Decision Nº O/325/20 from Intellectual Property Office - (Trade market), 16 June 2020
| Judge | Mrs J Pike |
| Date | 16 June 2020 |
| Registration Number | UK00003365166 |
| Administrative Decision Number | O/325/20 |
| Court | Intellectual Property Office (United Kingdom) |
O/325/20
TRADE MARKS ACT 1994
IN THE MATTER OF APPLICATION NO. 3365166
IN THE NAME OF SIMUNIX LTD FOR THE TRADE MARK
(A SERIES OF TWO MARKS)
IN CLASSES 9 AND 35
AND
THE OPPOSITION THERETO UNDER NUMBER 416024
BY
TAKE-TWO INTERACTIVE SOFTWARE, INC.
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Background
1. On 7 January 2019, Simunix Ltd (“the applicant”) applied for the series of two trade
marks shown on the cover page of this decision, for the following goods and services:
Class 9: Data processing software; Computer software for the processing of
positioning data.
Class 35: Data processing; Administrative data processing; Computer data
processing.
2. The trade mark application was published for opposition purposes in the Trade
Marks Journal on 18 January 2019. It was opposed under sections 5(2)(b), 5(3) and
5(4)(a) of the Trade Marks Act 1994 (“the Act”) by Take-Two Interactive Software, Inc.
(“the opponent”), relying upon the following two earlier trade mark registrations for its
grounds under sections 5(2)(b) and 5(3):
(i) European Trade Mark (“EUTM”) 7364458
Date of filing: 3 November 2008; completion of registration procedure: 11 March 2013.
Class 9: Computer game programs and software, including programs and software
on recorded media for, and delivered digitally to, personal computers, video game
consoles, handheld computing devices, mobile computing devices, and other
computing devices.
Class 16: Printed matter, including booklets, pamphlets, and manuals in the field of
video games.
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Class 41: Entertainment; production and distribution of motion pictures; provision of
on-line entertainment; providing on-line computer games and/or on-line video games;
providing information on entertainment in the field of computer games and video
games; entertainment services, namely, providing a website featuring computer
games, video games, and gaming via a global computer network and other
communication and wireless networks; providing a website featuring news,
enhancements, information and other multimedia materials regarding computer
games, video games and gaming.
Class 42: Design and development of multimedia applications for entertainment
purposes; design and development of computer games, video games and software for
entertainment purposes; computer programming services.
(ii) EUTM 3556172
Date of filing: 26 November 2003; completion of registration procedure: 27 April 2005.
Class 9: Computers; computer hardware, computer software, computer games, video
games, electronic games, computer programmes; discs; cassettes; coin, card or
counter operated arcade game machines and amusement apparatus; parts and fittings
for all the aforesaid goods.
Class 16: Printed matter; printed manuals; leaflets; newsletters; pamphlets; posters;
brochures; hint books; packaging materials; promotional printed matter.
Class 28: Games and playthings; computer games; electronic games; amusement
apparatus, parts and fittings for all the aforesaid goods.
3. The opponent relies upon all the goods and services of its earlier registrations,
which it states it has put to genuine use. It claims that there is a likelihood of confusion
under section 5(2)(b), also alleging under section 5(3) that the identity or similarity
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