D-max | Decision 2646217

Date Published: Sep 22, 2017

OPPOSITION No B 2 646 217

Discovery Communications, LLC., One Discovery Place, Silver Spring, Maryland 20910, United States of America (opponent), represented by Bird & Bird LLP, Carl-Theodor-Str. 6, 40213 Düsseldorf, Germany (professional representative)

a g a i n s t

Dong Huang E-business Co., Ltd., Room 605, Building 5, Xiangcaoyuan, Xinwen Road, Tianyuan District, Zhuzhou Hunan, Peoples’ Republic of China (applicant), represented by Nextmarq, 1 Rue Chabrier, 13100 Aix-en-Provence, France (professional representative).

On 07/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 646 217 is partially upheld, namely for the following contested goods:

Class 9: Mouse [data processing equipment]; loudspeakers; headphones; power banks.

2.        European Union trade mark application No 14 722 839 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 722 839. The opposition is based on, inter alia, European Union trade mark registration No 10 177 822 ‘DMAX’. The opponent invoked Articles 8(1)(b) and 8(5) EUTMR.

SUBSTANTIATION

According to Article 76(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 provided 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, the Office will give the opposing party the opportunity to present 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, within the period referred to above, the opposing party must also file proof 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 which is not a European Union trade mark, the opposing party must provide 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 present case the notice of opposition was not accompanied by any evidence as regards the earlier German trade marks No 307 232 069 and No 306 360 055 (both for the word mark ‘DMAX’) on which the opposition is based.

On 01/02/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit was subsequently extended by two months and expired on 06/08/2016.

The opponent did not submit any evidence concerning the substantiation of the two earlier German trade marks.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR 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 Opposition Division will continue the analysis of the opposition in relation to earlier European Union trade mark No 10 177 822.

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 and services

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

Class 9: Prerecorded audiovisual recordings, audiotapes, video discs, compact discs, DVDs and multimedia software recorded on CD-ROM, all featuring subjects of general human interest; electronic learning games in the nature of electronic game software for educational purposes; video game discs; computer game discs; electronic game programs; downloadable ring tones, graphics, ring backs, animated ringers, video ringers and animated screensavers; downloadable prerecorded video clips, prerecorded audio clips, text and graphics held in electronic personal computers and handheld wireless devices, all featuring subjects of general human interest; sunglasses.

Class 38: Communications services, namely, transmitting streamed sound and audio-visual recordings via the Internet, cable networks, wireless networks, satellite, or interactive multimedia networks; audio and video broadcasting services over the Internet; transmission of information in the audio-visual field; television broadcasting services; cable television broadcasting; satellite television broadcasting; mobile media services in the nature of electronic transmission of entertainment media content; podcasting services; webcasting services; video-on-demand transmission services; providing on-line forums for transmission of messages among computer users; providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest.

Class 41: Entertainment services, namely, multimedia programs in the field of general interest, distributed via various platforms across multiple forms of transmission media; providing entertainment information regarding ongoing television programs via a global computer network; production of television programs; production of multimedia programs.

After the partial refusal of the contested sign for Class 28 in parallel proceedings B 2 610 296 the contested goods are the following:

Class 9: Mouse [data processing equipment]; mouse pads; bags adapted for laptops; sleeves for laptops; diaphragms [acoustics]; loudspeakers; headphones; bags adapted for carrying photographic apparatus; power banks.

Class 21: Candelabra [candlesticks]; toilet cases; fitted vanity cases; isothermic bags; tea cosies; glass cleaning implements.

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 9

The contested mouse [data processing equipment]; loudspeakers; headphones; power banks are similar to the opponent’s multimedia software recorded on CD-ROM, all featuring subjects of general human interest. The contested goods are or can be peripheral devices for computers, for example special loudspeakers and headphones as well as external batteries (power banks) for computers or laptops. Consequently, the goods under comparison can coincide in their producers and distribution channels. Moreover, they can be complementary.

