Kalypso Media Group v EUIPO - Wizards of the Coast (DUNGEONS) (EU trade mark - Judgment) [2019] EUECJ T-700/18 (10 October 2019)

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(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)

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

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

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,

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

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

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)).

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:

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.

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.

16 The applicant puts forward a single plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. It submits, in particular, that, in the light of the particular situation in the market for the goods and services covered by the signs at issue, the Board of Appeal erred in its assessment of the level of attention of the relevant public, the distinctive character of earlier mark No 8206336 and the degree of similarity between the signs at issue. The Board of Appeal therefore incorrectly held that there was a likelihood of confusion within the meaning of that provision.

18 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to 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. Furthermore, under Article 8(2)(a)(i) of Regulation 2017/1001, ‘earlier trade marks’ means EU trade marks with a date of application for registration which is earlier than the date of application for registration of the EU trade mark in question.

19 According to settled case-law, the risk that the public might 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 case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and 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 covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

20 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited). A likelihood of confusion exists if, cumulatively, the degree of similarity between the trade marks at issue and the degree of similarity between the goods or services covered by those marks are sufficiently high (judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 45).

21 Finally, where the protection of the earlier trade mark extends to the whole of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).

22 It is in the light of these considerations and the applicant’s arguments that it is appropriate to assess whether the Board of Appeal was correct in finding that, with regard to the signs at issue, there was a likelihood of confusion in the minds of the relevant public within the meaning of Article 8(1)(b) of Regulation 2017/1001

23 As regards the comparison of the goods and services covered by the signs at issue, the Board of Appeal, in paragraph 14 of the contested decision, endorsed the Opposition Division’s findings, while stating that those findings had not been challenged before it by the applicant.

24 At the outset, it should be noted that in paragraph 10 of the contested decision, the Board of appeal stated that ‘in line with the contested decision’ the applicant’s appeal would be examined only in respect of earlier mark No 8206336. However, contrary to what was indicated by the Board of Appeal, the Opposition Division, when comparing the goods and services covered by the signs at issue, took account of the two earlier marks mentioned in paragraph 6 above.

25 In its decision, (see pages 4 and 5 of the opposition decision), summarised in paragraph 5 of the contested decision, first, the Opposition Division held that the goods in Classes 9 and 28 covered by the trade mark applied for were identical to the goods in the same classes covered by earlier mark No 8206336. Secondly, the Opposition Division took the view that all the services in Class 41 covered by the trade mark applied for, with the exception of the ‘layout services (other than for advertising purposes)’ and ‘translation and interpretation’ services, were partly identical and partly similar to the services in the same class covered by earlier mark No 8206336. Thirdly, it stated that the ‘layout services (other than for advertising purposes)’ and ‘translation and interpretation’ services, in Class 41, covered by the trade mark applied for, had a low degree of similarity with the ‘online publication of electronic books and periodicals’ services, falling within the same class, covered by earlier mark No 11620391.

26 Nevertheless, in the present case, it must be noted that, in so far as, at the hearing, the applicant declared that it had withdrawn its claims for annulment of the contested decision inasmuch 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 (see paragraph 14 above), the lawfulness of the contested decision is no longer challenged before the Court in respect of those services.

27 Consequently, the subject matter of the dispute before the Court has been limited in the course of the proceedings. The Court therefore no longer needs to adjudicate on the question whether the Board of Appeal was entitled to conclude that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, merely by endorsing the Opposition Division’s findings in respect of earlier mark No 8206336 only, without explicitly verifying whether the condition based on the existence of a similarity between the services in Class 41 cited in paragraph 3 above covered by the trade mark applied for and the goods and services covered by earlier trade mark No 8206336 was fulfilled in the present case.

28 Moreover, as regards the goods and services covered by the mark applied for, falling within Classes 9, 28 and 41, with the exception of the ‘layout services (other than for advertising purposes)’ and ‘translation and interpretation’ services, it should be noted that they are either identical or similar to the goods and services in the same classes covered by earlier mark No 8206336.

29 According to case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

30 First, in paragraphs 27 to 29 of the contested decision, the Board of Appeal held that the goods in question (games, computer software and computer programs) were everyday consumer items. Secondly, it took the view that the games market did not present any ‘special situation’ and that the customer circle had been extended to all age groups, regardless of gender and specific knowledge of the gaming industry. In addition, it clarified that, since earlier mark No 8206336 was an EU mark, the relevant public for which the likelihood of confusion had to be assessed consisted of average consumers in the European Union. Finally, it concluded that the goods and services in question were intended for the general public with at most an average level of attention, on the grounds that the games were ‘low value, high turnover and disposable products’.

