO
a g a i n s t
Applicant/holder: Simon Harvey
9 Poets Court, Salthouse Road
Clevedon, Avon BS21 7TT
Contested trade mark: SLOTINO
Decision No B 997 413 page : 2 of 7
I. FACTS AND PROCEDURE
On10/08/2005, the applicant filed application No 4 585 147 to register the word mark
â€œSLOTINOâ€ for goods and services in classes 9, 28 and 41.
The opposition is directed against all goods and services covered by the application.
The opposition is based on the following earlier right:
Community TRADE mark No 4 396 388 of the word mark â€œSLOTTOâ€, registered
for goods in class 28. The opponent bases its opposition on all these goods.
The grounds of the opposition are those laid down in Article 8(1)(b) of the Community
Trade Mark Regulation (CTMR).
The opponent argues that there is a likelihood of confusion because of the similarity of
goods and marks in question and therefore the CTM application should be rejected.
The applicant did not submit any observations in reply within the time limit.
A. ON THE SUBSTANCE
1. Likelihood of confusion
According to Article 8(1) CTMR, upon opposition by the proprietor of an earlier TRADE
mark, the trade mark applied for shall not be registered:
b) 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.
a) Comparison of goods and services
When making an assessment of similarity of the goods concerned, all relevant factors
relating to these goods should be taken into account. These factors include, inter alia,
their nature, their purpose and method of use and whether they are in competition with
each other or are complementary (see Canon, paragraph 23). Further factors include
the pertinent distribution channels (in particular the sales outlets), the relevant public,
and the usual origin of the goods.
Decision No B 997 413 page : 3 of 7
The contested goods and services are the following:
electronic amusement gaming apparatus; electronic gaming apparatus
including electronic audio and visual apparatus; computer systems for on-line
games, gambling and betting through communications networks; computer
software; computer gaming programs; electronic games and gaming machines;
software for gaming and gambling; video and display apparatus for
entertainment, gaming and gambling; downloadable games in class 9;
games and playthings; apparatus for games; electronic arcade games; COIN
operated games; electronic computer games; gaming and gambling apparatus
and machines; casino games; currency and credit operated slot machines and
gaming devices in class 28;
provision of entertainment; provision of gaming, gambling and casino facilities;
gaming, gambling and casino facilities provided on-line, by means of the
Internet or other telecommunications networks; amusements and game
machine rental services; gaming machine entertainment services; gaming and
gambling services; non-downloadable Internet games; telephone games;
arranging competitions in class 41.
The opposition is based on the following goods:
Gaming and amusement machines and parts and fittings thereof in class 28.
The applicantâ€™s goods in class 9 cover both games and amusement apparatus and
equipment, the latter goods are also expressly destined for playing with. Thus, the
goods serve the same purpose (leisure) and are aimed at the same public (mostly
children, teenagers and their parents). They are also distributed via the same channels
(toy shops and games sections of electronic shops). Therefore, they are considered to
be similar despite different classification.
All the contested goods classified in this class are relating to games and entertainment
and therefore have the same purpose as the earlier gaming and amusement machines,
i.e. to entertain. Both sets of goods are aimed at the same relevant public, the average
consumers and also distributed through the same trade channels. Moreover, the goods
are in competition and thus, purchased at the same places. Given the foregoing, the
goods are considered to be identical.
The applicantâ€™s services cannot be comfortably provided without the opponentâ€™s goods
(i.e. games by nature) that accompany them. The opponentâ€™s goods are the object of
the contested services and form an indispensable part of the provision of
entertainment; provision of gaming, gambling and casino facilities. It is common for
casinos, gambling facilities, playrooms, etc. to provide or rent gaming and amusement
machines. The complementary nature of the goods and services, together with the
Decision No B 997 413 page : 4 of 7
overlap of distribution channels or outlets, indicates that the goods and services are
b) Comparison of signs
In determining the existence of likelihood of confusion, trade marks have to be
compared by making an overall assessment of the visual, phonetic and conceptual
similarities between the marks. The comparison must be based on the overall
impression given by the marks, bearing in mind, in particular, their distinctive and
dominant components (cf. Judgment of the Court of Justice, Case C-251/95 SabÃ¨l BV
v Puma AG, Rudolf Dassler Sport  OJ OHIM 1/98, p. 91, paragraph 22 et seq.).
The signs to be compared are the following:
Earlier CTM CTM application
The earlier trade mark â€œSLOTTOâ€ is protected in the European Union. Therefore, the
whole Community is the relevant territory for comparison.
Likelihood of confusion in only one part of the Community is sufficient as a relative
ground for the rejection of the application in issue. This results from the unitary
character of the Community trade mark (See Judgment of the Court of First Instance of
9.3.2005 in case T-33/03, â€œHai/Sharkâ€, paragraph 39).
