DISMO | Decision 2687047 - dizmo AG v. Shanghai DISMO Digital Technology Co., Ltd.
Date Published: Oct 1, 2017
OPPOSITION No B 2 687 047
dizmo AG, Universitätsstrasse 53, 8006 Zürich, Switzerland (opponent), represented by Kroher • Strobel Rechts- und Patentanwälte PartMBB, Bavariaring 20, 80336 München, Germany (professional representative)
a g a i n s t
Shanghai Dismo Digital Technology Co., Ltd., 103-3, 14 Building, No.20, Fuhui Road, Fu Rong Economic Zone, Songjiang District, Shanghai, The People’s Republic of China (applicant), represented by AL & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).
On 04/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 687 047 is partially upheld, namely for the following contested goods:
Class 9: Mouse [computer peripheral]; computer keyboards; headphones; camcorders; USB flash drives; computer peripheral devices; computer memory devices; transmitters of electronic signals; videotapes; audiovisual teaching apparatus; cell phone covers.
Class 20: Office furniture; filing cabinets; seats; tables; screens [furniture]; writing desks; seats of metal; furniture of metal; dressing tables; stands for calculating machines; desks; sideboards; furniture shelves; coffee tables.
2. European Union trade mark application No 15 216 633 is rejected for all the above goods. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 216 633. The opposition is based on European Union trade mark registration No 13 056 387. 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 9: Software; communication software; interface software; computer interfaces; computer interface software; interfaces for computers; graphical user interface software; industrial process control software; process controlling software; industrial controls incorporating software; digital phones; digital tablets; digital video recorders; personal digital assistants; digital book readers; digital signage monitors; digital panel meters; computer digital maps; gauges with digital readout; panel meters; indication panels; indicator panels; touch panels; alarm panels; switch panels [electric]; control panels [electricity]; electronic indicator panels; electric control panels; touch sensitive control panels; modular sign panels [luminous]; push button panels (electrical -); operation control panels [electric]; signalling panels, luminous or mechanical; electronic panels for displaying messages; display monitors; display terminals; electronic display panels; visual display units; visual display screens; computer display monitors; video display screens; roadside display boards [luminous]; electronic visual display units; electronic pens [visual display units]; computing visual display units; pens (electronic -) [visual display units]; interactive terminals; interactive video apparatus; interactive computer systems; interactive computer software; interactive graphics screens; software for interactive television; interactive television terminal sets; interactive multimedia computer programs; computer programmes for interactive television and for interactive games and/or quizzes; computer whiteboards.
Class 20: Display panels for exhibition environments; display tables; mobile display boards; display screens [furniture]; advertising display boards; acrylic counter displays; folding display screens for use in conference displays; folding display screens for use in exhibition displays; display units for presentation purposes; display units for promotional purposes.
Class 38: Digital communications services; interactive telecommunications services; interactive television and radio broadcasting; providing an online interactive bulletin board; transmission of interactive entertainment software; interactive broadcasting and communications services.
Class 41: Audio-visual display presentations; arranging of displays for training purposes; arranging of displays for entertainment purposes; arranging of displays for cultural purposes; arranging of displays for educational purposes; interactive entertainment; interactive entertainment services.
The contested goods and services are the following:
Class 9: Mouse [computer peripheral]; computer keyboards; headphones; mouse pads; camcorders; usb flash drives; cabinets for loudspeakers; computer peripheral devices; computer memory devices; transmitters of electronic signals; videotapes; audiovisual teaching apparatus; chargers for electric batteries; cell phone covers; computer heat sinks.
Class 20: Office furniture; filing cabinets; seats; tables; beds; screens [furniture]; writing desks; seats of metal; sofas; doors for furniture; bamboo curtains; furniture of metal; dressing tables; stands for calculating machines; mattresses; bassinettes; desks; sideboards; furniture shelves; coffee tables.
