OPPOSITION No B 2 773 540

dm-drogerie markt GmbH + Co. KG, Carl-Metz-Str. 1, 76185 Karlsruhe, Germany (opponent), represented by Lemcke, Brommer & Partner Patentanwälte Partnerschaft mbB, Siegfried-Kühn-Straße 4, 76135 Karlsruhe, Germany (professional representative)

a g a i n s t

Shaoqing Jiang, No. 23 Gongdou, Citai Village, Donghu Town, Lianjiang County, Fujian, People’s Republic of China (applicant), represented by José Izquierdo Faces Iparraguirre, 42 – 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 21/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 773 540 is upheld for all the contested goods.

2.        European Union trade mark application No 15 569 841 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 569 841. The opposition is based on European Union trade mark registration No 11 654 456. The opponent invoked Article 8(1)(b) 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 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.

1. The goods

The goods on which the opposition is based are the following:

Class 3:        Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices; Scouring solutions; Make-up removing preparations; Aloe vera preparations for cosmetic purposes; Antiperspirants [toiletries]; Aromatics [essential oils]; Breath freshening sprays; Ethereal essences; Ethereal oils; Eyebrow cosmetics; Eyebrow pencils; Bath salts, not for medical purposes; Cosmetic preparations for baths; Balms other than for medical purposes; Beard dyes; Mustache wax; Pumice stone; Skin whitening creams; Bleaching preparations [decolorants] for cosmetic purposes; Laundry bleach; Polish for furniture and flooring; Floor wax; Deodorants for pets; Deodorants for human beings or for animals; Disinfectant soap; Deodorant soap; Detergents other than for use in manufacturing operations and for medical purposes; Scented wood; Sachets for perfuming linen; Scented water; Depilatories; Depilatory wax; Scale removing preparations for household purposes; Colorants for toilet purposes; Color-removing preparations; Cosmetic dyes; Greases for cosmetic purposes; Degreasers other than for use in manufacturing processes; Stain removers; Laundry glaze; Starch glaze for laundry purposes; Smoothing preparations [starching]; Hair dyes; Hair spray; Hair lotions; Cosmetic creams; Cosmetic preparations for skin care; Henna [cosmetic dye]; Adhesives for affixing false hair; Adhesives for cosmetic purposes; Adhesives for affixing false eyelashes; Cosmetics; Cosmetic kits; Cosmetic pencils; False nails; False eyelashes; Lacquer removing preparations; Leather bleaching preparations; Waxes for leather; Leather preservatives [polishes]; Lip glosses; Lipsticks; Floor wax removers [scouring preparations]; Lotions for cosmetic purposes; Air fragrancing preparations; Massage gels other than for medical purposes; Medicated soap; Cloths impregnated with a detergent for cleaning; Preparations for unblocking drain pipes; Preparations to make shiny the leaves of plants; Douching preparations for personal sanitary or deodorant purposes [toiletries]; Mouth washes, not for medical purposes; Nail art stickers; Nail polish; Nail care preparations; Soda lye; Neutralizers for permanent waving; Oils for toilet purposes; Oils for cosmetic purposes; Oils for cleaning purposes; Hair waving preparations; Oils for perfumes and scents; Perfumery; Perfumes; Polishing creams; Polishing preparations; Denture polishes; Pomades for cosmetic purposes; Potpourris [fragrances]; Dry-cleaning preparations; Furbishing preparations; Shaving preparations; Shaving soap; Shaving stones [astringents]; After-shave lotions; Fumigation preparations [perfumes]; Joss sticks; Windscreen cleaning liquids; Cleansing milk for toilet purposes; Cleaning preparations; Preparations for cleaning dentures; Rust removing preparations; Cosmetic preparations for slimming purposes; Grinding preparations; Abrasive paper; Make-up; Make-up preparations; Make-up powder; Emery paper; Beauty masks; Shoe cream; Shoe polish; Shoe wax; Antiperspirant soap; Soaps; Soap for foot perspiration; Shampoos; Sunscreen preparations; Sun-tanning preparations [cosmetics]; Laundry starch; Wallpaper cleaning preparations; Turpentine, for degreasing; Cosmetics for animals; Shampoos for pets; Toiletries; Cakes of soap; Toilet water; Dry shampoos; Drying agents for dishwashing machines; Tissues impregnated with cosmetic lotions; Laundry blueing; Laundry soaking preparations; Laundry preparations; Hydrogen peroxide for cosmetic purposes; Cotton wool for cosmetic purposes; Cotton sticks for cosmetic purposes; Fabric softeners for laundry use; Cosmetic preparations for eyelashes; Mascara; Dental bleaching gels; Dentifrices; Decorative transfers for cosmetic purposes.

