Novomatic v EUIPO - Granini France (HOT JOKER) (Judgment) [2016] EUECJ T-326/14 (19 April 2016)

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(EU trade mark — Opposition proceedings — Application for the EU figurative mark HOT JOKER — Earlier national figurative mark Joker — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Obligation to state reasons — Article 75 of Regulation No 207/2009 — Article 76(1) of Regulation No 207/2009)

Novomatic AG, established in Gumpoldskirchen (Austria), represented by W. Mosing, lawyer,

European Union Intellectual Property Office (EUIPO), represented by P. Bullock, acting as Agent,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Granini France, established in Mâcon (France), represented by D. Lichtlen, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 6 February 2014 (Case R 589/2013-2), relating to opposition proceedings between Granini France and Novomatic AG,

composed of H. Kanninen, President, I. Pelikánová and E. Buttigieg (Rapporteur), Judges,

having regard to the response of EUIPO lodged at the Court Registry on 5 August 2014,

having regard to the response of the intervener lodged at the Court Registry on 2 September 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 rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991,

1 On 14 December 2010, the applicant, Novomatic AG, 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 Community trade mark (OJ 2009 L 78, p. 1).

3 The goods in respect of which registration was sought are in 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: ‘Hardware and software, in particular for casino and amusement arcade games, for gaming machines, slot machines or video lottery gaming machines, with or without prize payouts, or games of chance via telecommunications networks and/or the Internet, with or without prize payouts’;

– Class 28: ‘Casino fittings, namely roulette tables, roulette wheels; Casino games with or without prize payouts, gaming machines and games machines, in particular for commercial use in casinos and amusement arcades, or games of chance, with or without prize payouts, via the Internet and via telecommunications networks, games of chance, with or without prize payouts, for use in telecommunications apparatus; Slot machines and/or electronic money-based gaming apparatus with or without prizes; Housings for slot machines and gaming machines; Electronic or electrotechnical gaming apparatus, gaming machines and automatic gaming machines, slot machines operated by coins, tokens, banknotes, tickets or by means of electronic, magnetic or biometric storage media, in particular for commercial use in casinos and amusement arcades, with or without a prize payout; Housings for slot machines, gaming apparatus, gaming machines and automatic gaming machines operated by means of coins, tokens, tickets or by means of electronic, magnetic or biometric storage media; Electric, electronic or electromechanical apparatus for bingo games, lotteries or video lottery games and for betting offices, networked or unnetworked; Electropneumatic and electric pulling machines (gaming machines)’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 2011/029 of 11 February 2011.

5 On 10 May 2011, the intervener, Granini France, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based, inter alia, on the earlier French figurative mark, registered on 24 March 2006 under the number 63418864, reproduced below:

7 That earlier mark was registered in respect of goods in Class 28 and services in Class 41 corresponding, for each of those classes, to the following description:

– Class 41: ‘Entertainment; entertainment by means of radio or television; services of organisation of lotteries or gambling; organising of competitions for entertainment’.

8 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.

9 On 4 February 2013, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation No 207/2009 and consequently found that it was not necessary to examine the other ground relied on in support of the opposition, namely that set out in Article 8(5) of that regulation.

10 On 27 March 2013, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

11 By decision of 6 February 2014 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In the context of the comparison of the goods and services at issue, the Board of Appeal found that the goods in Class 9 covered by the mark applied for and the ‘games’ in Class 28 covered by the earlier mark were similar, whereas the goods in Class 28 covered by the mark applied for and the abovementioned ‘games’ were, in part, identical and, in part, similar. Next, the Board of Appeal found that there was a low degree of visual similarity and an average degree of phonetic and conceptual similarity between the signs at issue. In the light, inter alia, of those findings, the Board of Appeal concluded that there was a likelihood of confusion between the marks at issue as the mark applied for could be perceived as relating to a new line of goods marketed by the holder of the earlier mark.

– annul the contested decision and, consequently, reject the opposition and authorise the registration of the mark applied for;

– order EUIPO and the intervener to pay the costs relating to the proceedings before the Court and the Board of Appeal.

14 In support of its action, the applicant puts forward three pleas in law, alleging: (i) infringement of Article 75 of Regulation No 207/2009; (ii) infringement of Article 8(1)(b) of Regulation No 207/2009; and (iii) infringement of Article 76(1) of Regulation No 207/2009.

15 The applicant submits that a number of elements of the Board of Appeal’s reasoning are marred by a failure to state reasons, contrary to Article 75 of Regulation No 207/2009.

16 In the first place, the applicant thus complains that the Board of Appeal found that the goods in Class 28 covered by the mark applied for and the ‘games’ in Class 28 covered by the earlier mark were similar on the sole ground that they are in the same class.

17 In the second place, the applicant submits that the Board of Appeal’s analysis, first, that the expression ‘games and toys’ corresponds to ‘games’ alone and, secondly, that the relevant public perceives the goods ‘hardware and software’, ‘games of chance’, ‘gaming machines’ and ‘games and toys’ as having a common commercial origin although that public’s level of attention is much higher than that of average consumers, is marred by a failure to state reasons.

