Desire Mark | Decision 2711284
Date Published: Oct 1, 2017
OPPOSITION No B 2 711 284
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
Desislava Markova, 18 Stefan Stambolov blvd., 1000 Sofia, Bulgaria (applicant).
On 26/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 711 284 is rejected in its entirety.
2. The opponent bears the costs.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 298 128 . The opposition is based on European Union trade mark registration No 11 654 456 ‘dm’. 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
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 14: Jewellery, precious stones; horological and chronometric instruments; amulets [jewellery, jewelry (am.)]; pins [jewellery, jewelry (am.)]; bracelets [jewellery, jewelry (am.)]; wristwatches; jewelry of yellow amber; brooches [jewellery, jewelry (am.)]; semi-precious stones; necklaces [jewellery, jewelry (am.)]; hat ornaments of precious metal; chains [jewellery, jewelry (am.)]; tie clips; tie pins; cuff links; lockets [jewellery, jewelry (am.)]; coins; earrings; beads for making jewelry; pearls [jewellery, jewelry (am.)]; rings [jewellery, jewelry (am.)]; key rings [trinkets or fobs]; jewelry cases [caskets]; ornamental pins; stopwatches; paste jewellery; watches; watch bands; cases for clock- and watchmaking; clock cases; watch cases; cases for watches [presentation]; watch chains; alarm clocks; chronometrical instruments.
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; slings for carrying infants; beach bags; clothing for pets; pocket wallets; net bags for shopping; shopping bags; purses; collars for animals; valises; handbags; sling bags for carrying infants; garment bags for travel; vanity cases, not fitted; leather, unworked or semi-worked; muzzles; umbrellas; travelling trunks; trunks [luggage]; travelling sets [leatherware]; travelling bags; backpacks; key cases; school bags; parasols; bags for sports; canes; bags; wheeled shopping bags; briefcase; pouch baby carriers.
Class 25: Clothing, footwear, headgear; heels; babies' pants [clothing]; layettes [clothing]; swimsuits; bathing trunks; bath robes; bathing caps; bath sandals; bath slippers; bandanas [neckerchiefs]; visors [headwear]; teddies [undergarments]; brassieres; dresses; shower caps; inner soles; masquerade costumes; mittens; footmuffs, not electrically heated; belts [clothing]; gloves [clothing]; suspenders; hats; skull caps; hoods [clothing]; pockets for clothing; corsets [underclothing]; neckties; bibs, not of paper; corselets; caps [headwear]; ear muffs [clothing]; paper hats [clothing]; pyjamas; cyclists' clothing; waterproof clothing; collar protectors; sleep masks; soles for footwear; aprons [clothing]; dress shields; underpants; socks; sock suspenders; garters; stockings; sweat-absorbent stockings; heelpieces for stockings; stocking suspenders; tights; pants.
Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for christmas trees; lines for fishing; rods for fishing; rattles [playthings]; building games; building blocks [toys]; boxing gloves; board games; christmas tree stands; gut for rackets; kites; skating boots with skates attached; exercisers [expanders]; stationary exercise bicycles; scale model vehicles; toy masks; radio-controlled toy vehicles; amusement machines, automatic and coin-operated; gaming machines for gambling; machines for physical exercises; parlor games; golf gloves; golf clubs; golf bags, with or without wheels; appliances for gymnastics; gloves for games; bar-bells; chips for gambling; counters [discs] for games; playing cards; candle holders for christmas trees; landing nets for anglers; climbers' harness; cosaques [toy fireworks]; confetti; spinning tops [toys]; play balloons; puppets; mobiles [toys]; scale model kits [toys]; nets for sports; paper party hats; stuffed toys; plush toys; punching bags; dolls; dolls' beds; dolls' feeding bottles; dolls' houses; dolls' clothes; dolls' rooms; jigsaw puzzles; ring games; slides [playthings]; scooters [toys]; in-line roller skates; scratch cards for playing lottery games; strings for rackets; chess games; rocking horses; novelties for parties, dances [party favors, favours]; ice skates; butterfly nets; artificial snow for christmas trees; snow globes; snowshoes; protective paddings [parts of sports suits]; swimming pools [play articles]; swimming kick boards; flippers for swimming; water wings; swimming belts; swimming jackets; soap bubbles [toys]; skateboards; ski bindings; skis; wax for skis; snowboards; balls for games; dice; toys for domestic pets; rackets; controllers for game consoles; teddy bears; theatrical masks; portable games with liquid crystal displays; trampolines; video game machines; swings; cups for dice; darts; discuses for sports; flying discs [toys]; detonating caps [toys].
