OPPOSITION DIVISION
OPPOSITION No B 2 720 590
Aston Martin Lagonda Limited, Banbury Road, Gaydon, Warwick CV35 ODB,
United Kingdom (opponent), represented by Lewis Silkin LLP, 5 Chancery Lane,
Clifford’s Inn, London EC4A 1BL, United Kingdom (professional representative)
a g a i n s t
Shenzhen Valuelink E-Commerce Co., Ltd., 2nd two-way Changjiangpu, Heao
community, Henggang Street Office, Longgang District, Shenzhen City 518115,
People’s Republic of China (applicant), represented by GLP S.R.L., Viale Europa
Unita
171, 33100 Udine (UD), Italy (professional representative).
On 08/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 720 590 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 some of the goods of European Union trade
mark application No 15 168 231, namely against all the goods in Classes 9 and 28.
The opposition is based on, inter alia, European Union trade mark registration
No 11 512 803. The opponent invoked Article 8(1)(b) EUTMR.
SUBSTANTIATION
The opponent based its opposition on the following earlier rights:
Trade mark ‘DB9’ well known in the United Kingdom in respect to goods in
Class 12.
Decision on Opposition No B 2 720 590 page: 2 of 8
United Kingdom trade mark registration No 2 648 991 for the mark ‘DB’,
covering goods in Class 28.
United Kingdom trade mark registration No 3 065 272 for the mark DB10,
DB11, DB12, DB13, DB14, DB15 (Series of 6), covering goods in Class 28.
United Kingdom trade mark registration No 3 119 117 for the mark ‘DB’,
covering goods in Classes 9 and 28.
According to Article 76 (1) EUTMR (in the version in force at the time of
commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings
before it the Office will examine the facts of its own motion; however, in proceedings
relating to relative grounds for refusal of registration, the Office is restricted in this
examination to the facts, evidence and arguments submitted by the parties and the
relief sought.
It follows that the Office cannot take into account any alleged rights for which the
opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part), the Office will give the opposing party the
opportunity to submit the facts, evidence and arguments in support of its opposition
or to complete any facts, evidence or arguments that have already been submitted
together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) EUTMIR (in the version in force at the time of
commencement of the adversarial part), within the period referred to above, the
opposing party must also file evidence of the existence, validity and scope of
protection of its earlier mark or earlier right, as well as evidence proving its
entitlement to file the opposition.
In particular, if the opposition is based on a registered trade mark that is not a
European Union trade mark, the opposing party must submit a copy of the relevant
registration certificate and, as the case may be, of the latest renewal certificate,
showing that the term of protection of the trade mark extends beyond the time limit
referred to in paragraph 1 and any extension thereof, or equivalent documents
emanating from the administration by which the trade mark was registered —
Rule 19(2)(a)(ii) EUTMIR (in the version in force at the time of commencement of the
adversarial part).
Furthermore, if the opposition is based on a well-known mark within the meaning of
Article 8(2)(c) EUTMR, the opposing party must submit evidence showing that this
mark is well known in the relevant territory — Rule 19(2)(b) EUTMIR (in the version
in force at the time of commencement of the adversarial part).
Trade mark ‘DB9’ well known in the United Kingdom
As regards earlier mark claimed to be well known in the United Kingdom ‘DB9’, the
notice of opposition was not accompanied by any evidence as regards this earlier
right.
Decision on Opposition No B 2 720 590 page: 3 of 8
On 27/07/2016 the opponent was given two months, commencing after the ending of
the cooling-off period, to submit the abovementioned material. Following a request for
extension of the opponent, this time limit expired on 2/02/2017.
The opponent did not submit any evidence concerning the substantiation of this
earlier right.
According to Rule 20(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part), if until expiry of the period referred to in
Rule 19(1) EUTMIR (in the version in force at the time of commencement of the
adversarial part), the opposing party has not proven the existence, validity and scope
of protection of its earlier mark or earlier right, as well as its entitlement to file the
opposition, the opposition will be rejected as unfounded.
The opposition must therefore be rejected as unfounded, as far as it is based on this
earlier mark.
United Kingdom trade mark registrations No 2 648 991 ‘DB’, No 3 065 272 for
the marks DB10, DB11, DB12, DB13, DB14, DB15 (Series of 6), and No 3 119 117
‘DB’.