18 In the third place, the applicant complains that the Board of Appeal did not explain the reason why the applicant’s argument relating to the restrictions in French legislation on games of chance would be of no relevance.

19 In the fourth place, the applicant takes the view that the Board of Appeal’s statement that the applicant had not shown that the relevant French public knew that the term ‘joker’ was the commercial name of a game of chance in some European Union countries is marred by a failure to state reasons.

20 In the fifth place, the applicant maintains that the contested decision must be regarded as failing to state the reasons on which it is based when it is stated, in paragraph 25 of that decision, that, even if the distinctive character of the term ‘joker’ is weak in the context of the goods compared, it is the dominant element of the earlier mark.

21 EUIPO disputes the merits of the present plea, whereas the intervener has not submitted any observations in that regard.

22 The first sentence of Article 75 of Regulation No 207/2009 provides that decisions of EUIPO must state the reasons on which they are based. The obligation to state reasons, as thus laid down, has the same scope as that which derives from Article 296 TFEU. It is settled case-law that the statement of reasons required by Article 296 TFEU must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the Court having jurisdiction to exercise its power of review. It is not necessary for the reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (judgments of 21 October 2004 in KWS Saat v OHIM, C‑447/02 P, ECR, EU:C:2004:649, paragraphs 63 to 65; of 15 November 2011 in Abbott Laboratories v OHIM (RESTORE), T‑363/10, EU:T:2011:662, paragraph 73; and of 23 January 2014 in Novartis v OHIM (CARE TO CARE), T‑68/13, EU:T:2014:29, paragraph 27).

23 It is apparent from settled case-law that the obligation to state reasons is an essential procedural requirement and distinct from the question whether the reasons given are correct, which goes to the substantive legality of the contested measure. The fact that a statement of reasons may be incorrect does not mean that there is no statement of reasons (judgments of 17 May 2011 in Diagnostiko kai Therapeftiko Kentro Athinon ‘Ygeia’ v OHIM (υγεία), T‑7/10, EU:T:2011:221, paragraph 59, and of 12 September 2012 in Duscholux Ibérica v OHIM — Duschprodukter i Skandinavien (duschy), T‑295/11, EU:T:2012:420, paragraph 41).

24 Furthermore, it must be pointed out that, when the Board of Appeal confirms a lower-level decision of EUIPO in its entirety, that decision, together with its statement of reasons, forms part of the context in which the Board of Appeal’s decision was adopted, which is known to the parties and enables the Court to carry out fully its judicial review as to whether the Board of Appeal’s assessment was well-founded (judgments of 21 November 2007 in Wesergold Getränkeindustrie v OHIM — Lidl Stiftung (VITAL FIT), T‑111/06, EU:T:2007:352, paragraph 64, and of 9 July 2008 in Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, ECR, EU:T:2008:268, paragraph 47).

25 In the present case, as regards, in the first place, the applicant’s complaint as to the failure to state reasons which allegedly affects the analysis of the comparison of the goods in Class 28 covered by the mark applied for with the ‘games’ in Class 28 covered by the earlier mark (see paragraph 16 above), it must be noted that, in paragraph 17 of the contested decision, the Board of Appeal found that the goods ‘casino fittings, namely roulette tables, roulette wheels; casino games with or without prize payouts, gaming machines and games machines, in particular for commercial use in casinos and amusement arcades, or games of chance, with or without prize payouts, via the Internet and via telecommunications networks, games of chance, with or without prize payouts, for use in telecommunications apparatus; Slot machines and/or electronic money-based gaming apparatus with or without prizes; housings for slot machines and gaming machines; electronic or electrotechnical gaming apparatus, gaming machines and automatic gaming machines, slot machines operated by coins, tokens, banknotes, tickets or by means of electronic, magnetic or biometric storage media, in particular for commercial use in casinos and amusement arcades, with or without a prize payout;’ in Class 28 covered by the mark applied for were identical to the ‘games’ covered by the earlier mark.

26 As is apparent from paragraph 17 of the contested decision, the Board of Appeal based the assessment set out in paragraph 25 above primarily on the analysis that it had elaborated on in the context of the comparison between the goods in Class 9 covered by the mark applied for and the ‘games’ covered by the earlier mark — an analysis which it applied mutatis mutandis in the context of the comparison of the goods in Class 28 covered by the mark applied for and ‘games’ — as well as, for the sake of completeness, on the fact that both sets of goods were included in the same class, namely Class 28.

27 The assessment set out in paragraph 25 above was also based on the considerations contained in paragraph 18 of the contested decision in which the Board of Appeal took the view that the term ‘games’ encompassed the goods covered by the mark applied for, referred to in paragraph 25 above, which were all gaming devices or apparatus.

28 It follows that the applicant’s complaint, set out in paragraph 16 above, has no factual basis, because it is clear from paragraphs 17 and 18 of the contested decision that the Board of Appeal did not rely exclusively on the fact that the two groups of goods being compared were in the same class in order to conclude that they were identical. Furthermore, if the applicant, by means of the present complaint, is challenging that finding, then that complaint, in actual fact, relates to whether the reasons given are correct, which, for the purposes of the case-law referred to in paragraph 23 above, goes to the substantive legality of the contested decision. It follows that the applicant’s first complaint must be rejected.