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.
Class 41: Education; providing of training; entertainment; sporting and cultural activities; translation; videotaping; education information; recreation information; vocational guidance [education or training advice]; boarding schools; health club services [health and fitness training]; nursery schools; providing museum facilities [presentation, exhibitions]; providing sports facilities; music-halls; amusement parks; coaching [training]; electronic desktop publishing; entertainer services; providing recreation facilities; services of schools [education]; conducting fitness classes; presentation of live performances; ticket agency services [entertainment]; photographic reporting; tuition; television entertainment; correspondence courses; film production, other than advertising films; cinema presentations; photography; gambling; publication of texts, other than publicity texts; layout services, other than for advertising purposes; orchestra services; production of music; game services provided on-line from a computer network; providing on-line electronic publications, not downloadable; publication of electronic books and journals on-line; arranging and conducting of conferences; arranging and conducting of congresses; arranging and conducting of concerts; arranging and conducting of symposiums; organization of fashion shows for entertainment purposes; radio entertainment; theatre productions; organization of sports competitions; arranging and conducting of seminars; arranging and conducting of workshops [training]; arranging and conducting of colloquiums; organization of exhibitions for cultural or educational purposes; operating lotteries; organization of competitions [education or entertainment]; rental of movie projectors and accessories; rental of cine-films; rental of sports grounds; publication of books; videotape film production; production of radio and television programmes.
Class 42: Beauty care for human beings or animals; agriculture, horticulture and forestry services; beauty salons; visagists' services; massage; gardening; hair implantation; manicuring; plastic surgery; lawn care; vermin exterminating for agriculture, horticulture and forestry; telemedicine services; animal grooming; weed killing; medical equipment rental; rental of sanitation facilities.
The contested goods are the following:
Class 14: Jewellery made of precious metals; jewellery being articles of precious metals; bracelets of precious metal; key fobs of precious metals; chains of precious metals; charms of precious metals; alloys of precious metal; threads of precious metals; badges of precious metal; medallions made of precious metals; precious metals, unwrought or semi-wrought; rings coated with precious metals; processed or semi-processed precious metals; fancy keyrings of precious metals; articles of jewellery coated with precious metals; identity plates of precious metal; precious metals and their alloys; cuff links of precious metal; rings [jewellery] made of precious metal; lapel badges of precious metal; threads of precious metal [jewellery, jewelry (am.)]; ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; key fobs [rings] coated with precious metal; decorative articles [trinkets or jewellery] for personal use; decorative boxes made of precious metal; objet d'art of enamelled silver; objet d'art of enamelled gold; objet d'art made of precious stones; identification bracelets [jewelry]; key rings [trinkets or fobs] of precious metal; key fobs of imitation leather; leather key fobs; key fobs of common metal; key rings and key chains; metal key fobs; works of art of precious metal; silver objets d'art; silver alloys; charms of semi-precious metals; key charms coated with precious metals; trinkets coated with precious metal; key rings [trinkets or fobs]; split rings of precious metal for keys; precious stones; olivine [gems]; spinel [precious stones]; natural gem stones; synthetic precious stones; unwrought precious stones; imitation precious