Class 5:        Sanitary preparations for medical purposes; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides; Antiseptics; Antiseptic cotton; Caustics for pharmaceutical purposes; Caustic pencils; Eye-washes; Babies’ diaper-pants; Infant formula; Babies’ diapers; Bath salts for medical purposes; Bath preparations for medical purposes; Bath (Therapeutic preparations for the -); Fibre (Dietary -); Bandages for dressings; Tanning pills; Surgical tissues; Surgical implants [living tissues]; Sanitary towels; Deodorants, other than for human beings or for animals; Deodorants for clothing and textiles; Disinfectants for hygiene purposes; Detergents for medical purposes; Fly catching paper; Haemostatic pencils; Adhesives for dentures; Haemorrhoid preparations; Dry rot fungus (Preparations for destroying -); Adhesive plasters; Remedies for perspiration; Hormones for medical purposes; Corn remedies; Repellents for dogs; Dog lotions; Dog washes; Pants, absorbent, for incontinents; Insecticides; Insect repellents; Personal sexual lubricants; Cooling sprays for medical purposes; Germicides; Compresses; Headache pencils; Solutions for contact lenses; Air purifying preparations; Medicinal hair growth preparations; Medicinal tea; Sea water for medicinal bathing; Milking grease; Headache (Articles for -); Burns (Preparations for the treatment of -); Callouses (Preparations for -); Air deodorising preparations; Douching preparations for medical purposes; Reducing sexual activity (Preparations for -); Preparations for destroying vermin; Sanitary pads; Sanitary pants; Mud for baths; Mud (Medicinal -); Mothproofing preparations; Paper (Mothproof -); Mouthwashes for medical purposes; Nervines; Medicinal oils; Antiparasitic collars for animals; Antiparasitic preparations; Parasiticides; Pharmaceutical preparations for skin care; Sterilising preparations; Fumigating pastilles; Fumigation preparations for medical purposes; Contact lens cleaning preparations; Medicine cases, portable, filled; Ointments for pharmaceutical purposes; Salts for mineral water baths; Soporifics; Serotherapeutic medicines; Panty liners; Sunburn ointments; Sunburn preparations for pharmaceutical purposes; Breast-nursing pads; Tobacco-free cigarettes for medical purposes; Tampons; Tissues impregnated with pharmaceutical lotions; Vermin destroying preparations; Herbicides; Vaginal washes; First-aid boxes, filled; Dressings, medical; Surgical dressings; Absorbent cotton; Wart pencils; Wadding for medical purposes; Diapers for pets; Incontinence diapers.