In the present case, the notice of opposition was not accompanied by any evidence
as regards the earlier United Kingdom trade mark registrations No 2 648 991 ‘DB’,
No 3 065 272 ‘DB10’, ‘DB11’, ‘DB12’, ‘DB13’, ‘DB14’, ‘DB15’ (Series of 6), and No
3 119 117 ‘DB’, on which the opposition is based.
On 27/07/2016, the opponent was given two months, commencing after the ending of
the cooling-off period, to submit the abovementioned material. Following a request for
extension of the opponent, this time limit expired on 2/02/2017.
The opponent submitted the required evidence on 11/08/2017, that is, only after the
expiry of the abovementioned time limit.
According to Rule 19(4) EUTMIR (in the version in force at the time of
commencement of the adversarial part), the Office will not take into account written
submissions or documents, or parts thereof, that have not been submitted in or that
have not been translated into the language of the proceedings, within the time limit
set by the Office.
According to Rule 20(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part), if until expiry of the period referred to in
Rule 19(1) EUTMIR (in the version in force at the time of commencement of the
adversarial part), the opposing party has not proven the existence, validity and scope
of protection of its earlier mark or earlier right, as well as its entitlement to file the
opposition, the opposition will be rejected as unfounded.
The opposition must therefore be rejected as unfounded, as far as it is based on
these earlier marks.
The assessment of the present opposition will proceed in respect of the earlier
European Union trade mark registration No 11 512 803 ‘DBR1’.
Decision on Opposition No B 2 720 590 page: 4 of 8
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
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 goods
The goods on which the opposition is based are the following:
Class 28: Toy and model passenger cars or racing cars; toy car racing sets;
electronic car and driving games; remote controlled toy and model passenger cars
and parts and fittings therefor.
The contested goods are the following:
Class 9: Navigational instruments; Mobile phones; Personal stereos; Headphones;
Portable media players; Electronic book readers; Video baby monitors; Slide
projectors; Binoculars; Diving suits; 3D spectacles; Pince-nez; Computerized time
clocks with fingerprint recognition; Network communication apparatus; Digital photo
frames.
Class 28: Toy telescope; Toys started by laser; Caps for pistols [toys]; Blocks
(Building-) [toys]; Novelties for parties, dances [party favors, favours]; Parlor games;
rods for fishing; Fish hooks; Toy cars; Electronic toys; Model aircraft; Toy watches;
Toy cameras [not capable of taking a photograph].
Some of the contested goods are identical or similar to goods on which the
opposition is based. For reasons of procedural economy, the Opposition Division will
not undertake a full comparison of the goods listed above. The examination of the
opposition will proceed as if all the contested goods were identical to those of the
earlier mark which, for the opponent, is the best light in which the opposition can be
examined.
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 goods assumed to be identical are directed at the public at
large. The degree of attention is considered to be average.
Decision on Opposition No B 2 720 590 page: 5 of 8
c) The signs
DBR1 DBPOWER
Earlier trade mark Contested sign
The relevant territory is the 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).
Both marks are word marks. The earlier mark consists of the text ‘DBR1’ and the
contested mark consists of the text ‘DBPOWER’.
The earlier mark has no meaning for the relevant public and is, therefore, distinctive.
As to the contested mark, ‘DBPOWER’ bears no meaning as such in the relevant
languages. However, at least the English-speaking part of the relevant public will
most likely single out the component ‘POWER’ in this mark, which will be understood
as, inter alia, ‘the ability or capacity to do something’; ‘energy, especially electricity,
that is obtained in large quantities from a fuel source and used to operate lights,
heating, and machinery’ or ‘great ability to do, act, or affect strongly; vigor; force;
strength’ (information extracted from Collins English Dictionary online edition on
6/11/2017, https://goo.gl/UNfacz), and (if perceived as such) may be seen, by the
English-speaking part of the public, as being allusive of the characteristics of some of
the contested goods, such as navigational instruments, personal stereos, network
communication apparatus in Class 9 and electronic toys in Class 28. On the other
hand, this element is not allusive in respect of other contested goods such as diving
suits in Class 9 and caps for pistols [toys] in Class 28, and is therefore distinctive.