29 In the context of its second complaint, first, the applicant criticises, as being marred by a failure to state reasons, the Board of Appeal’s alleged equation, in paragraph 18 of the contested decision, of the terms ‘games and toys’ with the term ‘games’ alone (see paragraph 17 above).

30 That criticism must be rejected inasmuch as it is due to a misunderstanding of the Board of Appeal’s reasoning since the Board of Appeal did not make such an equation at any point in the contested decision. As has already been pointed out, in paragraph 18 of the contested decision, in the context of the comparison of certain goods in Class 28 covered by the mark applied for with the ‘games and toys’ in Class 28 covered by the earlier mark, the Board of Appeal took the view that the term ‘games’ could cover everything from ‘amusements’, ‘sports’ and ‘pastimes’ to ‘games of chance for money’. The Board of Appeal continued by stating that the goods in Class 28 covered by the mark applied for were all gaming devices or apparatus and could be described as ‘games’, whereas, as regards the goods in Class 28 covered by the earlier mark, it was appropriate to take into consideration solely ‘games’ as the basis for the comparison. According to the Board of Appeal, the linkage through the conjunction ‘and’ of ‘games’ and ‘toys’ did not mean that the goods in question were aimed purely at children. To summarise, as has already been pointed out, paragraph 18 of the contested decision provides a line of reasoning in support of the Board of Appeal’s finding that certain goods in Class 28 covered by the mark applied for were identical to the ‘games’ in Class 28 covered by the earlier mark, without it being necessary to take into account the ‘toys’ which are also in that class.

31 Secondly, the applicant’s criticism regarding the failure to state reasons which allegedly characterises the Board of Appeal’s finding as to the common commercial origin of some of the goods under comparison (see paragraph 17 above) is, in part, unfounded and is due, in part, to a misreading of the contested decision.

32 First of all, that criticism is unfounded because, in paragraph 16 of the contested decision, the Board of Appeal explained, to the requisite legal standard, the reason why it took the view that the relevant public would perceive the goods in Class 9 covered by the mark applied for and the ‘games’ in Class 28 covered by the earlier mark as having a common commercial origin. The Board of Appeal, in essence, found, in paragraph 16 of the contested decision, first, that the software and hardware for an electronic game, which fall within Class 9, and the game, which falls within Class 28, are complementary, secondly, that they are used in the same establishments and, thirdly, that they are purchased by the same professionals and have the same distribution and manufacturing channels. On the basis of those findings, the Board of Appeal concluded that ‘there [wa]s nothing to suggest that the relevant public would not perceive the relevant products as having a common commercial origin’.

33 Secondly, the applicant’s criticism is due, in part, to a misreading of the contested decision, inasmuch as, in respect of the comparison between the ‘games of chance’ in Class 28 covered by the mark applied for, which are referred to in paragraph 17 of the contested decision, and the ‘games and toys’ in Class 28 covered by the earlier mark, the Board of Appeal did not state at any point in the contested decision that the relevant public would perceive those goods as having a common commercial origin. The same finding must be made as regards the comparison between the ‘gaming machines’ in Class 28 covered by the mark applied for, which are referred to in paragraph 20 of the contested decision, and the ‘games and toys’ in Class 28 covered by the earlier mark. There is no reference in the contested decision to the alleged common commercial origin of those goods under comparison.

34 The applicant’s third complaint, which is set out in paragraph 18 above, must also be rejected.

35 It is apparent from the case-file that the applicant, in essence, submitted before EUIPO that the ‘games and toys’ covered by the earlier mark related to games intended for children and that those goods differed from the goods in Class 28 covered by the mark applied for which relate to the gambling industry, on account of French legislation which precludes children from participating in gambling.

36 In response to that line of argument, the Board of Appeal, in paragraph 18 of the contested decision, found that ‘games’ and ‘toys’ were not aimed purely at children and that, as a result, the applicant’s arguments relating to the restrictions in French legislation on gambling were of no relevance. The applicant’s third complaint is therefore unfounded.

37 As regards the applicant’s fourth complaint, which is set out in paragraph 19 above, it is sufficient to note that that complaint is manifestly unfounded as the Board of Appeal’s statement that the applicant had not shown that the relevant French public knew that the term ‘joker’ was the commercial name of a game of chance in some European Union countries constitutes a sufficient statement of reasons for the purposes of the case-law referred to in paragraph 22 above. The applicant was able to understand that, by means of that statement, the Board of Appeal was raising against it the fact that it had not discharged the burden of proof resting on it.

38 Lastly, the applicant’s fifth complaint (see paragraph 20 above) is unfounded inasmuch as the Board of Appeal, in paragraph 25 of the contested decision, gave sufficient reasons for its finding that the term ‘joker’ was the dominant element of the earlier mark. The Board of Appeal explained that that term took up the largest part of that mark and that the graphic elements in that mark were simply decorative or laudatory. If the applicant, by means of its complaint, is challenging that finding on the part of the Board of Appeal, then that complaint, in actual fact, relates to whether the reasons given are correct, which, for the purposes of the case-law referred to in paragraph 23 above, goes to the substantive legality of the contested decision.

The plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009

40 The applicant disputes, in essence, the Board of Appeal’s finding as to the existence of a likelihood of confusion between the mark applied for and the earlier mark. In that regard, it submits, first, that the goods under comparison covered by those marks are neither identical nor similar and, secondly, that the signs at issue are also not similar.

42 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an 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.

43 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 the same 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 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).

44 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks 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 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and the case-law cited).

45 In the present case, the Board of Appeal correctly pointed out, in paragraph 22 of the contested decision, that, since the earlier mark is a trade mark registered in France, the relevant public is the French public. The Board of Appeal also found, in that paragraph, that the overlapping goods, namely games and gaming devices were directed at professionals in casinos, amusement arcades, bingo halls and the like in France, who would have a higher level of attention than the average consumers. That finding by the Board of Appeal must be set out in greater detail. It must be noted, in accordance, moreover, with the Opposition Division’s analysis, that the goods under comparison are directed at the general public and at professionals in the field of entertainment, who will have a higher level of attention than the general public.

46 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited).

47 The applicant disputes the Board of Appeal’s findings as to, first, the similarity of the goods in Class 9 covered by the mark applied for and the ‘games’ in Class 28 covered by the earlier mark and, secondly, the identity and similarity of the goods in Class 28 covered by the mark applied for and the ‘games’ in Class 28 covered by the earlier mark.

48 In that regard, it must be noted that, in order to reach the conclusions at issue, the Board of Appeal found, in paragraph 16 of the contested decision, that the ‘games’ in Class 28 covered by the earlier mark included electronic or on-line games of chance, such as bingo or various other card games, and it is on the basis of that analysis that it then compared the goods at issue.

49 That analysis by the Board of Appeal of the term ‘games’, which designates the goods in Class 28 covered by the earlier mark, is not marred by error. As the Board of Appeal notes in paragraph 18 of the contested decision, referring to the New Shorter English Dictionary, that term is so general that it can cover everything from ‘amusements’, ‘sports’ and ‘pastimes’ to ‘games of chance for money’. Furthermore, the Board of Appeal correctly supports that assessment with the reference, in paragraph 16 of the contested decision, to the eighth edition of the Nice Classification, which was in force at the time when the earlier mark was registered. The explanatory note to Class 28 of that edition stated that that class did not include, in particular, ‘amusement apparatus for use with television receivers only (Cl. 9)’, which implies a contrario, as the Board of Appeal pointed out in paragraph 16 of the contested decision, that the term ‘games’ could include electronic versions of games of chance and card games that are played on a monitor other than a television receiver.

50 The aim of the greater part of the applicant’s line of argument before the General Court regarding the comparison of the goods covered by the marks at issue is to dispute the Board of Appeal’s analysis of the term ‘games’ with regard to the goods in Class 28 covered by the earlier mark. The applicant maintains that the ‘games and toys’ covered by the earlier mark are aimed at children and that the concept of ‘games and toys’ is therefore narrower than that of ‘games’, on which the contested decision is based. From that analysis of the term, the applicant draws the conclusion that the ‘games and toys’ covered by the earlier mark and the goods covered by the mark applied for are not similar, since the latter cannot be obtained in toy shops and are covered by French legislation which, first, excludes children from the gambling market and, secondly, prohibits the operators of such games from suggesting that kind of activity to minors. On the basis of the abovementioned analysis of the words ‘games and toys’, the applicant also submits that the only common factor which could exist between gambling machines and ‘games and toys’ is the pursuit of ‘leisure time’ or ‘entertainment’; it maintains, however, that that factor is not sufficient to conclude that the goods under comparison are similar.

51 That line of argument on the part of the applicant must be rejected since, as EUIPO correctly notes, it relies on a narrow interpretation of the term ‘games’, which the applicant analyses in combination with the term ‘toys’ and which leads it to maintain that the ‘games’ covered by the earlier mark are directed only at children.

52 In that regard, it is important to bear in mind that the comparison of the goods at issue must be carried out on the basis of the description of the goods set out in the registration of the earlier mark (judgments of 24 November 2005 in Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, ECR, EU:T:2005:420, paragraph 67, and of 15 October 2008 in Air Products and Chemicals v OHIM — Messer Group (Ferromix, Inomix and Alumix), T‑305/06 to T‑307/06, EU:T:2008:444, paragraph 61). However, the words ‘games and toys’ and, in particular, the link, through the conjunction ‘and’, between the words ‘games’ and ‘toys’ does not mean that the goods in question are aimed solely at children. Furthermore, since, as is apparent from the case-file, the earlier mark was not subject to proof of genuine use, there is no reason to limit the scope of the word ‘games’, which also covers, as EUIPO states, activities engaged in for amusement by adults and, inter alia, electronic ‘games of chance’ meant for an adult public.

53 As the Board of Appeal’s analysis with regard to the definition of the terms ‘games and toys’ in relation to the goods in Class 28 covered by the earlier mark has been confirmed, it is necessary to verify the Board of Appeal’s assessments relating to the comparison of ‘games’ and the goods in Classes 9 and 28 covered by the mark applied for.