31 The applicant submits that the Board of Appeal was wrong to consider that the level of attention of the relevant public was ‘average at best’. According to the applicant, the Board of Appeal should have found that the relevant public had a high level of attention in relation to games and computer games. In that regard, first, it submits that the Board of Appeal incorrectly held that such goods were ‘everyday items’. The Board of Appeal did not sufficiently take account of the special characteristics of the games or computer games market. On that market, there are hundreds, if not thousands, of games and computer games available simultaneously for which prices are high. The decision to buy those products, therefore, is based on the prior gathering of useful information, which shows that purchasing habits in relation to games and computer games differ from purchasing habits in relation to real everyday items. Consumers look for information on internet forums or other sources of information, online or offline, about which games or computer games to buy. Secondly, the applicant notes that it is common in the industry in question for the names of games from different developers to differ only slightly, on the ground that certain ‘subjects or topics or game styles are very popular and therefore frequently included in the names’. Thus, the relevant audience is accustomed to paying attention to specific names in order to identify a product among the multitude of similar games, which entails that it displays a high level of attention. Thirdly, the applicant claims that it does not understand the opinion of the Board of Appeal that games and computer games are ‘disposable’ products.

32 In that regard, first, it should be noted that it follows from the wording of Article 8(1)(b) of Regulation 2017/1001 and from the case-law cited in paragraph 21 above that the relevant public is that of the territory in which the earlier trade mark is protected. In view of the fact that earlier mark No 8206336, taken into account by the Board of Appeal, is an EU trade mark, the Board of Appeal correctly held, in paragraphs 12 and 27 of the contested decision, that the relevant territory was that of the European Union and that, in view of the goods and services in question, the relevant public consisted of the ‘average consumer’ of that territory. Moreover, those findings are not disputed by the parties.

33 Secondly, with regard to the assessments of the Board of Appeal referred to in paragraph 30 above and challenged by the applicant that the level of attention of the relevant public was ‘average at best’, the following observations should be made.

34 As a preliminary point, since, as stated in paragraph 29 above, the level of attention of the average consumer is likely to vary according to the category of goods or services in question, it is apparent from the case-law that, when assessing the likelihood of confusion, the public with the lowest level of attention must be taken into account (judgment of 15 July 2011, Ergo Versicherungsgruppe v OHIM — Société de développement et de recherche industrielle (ERGO), T‑220/09, not published, EU:T:2011:392, paragraph 21). Consequently, assuming that the games and computer games covered by the trade marks in question are intended for both a specialised public and the general public, which in this case implies that the relevant public must show a medium to high level of attention, account must be taken, when assessing the likelihood of confusion, of the normally informed and reasonably attentive and prudent public in the European Union displaying an average level of attention.

35 First, in the context of opposition proceedings, the wording of the goods covered by the marks at issue must be taken into account, and not the goods actually marketed under those marks (see, to that effect, judgment of 7 April 2016, Industrias Tomás Morcillo v EUIPO — Aucar Trailer (Polycart A Whole Cart Full of Benefits), T‑613/14, not published, EU:T:2016:198, paragraph 27 and the case-law cited). Since the specific arrangements for marketing the goods or services in question may vary over time and according to the applicant’s wishes, they cannot be taken into account for the purposes of the prospective analysis of the likelihood of confusion. That examination must therefore, as regards the goods or services for which registration of a trade mark is applied for, be performed in the light of the wording of the list of goods or services for which registration is sought, as it appears in the registration application or, where appropriate, as delimited in the course of the proceedings (see order of 14 April 2016, KS Sports v EUIPO, C‑480/15 P, not published, EU:C:2016:266, paragraph 57 and the case-law cited).

36 Secondly, it is important to note, as the Board of Appeal (see paragraphs 27 to 29 of the contested decision) and EUIPO have done, that the categories ‘games’ and ‘computer games’ cover a fairly large number of different goods, which are not luxury or niche products reserved for a limited number of people. On the contrary, those goods are available both online and on a self-service basis, they are widely promoted on different television channels, depending on the target age group, their price is relatively low and special skills or knowledge are not essential or required for their purchase. In other words, games and computer games are easily accessible to all, including those without special knowledge, and may therefore be assimilated to everyday consumer items, on the grounds that, as the Board of Appeal rightly held, they are no longer sold merely on ‘focused markets’ but have gone ‘mainstream’. The applicant’s argument that they are not purchased ‘like coffee, a pack of peppermint or a magazine’ does not call into question the finding that those goods are everyday consumer items.

