OPPOSITION DIVISION
OPPOSITION No B 2 815 259
Today's Wholesale Services Limited, 3 Carolina Court Wisconsin Drive, Doncaster
DN4 5RA, United Kingdom (opponent), represented by Haseltine Lake LLP, Redcliff
Quay 120 Redcliff Street, Bristol BS1 6HU, United Kingdom (professional
representative)
a g a i n s t
Royal Star International DMCC, Jumeirah Lakes Towers, Unit No: 803, Dubai,
United Emirates (applicant), represented by Majestic Holding Limited, Mustafa
Bicer, Schaanerstrasse 35, 9490 Vaduz, Liechtenstein (professional representative).
On 20/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 815 259 is upheld for all the contested services.
2. European Union trade mark application No 15 600 455 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the services of European Union trade
mark application No 15 600 455 for the figurative mark .
The opposition is based on European Union trade mark registration No 10 265 155
for the word mark ‘Day Today’ as well as on the United Kingdom’s non-registered
word trade mark ‘DAY TODAY’. The opponent invoked Article 8(1)(b), Article 8(4) and
(5) EUTMR.
LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the
goods or services in question, under the assumption that they bear the marks in
question, come from the same undertaking or, as the case may be, from
economically linked undertakings. Whether a likelihood of confusion exists depends
Decision on Opposition No B 2 815 259 page: 2 of 8
on the appreciation in a global assessment of several factors, which are
interdependent. These factors include the similarity of the signs, the similarity of the
goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs, and the relevant public.
a) The services
The services on which the opposition is based are the following:
Class 35: Advertising; marketing, public relations, publicity and promotional
services; business management; business administration; office
functions; advertising and business services provided on-line from a
computer database or from the Internet; marketing support services,
namely advertising services, provision, dissemination and updating of
promotional materials, rental of publicity materials, marketing research
and sales promotion for others; retail and wholesale services,
including via the Internet, mail order, electronic and printed
publications, websites or other communication networks, connected
with the sale of foodstuffs, vitamins and minerals, diabetic and
medicated foodstuffs, alcoholic, low-alcohol and non-alcoholic
beverages, tobacco products, beauty products, cosmetics, perfumery,
healthcare and medicinal products, toiletries, machines for household
use, hand tools, power tools, building materials, oils and fuels,
fireworks, optical goods, cameras, apparatus for recording,
transmission or reproduction of sound or images, computer software
and hardware, computer equipment and accessories, domestic
electrical and electronic equipment, white goods, electronic games,
CDs, DVDs, optical disc storage media, vehicles and bicycles,
painting and decorating equipment, gardening equipment, garden
furniture and accessories, cleaning products and equipment, printed
matter, stationery, books, magazines, publications, goods made of
paper or cardboard, greeting cards, lamps and lighting, household
containers and utensils, kitchenware, glassware and dinnerware,
ornaments, home accessories, furnishings, bed linen, table linen,
cushions, curtains, carpets, mats, matting, textiles, hair accessories ,
sunglasses and spectacles, haberdashery, toys, games and
playthings, novelties, festive decorations, gymnastic and sporting
articles and equipment, animal food and supplements, animal litter,
pet care products, agricultural, horticultural and forestry products and
grains, natural and artificial plants and flowers; information, advisory
and consultancy services relating to all the aforesaid services; all the
aforesaid services also provided on-line from a computer database or
from the Internet.
The contested services are the following:
Class 35: Business analysis, research and information services; business
assistance, management and administrative services; commercial
trading and consumer information services; advertising, marketing and
promotional services.
An interpretation of the wording of the list of services is required to determine the
scope of protection of these services.
Decision on Opposition No B 2 815 259 page: 3 of 8
The term ‘namely’, used in the opponent’s list of services to show the relationship of
individual goods and services to a broader category, is exclusive and restricts the
scope of protection only to the services specifically listed.
The relevant factors relating to the comparison of the goods or services include, inter
alia, the nature and purpose of the goods or services, the distribution channels, the
sales outlets, the producers, the method of use and whether they are in competition
with each other or complementary to each other.
Advertising, marketing and promotional services; business management and
administrative services are identically contained in both lists of services (including
synonyms).
Business management are services intended to help in the management of the
business affairs or commercial functions of an industrial or commercial enterprise.
These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that
may be useful in the ‘management of a business’, such as how to allocate financial
and human resources efficiently, how to improve productivity, how to increase market
share, how to deal with competitors, how to reduce tax bills, how to develop new
products, how to communicate with the public, how to do marketing, how to research
consumer trends, how to launch new products, how to create a corporate identity,
etc.