stones; jewellery being articles of precious stones; figurines of precious stones; precious and semi-precious gems; artificial stones [precious or semi-precious]; jewellery made of precious stones; jewellery incorporating precious stones; figurines for ornamental purposes of precious stones; semi-wrought precious stones and their imitations; paste jewellery [costume jewelry (am.)]; precious jewellery; unwrought and semi-wrought precious stones and their imitations; cuff links made of precious metals with precious stones; gemstones, pearls and precious metals, and imitations thereof; semi-finished articles of precious stones for use in the manufacture of jewellery; pearls [jewellery, jewelry (am.)]; pearl; imitation pearls; cultured pearls; pearls made of ambroid [pressed amber]; jewellery fashioned of cultured pearls; jewellery; pins being jewelry; women's jewelry; enamelled jewellery; jewellery, clocks and watches; rings [jewellery, jewelry (am.)]; necklaces [jewellery, jewelry (am.)]; platinum jewelry; beads for making jewelry; jewelry boxes; jewellery containing gold; jewelry for the head; jewelry rolls; cloisonné jewellery [jewelry (am.)]; sterling silver jewellery; clasps for jewelry; jewellery made of semi-precious materials; jewellery made from silver; jewellery incorporating diamonds; personal jewellery; jewelry of yellow amber; pewter jewellery; jewellery for personal adornment; gold jewellery; jewelry boxes not of metal; articles of jewellery with ornamental stones; jewellery fashioned from non-precious metals; jewellery made of bronze; cases [fitted] for jewels; lapel pins [jewellery]; clips of silver [jewellery]; jewellery made of plastics; ivory jewelry; jewellery made of crystal; jewellery made of glass; musical jewelry boxes; jewelry organizer rolls for travel; jewelry boxes of metal; leather jewelry boxes; jewellery in the form of beads; wooden jewellery boxes; caskets for clocks and jewels; imitation jewellery ornaments; jewellery fashioned of semi-precious stones; fitted jewelry pouches; agate as jewellery; jewelry rolls for storage; presentation boxes for jewelry; cabochons for making jewellery; jewel cases; jewelry cases not of precious metal; jewelry boxes of precious metal; jewel cases of precious metal; small jewellery boxes of precious metals; jewellery coated with precious metal alloys; articles of jewellery made of precious metal alloys; collets being parts of jewellery; jewelry boxes, not of precious metal; jewellery boxes and watch boxes; ear ornaments in the nature of jewellery; key chains as jewellery [trinkets or fobs]; semi-finished articles of precious metals for use in the manufacture of jewellery; semi-precious stones; cuff links made of precious metals with semi-precious stones; watches; wristwatches; pendant watches; bracelets for watches; watch chains; clock cases; watches made of precious metals; watchstraps made of leather; cases for watches [presentation]; watches made of plated gold; metal watch bands; watch fobs; buckles for watchstraps; watch straps of synthetic material; watches for nurses; watch straps made of metal or leather or plastic; dress ornaments in the nature of jewellery; jewelry pins for use on hats; hat ornaments of precious metal; earrings; hoop earrings; earrings of precious metal; gold rings; gold plated rings; signet rings; body-piercing rings; friendship rings; ring holders of precious metal; rings [jewellery] made of non-precious metal; fitted covers for jewelry rings to protect against impact, abrasion, and damage to the ring’s band and stones; bracelets; charity bracelets; gold bracelets; gold plated bracelets; bracelets [jewellery, jewelry (am.)]; ankle bracelets; jewellery rope chain for bracelets; bracelets and watches combined; wooden bead bracelets; friendship bracelets; jewellery rope chain for anklets; flexible wire bands for wear as a bracelet; jewellery chain of precious metal for bracelets; jewellery chain of precious metal for anklets; necklaces of precious metal; diadems; all goods being crafted or hand made.