There are two word marks written in standard upper case to be compared. They share
five letters which are in the same order, four letters at the beginning (â€œSLOTâ€) and the
identical last letter â€œOâ€. The mark in question differ in length, the CTM application has
eight letters whereas the earlier mark comprises seven letters. Despite the doubled
letter â€œTâ€ which is not usual in all relevant territories the signs have significant part in
common. Moreover, the relevant public tends to attribute the greatest weight to the
beginnings of signs which are identical in the present case. Given the foregoing, the
Office finds the marks visually similar to a medium degree.
Phonetically the signs â€œSLOTINOâ€ and â€œSLOTTOâ€ share the sound of letters /slot/. The
contested mark is three-syllabic mark whereas the earlier mark has only two syllables
in most of the Community languages. In English the marks comprise four and three
syllables. Mostly they will be pronounced as /slo/ti/no/ and /slo/to/. However, in
Swedish the identical letter will be pronounced differently (/slu/ti/no/ with stress on the
second syllable v. /slo/to/). In view of the foregoing, the marks are considered aurally
similar to a low degree.
The marks are meaningless in all the relevant countries. However the earlier mark
might be suggestive of lotto, a type of a game (for example in Dutch, English,
Hungarian, Latvian and Swedish). In Italy both marks are likely to evoke slot machines.
To this extent the contents of the marks are similar.
In view of the visual, phonetic and conceptual comparison, the marks are considered to
be similar overall.
Decision No B 997 413 page : 5 of 7
c) Global assessment
It constitutes a likelihood of confusion within the meaning of Article 8(1)(b) CTMR 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 (see Judgment of the
Court of Justice, Case C-39/97, Canon Kabushiki Kaisha v Metro-Goldwyn Mayer
Inc, OJ OHIM No. 12/98, page 1407 et seq., paragraph 29.)
Likelihood of confusion must be assessed globally, taking into account all the
circumstances of the case. Likelihood of confusion implies some interdependence
between the relevant factors, and in particular a similarity between the trade marks and
between the goods or services. Accordingly, a lesser degree of similarity between the
goods or services may be offset by a greater degree of similarity between the marks,
and vice versa. Furthermore, the more distinctive the earlier mark, the greater the risk
of confusion. Marks with a highly distinctive character, either per se or because of the
reputation they possess on the market, enjoy broader protection than marks with a less
distinctive character. (See Canon, paragraph 17 et seq.)
For the purposes of that global appreciation, the average consumer of the category of
products concerned is deemed to be reasonably well-informed and reasonably
observant and circumspect. However, account should be taken of the fact that the
average consumer only rarely has the chance to make a direct comparison between
the different marks but must place his trust in the imperfect picture of them that he has
kept in his mind. It should also be borne in mind that the average consumerâ€™s level of
attention is likely to vary according to the category of goods or services in question
(Judgment of the Court of Justice Case C-342/97, Lloyd Schuhfabrik Meyer & Co.
GmbH v. Klijsen Handel BV, OJ OHIM No 12/1999, p. 1585, paragraph 26).
As to the distinctive character of the earlier mark â€œSLOTTOâ€, even it might evoke slot
machines, i.e. the goods in question, the earlier mark as a whole look like a fanciful
and strange word. Consequently, the distinctiveness of the earlier mark must be seen
as average in the present case.
In view of the foregoing and taking into consideration the degree of similarity between
the marks, it is likely that a part of relevant public in the relevant territory, i.e. the
European Union, could think that the identical and similar goods and services in
question, bearing the respective signs, originate from the same or economically linked
undertakings. Therefore there is a likelihood of confusion including likelihood of
association between the CTM application and the earlier right for all contested goods
and the opposition must be fully upheld.
Consequently, the CTM application must be rejected in its entirety.
According to Article 81(1) CTMR, the losing party in opposition proceedings must bear
the fees incurred by the other party, as well as all costs.
Decision No B 997 413 page : 6 of 7
According to Rule 94(1) of Commission Regulation (EC) No 2868/95 of 13 December
1995 implementing the CTMR (OJ OHIM 2-3/95, p. 259), the apportionment of costs
must be dealt with in the decision on the opposition.
Since the applicant is the losing party in the opposition proceedings, it must bear all
costs incurred by the other party in the course of these proceedings.
Decision No B 997 413 page : 7 of 7
THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
1. Uphold opposition number B 997 413 for all the contested goods and services.
2. Reject application number 4 585 147 in its entirety.
3. Order the applicant to bear the costs.
FIX THE COSTS AS FOLLOWS:
The amount of the costs to be paid by the applicant to the opponent pursuant to Article
81(6) CTMR in conjunction with Rule 94(3) IR shall be:
Costs of representation EUR 300
Opposition fee EUR 350
Total amount EUR 650
The Opposition Division