As to the remaining element ‘DB-‘, it will not be associated with any particular
concept by English speaking consumers. However, although allusive, the
distinctiveness of the expression ‘DBPOWER’ as a whole is not called into question.
For the remaining part of the relevant public with no knowledge of English, the
designation ‘DBPOWER’ is a fanciful expression and therefore it is distinctive in
relation to the contested goods.
Visually, the signs coincide in two letters, ‘DB’ placed at the beginning of the signs.
However, they differ in the remainder ‘-R1’ in the earlier mark and ‘POWER’ in the
contested mark. Moreover, the marks differ in their overall structure and length, since
the contested mark is made up of seven letters whereas the earlier mark is a
combination of three letters and one number.
In the view of the above it is concluded that the marks are visually similar to a low
degree.
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territory, the pronunciation of the signs coincides in the sound of the letters
Decision on Opposition No B 2 720 590 page: 6 of 8
‘DB’, present identically at the beginning of both signs and differs in the sound of the
remaining letter and numbers ‘R1’ in the earlier mark and ‘POWER’ in the contested
mark.
Therefore, the signs are aurally similar to a low degree.
Conceptually, as explained above, the component ‘POWER’ in the contested mark
has a meaning for the English speaking public. As to the earlier mark, even if part of
the public will perceived it as a code or an acronym, it will not be associated with any
precise concept. Since one of the signs will not be associated with any meaning, the
signs are not conceptually similar.
For the rest of the public neither of the signs has a meaning as a whole. Since a
conceptual comparison is not possible, the conceptual aspect does not influence the
assessment of the similarity of the signs.
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.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue
of intensive use or reputation.
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 goods 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
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).
The contested goods have been assumed to be identical to the opponent’s goods
and they target the general public with an average degree of attention. The signs are
visually and aurally similar to a low degree and conceptually not similar at least for
part of the public.
The Opposition Division notes that when considering the presence of the component
‘POWER’ in the contested mark, which for part of the public has been deemed
allusive in respect of some of the goods in question, the normally distinctive element
in the contested sign would be the combination of two letters ‘DB’ at the beginning of
the mark. On the other hand, the distinctive designation ‘DBR1’ in the earlier mark is
composed of three letters and one number. It follows that even where less weight
were given to the allusive term ‘POWER’, the distinctive elements ‘DB-’ vs ‘DBR1’,
Decision on Opposition No B 2 720 590 page: 7 of 8
are short elements and the fact that they differ in the additional components ‘R1’ is a
relevant factor to consider, because these additional components, although placed at
the end of the earlier sign, will not go unnoticed by consumers (23/10/2002, T-
388/00, ELS, EU:T:2002:260, by analogy). It follows that, even in what would be the
best-case scenario for the opponent, the relevant consumer will not be led to believe
that the goods under the contested mark come from the opponent or from
undertakings that are economically linked to it.
The conclusion reached above applies equally and more forcefully when taking into
account the case in which ‘POWER’ is not allusive of the characteristics of the goods.
In this case, the differences between the marks are even more striking since the
distinctive designation ‘DBPOWER’ as a whole bears even more prominent
differences to the earlier mark DBR1. In this case, a finding of no likelihood of
confusion becomes even more evident.
The Opposition Division concludes that the significant differences established
between the signs are sufficient to outweigh the similarity between them and are
sufficient to enable the relevant public to safely distinguish between the signs.
Consequently, it is concluded that the average consumer, who, for the purposes of
the assessment of likelihood of confusion, is considered reasonably well informed
and reasonably observant and circumspect, will neither directly confuse the
conflicting signs nor perceive them as coming from the same undertaking or from
economically linked undertakings.
Considering all the above, even assuming that the goods are identical, there is no
likelihood of confusion on the part of the public. Therefore, the opposition must be
rejected.
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 opponent is the losing party, it must bear the costs incurred by the
applicant in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the
applicant are the costs of representation, which are to be fixed on the basis of the
maximum rate set therein.
The Opposition Division
Plamen IVANOV Claudia ATTINAÀ Keeva DOHERTY
Decision on Opposition No B 2 720 590 page: 8 of 8
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
(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.