Class 35: Advertising; business management assistance; procurement services for others [purchasing goods and services for other businesses]; sales promotion for others; import-export agency services; marketing; personnel management consultancy; relocation services for businesses; rental of vending machines; on-line advertising on a computer network; layout services for advertising purposes; presentation of goods on communication media, for retail purposes; organization of exhibitions for commercial or advertising purposes; employment agency services; word processing; compilation of information into computer databases; business auditing; retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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 computer peripheral devices are devices that are connected to a computer but are not part of the core computer architecture, such as a mouse, keyboard, monitor, printer or scanner, and include, as a broader category, the opponent’s computer display monitors. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested audiovisual teaching apparatus overlap with the opponent’s computer whiteboards, which are writeable presentation display systems that can be used in a classroom or videoconference. Therefore, they are identical.
The contested camcorders are electronic devices combining a video camera and recorder and are considered similar to the opponent’s digital video recorders, which are electronic devices that record video in a digital format to a disk drive, USB flash drive, SD memory card, SSD or other local or networked mass storage device. They share, to some extent, the same purpose, are often produced by the same undertakings, are distributed through the same channels and target the same consumers.
The contested mouse [computer peripheral]; computer keyboards; headphones; usb flash drives; computer memory devices are peripheral input, output or storage devices adapted for use with computers. Every such device has a driver program that operates and controls the particular device. These goods are considered similar to the opponent’s software, since they can have the same distribution channels and target the same consumers. Furthermore, they are complementary.
The contested cell phone covers are similar to the opponent’s digital phones. These goods are complementary, are often produced by the same undertakings, are distributed through the same channels and target the same consumers.
The contested transmitters of electronic signals are necessary component parts of many electronic devices that communicate by radio, such as mobile phones, wireless computer networks, and Bluetooth and navigation devices, or are sets of equipment used to generate and transmit electromagnetic waves carrying messages or signals, especially those of radio or television. Therefore, they have some points in common with the opponent’s digital phones and digital tablets to the extent that they are all pieces of apparatus functioning on the transmission and reception of signals and, therefore, may have the same producers and relevant public and are complementary to each other. Therefore, they are considered similar.
The contested videotapes are magnetic tapes (magnetic data media) used for recording and reproducing visual images and sound. They are considered similar to a low degree to the opponent’s software, as they can have the same producer. Moreover, they are complementary.
The contested mouse pads; cabinets for loudspeakers; chargers for electric batteries; computer heat sinks and the opponent’s goods and services in Classes 9, 20, 38 and 41 are deemed to be dissimilar, as they do not coincide in any of the criteria that may, alone or in combination, give rise to a degree of similarity between them. Although some of them may target the same relevant public, they differ in their purpose, nature and method of use. Moreover, they usually have different producers or distribution channels and are neither complementary nor in competition with each other.
Contested goods in Class 20
The contested office furniture includes, as a broader category, the opponent’s mobile display boards. The contested screens [furniture] include, as a broader category, the opponent’s display screens [furniture]. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested furniture of metal overlaps with the opponent’s display tables insofar as they can be made of metal. Therefore, they are considered identical.
The contested tables include, as a broader category, the opponent’s display tables. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested furniture shelves are shelving units designed to store or display books or other material at home or in the office. They are considered similar to the opponent’s display units for presentation purposes, since they can serve the same purpose and have the same producer and relevant public. Furthermore, they can be in competition with each other.
The contested filing cabinets; seats; writing desks; seats of metal; dressing tables; stands for calculating machines; desks; sideboards; coffee tables are considered similar to a low degree to the opponent’s display tables, since they can have the same producer, distribution channels and target consumers.
The contested beds; sofas; doors for furniture; bamboo curtains; mattresses; bassinettes are considered dissimilar to the opponent’s goods and services in Classes 9, 20, 38 and 41, since they differ in their purpose and method of use. Moreover, they are neither complementary nor in competition with each other and most of them have different producers/providers and relevant publics.