Class 18: Purses made of precious metal; imitation leather; leather and imitation leather; cases of imitation leather; bags made of imitation leather; moleskin [imitation of leather]; travelling bags made of imitation leather; straps made of imitation leather; key cases of imitation leather; attache cases made of imitation leather; credit card holders made of imitation leather; animal skins; polyurethane leather; curried skins; traveling bags [leatherware]; kid; leather for furniture; leather for shoes; boxes made of leather; leather for harnesses; boxes of leather or leatherboard; leather, unworked or semi-worked; saddlery of leather; leather wallets; leatherboard; faux fur; semi-worked fur; casings, of leather, for springs; shopping bags made of skin; bags [envelopes, pouches] of leather, for packaging; studs of leather; handbags made of leather; furniture coverings of leather; straps of leather [saddlery]; leather sold in bulk; key cases made of leather; industrial packaging containers of leather; credit card holders made of leather; handbags made of imitations leather; tool bags of leather, empty; sheets of leather for use in manufacture; key-cases of leather and skins; sheets of imitation leather for use in manufacture; valises; small suitcases; gladstone bags; travel cases; suitcases; suitcase handles; straps for luggage; travel luggage; pullmans; trunks and suitcases; trunks [luggage]; overnight cases; luggage tags; luggage, bags, wallets and other carriers; courier bags; roll bags; beach bags; shopping bags; cosmetic purses; satchels; work bags; hiking bags; evening handbags; boston bags; souvenir bags; bags; waterproof bags; bags for sports; travel baggage; handbags; toiletry bags; net bags for shopping; canvas bags; textile shopping bags; game bags [hunting accessories]; sports packs; ladies' handbags; travelling sets; bags for campers; book bags; nappy bags; shoe bags; gentlemen's handbags; hipsacks; bags for umbrellas; garment carriers; towelling bags; wheeled bags; gym bags; belt bags and hip bags; vanity cases, not fitted; weekend bags; garment bags for travel; charm bags (omamori-ire); slouch handbags; small bags for men; clutch bags; flight bags; canvas shopping bags; bags for sports clothing; tool bags, empty; clutches [purses]; vanity cases sold empty; garment bags for travel made of leather; two-wheeled shopping bags; handbags, purses and wallets; small clutch purses; all-purpose athletic bags; pouch baby carriers; travelling handbags; shoulder bags; shoe bags for travel; tool bags sold empty; wrist mounted carryall bags; holdalls for sports clothing; handbag frames; portmanteaus; reusable shopping bags; wash bags (not fitted); knitted bags, not of precious metals; animal carriers [bags]; purses, not of precious metal; shopping bags with wheels attached; all-purpose carrying bags; sling bags; sling bags for carrying infants; umbrellas; beach umbrellas [beach parasols]; umbrellas and parasols; umbrellas for children; umbrella handles; umbrella covers; parasols; combination walking sticks and umbrellas; walking sticks; cane handles; walking staffs; walking stick seats; walking cane handles; whips; jockey sticks; cat o' nine tails; hunting crops; saddlery, whips and animal apparel; articles of clothing for horses; clothing for dogs; clothing for pets; dog shoes; hat boxes of leather; hat boxes for travel; chin straps, of leather; girths of leather; fastenings for saddles; all goods being crafted or hand made.
Class 25: Leather suits; sheepskin coats; leather slippers; boas [necklets]; sheepskin jackets; clothing of imitations of leather; belts made from imitation leather; leather headwear; clothing made of fur; boas; donkey jackets; hunting boot bags; clothing; sportswear; boleros; oilskins [clothing]; clothing for gymnastics; evening wear; beach clothes; work clothes; children's wear; infant wear; nightwear; muffs [clothing]; casualwear; ladies' clothing; foulards [clothing articles]; ear muffs [clothing]; veils [clothing]; combinations [clothing]; rainproof clothing; gloves [clothing]; formalwear; shoulder wraps; bottoms [clothing]; motorists' clothing; bridesmaids wear; boys' clothing; cyclists' clothing; gabardines; kerchiefs [clothing]; quilted jackets [clothing]; womens' outerclothing; leather belts [clothing]; formal evening wear; maternity clothing; tops [clothing]; tennis dresses; cowls [clothing]; nappy pants [clothing]; fabric belts [clothing]; folk costumes; clothing for martial arts; outerclothing for girls; corsets; gabardines [clothing]; menswear; knitwear [clothing]; christening robes; jogging sets [clothing]; motorcyclists' clothing of leather; pants; hoods [clothing]; earbands; sweatpants; skating outfits; neckbands; bandeaux [clothing]; leisurewear; jackets being sports clothing; three piece suits [clothing]; swim wear for gentlemen and ladies; belts [clothing]; arm warmers [clothing]; furs [clothing]; knee warmers [clothing]; maternity bands; short sets [clothing]; sailing wet weather clothing; ready-made linings [parts of clothing]; weather resistant outer clothing; khakis; bra straps; pocket