Class 35:        Advertising; Business management; Business administration; Office functions; Updating of advertising material; Business inquiries; Business management and organization consultancy; Business management consultancy; Personnel management consultancy; Advisory services for business management; Procurement services for others [purchasing goods and services for other businesses]; Import-export agencies; Professional business consultancy; Accounting; Computerized file management; Publicity agencies; Auctioneering; Transcription; Relocation services for businesses; Business investigations; Compilation of statistics; Commercial information agencies; Commercial information and advice for consumers [consumer advice shop]; Television advertising; Photocopying services; Publication of publicity texts; Commercial or industrial management assistance; Business information; Commercial administration of the licensing of the goods and services of others; Layout services for advertising purposes; Payroll preparation; Marketing; Marketing research; Marketing studies; Opinion polling; Data search in computer files for others; Business research; Public relations; On-line advertising on a computer network; Organization of exhibitions for commercial or advertising purposes; Organization of fashion shows for promotional purposes; Business organization consultancy; Outsourcing services [business assistance]; Employment agencies; Personnel recruitment; Psychological testing for the selection of personnel; Bill-posting; Business management assistance; Presentation of goods on communication media, for retail purposes; Price comparison services; Production of advertising films; Radio advertising; News clipping services; Shop window dressing; Word processing; Secretarial services; Sponsorship search; Systemization of information into computer databases; Telephone answering for unavailable subscribers; Telemarketing services; Organization of trade fairs for commercial or advertising purposes; Dissemination of advertising matter; Writing of publicity texts; Sales promotion for others; Office machines and equipment rental; Arranging subscriptions to telecommunication services for others; Advertising by mail order; Distribution of samples; Direct mail advertising; Document reproduction; Administrative processing of purchase orders; Demonstration of goods; Publicity columns preparation; Business appraisals; Compilation of information into computer databases; Wholesaling, intermediate trading, mail order, catalogue mail order, online trading and retailing, including via the Internet and by means of teleshopping programmes, in the fields of: pharmacy articles, cosmetics and household goods, beauty preparations, toiletries, fuels and motor fuels, goods for the health sector, pharmaceutical articles, veterinary articles, sanitary preparations, medical articles, hand tools, optical goods, electric and electronic goods for household purposes, machines, tools and goods of common metal, construction articles, DIY articles and garden articles, hobby requisites and craft supplies, electrical goods and electronics goods, sound recording carriers and data media, computer equipment, computer peripheral devices, home entertainment products, installations for sanitary purposes, vehicles and vehicle accessories, fireworks, clocks and jewellery, musical instruments, printed matter, stationery, office requisites, bag makers’ goods and saddlery, furnishings and decorative articles, furniture, carpets, tents, awnings, tarpaulins, clothing and clothing accessories, shoes and textile goods, toys, sporting goods, foodstuffs and beverages, agricultural products, horticultural products and forestry products, tobacco products and other luxury foods and alcohol; Administrative processing and organising of mail order for others; Administrative processing of orders as part of a mail order company; Issuing bonus cards (sales promotion); Display of goods for sales promotion; Business management consultancy in relation to strategy, marketing, production, staff and retail sales; Consultancy and information for consumers via customer services, product management and prices on Internet sites for online shopping; Providing and rental of advertising space on the internet; Procurement services for others [purchasing goods and services for other businesses]; Computer-aided data collection at cash registers for retailers; Electronic commerce, namely consumer consultancy via telecommunication networks for advertising and sales purposes; Business management relating to customer loyalty, incentive or promotional schemes; Planning of retail and external trade services with advertising spaces; Presentation of goods; Presentation of goods on communications media for retail purposes; Presentation of goods (for others), for sales purposes; Dissemination of advertising for others via an online communications network on the internet; Sales promotion; Sales promotion by awarding points for using credit cards; Commercial sales promotion; Sales promotion for services (for others) by arranging of advertising; Sales promotion for others provided through the distribution and the administration of privileged user cards; Rental of sales stands; Direct mail advertising; Mail order retail services for clothing accessories; Advertising by mail order; Demonstration of goods for advertising purposes; Publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way; Advertising, including sales promotion for goods and services, for others, by the transmission of advertising materials and the dissemination of advertising messages on computer networks; Presentation of goods; Presentation of goods (for others), for sales purposes; Presentation of goods on communication media, for retail purposes; Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; Administration of the business affairs of retail stores; Retailing of cosmetics in department stores, toiletries, machines for household purposes, hand tools, optical goods, electric and electronic household equipment; retail services relating to stationary; Retailing of clothing and clothing accessories; Retailing of furniture; Retailing of clothing; Retailing of carpets; Retail services of a stationer’s outlet in relation to stationery, printed matter, computer equipment and computer peripheral devices, and home entertainment products; Retailing of groceries; Planning of retail and external trade services with advertising spaces; Presentation of goods on communications media for retail purposes; Business management consultancy in relation to strategy, marketing, production, staff and retail sales.