37 Thirdly, it must be acknowledged that, as the applicant claims, certain consumers of games and computer games do not ‘tend’ to buy those goods spontaneously and rely on recommendations or information received prior to their purchase, and may thus display a high degree of attentiveness. However, in view of the availability and distribution of those goods and services on the market and of the fact that special skills or knowledge are not indispensable or required in order to purchase them, it cannot be excluded that consumers who do not have such knowledge or skills may purchase such goods. This may, for example, be the case for those who buy the games or computer games in question in order to make a gift to someone else, or for those who proceed with a purchase to find out more about the product. Such consumers are also part of the relevant public, as are the most discerning consumers.

38 Fourthly, with regard to the applicant’s argument that the relevant public is used to being careful in order to identify a specific product out of the mass of similar games, on the grounds that the names of different developers’ games differ only slightly, given that some ‘subjects’, ‘topics’ or ‘styles’ of games are very popular, and therefore frequently included in the names of the games, it must be noted that the applicant does not demonstrate that those games are sold on the market of the European Union or that the relevant public is able not to confuse games from different companies.

39 Fifthly, contrary to what the applicant submits, it should be noted that the Board of Appeal did take into account the specific characteristics of the market for games and computer games. It held correctly, in paragraph 29 of the contested decision, that the computer and video game industry has grown ‘from focused markets to mainstream’, on the ground that the rules relating to game product development have changed, and that the relevant customer circle extends to all age groups, regardless of gender and specific knowledge about the gaming industry. In addition, it should be noted that games are ‘disposable’ products, whose value may be low and whose turnover rate is high, in the sense that the continuous evolution, specific to the gaming and computer games industry, entails that consumers frequently replace their goods and ancillary services with new goods and services offered on the market. This is also explained by the fact that some games and computer games may be intended to be finished, involving moving on to the next step and, for example, to a new game.

40 In the light of the foregoing, it must be held that, if, as the applicant claims, part of the relevant public shows a high level of attention, this does not exclude that, in view of the development of the market, games and computer games are also intended for consumers who show a level of attention that is ‘average at best’.

41 It follows that in so far as the likelihood of confusion must be assessed in respect of the public which displays the lowest level of attention (see paragraph 34 above), the Board of Appeal did not err in not basing its assessment of the likelihood of confusion, with respect to games and computer games, on consumers with a high level of attention (see judgment of 30 May 2013, Buzil-Werk Wagner v OHIM — Roca Sanitario (Roca), T‑115/12, not published, EU:T:2013:285, paragraph 46 and the case-law cited).

42 The applicant’s complaint that the Board of Appeal erred in its assessment of the level of attention paid by the relevant public to games and computer games must therefore be dismissed.

43 As regards the goods and services at issue other than games and computer games, falling within Classes 9, 28 and 41, it is important to note that, as rightly noted by EUIPO, the applicant does not put forward any argument in its action seeking to call into question the Board of Appeal’s assessments that the level of attention of the relevant public in respect thereof is ‘average at best’.

44 Thus, it must be held that, in the case of the other contested goods and services in Classes 9, 28 and 41, the Board of Appeal correctly held that the relevant public was the same as that for games and computer games and also displayed an average level of attention.

45 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by those signs, bearing in mind, inter alia, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited). In addition, the average consumer only rarely has the chance to compare the various marks directly, but must rely on his imperfect recollection of them (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).

46 For the purpose of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings (see judgment of 22 September 2016, Sun Cali v EUIPO — Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 59 and the case-law cited).

47 According to settled case-law, a term with a clear meaning is only considered to be descriptive if it has a sufficiently direct and specific relationship with the goods or services in question to enable the public concerned to perceive immediately, and without further reflection, a description of the goods and services in question or one of their characteristics (see judgment of 24 February 2016, Tayto Group v OHIM — MIP Metro (REAL HAND COOKED), T‑816/14, not published, EU:T:2016:93, paragraph 63 and the case-law cited).

48 According to settled case-law, two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see judgment of 5 October 2016, Foodcare v EUIPO — Michalczewski (T.G.R. ENERGY DRINK), T‑456/15, EU:T:2016:597, paragraph 37 and the case-law cited).