Contested services in Class 35
The contested services include a large variety of different business support services, such as advertising and sales promotion for others, which consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the clients’ position in the market and acquiring competitive advantage through publicity (e.g. advertising; updating of advertising material; advertising by mail order); business management assistance services, which include any consultancy, advisory and assistance activity that may be useful in the management of a business, such as how to efficiently allocate financial and human resources, how to improve productivity, how to increase market share, how to deal with competitors, how to reduce tax bills, how to develop new products, how to communicate with the public, how to do marketing, how to research consumer trends, how to launch new products and how to create a corporate identity (e.g. business management consulting; personnel management consultancy; advisory services for business management); import-export agency services, which relate to business administration; and others. They are usually rendered by specialised companies such as business consultants, advertising agencies, etc., and/or are usually focused on a specific type of business (to assist with the running, management and business affairs of commercial undertakings). These are specific services, supplied in areas completely unrelated to, and having different natures and purposes from, the opponent’s services, which are related to communication and telecommunication (Class 38) and to entertainment or education (Class 41), as well as from the opponent’s goods in Classes 9 and 20. They usually have different providers/producers and distribution channels and are neither complementary nor in competition.
Similarity between retail services of specific goods covered by one mark and specific goods covered by the other mark can be found only where the retailed goods and the specific goods covered by the other mark are identical. The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services. However, this is not the case for the contested retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies and the opponent’s goods and services in Classes 9, 21, 38 and 41, which have different natures, serve different needs and are neither in competition nor complementary.
Therefore, the contested services for which protection is sought in this class are considered dissimilar to the opponent’s goods and services in Classes 9, 20, 38 and 41.
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods found to be identical or similar (to different degrees) are directed at both the public at large and at business consumers with specific professional knowledge or expertise. The degree of attention will vary from average to higher than average depending on the nature or price of the relevant goods.
- The signs
dizmo | |
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 one-word mark, ‘dizmo’, which has no meaning in relation to the relevant goods and is, therefore, distinctive. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the earlier mark is in upper or lower case characters.
The contested mark is a figurative mark consisting of the word element ‘DISMO’ written in stylised black letters and, below it, three much smaller figurative elements resembling Chinese characters. ‘DISMO’ does not have any meaning in relation to the relevant goods. Although it is possible that the public might think that the figurative elements are the Chinese version of ‘DISMO’, Chinese is not widely used in the relevant territory and therefore these elements will not be understood by the vast majority of the relevant consumers, who will instead perceive them as merely decorative in nature. Therefore, it is considered that ‘DISMO’ is more distinctive than the figurative elements. In addition, due to its size and depiction in the overall composition of the mark, the element ‘DISMO’ is considered more dominant (visually eye-catching) than the figurative elements.
Visually, the earlier mark, ‘dizmo’, and ‘DISMO’ of the contested sign are words of the same length, namely five letters, four of which, ‘DI*MO’, are identical. They differ only in their middle (third) letters, namely ‘z’ in the earlier mark versus ‘S’ in the contested sign. The signs also differ in the figurative elements of the contested sign, which however will not create significant visual differences between the marks, since consumers will focus on the dominant and distinctive element ‘DISMO’ and pay less attention to these decorative elements. Therefore, the signs are visually similar to an above average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘DI*MO’, present identically in both signs. The pronunciation differs in the sound of their third letters (‘z’ in the earlier mark versus ‘S’ in the contested sign). The figurative elements of the contested sign will not be referred to orally by the relevant public and do not have any impact on the aural comparison. Therefore, the signs are aurally similar to a high degree.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 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
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).
As concluded above, the contested goods and services are partly identical, partly similar (to different degrees) and partly dissimilar to the opponent’s goods and services, and they target both the public at large and professional consumers, whose degree of attention may range from average to higher than average.
The earlier mark and the visually dominant and distinctive element of the contested sign have in common four letters out of five, which are in the same positions. Therefore, as explained in section c), the signs are considered visually similar to an above average degree and aurally highly similar. The degree of distinctiveness of the earlier mark is average.
The differences between the signs (confined to the third letter of their verbal elements and to figurative elements of a decorative nature) are considered insufficient to counteract the similarities and to enable the relevant consumers to safely distinguish between them, even if their degree of attention in relation to the goods in question is higher than average.
Taking into account the above indicated principle of interdependence and the fact that even consumers who pay a higher 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), the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 13 056 387.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to different degrees) to those of the earlier trade mark.
The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.
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 shall 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
Biruté SATAITE-GONZALEZ | Rasa BARAKAUSKIENE | Oana-Alina STURZA |
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.