squares; clothing for horse-riding [other than riding hats]; paper hats for use as clothing items; sports clothing [other than golf gloves]; shoes; canvas shoes; work shoes; dress shoes; training shoes; athletic shoes; ballet slippers; casual footwear; wooden shoes; boxing shoes; dance shoes; footwear for women; galoshes; beach shoes; leather shoes; flat shoes; children's footwear; pumps [footwear]; footwear for men; running shoes; insoles for footwear; heels; riding shoes; gymnastic shoes; footwear [excluding orthopedic footwear]; golf footwear; slip-on shoes; infants' footwear; bath shoes; shoe straps; yoga shoes; tap shoes; footwear uppers; boot cuffs; rainshoes; shoes with hook and pile fastening tapes; high-heeled shoes; leisure shoes; women's foldable slippers; inner socks for footwear; ballroom dancing shoes; deck shoes; sandals and beach shoes; shoe uppers; footwear made of vinyl; aqua shoes; pullstraps for shoes and boots; tongues for shoes and boots; welts for footwear; walking shoes; footwear not for sports; fittings of metal for footwear; non-slipping devices for footwear; protective metal members for shoes and boots; gussets for footlets [parts of clothing]; hats; fur hats; beach hats; woolly hats; bathing caps; small hats; top hats; flat caps; sports caps; ski hats; baseball caps; visors [headwear]; toques [hats]; knot caps; chefs' hats; fashion hats; fedoras; caps [headwear]; golf caps; bobble hats; caps with visors; sun hats; rain hats; boaters; bucket caps; cap peaks; knitted caps; sports caps and hats; fascinator hats; party hats [clothing]; children's headwear; balaclavas; sun visors [headwear]; ski balaclavas; bonnets [headwear]; headdresses [veils]; sports headgear [other than helmets]; money belts [clothing]; girdles; stocking suspenders; belts made out of cloth; pantie-girdles; waist belts; sashes for wear; all goods being crafted or hand made.
Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.
- 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 good assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.
The degree of attention varies from average to high, depending on the nature and price of the goods involved. For example, for class 14 goods, in its decision of 09/12/2010, R 900/2010-1, Leo Marco, § 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods. In many cases the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed.
- 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).
The earlier mark is a word mark composed of two letters. It has no meaning for the relevant public and is, therefore, distinctive.
The contested sign is figurative, containing two word elements ‘DESIRE MARK’, and a device element placed above the word elements. The device element contains a highly stylised but clearly perceptible the letter ‘D’ and a second, conjoined character composed of wavy lines, the meaning of which be clearly interpreted. It cannot be, however, excluded, that part of the public might perceive this second letter as highly stylised letter ‘M’, due to the fact that the remaining words, ‘DESIRE MARK’, in the sign begin with the letters D and M, and a consumer might make a mental link with the first letters of these words.
The English-speaking part of the relevant public will perceive the word DESIRE as ‘a strong wish to do or have something’. A similar meaning is perceived by the French- speaking public, due to a similar word désir present in that language. The element ‘MARK’ refers to, in English a small stain; or a written or printed symbol; a sign, symbol, or other indication that distinguishes something (13/09/2017 Collins English dictionary, /www.collinsdictionary.com). It may be perceived with a similar meaning also in countries where a similar word is used in their respective languages, such as marque in French, marca in Spanish and Portuguese, märke in Swedish, märk Estonian, marcă in Romanian, marke in German. The element ‘MARK’ is perceived also as a male first name in the countries it is in use. These words, when understood do not describe any characteristics of the goods nor allude to the qualities or popularity of the respective goods. In case they are not understood, there is no link with the goods either. As these words and other elements of this sign are not descriptive, allusive or otherwise weak for the relevant goods, contrary to the arguments of the opponent, they are distinctive.
The contested sign has no elements that could be considered clearly more dominant than other elements.
Visually, the signs coincide in their first letters ‘D’. However, the marks clearly differ in the elements ‘DESIRE MARK’, of the contested sign, not present in the earlier mark and in the second character in the contested sign, depicted as a wavy line. The marks also differ in the second letter ‘m’ in the earlier mark, not present in the contested sign.
However, it cannot be ruled out that part of the public, when seeing the elements ‘DESIRE MARK´, might perceive the device element above them as containing the initial letters D and M of these words depicted in a highly stylised manner.
