General Court says that relevant public’s attention is ‘average at best’ when assessing likelihood of confusion relating to games and computer games (so that DUNGEONS is confusingly similar to DUNGEONS AND DRAGONS)
In an intriguing decision delivered earlier this month, the General Court addressed, among other things, the question of the level of attention of the public of games and computer games. It concluded that, even if (most of) the relevant public displays 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 have a level of attention that is ‘average at best’. The likelihood of confusion is therefore to be assessed having regard to the public which displays the lowest level of attention.
Background
In September 2014, Kalypso Media Group filed (the Applicant) sought to register the word mark ’DUNGEONS’ as an EU trade mark (EUTM). The application was for certain goods in Classes 9 (computer game software), 28 (games for amusement arcades and electronic games and coin-operated games, playing cards, toy figurines) and 41 (provision of online computer games and electronic publication services; games on the internet) of the Nice Classification.
In February 2015, Wizards of the Coast LLC (the Opponent) filed a notice of opposition on the basis of its two earlier registered EUTM ‘Dungeons & Dragons’. One of the two earlier registered EUTMs had been registered since November 2009 for certain goods and services in Classes 9 (scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking, life-saving and teaching apparatus and instruments), 28 (toys, games and playthings, gaming machines including slot machines) and 41 (education, entertainment, sporting and cultural activities) of the Nice Classification.
In light of Article 8(1)(b) of Regulation 2017/1001 (EU Trade Mark Regulation (EUTMR)), the Opposition Division held that there was a likelihood of confusion in respect of all goods and services covered by the earlier marks. The applicant appealed the decision to the Fourth Board of Appeal of EUIPO in April 2018.
The Fourth Board of Appeal of EUIPO dismisses the appeal
In assessing the likelihood of confusion, the Board considered that, since the earlier mark was an EUTM, the relevant territory for assessing the likelihood of confusion was that of the EU and all its Member States. Furthermore, the Board endorsed the findings of the Opposition Division regarding the identical and/or similar nature of the goods and services covered by the signs at issue. Following a comparison of the two marks, it also found that, visually and phonetically, the degree of similarity between them was ‘above average’.
The signs at issue were similar to ‘an average degree’ from a conceptual point of view. The inherent distinctiveness of the earlier mark was considered to be average as well. The Board therefore concluded that that there was a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR for all the goods and services covered by the trade mark applied for, at least for the English-speaking part of the relevant public.
Appeal to the General Court
The applicant appealed the Board’s decision arguing – among other things – that the Board had been wrong to consider the level of attention of the relevant public as ‘average at best’. In particular, the relevant public would have a high level of attention in relation to games and computer games. On that market, there are hundreds of games and computer games that are available simultaneously, for which also prices are high. The decision to buy those products is therefore based on the prior gathering of useful information. This would suggest that purchasing habits in relation to games and computer games differ from purchasing habits in relation to actual everyday items.
The General Court’s considerations
The General Court noted that, when assessing the likelihood of confusion, the public with the lowest level of attention must be taken into account.
Considering that the games and computer games covered by the trade marks in question are intended for both a specialised public and the general public, account must be taken of the normally informed and reasonably attentive and prudent public in the EU displaying an average level of attention. In this regard certain factors must be taken into account:
1. The wording of the goods covered by the marks at issue and not the goods actually marketed under those marks
Because the specific arrangements for marketing the goods or services in question may vary over time, these cannot be taken into account for the purposes of a prospective analysis of the likelihood of confusion. Instead, the assessment must be performed in light of the wording of the list of goods or services for which registration is sought, as it appears on the application.
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| I purr-fer winning in poker |
2. The categories ‘games’ and ‘computer games’ cover a fairly large number of different goods that are not considered luxurious or niche and thus reserved for a limited number of people
The Court observed that 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 they are no longer sold merely on ‘focused markets’ but have rather gone ‘mainstream’.
3. Certain game and computer game consumers do not ‘tend’ to buy the goods spontaneously but rather display a high degree of attentiveness
Even if this may be the case, according to the General Court, 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 (eg, when buying the goods as a gift to someone else).
4. The computer and video game industry has shifted ‘from focused markets to mainstream’
According to the General Court, the Board rightfully took into account the specific characteristics of the market for games and computer games. This is because the rules relating to game product development have changed, and the relevant customer circle extends to all age groups, regardless of gender and specific knowledge about the gaming industry. In addition, games are ‘disposable’ products, 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 meant that even if 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’.
The General Court then went on to consider the identity and similarity of the disputed goods and services covered by the signs at issue, the visual and phonetic similarity and the conceptually average similarity of the signs, and the average inherent distinctiveness of earlier mark. It thus dismissed the action and established that that there was a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR.