54 As regards, first, the comparison of the goods in Class 9 covered by the mark applied for and the ‘games’ covered by the earlier mark, it must be pointed out that, as the Board of Appeal correctly states in paragraph 16 of the contested decision, those goods are complementary inasmuch as the software and hardware in Class 9 are essential for the functioning of the electronic or on-line games of chance covered by the earlier mark. Furthermore, as the Board of Appeal points out in paragraph 16 of the contested decision, the nature of those goods, namely ‘hardware and software’, is the same as that of electronic or on-line games of chance and they may have the same distribution and manufacturing channels. Furthermore, since the ‘hardware and software’ are intended ‘in particular for casino and amusement arcade games, for gaming machines, slot machines or video lottery gaming machines, with or without prize payouts, or games of chance via telecommunications networks and/or the Internet, with or without prize payouts’, they may be used in the same establishments as those in which games of chance are kept, namely casinos and amusement arcades, and may be purchased by the same professionals, as the Board of Appeal correctly states in paragraph 16 of the contested decision.

55 Apart from its line of argument relating to the definition of the terms ‘games and toys’, which has been examined in paragraphs 50 to 52 above, the applicant also puts forward two arguments in order to challenge the Board of Appeal’s finding relating to the similarity between the goods in Class 9 covered by the mark applied for and the ‘games’ covered by the earlier mark.

56 In the first place, the applicant submits, without further substantiating that complaint, that the Board of Appeal did not take into account the relevant factors relating to the goods under comparison, but based its conclusion exclusively on the explanatory note to Class 9 of the Nice Classification. That complaint is manifestly unfounded because, as is apparent from paragraph 54 above and from paragraphs 13 to 16 of the contested decision, the Board of Appeal, in accordance with the case-law referred to in paragraph 46 above, took into account all the relevant factors in order to reach the conclusion relating to the similarity of the goods at issue. Furthermore, as is apparent from paragraphs 13 to 15 of the contested decision, the Board of Appeal relied, for the purpose of refuting the applicant’s argument, which was erroneously based on the tenth edition of the Nice Classification, that Class 9 excluded ‘amusement and game apparatus adapted for use with an external display screen or monitor’, on the explanatory note in the ninth edition of the Nice Classification, which was the edition in force at the time when the application for the contested mark was filed. However, the ninth edition of the Nice Classification did not contain such an exclusion. It follows that, contrary to the applicant’s claim, the Board of Appeal did not rely exclusively on the Nice Classification for the purposes of assessing the similarity of the goods under comparison. The present complaint must therefore be rejected.

57 In the second place, the applicant complains that the Board of Appeal, in essence, interpreted the expression ‘in particular’, which is used in the description of the goods in Class 9 covered by the mark applied for, as a restriction on the areas in which the ‘hardware and software’ would be sold and used, whereas that expression serves only to provide examples of the use of the abovementioned goods. The applicant states that the goods in Class 9 covered by the mark applied for are solely hardware and software.

58 That complaint must also be rejected inasmuch as it is not apparent from the contested decision that the Board of Appeal took the view that the expression ‘in particular’ constituted a restriction of the goods in Class 9 covered by the mark applied for. By contrast, it is apparent from paragraph 16 of the contested decision that the Board of Appeal took into account the illustrative nature of the expression ‘in particular’ and that, in comparing the goods, it took into account the link between the ‘hardware and software’ covered by the mark applied for and the ‘games’ covered by the earlier mark, by concluding, inter alia, that they had the same nature and that they were complementary. At the same time, the Board of Appeal did not err in relying on the expression ‘in particular’ in order to state, in paragraph 16 of the contested decision, that the goods in Class 9 covered by the mark applied for were essentially aimed at casinos and amusement arcades and were used in the same establishments, namely casinos and amusement arcades, as the games of chance included in the ‘games’ covered by the earlier mark.

59 In the light of the foregoing, the Board of Appeal’s finding relating to the similarity between the goods in Class 9 covered by the mark applied for and the goods in Class 28 covered by the earlier mark must be upheld.

60 As regards, secondly, the comparison between the goods in Class 28 covered by the mark applied for and the ‘games’ covered by the earlier mark, it must be noted that the Board of Appeal correctly found, in paragraph 17 of the contested decision, that ‘casino games with or without prize payouts, gaming machines and games machines, in particular for commercial use in casinos and amusement arcades, or games of chance, with or without prize payouts, via the Internet and via telecommunications networks, games of chance, with or without prize payouts, for use in telecommunications apparatus; Slot machines and/or electronic money-based gaming apparatus with or without prizes; housings for slot machines and gaming machines; electronic or electrotechnical gaming apparatus, gaming machines and automatic gaming machines, slot machines operated by coins, tokens, banknotes, tickets or by means of electronic, magnetic or biometric storage media, in particular for commercial use in casinos and amusement arcades, with or without a prize payout’ were identical to the ‘games’ covered by the earlier mark.

61 The goods in Class 28 referred to in paragraph 60 above, which are games of chance or gaming apparatus, must be considered to be included in the more general category of ‘games’ covered by the earlier mark. As has already been stated in paragraph 49 above, the very general concept of ‘games’ covers many types of games, including ‘games of chance’.

