Rovio Entertainment Ltd, a well-known global producer of online video games, has obtained a partially favourable decision from the Romanian Trademark Office (OSIM) in opposition proceedings (October 12 2015, summoned on October 16 2015). The decision is important for Rovio as OSIM recognised the reputation of the ANGRY trademark for "online video games" in Romania.
A Romanian company applied for the registration of the trademark ANGRY BITE (M 2013 01326) for goods in Class 30 and services in Class 35 of the Nice Classification.
Rovio filed an opposition against the application based on the following trademarks:
- ANGRY (CTM 010553634) registered for "scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; video games for mobile devices, personal computers, consoles, tablets; electronic game programs; downloadable electronic game programs; electronic game software; computer game programs; downloadable computer game programs; interactive game software; computer operating programs, recorded; computer programs; computer software (recorded); computers; printers for use with computers; data processing apparatus; programs for handheld game devices; cinematographic apparatus; protective carrying cases specially adapted for phones and handheld computers; DVD discs; compact discs; compact disc players; CD-ROM discs; mouse pads; sunglasses; spectacles; eyeglass chains; spectacle cases; contact lenses; containers for contact lenses; wireless phones; mobile telephones and parts and fittings therefor; mobile phone cases or casings; bags, coverings, containers, carriers and holders for mobile telephones and personal computers; headphones; earphones; earphones and microphones/speaker phones for use with mobile telephones; mobile phone straps, cases; stands for portable telephone; antenna caps for portable phone; batteries; battery boxes; battery chargers; digital music downloadable from the Internet; downloadable music files; abacuses; electric devices for attracting and killing insects; audiovisual teaching apparatus; binoculars; calculators; cameras, cinematographic cameras, and parts and fittings therefor; lenses for cameras; capacity measures; motion picture films; animated cartoons; cassette players; electric door bells; electronic pocket translators; fire alarms; flashlights; frames for photographic transparencies; heat regulating apparatus; juke boxes; optical lenses; letter scales; life belts; life jackets; life-saving rafts; life buoys; locks, electric; magnetic data media; magnetic encoded cards; magnetic encoders; magnets; magnifying glasses; measuring apparatus, devices and instruments; microphones; microscopes; neon signs; notebook computers; electronic pens; phonograph records; photocopiers; pocket calculators; projection apparatus; projection screens; radios; record players; remote control apparatus; rulers (measuring instruments); scales; smart cards; smoke detectors; sockets, plugs and other contacts; sound recording apparatus; sound recording discs; sound reproduction apparatus; sound transmitting apparatus; telephones apparatus, receivers, transmitters, wires; telescopes; television apparatus; temperature indicators; theft prevention installations, electric; thermometers; thermostats; video cassettes, video game cartridges; video records; videotapes; video screens; video recorders; word processors; audio and visual apparatus with sing-along devices; pagers, and parts and fittings therefor; pager cases or casings; call indicators for telephones, mobile telephones and pagers; masks worn over the eyes to shield off lights; electronic agendas; electric alarm bells; alarms; bar code readers; barometers; buzzers; electric buzzers; central processing units (processors); chips (integrated circuits); chronographs (time recording apparatus); computer keyboards; computer memories; computer peripheral devices; acoustic couplers; couplers (data processing equipment); optical data media; optical discs; disks (magnetic); divers' apparatus; divers' masks; diving suits; electronic notice boards; electronic pens (visual display units); eyeglass cords; eyepieces; eyeshades; facsimile machines; filters (photography); electric; floppy disks; head cleaning tapes (recording); hygrometers; integrated circuits; intercommunication apparatus; interfaces (for computers); invoicing machines; lens hoods; magnetic tape units (for computers); magnetic tapes; measuring spoons; metronomes; microprocessors; modems; money counting and sorting machines; monitors (computer hardware); monitors (computer programs); mouse (data processing equipment); optical fibres (light conducting filaments); optical glass; optical lenses; parking meters; protractors (measuring instruments); radiotelegraphy sets; radiotelephony sets; scanners (data processing equipment); semi-conductors; slides (photography); sound recording strips; demagnetising apparatus for magnetic tapes; telegraph wires; telegraphs (apparatus); teleprinters; teleprompters; teletypewriters; ticket dispensers; transmitters (telecommunication); ticket dispensers; transmitters (telecommunication); transmitting sets (telecommunication); vacuum gauges; video screens; video telephones; video recorders; whistle alarms; ear plugs for divers; egg timers; goggles for sports; protective helmets for sports; navigation apparatus for vehicles (on board computers); metronomes; electronic publications (downloadable); personal stereos; satellites for scientific purposes; wrist rests for use with computers; electronic circuits and CD-ROMs which enable the recording of automatic playing programs for the use of electronic musical instruments; controllers, joysticks and memory cards for consumer videogame apparatus" in Class 9;
- ANGRY BIRDS (CTM 09861311), registered for products in Classes 3, 14, 18, 20, 21, 24, 25, 27, 29, 30, 32 and 33, and services in Classes 34, 35, 36, 38 and 43; and
- ANGRY BIRDS (CTM 1034096), registered for products in Classes 9, 16 and 28 and services in Class 41.
Rovio's arguments were based mainly on the following:
- the trademarks were similar from a visual, phonetic and verbal point of view (ANGRY v ANGRY BITE and ANGRY BIRDS v ANGRY BITE), and covered similar services and related products;
- there was a risk of confusion, which included a risk of association on the part of consumers;
- the reputation of the ANGRY and ANGRY BIRDS marks increased the risk of confusion, which included a risk of association (see the decision of the Court of Justice of the European Union (ECJ) in Sabel v Puma (Case C-251/95), Paragraph 24); and
- the beginning of a trademark is of greater importance, as it captures the attention of consumers and is more easily remembered (see OHIM's October 26 2007 decision in opposition B 917 866 (EURO FOOD v EUROPEAN FOOD and logo)).
Based on the arguments brought before it, OSIM issued a final decision partially in favour of Rovio, refusing to register the national trademark ANGRY BITE for all the services in Class 35 except "the services linked with the products in Class 9".
OSIM based its decision on:
- the similarity between ANGRY and ANGRY BITE from a phonetical point of view "because of the structure of the verbal elements 'angry' and 'angry bite';
- the visual similarity between the trademarks based on the identical fist part 'angry'; and
- the conceptual similarity between the marks due to the fact that they transmit the same idea to the public - namely, the emotion of being ‘angry’.
OSIM also stated that the services in Class 35 included services that were related to the products in Class 9, and recognised that Rovio had evidenced the reputation of the ANGRY mark for "online video games".
However, the decision is arguable in relation to the following points:
- It considered that the ANGRY BIRDS marks are different from the ANGRY BITE mark; and
- It allowed the services in Class 35 to remain unclearly identified, which is arguably not in line with the common practice that OSIM should follow further to the decisions of the ECJ in IP TRANSLATOR (Case C-307/10), in which the court held that the products and services should be identified clearly and precisely, and in Praktiker (Case C-418/02), and further to OHIM’s harmonised database.
Arguably, the decision of OSIM is of importance, not only for Rovio, but also as a precedent. It is expected that OSIM will take this decision into account in future similar cases.
Andra Musatescu, Andra Musatescu Law & Industrial Property Offices (AMLIP), Bucharest
Andra Musatescu Law & Industrial Property Offices (AMLIP) represented Rovio Entertainment Ltd in this case