OPPOSITION No B 2 375 601
Dreams Limited, Knaves Beech Business Centre, 14 Davies Way, Loudwater, High Wycombe, Buckinghamshire HP10 9YU, United Kingdom (opponent), represented by Lane IP Limited, 2 Throgmorton Avenue, London, EC2N 2DG, United Kingdom (professional representative)
a g a i n s t
Blonic Internet Services S.L., Urbanización Nido del Águila 70, 28260 Madrid/Galapagar, Spain (applicant), represented by Youandlaw, Calle Nuñez de Balboa 120, Edificio Cink, 28006 Madrid, Spain (professional representative).
On 13/06/2017, the Opposition Division takes the following
1. Opposition No B 2 375 601 is partially upheld, namely for the following contested services:
Class 35: Commercial trading and consumer information services.
2. European Union trade mark application No 12 704 151 is rejected for all the above services. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
The opponent filed an opposition against part of the goods and services of European Union trade mark application No 12 704 151 namely against all the services in Class 35. The opposition is based on, inter alia, European Union trade mark registration No 11 424 538. The opponent invoked Article 8(1)(b) EUTMR.
In the notice of opposition, the opponent invokes only Article 8(1)(b) EUTMR as the ground for the opposition.
In its observations of 05/12/2016, the opponent claims that its earlier marks have a reputation, and additionally invokes Article 8(5) EUTMR.
Pursuant to Rule 15(2)(c) EUTMIR, the notice of opposition shall contain the grounds on which the opposition is based, namely a statement to the effect that the respective requirements under Article 8(1), (3), (4) and (5) of the Regulation are fulfilled.
The contents of the notice of opposition and the wording of the explanation of grounds must be carefully analysed with a view to objectively establishing whether the opponent also wants to rely on other grounds that are not expressly mentioned. In the present case, however, the notice of opposition contains no direct or indirect reference to Article 8(5) EUTMR, and no additional documents have been submitted in addition to the notice.
It is not possible to invoke any additional grounds after the expiry of the three-month opposition period, which ended, in the present case, on 10/07/2014. This also follows from the requirement of the adversarial nature of the proceedings and the applicant’s right of defence.
It follows that the opponent’s claim in relation to Article 8(5) EUTMR contained in its observations of 05/12/2016 must be rejected as inadmissible.
That being said, the claimed reputation of the earlier marks and the evidence submitted in that regard will, in principle, have to be taken into account, since enhanced distinctiveness of the earlier marks can be claimed within the period for substantiation of the earlier rights and the submission of further facts and evidence, which ended on 03/12/2016.
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.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 11 424 538.
- The services
The services on which the opposition is based are the following:
Class 35: Retail services relating to the sale of furniture, bedroom furniture, mirrors, beds, water beds, divans, bedsteads, headboards, bedding, pillows, mattresses, open spring and pocket spring mattresses, memory foam and latex mattresses, futons, air cushions and air pillows, air mattresses, sleeping bags, bed casters not of metal, bed fittings not of metal, chairs, armchairs, cabinets, chests of drawers, desks, footstools, cots and cradles, fabrics and textiles for beds and furniture, bed linen, duvets, bed covers, bed blankets, bed clothes, covers for duvets, mattress covers, covers for pillows and pillow cases, covers for cushions, bedspreads, covers for hot water bottles, pyjama cases, furniture coverings of textile, eiderdowns, quilts, parts and fittings for all the aforesaid goods, all provided in a retail furniture and bedding superstore, online via the Internet or other interactive electronic platforms, via mail order or catalogues or by means of telecommunications; information, advisory and consultancy services relating to all of the aforesaid.
The contested services are the following:
Class 35: Commercial trading and consumer information services; Business assistance, management and administrative services; Business analysis, research and information services; Advertising, marketing and promotional services.
Contested services in Class 35
The contested commercial trading involves the transfer of goods and services from one person or entity to another, often in exchange for money and to that extent they overlap with the opponent´s retail services relating to the sale of furniture, bedroom furniture, mirrors, beds, water beds, divans, bedsteads, headboards, bedding, pillows, mattresses, open spring and pocket spring mattresses, memory foam and latex mattresses, futons, air cushions and air pillows, air mattresses, sleeping bags, bed casters not of metal, bed fittings not of metal, chairs, armchairs, cabinets, chests of drawers, desks, footstools, cots and cradles, fabrics and textiles for beds and furniture, bed linen, duvets, bed covers, bed blankets, bed clothes, covers for duvets, mattress covers, covers for pillows and pillow cases, covers for cushions, bedspreads, covers for hot water bottles, pyjama cases, furniture coverings of textile, eiderdowns, quilts, parts and fittings for all the aforesaid goods, all provided in a retail furniture and bedding superstore, online via the Internet or other interactive electronic platforms are also commercial transactions involving the sale and purchase of goods and services. They are, therefore, identical.