62 By contrast, the Board of Appeal erred in finding that even the ‘casino fittings, namely roulette tables, roulette wheels’ in Class 28 covered by the mark applied for were identical to the ‘games’ covered by the earlier mark. Those two groups of goods clearly have different purposes as the first group is used for the operation of casinos and games of chance, whereas ‘games’ have the purpose of entertaining. Those two groups of goods are, however, similar on account of their complementarity and of the fact that they are used in the same establishments, namely casinos and amusement arcades and are purchased by the same professionals, namely those who are active in the field of casinos and amusement arcades.

63 As regards the remainder of the goods in Class 28 covered by the mark applied for, namely the ‘housings for slot machines, gaming apparatus, gaming machines and automatic gaming machines operated by means of coins, tokens, tickets or by means of electronic, magnetic or biometric storage media; electric, electronic or electromechanical apparatus for bingo games, lotteries or video lottery games and for betting offices, networked or unnetworked; electropneumatic and electric pulling machines (gaming machines)’, the Board of Appeal, which referred expressly to the Opposition Division’s analysis, was right in finding, in paragraph 20 of the contested decision, that those goods and the ‘games’ covered by the earlier mark were similar. According to the Opposition Division’s analysis, which the Board of Appeal rightly confirmed, the abovementioned goods covered by the mark applied for were parts of gaming machines. Those goods and the ‘games’ covered by the earlier mark were thus similar inasmuch as those parts were particularly important for the functioning of the gaming machines, were produced or sold by the same undertakings that manufactured those machines and were aimed at the same public.

64 The applicant, with the exception of its line of argument relating to the definition of the content of the wording of the goods ‘games and toys’, which has been examined in paragraphs 50 to 52 above, has not submitted any specific arguments regarding the comparison of the goods in Class 28 covered by the mark applied for with ‘games’. It has only put forward that the contested decision did not take the reality of the markets into consideration, stating, by way of example, that housings for slot machines cannot be obtained in toy shops. Apart from the fact that that argument is based on an incorrect interpretation of the term ‘games’ as being aimed only at children (see paragraph 51 above), it must be borne in mind that the comparison of the goods at issue must be carried out on the basis of the description of those goods and not on the basis of the specific conditions under which the goods of the applicant or the intervener are marketed (judgment in Ferromix, Inomix and Alumix, cited in paragraph 52 above, EU:T:2008:444, paragraph 61). It follows that the Board of Appeal did not have to take the reality of the market into account in the context of the comparison of the goods at issue.

65 On the basis of the foregoing, it is necessary to uphold all of the Board of Appeal’s findings relating to the comparison of the goods at issue, with the exception of the finding relating to the identity of the ‘casino fittings, namely roulette tables, roulette wheels’ in Class 28 covered by the mark applied for and the ‘games’ covered by the earlier mark, which are similar to each other.

66 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. 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 this 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 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).

67 Furthermore, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment in OHIM v Shaker, cited in paragraph 66 above, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments in OHIM v Shaker, cited in paragraph 66 above, EU:C:2007:333, paragraph 42, and of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment in Nestlé v OHIM, EU:C:2007:539, paragraph 43).

68 In the present case, the Board of Appeal, first of all, examined the distinctive and dominant elements of the signs at issue. It found, in paragraph 25 of the contested decision, that the word element ‘joker’, in spite of its weak distinctive character in the context of the goods compared, was the dominant element of the earlier mark on account of the fact that it took up the largest part of that mark and that the figurative elements in that mark were simply decorative or laudatory, in the case of the white cross, or banal, in the case of the ‘®’ symbol. As regards the mark applied for, the Board of Appeal took the view, in paragraph 26 of the contested decision, that the most distinctive elements in that mark were the word elements ‘hot’ and ‘joker’ and that its dominant elements were the aforementioned word elements and the picture of the face of a character which could be perceived as that of the Joker in the well-known Batman films and comics.

69 Next, the Board of Appeal compared the signs at issue visually, phonetically and conceptually.

70 The Board of Appeal found, in paragraph 27 of the contested decision, that there was a low degree of visual similarity between the marks at issue, inasmuch as, in spite of their differences, they had the word element ‘joker’ in common. Phonetically, the Board of Appeal found, in paragraph 28 of the contested decision, that there was an average degree of similarity between the marks at issue. In that regard, the Board of Appeal pointed out that the word element ‘joker’ in the earlier mark was completely reproduced in the mark applied for HOT JOKER and that it was highly unlikely that the ‘®’ symbol in the earlier trade mark would be pronounced. The Board of Appeal also took the view that the fact that the word element ‘hot’ would immediately be perceived as a mere qualifier of the word element ‘joker’ diminished the phonetic difference that it introduced into the context of the overall comparison of the signs at issue. Conceptually, the Board of Appeal pointed out, in paragraph 29 of the contested decision, that there was an average degree of similarity between the marks at issue on account of the presence in both of them of the concept of ‘joker’, which has, inter alia, connotations evoking card games and a character in the Batman films. It found that that overlap was not significantly counteracted by any other elements in the marks at issue.

71 Those assessments and findings on the part of the Board of Appeal are not marred by error. They are not, moreover, called into question by the applicant’s arguments.