Consequently, the contested business analysis and research; business assistance
are included in the broad category of the opponent’s business management.
Therefore, they are identical.
The contested business information services include, as a broader category the
opponent’s information services relating to business management. Since the
Opposition Division cannot dissect ex officio the broad category of the contested
services, they are considered identical to the opponent’s services.
The contested commercial trading includes, as a broader category, the opponent’s
retail and wholesale services, including via the Internet, mail order, electronic and
printed publications, websites or other communication networks, connected with
various goods. Since the Opposition Division cannot dissect ex officio the broad
category of the contested services, they are considered identical to the opponent’s
services.
The contested commercial information services are services that aim to help
consumers make better choices in the marketplace and get help with consumer
complaints by giving information on quality, purchase locations, and other factors like
the rights of consumers and/or fair trade, upon which, a consumer would make a
purchasing decision. They can also cover topics like product liability, privacy rights,
unfair business practices, fraud, misrepresentation, and other consumer-business
interactions. Consequently, they include, as a broader category, the opponent’s
information, advisory and consultancy services relating to retail and wholesale
services, including via the Internet, mail order, electronic and printed publications,
websites or other communication networks, connected with various goods. Since the
Opposition Division cannot dissect ex officio the broad category of the contested
services, they are considered identical to the opponent’s services.
Decision on Opposition No B 2 815 259 page: 4 of 8
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be
reasonably well informed and reasonably observant and circumspect. It should also
be borne in mind that the average consumer’s degree of attention is likely to vary
according to the category of goods or services in question.
In the present case, the relevant services in Class 35 found to be identical are
directed at the public at large and at business customers with specific professional
knowledge or expertise.
In these circumstances, depending on the price, specialised nature, or terms and
conditions of the purchased services, the degree of attentiveness of the public may
vary from average to high.
c) The signs
Day Today
Earlier trade mark Contested sign
The relevant territory is European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in
question must be based on the overall impression given by the marks, bearing in
mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95,
Sabèl, EU:C:1997:528, § 23).
The earlier mark is a word mark consisting of two verbal elements. In the case of
word marks, it is the words as such that are protected and not their written form.
Therefore, it is irrelevant whether they are presented in upper or lower case letters,
or in a combination thereof.
The contested sign is a figurative mark, comprising three verbal elements ‘DAY TO
DAY’ and three signs, which seem to be Arabic characters. However, the majority of
the relevant public will not understand them as such but perceive them rather as
some figurative elements. All these elements are depicted in red and blue colour
respectively. Because of the whole composition of the contested sign, despite the use
of two colours, it is not unlikely that the space between the words ‘TO’ and ‘DAY’ will
go unnoticed by at least a part of the relevant public.
The common verbal element/s ‘day’, as well as the verbal element ‘today’, eventually
‘to’, are basic English words understood widely throughout the relevant territory.
Either the element ‘day’ or the element ‘today’ of the earlier mark is descriptive,
allusive or otherwise weak for the relevant services, therefore, they are distinctive.
The same applies to their combination, which does not have any concreate or
straightforward meaning as well as to the verbal elements of the contested sign and
their combination, which, if perceived and read as ‘day to day’ means ‘happening
regularly every day (adjective), an ordinary, everyday routine (noun), on a daily basis
(adverb)’.
Decision on Opposition No B 2 815 259 page: 5 of 8
As regards the remaining elements of the contested sign, as already mentioned
above these will be perceived as figurative elements by majority of the relevant
public. These elements are of average distinctiveness in relation to the relevant
services, as they do not describe or evoke any of their characteristics. Nevertheless,
it should be noted that when signs consist of both verbal and figurative components,
in principle, the verbal component of the sign usually has a stronger impact on the
consumer than the figurative component. This is because the public does not tend to
analyse signs and will more easily refer to the signs in question by their verbal
element than by describing their figurative elements (14/07/2005, T-312/03,
Selenium-Ace, EU:T:2005:289, § 37).
Considering the size and position of the elements in the contested sign, it has no
element that could be considered clearly more dominant (visually eye-catching) than
other elements.
Visually, the signs coincide in the sequence of letters ‘D-A-Y-T-O-D-A-Y’, placed
identically at the beginning of both signs, differing in the inclusion of a space between
the letter ‘O’ and the second letter ‘D’ in the contested sign. The marks further differ
in the stylisation, colours and the figurative elements of the contested sign, which
have no counterparts in the earlier mark. The figurative elements, as noted above,
will have less impact on consumers than the verbal elements of the marks.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the syllables ‛day-to-day’, present
identically in both signs. There will be a slight difference in the intonation of the
second syllable in both marks for a part of the English speaking part of the public
which will perceive the contested sign as three verbal elements, ‘day to day’.