The remaining contested goods mouse pads; bags adapted for laptops; sleeves for laptops; diaphragms [acoustics]; bags adapted for carrying photographic apparatus are either accessories for computers/photographic apparatus or they are components of audio devices (diaphragms). The Opposition Division cannot see any relevant points of contact with the opponent’s goods and services in Class 9 (essentially pre-recorded content; sunglasses), Class 38 (communications services) and Class 41 (entertainment services). The goods and services under comparison are of a different nature and they serve different purposes. They do not coincide in their distribution channels, end users or producers/providers. Finally, they are neither in competition with each other nor complementary to each other. Therefore, they are dissimilar.

Contested goods in Class 21

The contested goods are household items such as candlesticks, toilet/vanity cases, glass cleaning implements and bags for keeping food and beverages hot. These goods are dissimilar to the opponent’s goods and services in Class 9 (essentially pre-recorded content; sunglasses), Class 38 (communications services) and Class 41 (entertainment services). The goods and services are of a different nature and they serve different purposes. They do not coincide in their distribution channels, end users or producers/providers. Finally, they are neither in competition with each other nor complementary to each other.

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 similar are directed at the public at large.  

The degree of attention may vary from average to high, depending essentially on the price of the product.

3. The signs

DMAX
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).

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark has no meaning in certain territories, for example, in those countries where English is spoken. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a word mark. In the case of a word mark it is the word as such that is protected and not its written form. Therefore, it is immaterial if it is written in upper or lower case letters.

The element ‘DMAX’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The contested sign is a figurative mark. It consists of the verbal element ‘D-max’ (in slightly stylised letters) and an abstract figurative element above the verbal element.

The element ‘max’ of the contested sign will be associated by part of the relevant public with ‘maximum’. Bearing in mind that the relevant goods are peripheral devices for computers, this element is weak for these goods, because it suggests some extreme characteristic or quality.

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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This applies to the abstract figurative component of the contested sign.

The contested sign has no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the string of letters ‘D*max’. However, they differ in the stylisation of these letters, the hyphen and the figurative element in the contested sign.

Therefore, the signs are highly similar.

Aurally, the pronunciation of the signs is identical, as the figurative component and the hyphen of the contested sign are not subject to pronunciation.

Conceptually, while part of the public in the relevant territory will perceive the verbal component ‘max’ of the contested mark as a reference to ‘maximum’, the earlier mark lacks any meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the public.

For the remaining part of the relevant public neither of the signs has a meaning. 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 (see below in ‘Global assessment’).

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

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 earlier mark enjoys a normal degree of distinctiveness per se.

Some of the contested goods are similar and some are dissimilar to the opponent‘s goods and services. The similar goods are directed at the public at large whose degree of attention varies from average to high.

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).

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).

In spite of the differences due to the figurative element and the hyphen in the contested sign, there is a likelihood of confusion because the visual and aural coincidences are overwhelming from the perspective of the English-speaking public.

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.

Indeed, 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 goods or services that 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. 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 goods found to be similar to those of the earlier trade mark.

The rest of the contested goods 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 goods 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 reputation as claimed by the opponent and in relation to similar goods. 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 dissimilar goods, 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.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the above mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

According to the opponent, the earlier European Union trade mark has a reputation in Germany.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 23/10/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Germany prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely

Class 9: Prerecorded audiovisual recordings, audiotapes, video discs, compact discs, DVDs and multimedia software recorded on CD-ROM, all featuring subjects of general human interest; electronic learning games in the nature of electronic game software for educational purposes; video game discs; computer game discs; electronic game programs; downloadable ring tones, graphics, ring backs, animated ringers, video ringers and animated screensavers; downloadable prerecorded video clips, prerecorded audio clips, text and graphics held in electronic personal computers and handheld wireless devices, all featuring subjects of general human interest; sunglasses.

Class 38: Communications services, namely, transmitting streamed sound and audio-visual recordings via the Internet, cable networks, wireless networks, satellite, or interactive multimedia networks; audio and video broadcasting services over the Internet; transmission of information in the audio-visual field; television broadcasting services; cable television broadcasting; satellite television broadcasting; mobile media services in the nature of electronic transmission of entertainment media content; podcasting services; webcasting services; video-on-demand transmission services; providing on-line forums for transmission of messages among computer users; providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest.