72 The applicant submits that the word element ‘joker’ must not be taken into account when comparing the signs at issue, on the ground that it is not distinctive in respect of ‘games of chance’, and that the remaining elements of the signs are clearly not similar. In support of its claim, the applicant maintains that, in the games of chance and entertainment sector, many signs containing the word element ‘joker’ coexist, which proves that that word element is not capable of distinguishing the commercial origin of the abovementioned goods. The applicant also submits that the word ‘joker’ is descriptive of a kind of lottery game in the whole of the European Union, and also in France.

73 Furthermore, the applicant maintains that, even assuming that the word element ‘joker’ has to be taken into account, the marks at issue cannot be regarded as similar. In that regard, the applicant submits that the word element ‘hot’ has no meaning in French, that it is placed at the beginning of the mark applied for and that it is illustrated by flames. In its view, that element is very important in the perception that the French public will have of that mark. It maintains that in the light of the weak distinctive character of the word element ‘joker’, the word element ‘hot’ creates the unique impression of the mark applied for.

75 First of all, the applicant’s claim that the word element ‘joker’ should not have been taken into account in comparing the marks at issue contravenes the principle that the comparison of the signs must relate to the signs in their entirety and it is only if a component of a sign is negligible that it may be excluded from the comparison (see judgment in OHIM v Shaker, cited in paragraph 66 above, EU:C:2007:333, paragraphs 41 and 42). It follows that, even if the word element ‘joker’ were devoid of any distinctive character, as the applicant maintains, the Board of Appeal would, nevertheless, be required to take it into account in comparing the signs. The applicant does not maintain that that word element, which is common to the signs at issue, is negligible and it is apparent from the findings in paragraphs 68 to 71 above that that is not the case.

76 Furthermore, as EUIPO submitted before the General Court, clarifying, in that regard, the reasoning of the Board of Appeal in paragraph 24 of the contested decision, the Board of Appeal could not deny that the word element ‘joker’, and, as a result, the earlier mark as a whole, had any distinctive character because in so doing it would deprive that earlier mark of any real scope of protection, which would contravene the system of the coexistence of EU trade marks and national trade marks established by the EU legislature (see, to the effect, judgment of 24 May 2012 in Formula One Licensing v OHIM, C‑196/11 P, ECR, EU:C:2012:314, paragraphs 40 to 47).

77 In any event, it must be noted that the word element ‘joker’ is not devoid of any distinctive character in the context of the comparison of the signs at issue and that the applicant’s arguments, set out in paragraph 72 above, are not capable of showing that that element would, for the relevant French public, be descriptive in respect of games of chance or lotteries.

78 Next, as regards the applicant’s alternative argument (see paragraph 73 above), it is obvious that the word element ‘hot’ does not create the unique impression of the mark applied for, in the light, in particular, of the presence of the word element ‘joker’, which cannot be overlooked.

79 A global assessment of the likelihood of confusion 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 those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and 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 74).

80 In the present case, in the light of, first, the identity or similarity of the goods under comparison and, secondly, the similarity of the signs at issue, the Board of Appeal was right to find, in paragraph 30 of the contested decision, that there is a likelihood of confusion between the marks at issue, in spite of the high level of attention of the professionals in the casinos and amusement arcades sector, who are part of the relevant public (see paragraph 45 above).

81 That finding is not called into question by the applicant’s argument that the contested decision does not comply with both the judgments of the Bundespatentgericht (Federal Patents Court, Germany) and EUIPO’s previous decision-making practice, in infringement of the principles of equal treatment and of sound administration.

82 As regards the reliance on the judgments of the Bundespatentgericht, it is sufficient to bear in mind that the EU trade mark regime is autonomous and that the legality of decisions of the Boards of Appeal is to be assessed solely on the basis of Regulation No 207/2009, with the result that EUIPO or, if an action is brought before it, the General Court, are not required to come to the same conclusions as those arrived at by national authorities or courts in similar circumstances (see, to that effect, judgments of 12 January 2006 in Deutsche SiSi-Werke v OHIM, C‑173/04 P, ECR, EU:C:2006:20, paragraph 49, and of 23 January 2014 in Coppenrath-Verlag v OHIM — Sembella (Rebella), T‑551/12, EU:T:2014:30, paragraph 61 and the case-law cited).

83 As regards the reliance on the previous decisions of the adjudicating bodies of EUIPO, it must be borne in mind that EUIPO is required to adopt its decisions on the basis of the circumstances of each specific case and is not bound by previous decisions taken in other cases. The legality of the decisions of the Board of Appeal must be assessed solely on the basis of Regulation No 207/2009 and not on the basis of a previous decision-making practice of those boards. Furthermore, in its review of legality, the Court is not bound by the decision-making practice of EUIPO (see judgment of 12 March 2014 in Borrajo Canelo v OHIM — Tecnoazúcar (PALMA MULATA), T‑381/12, EU:T:2014:119, paragraph 43 and the case-law cited).