49 In the present case, the signs to be compared are the word sign DUNGEONS for the mark applied for and the word sign DUNGEONS & DRAGONS for earlier mark No 8206336.

50 As indicated in paragraphs 17 to 22 of the contested decision, the Board of Appeal found that the signs at issue were visually and phonetically similar to an above-average degree and conceptually similar to an average degree.

51 The applicant acknowledges that the trade marks taken into account by the Board of Appeal share the element ‘dungeons’. However, according to the applicant, there is only a ‘certain degree of similarity’ between those marks in view of the different lengths thereof.

52 First, even if the applicant claims that the words ‘dungeons’ and ‘dragons’ remain ‘very allusive’ with regard to goods such as games, computer games and the goods and services associated with those games, it must be noted that such arguments are not capable of differentiating between the weighting of the elements comprising the signs at issue and of invalidating the conclusion as to the similarity of those signs resulting from the presence of the single element of the mark applied for within the earlier marks.

53 Secondly, it should be noted that, as the Board of Appeal rightly held, in paragraphs 18 and 20 of the contested decision, the word ‘dungeons’ is located in the initial part of the earlier marks, which is liable, according to settled case-law, to attract the consumer’s attention both visually and phonetically (see judgment of 13 October 2009, Deutsche Rockwool Mineralwoll v OHIM — Redrock Construction (REDROCK), T‑146/08, not published, EU:T:2009:398, paragraph 64 and the case-law cited).

54 Thirdly, in paragraphs 18 and 19 of the contested decision, on the one hand, the Board of Appeal rightly held that the technical comparison of the number of words, elements and syllables of the marks at issue could not overcome the fact that the mark applied for is fully reproduced as the first (and therefore more important element) word of earlier mark No 8206336. On the other hand, the Board of Appeal did not err in finding that, visually, the words ‘dragons’ and ‘dungeons’ both began with the letter ‘d’ and ended with the succession of the letters ‘o’, ‘n’ and ‘s’, thus echoing each other phonetically.

55 In view of the above and taking into account, first, that, within earlier mark No 8206336, there are no less distinctive elements than others, secondly, that the ‘dungeon’ element is in a position which is liable to attract more attention from the relevant public and, thirdly, that that element is identical to the sole element which makes up the trade mark applied for, the Board of Appeal did not err, in paragraphs 18 to 20 of the contested decision, in concluding, like the Opposition Division, in substance, that the signs at issue were highly similar visually and phonetically.

56 In addition, nor did the Board of Appeal err, in paragraphs 21 and 22 of the contested decision, in holding that, conceptually, the signs at issue were moderately similar as far as the English-speaking public was concerned on the basis of the meaning of the term ‘dungeons’ noted by the Opposition Division and recalled in paragraph 12 above. Moreover, the applicant does not submit any arguments capable of calling that assessment into question.

57 The distinctive character of a trade mark, within the meaning of Regulation 2017/1001, means that that mark must serve to identify the goods in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish those goods and services from those of other undertakings (see judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 22 and the case-law cited). The distinctiveness of a mark must be assessed, first, by reference to those goods or services and, second, by reference to the relevant public’s perception thereof, which consists of average consumers of the goods or services in question, who are reasonably well informed and reasonably observant and circumspect (see, by analogy, judgment of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 34 and the case-law cited).

58 It has already been held that, even if an earlier trade mark can be perceived as an allusion to a term referring to goods or services covered by it, it should be recognised in opposition proceedings that the earlier trade mark has a minimal intrinsic distinctive character merely because it has been registered (see, by analogy, judgment of 12 May 2016, Red Lemon v EUIPO — Lidl Stiftung (ABTRONIC), T‑775/14, not published, EU:T:2016:293, paragraph 55).

59 In the present case, it is important to recall that, in paragraphs 32 and 33 of the contested decision, the Board of Appeal confirmed the Opposition Division’s assessments that the terms ‘dungeons’ and ‘dragons’ were not descriptive and did not refer to the goods and services in question. Next, in paragraph 36 of the contested decision, the Board of Appeal held that earlier mark No 8206336 had a normal level of inherent distinctiveness.

