B 3 202 021, Granini France v Euro Games Technology Ltd, EUIPO, 13th March 2025
Key points
Where an element of a mark is non-distinctive for certain goods and/or services, the fact that these may be included in a broader term in the specification does not necessarily mean the mark is non-distinctive for the entire broad term.
The relevant public can be a crucial factor when comparing marks and assessing a likelihood of confusion.
This decision concerns an opposition against an EU designation for ‘Joker Reels’, based on an earlier French trade mark registration for the stylised words JOKER +.
On 29th November 2022, Euro Games Technology Ltd filed an international application designating the EU for ‘Joker Reels’ in classes 9, 28 and 41. On 29th August 2023, Granini France filed an opposition against the designation in its entirety. The opposition was based on a likelihood of confusion with its earlier French registration No 4 549 509 for the stylised words ‘JOKER +’, also in classes 9, 28 and 41.
The arguments
Both parties agreed that the relevant public for assessing the likelihood of confusion were French consumers, as the opposition was based on a national French registration.
The Opponent argued that the word JOKER is the dominant and distinctive element of both marks, and the element that consumers will remember. It submitted that the ‘+’ symbol in its mark is merely laudatory and non-distinctive, and the word ‘Reels’ in the Applicant’s mark will be understood by the relevant French consumers as meaning ‘real’.
On the other hand, the Applicant argued that JOKER has weak distinctiveness for the relevant goods and services, due to its meaning in relation to playing cards. Therefore, the Applicant submitted that the other elements of the marks were significant to the assessment of likelihood of confusion, and the marks only had low similarity overall.
The decision
The EUIPO agreed with the Opponent that JOKER is the element of both marks that consumers will remember. Considering the identity and similarity of the goods and services, a likelihood of confusion was found. Although the EUIPO agreed that JOKER has weak distinctiveness in relation to card games, it was significant that ‘card games’ was not expressly included in the specification of either mark. Even though both specifications contained broader terms relating to ‘games’, which could arguably encompass ‘card games’, this did not mean that JOKER had weak distinctiveness. The EUIPO noted that the broad terms encompassed many other goods and services for which JOKER has no meaning, and therefore it had a normal level of distinctive character.
“‘Card games’ was not expressly included in the specification of either mark”
The fact that the relevant public were French consumers was also influential on the EUIPO’s decision. The EUIPO considered that the word ‘Reels’ would not have any meaning to the average consumer. Considering also the position of ‘Reels’ at the end of the mark (where it is generally accepted that consumers pay less attention), greater emphasis was placed on the word JOKER in the comparison of the marks.
The decision highlights that where an element of a mark is non-distinctive for certain goods or services, the fact that those goods or services may be encompassed by a broader term in the specification does not necessarily mean the element will be considered non-distinctive for the entire broad term. It also demonstrates the importance of the relevant public to the comparison of marks when assessing a likelihood of confusion.
This article was first published in the March/April issue of CITMA Review, the journal of the Chartered Institute of Trade Mark Attorneys (CITMA). For more information on CITMA, please visit citma.org.uk
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