The contested consumer information services overlap with the opponent´s information, advisory and consultancy services relating to all of the aforesaid and they are, therefore, identical.
The opponent has protection for commercial trading and consumer information services which are essentially facts needed by consumers when researching, purchasing, or completing a purchase. Examples of consumer information needs include: product attributes (e.g. specification, price, quality standards), expert and consumer opinions, and vendor reputation. The contested business assistance, management and administrative services; business analysis, research and information services; advertising, marketing and promotional services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products etc.
The conflicting services have different purposes. The commercial origin and the distribution channels of these services are also different as companies specialised in commercial administration, in business management or advertising do not usually offer to the public their own retailing services. The opponent’s services are directed at the public at large and the contested services at business customers with specific professional knowledge or expertise. These services are not complementary to the extent that they are not essential for each other. Moreover, they are not in competition. Therefore, these services are dissimilar.
The Opposition Division does not share the opponent´s argument that the contested advertising, marketing and promotional services fall under the category of retail services. The contested services are performed to help running a business. They do not relate to the actual retail of goods but are preparatory or ancillary to the commercialisation of goods. When comparing these contested services with the opponent’s services in Class 35, the Opposition Division finds them dissimilar. The opponent’s services in Class 35 consist of retail services allowing consumers to conveniently satisfy different shopping needs at one stop. The contested services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. They differ in their nature and purpose, they are not in competition and they are not usually offered by the same undertaking.
- 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 found to be identical in Class 35 are directed at the public at large and the degree of attention will be average.
- The signs
Earlier trade mark
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).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The common element ‘DREAMS’ is meaningful in certain parts of the relevant territory, for example, in member states where English is understood. Consequently, the opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public. This word will be associated with a series of images, thoughts and sensations occurring in a person´s mind during sleep as well as referring to delightful, excellent, or exceptionally attractive people or things (e.g. a dream holiday). It does not have any clear and unambiguous meaning in relation to the conflicting services from the relevant public´s perspective and is, therefore, distinctive.
In the contested sign, the word ‘Handmade’ is commonly used in commerce to denote that a product is made by hand, not by machine The combination of the words ‘Handmade’ and ‘dreams’ do not belong together naturally in the field of the relevant services but give rise to an allusive expression, meaning that something is going to be made by hand which will be delightful, excellent, or exceptionally. For this reason, ‘Handmade’ has a below average degree of distinctiveness.
The stylisation of the words used in the contested sign is merely decorative and will not be perceived as an individual element of the sign, but only as a carrier of the verbal elements
Neither of the marks has any element that could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the verbal element ‘DREAMS’ present in both marks and they only differ in the additional word ‘Handmade’ and the stylisation which is not particularly striking and will be perceived as an ordinary graphical means of bringing the verbal element to the attention of the public.
Therefore, the signs are visually similar to an average degree.
Aurally, the signs coincide in the sound of the word ‘DREAMS’ present in both signs. They only differ in the pronunciation of the additional word ‘Handmade’ of the contested sign.
Therefore, the signs are similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.
As both signs will be associated with a similar meaning on account of the word ‘DREAMS’, the signs are conceptually similar to an average degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
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 (see below in ‘Global assessment’).
Consequently, the assessment of the distinctiveness of the earlier mark will rest in its distinctiveness per se. In the present case, the earlier mark 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 average.
- 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).
In the present case, the services under comparison have been found to be partly identical and partly dissimilar and the signs at issue are visually, phonetically and conceptually similar to an average degree from the perspective of the English-speaking part of the public.
Account is 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, EU:C:1999:323, § 26).
Moreover, likelihood of confusion covers situations where the consumer directly confuses the trademarks themselves, or where the consumer make a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. In the case at hand it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 11 424 538. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark.
The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.
Since the opposition is partially 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.
Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to the contested services found dissimilar to the opponent’s services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
The opponent has also based its opposition on the following earlier trade marks:
- European Union trade mark registration No 11 582 764 for the figurative mark ,
- European Union trade mark registration No 10 841 203 for the word mark ‘JUNIOR DREAMS’,
- United Kingdom trade mark registration No 2 612 978 for the word mark ‘GREEN DREAMS’.
The other earlier rights invoked by the opponent cover the same or a narrower scope of the services. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
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.