60 The applicant maintains that the inherent distinctiveness of the trade mark DUNGEONS & DRAGONS is ‘significantly below average’ and that the scope of its protection is relatively limited, based in that regard on the arguments set out in paragraph 52 above, namely the allusiveness of those elements and the existence of ‘speaking’ trade mark registrations, that is, capable of indicating specific characteristics of the goods and services they cover.

61 More specifically, the applicant claims that, although the words ‘dungeons’ and ‘dragons’ are not ‘purely’ descriptive of the goods and services covered by the signs at issue, they remain ‘very allusive’, on the ground that they inform consumers that games, computer games and associated goods and services constitute games taking place in dungeons where the player is confronted with dragons. It mentions the example of a type of game commonly known as ‘dungeon crawl’ in which a hero navigates a labyrinthine environment, battling various monsters and looting treasure that he may find. For that game, the word ‘dungeons’ refers to the environment or place in which the ‘crawling’, that is the hero’s progress, takes place. It infers therefrom that the words ‘dungeons’ and ‘dragons’ are ‘speaking’ in the sense that they indicate specific characteristics of the goods and services in question.

62 In addition, the applicant takes the view that it has shown that the topics of ‘dungeons’ and ‘dragons’ are extremely popular on the games market and that there are very many games that make reference to those topics within their names. It states that there is a database containing a list of ‘tons’ of games which are offered under names that include the words ‘dungeon(s)’ or ‘dragon(s)’, and that it has provided lists of registered EU trade marks containing those words. The existence of many games with similar trade marks shows that the mark relied on in support of the opposition protects a name which is one of very many similar names, and thus has a weakened distinctive character, that is, significantly below average.

63 First, it is important to note, as the Board of Appeal did in paragraph 22 of the contested decision, that the fact that a game may take place in a dungeon and involve dragons is not sufficient to consider that those words are descriptive of a characteristic which is specific, in general, to the goods and services in question. As recalled in paragraph 35 above, the goods and services to be taken into account are those designated in the act of registration of the trade marks at issue, and not the goods actually marketed under those trade marks.

64 Thus, the mere fact that games and computer games may contain references to ‘dungeons’ or ‘dragons’ in their content or name is not sufficient to make it possible to find that the words ‘dungeons’ and ‘dragons’ are descriptive of the characteristics of the games as such. Moreover, earlier mark No 8206336 does not refer to the goods and services which the applicant refers to as ‘related’ to games and computer games. As EUIPO quite pertinently points out, it would be unreasonable to consider that the mark DUNGEONS & DRAGONS alludes, for example, to ‘computer game cartridges’ or other goods or services in Classes 9, 28 and 41 associated with games and computer games.

65 It follows that, given the wording of the list of goods covered by earlier mark No 8206336, mentioned in paragraph 7 above, the Board of Appeal did not err in considering that the applicant’s argument based on the fact that there was a well-known type of role-playing called ‘dungeon crawl’, consisting of a progression in a dungeon, did not make it possible to show that the word ‘dungeons’ generally alludes to a characteristic specific to games as such and was therefore weakly distinctive or even descriptive.

66 Secondly, it should be noted that, as argued, in substance, by EUIPO, the applicant does not demonstrate that many trade marks consisting of, or containing, the term ‘dungeons’ have been used in the specific market segment of games or computer games, nor that those trade marks have been used for the other goods and services in Classes 9, 28 and 41 at issue in the present case. As the Board of Appeal rightly held in paragraph 31 of the contested decision, the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. Moreover, as argued by EUIPO, the lists of game names or trade marks registered in the European Union submitted by the applicant do not contain any information concerning the characteristics of the games concerned or the turnover obtained by the sale of those games, nor concerning the perception that consumers in the European Union have of those game names or trade marks registered in the European Union.

67 Moreover, it has not been shown that the word ‘dungeons’ identifies the purpose, type, nature or intended use of those goods and services, nor that the relevant public immediately perceives their meaning, without further thought or reflection, as designating a characteristic of the goods and services in question (see, to that effect, judgment of 27 February 2002, Streamserve v OHIM (STREAMSERVE), T‑106/00, EU:T:2002:43, paragraph 40).

68 However, since none of the arguments raised by the applicant to show that the distinctive character of earlier mark No 8206336 is weak have been successful, it must be held that, having regard to the goods and services in question and the relevant public, the earlier mark has a distinctive character which is at the very least normal.

