Maltese gaming company receives win over EUIPO
The EU General Court delivered a Maltese gaming company with a win yesterday over the European Union Intellectual Property Office ( EUIPO) in a trademark opposition dispute.
In August 2014, Malta-based International Gaming Projects filed an application at the EUIPO to trademark a figurative sign made up of the words ‘Triple Turbo’ in a curved font. The word ‘Triple’ is in green, above the word ‘Turbo’ in red. The ‘o’ is engulfed in flames.
The applied-for trademark fell under classes 9 and 28, covering computer programs and software, and gaming machines and video game machines.
Luxembourg-based gaming company Zitro IP Sàrl filed an opposition against the trademark, based on its registered EU trademark number 13,073,085.
Zitro’s trademark is a figurative sign made up of the word ‘Turbo’ in green, with the ‘o’ represented by a man’s head wearing a helmet.
The goods covered by the trademark fall under classes 9 and 28.
The Opposition Division rejected the opposition on the grounds that there was no likelihood of confusion between the two trademarks for any of the goods concerned.
Following this rejection, Zitro filed an appeal with the EUIPO in January 2016 against the Opposition Division’s decision.
The Fourth Board of Appeal of the EUIPO annulled the Opposition Division’s decision and refused registration of International Gaming Projects’ trademark. The board said that the goods covered by the trademark applied for and those covered by the earlier trademark were identical or similar, and the conflicting signs were visually similar because of the verbal element ‘Turbo’ and the colour green. The board therefore found that there was a likelihood of confusion between the two trademarks.
International Gaming Projects appealed against the decision before the General Court.
In its defence, International Gaming Projects said that there are significant visual, phonetic and conceptual differences between the signs at issue.
International Gaming Projects also submitted that the board “wrongly took the view that the word element ‘Turbo’ had a distinctive character in the earlier mark, whereas that element in fact refers only to the characteristics of the goods covered by that mark”.
In its decision, the General Court said the conflicting signs have a “number of visual differences” based on different typefaces and colours. The court also highlighted that the earlier trademark was made up of one word, while International Gaming Projects’ mark is made up of two words, written in curved letters.
It therefore ruled that the Board of Appeal was wrong to say that the figurative signs were visually similar. The court also said that the phonetic similarity between the trademarks was weak.
Regarding likelihood of confusion, the court said: “In the present case, it has been concluded that the word element ‘Turbo’, which is common to the signs at issue, is of weak distinctive character and will not therefore be regarded as an indication of a commercial origin.”
The court said that the signs at issue are globally different in their overall impressions for the relevant public and that likelihood of confusion between the trademarks must be dismissed.
International Gaming Projects’ plea must be upheld, said the court. Therefore, the contested decision must be set aside.
The EUIPO was told to pay the costs of International Gaming Projects as well as its own. Zitro must bear its own costs.
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