Therefore, considering what has been stated above, the signs are visually similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the first letters D. In a very remote case, when the second letter in the contested sign is perceived as M, then there is also an aural similarity with this letter. The pronunciation differs in the sound produced when pronouncing the remaining elements DESIRE MARK of the contested mark, which have no counterparts in the earlier sign. The pronunciation also differs in the length and rhythm of the marks.
Therefore, the signs are aurally similar to a low degree.
Conceptually, although the public, or part of it, in the relevant territory will perceive the meanings in the contested sign, as explained above, the other sign has no meaning in that territory, as also confirmed by the opponent. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for that public.
In respect of the public that perceives no meaning in any of the signs, the conceptual comparison is not possible and, therefore 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.
- 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 trade mark has a very high reputation in Germany and in the European Union in connection with retail services in Class 35, linked to retail services in Classes 14, 18 and 25. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).
The opponent submitted the following evidence:
Eight surveys and studies about the consumer recognition of the opponent’s mark, all done in Germany. These are:
- GFK study done on 2011 “Survey of market participants on the awareness and secondary meaning of the term ‘dm’”;
- GFK study done in 2014 “Awareness and Distinctiveness of the term ‘dm’ in Germany.
- ServiceBarometer AG study “Kundesmonitor Deutchland 2010”;
- “KommunikationsAnalyse 2012 done by German magazine Brigitte;
- Wirtschafts Woche study “Brand index top performer 2011”;
- YouGOV Brandindex Ranking ‘Top performer brands 2013”;
- Batten & Co study about retail brands in Germany;
- Interbrand study, done in 2013- Best retail brands 2013.
Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use in respect of the goods and services claimed in the present opposition.
While the studies do show that the opponent’s ‘dm’ mark is known in Germany, the evidence show some awareness of the public of the trade mark in general and in relation to drugstore services in general. The studies provided do not show reputation in connection with any of the very specific goods or services claimed. The opponent has not shown nor provided any evidence whatsoever about the reputation of its mark in connection to any of the goods registered or services claimed as in the present opposition.
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.
- Global assessment, other arguments and conclusion
The contested goods were assumed identical to the goods of the earlier mark. The similarities and dissimilarities of the signs have been described above.
The signs at hand coincide in the first letter ‘D’ and differ clearly in all the remaining elements visually. The second character in the contested sign is formed of a wavy line. In an unlikely event that is perceived as a highly stylised letter ‘M’, then there is a coincidence with the earlier mark. However, the remaining elements ‘DESIRE MARK’ of the contested sign remain clearly different, they will be seen and pronounced, and also understood with various meanings by part of the public.
Although the letters D and M of the earlier sign are wholly incorporated in the contested mark in various positions, this fact alone is not sufficient in itself for finding a likelihood of confusion. Moreover, these letters D and M are depicted in different ways in the signs. Furthermore, the contested sign also contains the additional distinctive verbal elements ‘DESIRE MARK’, which do not have a counterpart in the earlier mark. This element will, therefore, be neither overlooked nor misheard by consumers. In the event that the second character in the contested sign would be perceived as the letter ‘M’, it will be perceived only as the abbreviation of the following second word element - ‘MARK’ and, thus will contribute to distinguishing the signs from the other both visually and in the length of pronunciation.
Furthermore, the length of the signs may influence the effect of the differences between them. The shorter is the sign, the more easily the public is able to perceive all of its single elements. In short marks, such as the earlier mark therefore, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. In the present case, the earlier sign is a clearly short one and the two letters would be perceived at once, while the contested sign is a comparatively longer one in which even if the stylised element is recognised as ‘dm’, the additional elements and the stylisation as such are sufficiently different for the consumer to safely distinguish the signs from one another.
The marks give a different impression as a result of these clear differences listed above. Besides, the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he/she has kept in his mind. These differences are considered to be sufficient to counteract the fact that the goods were assumed identical. The differences between the marks are sufficiently strong to allow the relevant public to distinguish between them, even taking into account the abovementioned imperfect recollection principle.
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).
While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.
In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same, as is the case here.
Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
COSTS
According to Article 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
Irina SOTIROVA | Erkki MÜNTER | María Clara IBÁÑEZ FIORILLO |
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.