DD'S DISCOUNTS | Decision 2329855 - INNO (société anonyme) v. Ross Stores, Inc.
Date Published: Sep 28, 2017
OPPOSITION No B 2 329 855
INNO (société anonyme), Rue Neuve 111, 1000 Brussels, France (opponent), represented by Gevers, Brussels Airport Business Park, Holidaystraat, 5, 1831 Diegem, Belgium (professional representative)
a g a i n s t
Ross Stores, Inc., 5130 Hacienda Drive, Dublin, California CA 94568, United States of America (applicant), represented by Jonas Rechtsanwaltsgesellschaft mbH, Hohenstaufenring 62, 50674 Köln, Germany (professional representative).
On 31/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 329 855 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 157 426. The opposition is based on Benelux trade mark registration No 865 423. 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.
- The goods and services
The goods and services 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.
Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, bides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 24: Textiles and textile goods, not included in other classes; bed and table covers.
Class 25: Clothing, footwear, headgear; lingerie; athletic clothing.
Class 35: Retail trade of products listed in Classes 3, 14, 18, 24 and 25; organizing and managing promotional campaigns, including the granting of discounts, set up a loyalty program for customers and staff through promotional and advertising campaigns.
The contested goods and services are the following:
Class 25: Men’s, women’s and children’s clothing, footwear and headwear.
Class 35: Retail department stores in the field of clothing, footwear, personal accessories, handbags, luggage, fragrances, towels, bedding, home accents, home furnishings, bed and bath merchandise and accessories, toys, games, gourmet prepared food products, household utensils, household containers, and cookware; retail store services, namely, specialty stores in the field of clothing, footwear, personal accessories, handbags, luggage, fragrances, towels, bedding, home accents, home furnishings, bed and bath merchandise and accessories, toys, games, gourmet prepared food products, household utensils, household containers, and cookware; retail store and retail discount store services in the field of clothing, footwear, personal accessories, handbags, luggage, fragrances, towels, bedding, home accents, home furnishings, bed and bath merchandise and accessories, toys, games, gourmet prepared food products, household utensils, household containers, and cookware.
Some of the contested goods and services are identical to the goods and services on which the opposition is based; for example, the contested footwear and headwear in Class 25 are also included in the opponent’s list of goods and services (including a synonym for headwear). For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.
- 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 and services assumed to be identical are directed at the public at large.
The degree of attention may vary from average (e.g. for clothing in Class 25) to high (e.g. for jewellery, precious stones in Class 14), depending on the price, sophistication or terms and conditions of the purchased goods and services.
- The signs
4DD | DD’S DISCOUNTS |
Earlier trade mark | Contested sign |
The relevant territory is Benelux.
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 Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (see by analogy, 07/09/2006, C-108/05, Europolis, EU:C:2006:530).
For the part of the public in the relevant territory that does not understand English, the word ‘DISCOUNTS’ of the contested sign is meaningless and thus distinctive to an average degree for the relevant goods and services. However, this element is likely to be understood by a significant part of the public in Benelux, which is presumed to be familiar with English, as the plural form of the word ‘discount’, which means a deduction from the usual cost of something (information extracted from Oxford Dictionaries at https://en.oxforddictionaries.com/definition/discount). Bearing in mind that the relevant goods and services are articles for wearing in Class 25 and retailing of specific goods in Class 35, this element is weak in respect of these goods and services, since it merely refers to the fact that the goods are being offered for a low price and the services are related to selling of specific goods for a low price.
The Opposition Division will first examine the opposition in relation to the part of the relevant public for which the word ‘DISCOUNTS’ is weak, as, due to the lesser importance of the element ‘DISCOUNTS’, this constitutes the best-case scenario for the opponent.
Both signs under comparison are word marks.
The only element of the earlier mark consists of the numeral ‘4’ followed by the double letter ‘D’. Given that it has no meaning from the perspective of the relevant public, it is distinctive to an average degree for the relevant goods and services.
The contested sign is composed of two verbal elements, ‘DD’S’ and ‘DISCOUNTS’. In the first element, ‘DD’S’, the public will understand the letter ‘S’ with an apostrophe as showing that something belongs to someone or something. However, as a whole, this element is meaningless and, therefore, distinctive to an average degree for the relevant goods and services, whereas the second element is weak, for the reason explained above. Therefore, the element ‘DD’S’ is more distinctive than the element ‘DISCOUNTS’.
In terms of dominance, neither of the signs has any element that could be considered more dominant (visually eye-catching) than other elements.
Visually and aurally, the signs coincide in the letters/sounds ‘DD’. However, they differ in all of their remaining characters/sounds, namely ‘4’ in the earlier mark, and the possessive ‘’S’ and ‘DISCOUNTS’ in the contested sign. It follows that only two out of the twelve characters/sounds of the contested sign are present in the earlier sign. Furthermore, the signs differ in their length (one numeral and two letters in the earlier mark versus twelve letters in the contested sign) and number of elements (one element in the earlier mark versus two elements in the contested sign), which means that they have different numbers of syllables, so their rhythms and intonations also differ.