84 It must be stated that the decisions of EUIPO on which the applicant relies are part of factual contexts which are different from the factual context of the contested decision. More specifically, the decision of the Opposition Division of 30 July 2007 in opposition No B 883 688, which is relied on by the applicant, related to the comparison of ‘gymnastic and sporting articles’ (‘Turn- und Sportartikel’) and ‘games and playthings’ (‘Spiele, Spielzeug’). However, in the present case, the goods concerned do not include ‘gymnastic and sporting articles’, with the result that the abovementioned decision of the Opposition Division, in which it was found that there was no similarity between ‘gymnastic and sporting articles’ and ‘games’, is not relevant. The other decisions relied on by the applicant were given by the adjudicating bodies of EUIPO when they ruled on the distinctive character of the term ‘lotto’. However, in the present case, the term which is the subject of an assessment as to its inherent distinctive character is the word element ‘joker’, which makes those decisions of EUIPO on which the applicant relies irrelevant in the present case.

86 The applicant submits that the Board of Appeal infringed Article 76(1) of Regulation No 207/2009, first, by finding that the applicant had not shown that the relevant public knew that the word element ‘joker’ was the commercial name of a game of chance in some European Union countries and, secondly, by referring, without evidence, to the knowledge that the French public has of the character of the Joker in the Batman films and comics.

‘In proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.’

89 As regards the first part of the line of argument, it must be pointed out that the Board of Appeal was right to reject, as has been held in paragraphs 75 to 77 above, the applicant’s argument that the word element ‘joker’ was devoid of any distinctive character in respect of games of chance. In support of that conclusion, the Board of Appeal relied, in paragraph 24 of the contested decision, on the fact that, according to the case-law of the Courts of the European Union, it could not cast doubt on the registrability of the earlier mark from an absolute grounds for refusal of registration perspective. It also relied on the fact that the word element ‘joker’, although it refers, in certain card games, to a card that has a value given to it by the person holding it, according to the definition provided by the French Dictionnaire Larousse de poche, does not, however, have any meaning for games like, inter alia, bingo, roulette or bridge. It is in that context that the Board of Appeal stated, in addition, that the applicant had not shown that the relevant French public knew that the word element ‘joker’ is the commercial name of a game of chance in some European Union countries.

90 It follows that that latter statement by the Board of Appeal — the disputed statement — was only one of a number of other observations which it made to justify its finding relating to the attribution of some distinctive character, albeit weak, to the word element ‘joker’. The first part of the applicant’s line of argument is therefore ineffective. It must also be pointed out that the Board of Appeal did not examine the facts of its own motion, in infringement of Article 76(1) of Regulation No 207/2009, but raised against the applicant the fact that it had not discharged the burden of proof resting on it.

91 As regards the second part of the applicant’s line of argument, it must be noted that, as is apparent from paragraphs 24 and 26 of the contested decision, the Board of Appeal referred to the alleged fact that the relevant public was aware of the character of the Joker who appears in the Batman films and comics and would perceive the word element ‘joker’ as referring to that character, in order to reject the applicant’s argument that that word element was descriptive of games of chance.

92 It follows that the second part of the applicant’s line of argument is also ineffective inasmuch as the Board of Appeal’s reference to the French public’s awareness of the character of the Joker was only one of a number of elements which confirmed the Board of Appeal’s finding that the word element ‘joker’ was not descriptive in respect of games of chance.

93 In any event, as EUIPO correctly notes, the Board of Appeal was entitled, without infringing Article 76(1) of Regulation No 207/2009, to refer, without having to establish its accuracy, to the relevant French public’s awareness of the character of the Joker who appears in the Batman films and comics, inasmuch as it was entitled to take the view that it was a well-known fact that those films and comics were famous and widely distributed throughout France.

94 It is apparent from the case-law that the restriction, by Article 76(1) of Regulation No 207/2009, of the factual basis of the examination by EUIPO does not preclude it from taking into consideration, in addition to the facts expressly put forward by the parties to the opposition proceedings, facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources (judgments of 22 June 2004 in Ruiz-Picasso and Others v OHIM — DaimlerChrysler (PICARO), T‑185/02, ECR, EU:T:2004:189, paragraph 29, and of 20 April 2005 in Atomic Austria v OHIM — Fabricas Agrupadas de Muñecas de Onil (ATOMIC BLITZ), T‑318/03, ECR, EU:T:2005:136, paragraph 35). Furthermore, it is apparent from the case-law that the various bodies of EUIPO are not obliged to establish in their decisions the accuracy of facts which are well known (see judgment of 19 June 2014 in Kampol v OHIM — Colmol (Nobel), T‑382/12, EU:T:2014:563, paragraph 58 and the case-law cited).

95 In the present case, the applicant confined itself to invoking Article 76 of Regulation No 207/2009 in a general and abstract manner, but did not provide any evidence to dispute the fame and wide distribution of the Batman films and comics in France and, consequently, the relevant French public’s awareness of the character of the Joker.

96 On the basis of the foregoing, the third plea in law must be rejected and the action must therefore be dismissed in its entirety.

97 Under Article 134(1) 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.

98 Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the forms of order sought by EUIPO and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Novomatic v EUIPO - Granini France (HOT JOKER) (Judgment) [2016] EUECJ T-326/14 (19 April 2016) URL: http://www.bailii.org/eu/cases/EUECJ/2016/T32614.html Cite as: ECLI:EU:T:2016:221, [2016] EUECJ T-326/14, EU:T:2016:221

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