However, the remaining part, which will not notice the space between the letter ‘O’
and the letter ‘D’ in the contested sign, will pronounce the two signs identically. The
figurative elements are of no relevance when assessing the aural similarity.
Therefore, the signs are aurally almost identical for a part of the relevant public and
identical for the remaining part.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks while pointing out that the earlier mark as a whole
has no meaning in English. Hence it will be understood as the combination of the two
words with their respective meanings. The contested sign will be understood either
as a combination of the respective words, by the public which understand basic
English words but not more, as a combination of the words ‘day today’ by the public
which will not see the space between the letters ‘O’ and ‘D’ in the contested sign, or
as a phrase as defined above, by the part of the public which has a very good
command of English. In any case, the marks have a certain degree of conceptual
similarity as far as their common element/s ‘DAY’ is concerned.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account
in the global assessment of likelihood of confusion.
Decision on Opposition No B 2 815 259 page: 6 of 8
The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness
but did not file any evidence in order to prove such a claim.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its
distinctiveness per se. In the present case, the earlier trade mark as a whole has no
meaning for any of the services in question from the perspective of the public in the
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
normal.
e) Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the
factors relevant to the circumstances of the case; this appreciation depends on
numerous elements and, in particular, on the degree of recognition of the mark on the
market, the association that the public might make between the two marks and the
degree of similarity between the signs and the goods and services (11/11/1997,
C-251/95, Sabèl, EU:C:1997:528, § 22).
Furthermore, evaluating likelihood of confusion implies some interdependence
between the relevant factors and, in particular, a similarity between the marks and
between the goods or services. Therefore, a lesser degree of similarity between
goods and services may be offset by a greater degree of similarity between the
marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
Moreover, likelihood of confusion covers situations where the consumer directly
confuses the trade marks themselves, or where the consumer makes a connection
between the conflicting signs and assumes that the goods/services covered are from
the same or economically linked undertakings.
In the present case, the services at issue have been found identical and are directed
at the public at large and at the professionals whose degree of attention is deemed
average to high. The earlier mark as a whole has a normal degree of distinctiveness.
The similarities between the signs result from the coincidence in the sequence of
letters ‘D-A-Y-T-O-D-A-Y’, placed identically at the beginning of each sign, differing
only in the inclusion of the space between the letter ‘O’ and second letter ‘D’ in the
contested sign, the stylisation, colours and the figurative elements of the contested
sign. Yet, the figurative elements in the contested sign are not sufficient to
overshadow or to hide the relevant verbal elements, which as seen above, have a
stronger impact on the consumer.
It is true, that according to the case-law, it is inevitable that many words will have the
same number of letters and even share some of them, hence they cannot, for that
reason alone, be regarded as visually similar. However, in the present case, the
visual similarities between the signs lie not in the fact that they have some letters in
common, but in the fact that they coincide in all of their letters, which are in the same
order. In addition, as already pointed out above, a part of the relevant public will not
even notice the space between the words in the contested sign.
Hence, while the differences between the signs are not imperceptible, they are not
sufficient to rule out any likelihood of confusion on the part of the relevant public.
These differences do not allow the consumers to distinguish between the signs in
question safely and therefore the consumers will likely to assume that the relevant
Decision on Opposition No B 2 815 259 page: 7 of 8
services bearing either one or another sign come from the same undertaking or from
economically-linked undertakings.
Account should also be taken of the fact that average consumers rarely have the
chance to make a direct comparison between different marks, but must trust in their
imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik Meyer,
EU:C:1999:323). Even consumers who pay a high degree of attention need to rely on
their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel,
EU:T:2013:605, § 54).
Considering all the above, there is a likelihood of confusion on the part of the public
and therefore the opposition is well-founded on the basis of the opponent’s European
Union trade mark registration No 10 265 155.
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b)
EUTMR, there is no need to further examine the other grounds of the opposition,
namely Article 8(4) and (5) EUTMR.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the
costs to be paid to the opponent are the opposition fee and the costs of
representation, which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Konstantinos MITROU Renata COTTRELL Sigrid DICKMANNS
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 EUTMR, notice of appeal
must be filed in writing at the Office within two months of the date of notification of
this decision. It must be filed in the language of the proceedings in which the decision
subject to appeal was taken. Furthermore, a written statement of the grounds for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
Decision on Opposition No B 2 815 259 page: 8 of 8
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.