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FRIDAY, 29 JANUARY 2016
General Court: can Simba have the monopoly over "playthings"?

In Case T-687/14, the General Court confirmed OHIM's decision that Simba might stay "king of the jungle" for toys and playthings, albeit not exclusively for a lion…

The following opposition was upheld by both OHIM and the General Court:

Novomatic AG - Applicant

Simba Toys GmbH & Co. KG -earlier German mark

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Class 28'vending machines and gambling machines, exclusively for commercial use in casinos and amusement arcades, or games of chance, with or without payment of winnings via the Internet or telecommunications networks , gambling with or without payment of winnings for use in telecommunications apparatus; slot machines, housings for slot machines, vending machines and gaming machines, with the exception of children's play.

Class 28- Playthings, except stuffed animals

 

First,  the request for proof of genuine use of the earlier mark was admissible and the evidence submitted by the opponent permitted to establish such use during the relevant period, ie from April 2006 to April 2011 for products covered by the earlier mark. 

Second, OHIM had found that all the applied for goods were identical to the earlier goods in Class 28. The General Court disagreed, finding that the BoA had used an overly broad definition of th" playthings" and held that the gaming machines and games of chance via telecommunications means were not identical to the "toys except stuffed animals" but had some similarity (par. 47-70)

Third, the marks in question contained the distinctive element 'Simba', which has no meaning for the relevant German consumer;  the element 'african' of the mark applied for had a weak distinctive character as the item "Simba" as it would be understood by the German public as an indication of African descent and, thirdly, on the one hand the figurative element of the earlier mark consisting of a representation of an elephant, is secondary and, secondly, that the figurative elements of the mark consisting of the representation of a head lion, a configuration of the background and stylized word elements, failed to divert the attention of the consumer from the identical word element 'Simba', since they were not striking or by their size or by their positioning at the point of being able to dominate the overall impression of the mark, or they were not distinctive. 

Thus, visually, even if the marks were distinguished by their length and their figurative elements, there was an average similarity between them. Regarding the comparison of the marks on the phonetic level, the similarity was more important, since the graphics were not considered. Regarding the comparison of the marks conceptually, the BoA had found that the signs in question have no meaning in German, a conceptual comparison of the marks was not possible. However, the Court held that the consumer would understand the meaning of African close to the German equivalent word. Nevertheless overall¸ the GCconsidered that the difference in concept between the conflicting marks does not neutralize the similarity between them visually and phonetically.

Fourth, gaming items consumers would show a normal degree of attention, while the level of attention of consumers in the field of professional gambling was high. Thus, given the low degree of attention of consumers of gaming items, it was appropriate to consider the level of attention of these when assessing the likelihood of confusion. 

Fifth, the relevant public would perceive the word 'Simba', which is identical to the marks, as an autonomous and distinctive element believe that the goods in question come from economically linked undertakings. 

Posted by: Laetitia Lagarde @ 13.01
Tags: General court, likelihood of confusion, simba, toys, gambling,,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.


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