69 The overall assessment of the likelihood of confusion depends on many factors, including, in particular, knowledge of the mark on the market, the association that can be made with the sign used or registered, the degree of similarity between the mark and the sign and between the goods or services designated (judgment of 23 March 2006, Mülhens v OHIM, C‑206/04 P, EU:C:2006:194, paragraph 17; see also judgment of 26 July 2017, Continental Reifen Deutschland v Compagnie générale des établissements Michelin, C‑84/16 P, not published, EU:C:2017:596, paragraph 95 and the case-law cited).

70 The existence of a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (see judgment of 2 September 2010, Calvin Klein Trademark Trust v OHIM, C‑254/09 P, EU:C:2010:488, paragraph 44 and the case-law cited).

71 That global assessment implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323 paragraph 19).

72 The applicant considers that, despite the goods and services at issue being partly identical, the trade mark applied for ‘does keep the required distance to the earlier [mark]’. It takes the view, in essence, that taking into account the mark’s weak distinctive character and the relevant public’s high level of attention, the Board of Appeal should have found that there was no likelihood of confusion.

73 In the present case, having regard, first, to the identity and similarity of the disputed goods and services covered by the signs at issue (see paragraph 28 above), secondly, to the strong visual and phonetic similarity and the conceptually average similarity of the signs (see paragraphs 55 and 56 above), thirdly, to the average level of attention of the relevant public (see paragraph 44 above) and, fourthly, to the average inherent distinctiveness of earlier mark No 8206336 (see paragraph 68 above), the Board of Appeal correctly held, in paragraphs 31 to 34 of the contested decision, that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, at least in the mind of the English-speaking part of the relevant public.

74 In addition, it should be recalled that both the Court of Justice and the General Court have repeatedly held that a finding of a low distinctive character for the earlier trade mark does not, in itself, prevent a finding that there is a likelihood of confusion. While the distinctive character of the earlier mark must be taken into account in order to assess the likelihood of confusion, it is no more than one element, among others, to be considered in that assessment. Consequently, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 8 November 2016, BSH v EUIPO, C‑43/15 P, EU:C:2016:837, paragraphs 61 to 63 and the case-law cited, and order of 3 December 2018, Classic Media v EUIPO — Pirelli Tyre (CLASSIC DRIVER), T‑811/17, not published, EU:T:2018:894, paragraph 30 and the case-law cited).

75 Thus, given the circumstances of the case, even if it were to be assumed that earlier mark No 8206336 has, as the applicant claims, a weak inherent distinctive character as regards, at the very least, games and computer games, this is not sufficient to call into question the conclusion, set out in paragraph 73 above, that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 in respect of the goods and services at issue covered by the mark applied for.

77 Under Article 134 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. According to Article 135(1) of the Rules of Procedure, if equity so requires, the Court may decide that an unsuccessful party is to pay only a proportion of the costs of the other party in addition to bearing his own costs, or even that he is not to be ordered to pay any costs.

78 In this case, admittedly, the applicant has been unsuccessful in its submissions and EUIPO has applied for costs.

79 However, it is important to note that although the applicant was unsuccessful in whole rather than in part in its submissions, this is due in particular to its attitude at the hearing. As stated in paragraphs 14 and 26 above, at the hearing, the applicant withdrew its claims for annulment of the contested decision in so far as it concerned the ‘layout services (other than for advertising purposes)’ and ‘translation and interpretation’ services in Class 41 covered by the mark applied for. That withdrawal made it possible for the Court, for the reasons set out in paragraphs 23 to 25 above, namely the fact that the Board of Appeal had not taken into account earlier mark number 11620391, under which the services had been found to be similar to the abovementioned services covered by the trade mark applied for, to avoid finding that the contested decision was unlawful in so far as it concerned those services covered by the trade mark applied for and referring the case back to EUIPO in respect of those services only.

80 In the particular circumstances of the present case, the applicant thus adopted a constructive attitude and made it possible to avoid the other parties to the proceedings from having to bear costs linked to a possible partial annulment of the contested decision.

81 In those circumstances, the Court takes the view that equity requires each party to bear its own costs.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Kalypso Media Group v EUIPO - Wizards of the Coast (DUNGEONS) (EU trade mark - Judgment) [2019] EUECJ T-700/18 (10 October 2019) URL: http://www.bailii.org/eu/cases/EUECJ/2019/T70018.html Cite as: EU:T:2019:739, ECLI:EU:T:2019:739, [2020] ETMR 3, [2019] EUECJ T-700/18

Court of Justice of the European Communities (including Court of First Instance Decisions)