Class 41: Entertainment services, namely, multimedia programs in the field of general interest, distributed via various platforms across multiple forms of transmission media; providing entertainment information regarding ongoing television programs via a global computer network; production of television programs; production of multimedia programs.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 27/07/2016 the opponent submitted evidence to support this claim. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• Annex B & B 1: a brochure in English provided by Discovery Networks, a company with links to the opponent. It gives information about the launch in 2006 of the ‘DMAX’ TV channel in Germany and its market share in 2012, 2013 2014 and 2015 as well as in the period January to March 2016. The market share in January to March 2016 is also put in relation to the market share of the opponent’s competitors. The market share figures are rather low. The brochure includes further information on the audience profile and market share of particular TV episodes and programmes offered on the ‘DMAX’ channel in 2015. Moreover, there is information on the opponent’s website www.dmax.de, which is described as a ‘digital entertainment platform for men’. The information regarding this website dates from ‘Nov 2015-Jan 2016’ and is therefore not prior to the filing date of the contested sign. In addition, the brochure presents the opponent’s merchandising activities regarding books, videos, tools, toys, torches and clothing. Moreover, the number of visits and orders as well as the value of the orders regarding the opponent’s e-commerce activities in 2013, 2014, 2015 and 2016 are shown. The numbers are rather low. Furthermore, the brochure gives information on the ‘DMAX campaign 2016’ (outside of the relevant period), sponsoring activities (undated) and an activity called ‘DMAX Montaincamp’ in cooperation with other companies in 2015. Finally, the brochure also includes a few press articles in German which were not translated and cannot be taken into account. In its observations the opponent refers to the articles in German: ‘In summary, the press releases all document the growing success of the TV-Channel and refer to previous record market shares of ‘DMAX’. The articles also refer to the successful TV formats of ‘DMAX’, such as ‘Auction Hunter’.’ This statement cannot be considered a (partial) translation of the press releases.

• Annex B & B 2 and 3: several articles in German. No translation was provided and thus, they cannot be taken into account. The opponent claims that ‘the articles also emphasize the success of the TV-format ‘the Ludolfs’ and the ‘cult status’ of the four brothers.’

• Annex B & B 4: information in German on the opponent’s website. The opponent provided a partial translation (of a table). However, the information clearly refers to 2016, i.e. after the filing of the contested mark.

• In its observations, the opponent also refers to several editions of a lifestyle magazine called ‘DMAX Magazine’ which were published between 2013 and 2015 and attaches three cover pages.

• Furthermore, the opponent refers to the opponent’s activity on social media such as Twitter and Facebook and attaches evidence of this activity. The number of followers on Twitter is rather low. The number of likes on Facebook is significant, however, the number does not seem to refer to Germany, because the indications are in English (e.g. ‘people’ and ‘search for posts on this page’).

• Finally, the opponent claims that ‘major investments for the promotion of the mark were made and refers to the promotion campaign 2016. However, this promotional activity is outside of the relevant period.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

The evidence shows some use of the trade mark but does not provide any indication of the extent of recognition by the relevant public.

Most of the evidence is either undated or relates to a period after the filing of the contested trade mark on 23/10/2015. Although such evidence cannot be completely ignored it does not demonstrate that a reputation existed at the time of filing of the contested trade mark.

The evidence concerning the market share of the TV channel and sales figures of the opponent’s e-commerce activities consists of internal unsigned documents.

No survey on the earlier mark’s recognition was presented and no evidence from independent sources regarding the reputation of the earlier mark was filed.

To sum up, despite showing some use of the earlier trade mark, the evidence provides little information on the extent of such use. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the sales volumes and market shares given are rather low figures and, moreover, not corroborated by an independent source or supporting evidence. As a result, the evidence filed does not show that the trade mark is known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

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 goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Julia SCHRADER

Beatrix STELTER

Swetlana BRAUN

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.