In addition, the signs’ distinctive elements are considered short, because they consist of three characters. It is important to note that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. Consequently, in the present case, the numeral ‘4’ present at the beginning of the earlier mark will have a significant visual and aural impact on the perception of the signs.
Taking all the above into account, even considering that the element ‘DISCOUNTS’ is weak, the signs are visually and aurally similar to a low degree.
Conceptually, reference is made to the meanings of the signs and their particular elements given above.
As seen above, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘DISCOUNTS’ in the contested sign will be associated with the meaning explained above. Even though this element is considered weak, its impact on the consumer’s perception cannot be completely disregarded, especially in terms of the conceptual perception of the signs. The public will also attribute a concept to the numeral ‘4’ of the earlier mark (the concept of the number four) and to the possessive ‘’S’ of the contested sign (the concept of belonging to someone or something). However, as the coinciding letters ‘DD’ bear no concept, the coincidence in only these letters cannot on its own lead to a conceptual link that would bring to consumers’ minds any particular idea.
Considering all the above, the signs are not conceptually similar.
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 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 relevant goods and services from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
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.
As concluded above, the goods and services in question are assumed to be identical; the relevant public consists of the public at large; the degree of attention varies from average to high; and the earlier mark enjoys a normal degree of inherent distinctiveness for the relevant goods and services.
The signs in dispute are visually and aurally similar to a low degree and conceptually not similar, as explained in detail above in section c) of this decision. The similarities are confined to only two letters, ‘DD’, included in both signs.
In contrast, the conflicting signs differ in all of their remaining elements, as described in section c) of this decision, which makes them sufficiently remote from each other and helps to differentiate them. Although the differing word ‘DISCOUNTS’ in the contested sign is weak for the part of the public under consideration, it still helps to differentiate the signs. Therefore, the Opposition Division is of the opinion that the differences between the signs are sufficient to safely exclude a likelihood of confusion in the present case. This is also supported by the reasons explained below.
First, the distinctive elements of the signs, ‘4DD’ and ‘DD’S’, both have three characters, and are, consequently, short elements. The fact that they differ, inter alia, in the number ‘4’ of the earlier mark is a relevant factor to be considered when evaluating the likelihood of confusion between the conflicting signs. This difference has a significant impact on the perception of the signs from the visual and aural points of view.
As regards some of the goods in question, namely clothing in Class 25, it is also important to note that generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 - T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the presence of the numeral ‘4’ at the beginning of the earlier mark and the additional element ‘DISCOUNTS’ in the contested sign, even though the latter is weak, are particularly relevant when assessing the likelihood of confusion between them.
Based on an overall assessment and taking all the above into account, it can be safely concluded that the average consumer will neither directly confuse the conflicting signs nor perceive them as coming from the same undertaking or economically linked undertakings.
The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous decisions referred to by the opponent, namely B 2 551 474, B 2 561 275, B 1 835 464 and B 1 089 079, are not relevant to the present proceedings, for the reasons explained below.
The signs to be taken into account are the following:
Opposition decision | Earlier mark | Contested sign |
No B 2 551 474 | PLAY | |
No B 2 561 275 | INVICTUS | |
No B 1 835 464 | PROFIT | 4PROFIT |
No B 1 089 079 | 2MAD | MAD |
It is apparent from the table above that the decisions referred to by the opponent relate to signs that cannot be considered analogous or similar to the signs in the present case. It is evident that the signs in the table coincided visually and aurally in their verbal elements and they differed only in a numeral present in one of the conflicting signs. Furthermore, the conceptual links between the signs were also of particular importance in those cases. It is also important to note that one of the conflicting signs was always included in its entirety in another sign, and, in addition, in case No B 2 561 275 the earlier mark even played an independent and distinctive role within the contested sign. It can be concluded that in the cases mentioned by the opponent the signs conveyed similar overall impressions. Taking all the above into account, the opponent’s argument relating to the previous decisions must be set aside.
The opponent refers to the principle of interdependence, namely that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the signs, and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion, and the fact that the goods and services are assumed to be identical cannot, in this case, compensate for the differences identified between the signs.
Considering all the above, even assuming that the goods and services in question are identical, there is no likelihood of confusion (including likelihood of association) on the part of the public. Therefore, the opposition must be rejected.
This absence of a likelihood of confusion equally applies to the remaining part of the public, for which the element ‘DISCOUNTS’ of the contested sign is distinctive to an average degree for the relevant goods and services, as described in detail above. This is because, as a result of the distinctive character of that element, that part of the public will perceive the signs as being even less similar.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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
Vít MAHELKA | Martin MITURA | Vita VORONECKAITĖ |
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.