The contested goods are the following:

Class 3:         Ethereal oils; Polishing powders; Cosmetics for animals; Cosmetics; Incense; Dentifrices; Polishing preparations; Cleaning preparations; Air fragrancing preparations; Facial cleansers.

Class 5:        Medicines for human purposes; Disinfectants for hygiene purposes; Dietetic substances adapted for medical use; Depuratives; Medicines for veterinary purposes; Biocides; Sanitary towels; Wadding for medical purposes; Dental abrasives; Diapers for pets.

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.

Contested goods in Class 3

Ethereal oils, polishing preparations, cosmetics, dentifrices, cleaning preparation, air fragrancing preparations are identically contained in both lists of goods.

The contested incense is included in the broad category of the opponent’s air fragrancing preparations. Therefore, these goods are identical.

The contested facial cleansers include, as a broader category, or overlap with the opponent’s cleansing milk for toilet purposes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

In the same manner, the contested cosmetics for animals include, as a broader category, the opponent’s deodorants for animals. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 5

Disinfectants for hygiene purposes, sanitary towels, wadding for medical, diapers for pets are identically contained in both lists of goods.

The contested medicines for human purposes, dietetic substances adapted for medical use include, as broader categories, or overlap with the opponent’s serotherapeutic medicines, hormones for medical purposes, medicinal tea. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Depuratives are substances that are considered to have purifying and detoxifying effects. They include, as a broader category, the opponent’s fibre (dietary-). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested medicines for veterinary purposes include, as a broader category, the opponent’s antiparasitic preparations. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Biocides are chemical substances or microorganisms intended to destroy, deter, render harmless or exert a controlling effect on any harmful organism by chemical or biological means. They include, as a broader category, or overlap with the opponent’s fungicides, herbicides, insecticides, germicides, parasiticides and preparations for destroying vermin. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested dental abrasives are medicinal substances, such as powders or pastes, used to clean and/or polish teeth. They are similar to the opponent’s dentifrices in Class 3, as these goods have similar purposes (caring for teeth), may have the same producer, target the same public and are offered in the same places (e.g. pharmacies and drug stores).

2. 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 found to be identical or similar are directed at both the public at large and specialists with specific professional knowledge or expertise (e.g. in the medical, veterinary and dietary fields). In light of the nature of the goods in question, the degree of attention will vary from average to high, given the goods’ medical, veterinary or at least health-related purposes.

3. The signs

DM
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).

It should be noted that the earlier mark is a word mark composed of the letters ‘dm’. In the case of word marks, it is the word itself that is protected, not its written form. Therefore, it is irrelevant whether the earlier mark is in lower or upper case letters.

The contested sign is a figurative mark consisting of a highly stylised combination of an upper case letter ‘D’ and a lower case letter ‘m’. The letters are written together without a space between them. The contested sign has no elements that could be considered clearly more dominant (eye-catching) than other elements.

The letters ‘dm’ have no obvious meaning in relation to the goods at issue and are therefore distinctive.

Visually, the signs coincide in the letters ‘dm’. However, they differ in the elaborate stylisation of the letters in the contested sign. Therefore, the signs are visually similar to a lower than average 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 ‘dm’, present identically in both signs. Consequently, the signs are aurally identical.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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.

4. 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case.

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.

5. 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).

In the present case, the goods are identical or similar. The signs are visually similar to a lower than average degree; however, aurally they are identical. The conceptual aspect does not affect the assessment of the similarity between them. The signs have the distinctive element ‘dm’ in common. This element forms the entire earlier mark and plays an independent distinctive role in the contested mark, although the stylisation of the letters in that mark alters how they are perceived to some extent. However, at least a part of the public in the relevant territory would recognise the letters ‘dm’, even though they are highly stylised, in the contested sign. Consequently, there is a likelihood of confusion for part of the relevant public of the European Union, which is sufficient to reject the contested application.

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 654 456. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Loreto URRACA LUQUE

Arkadiusz GORNY

Judit NÉMETH

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be 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 Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.