dk IMMERSIVE SOUNDSCAPE | Decision 2403999 - Dorling Kindersley Limited v. Maria Costeira
Date Published: Sep 28, 2017
OPPOSITION No B 2 403 999
Dorling Kindersley Limited, 80 Strand, London WC2R 0RL, United Kingdom (opponent), represented by Cleveland, 10 Fetter Lane, London EC4A 1BR, United Kingdom (professional representative)
a g a i n s t
Maria Costeira, Barvarska steza 6, SI-1000 Ljubljana, Slovenia (applicant).
On 11/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 403 999 is upheld for all the contested goods.
2. European Union trade mark application No 12 903 761 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 12 903 761. The opposition is based on, inter alia, European Union trade mark registration No 6 399 356. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 6 399 356.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Video tapes; audio tapes; compact discs; video disks; laser disks; DVDs; CD-roms; electronic publications; digital media and recordings; pre-recorded digital media and recordings; downloadable electronic publications; downloadable digital media and recordings; downloadable digital media and recordings containing sound, images, text, information, signals or software; webcasts; podcasts; vodcasts; podscrolls; electronically recorded data; electronic files; databases; teaching apparatus and instruments; audio and visual teaching apparatus; downloadable digital media and recordings containing teaching apparatus and instruments; computer games; educational computer games; downloadable computer games; mp3 players, cd players, cassette recorders/players; apparatus and instruments for recording, transmitting or reproducing sound, images, video or data; computer software and computer programs containing educational material or intended for educational purposes; data processing equipment; animated cartoons and other imagery; parts and fittings for all the aforesaid goods.
Class 41: Publishing services; publication of magazines, books and printed matter; electronic publishing services; providing on-line electronic publications, books and journals; providing on-line databases and directories; provision of non-downloadable digital media; provision of non-downloadable media and recordings containing sound, images, text, information, signals or software; non-downloadable electronically recorded data; non-downloadable electronic files; provision of non-downloadable computer games and educational computer games; computer assisted education and training services; information, advisory and consultancy services relating to all the aforesaid services.
The contested goods are the following:
Class 9: Information technology and audiovisual equipment; Audio/visual and photographic devices; Audio devices and radio receivers; Amplifiers; Amplifier tuners; Aerial amplifiers; Control amplifiers; Digital amplifiers; Electrical amplifiers; Electroacoustic amplifiers; Electronic amplifiers; Keyboard amplifiers; Power amplifiers; Analogue sound modifiers; Apparatus for recording sound; Apparatus for the reproduction of sound; Audio amplifiers; Audio apparatus; Audio electronic apparatus; Audio speakers for home; Electrical amplifiers for sound signals; Electrical amplifiers for use with musical instruments; Digital sound processors; Loudspeaker stands [adapted for]; Loudspeaker systems; Loudspeakers; Loudspeakers with built in amplifiers; Monitor speakers; Sound amplifying receivers; Sound mixers with integrated amplifiers; Sound mixing apparatus; Sound processors; Sound recorders; Sound reverberation units; Sound samplers; Sounding apparatus and machines; Speaker enclosures; Speaker switches; Speakers [audio equipment]; Speakers for record players; Stereo amplifying apparatus; Stereophonic apparatus; Stereo tuners; Stereo signal generator apparatus; Sub-woofers; Surface acoustic wave filters; Voice processing systems.
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 information technology equipment includes as a broader category the opponent’s data processing equipment in Class 9. 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 equipment includes as a broader category the opponent’s audio and visual teaching apparatus in Class 9. 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 audio/visual and photographic devices; audio devices and radio receivers; amplifiers; amplifier tuners; aerial amplifiers; control amplifiers; digital amplifiers; electrical amplifiers; electroacoustic amplifiers; electronic amplifiers; keyboard amplifiers; power amplifiers; analogue sound modifiers; apparatus for recording sound; apparatus for the reproduction of sound; audio amplifiers; audio apparatus; audio electronic apparatus; audio speakers for home; electrical amplifiers for sound signals; electrical amplifiers for use with musical instruments; digital sound processors; loudspeaker stands [adapted for]; loudspeaker systems; loudspeakers; loudspeakers with built in amplifiers; monitor speakers; sound amplifying receivers; sound mixers with integrated amplifiers; sound mixing apparatus; sound processors; sound recorders; sound reverberation units; sound samplers; sounding apparatus and machines; speakers [audio equipment]; speakers for record players; stereo amplifying apparatus; stereophonic apparatus; stereo tuners; stereo signal generator apparatus; sub-woofers; surface acoustic wave filters; voice processing systems are identical to the the opponent´s apparatus and instruments for recording, transmitting or reproducing sound, images, video or data in Class 9 either because they are identically contained in both lists (including synonyms) or because the opponent´s goods include or overlap with the contested goods . Therefore, they are identical.
The contested speaker enclosures; speaker switches are included in the broader category of the opponent´s parts and fittings for all the aforesaid goods (apparatus and instruments for transmitting or reproducing sound) in Class 9. Therefore, they are identical.
- 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 are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.
- The signs
DK | dk IMMERSIVE SOUNDSCAPE |
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, for the reasons pointed out below.
The signs under comparison are both word marks in which the word as such is protected and not its written form. Both signs comprise the sequence of letters ‘DK’ that are neither descriptive, weak or otherwise allusive in a way that can materially affect the distinctiveness in relation to the relevant goods and are considered distinctive.
The contested sign also contains some additional elements, namely the words ‘IMMERSIVE SOUNDSCAPE’. Taking into account that both are English words, the relevant public will understand them as a clear reference to performances of sounds that create sensations of experiencing in a particular acoustic environment. As pointed out by the opponent in its observations and through Annexes E, F and G, the expression as a whole is widely used in the field of the relevant goods in Class 9 (mainly apparatus for transmission and reproduction of sounds) and is, therefore, devoid of any distinctive character.
Visually, the signs coincide in the sequence of letters ‘DK’ which is the first and most distinctive part of both signs. It also means that the whole earlier mark is included in the contested one. Although the contested sign contains additional verbal elements, they are non-distinctive and have almost no weight in the overall impression produced by the mark, for the reasons set out above.
Moreover, consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign ( the initial part) the one that first catches the attention of the reader.
Considering the above, and taking into account that the differences lie in non-distinctive elements, the signs are visually similar to an above average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters /D-K/, present identically in both signs. The pronunciation differs in the sound of the words /IMMERSIVE SOUNDSCAPE/ of the contested sign, which have no counterparts in the earlier mark. Since the differentiating elements are non-distinctive, the signs are aurally similar to an above average degree.
Conceptually, the combination of the letters ’DK’ has no meaning in the context of the relevant territory, whereas the words ‘IMMERSIVE SOUNDSCAPE’ do, as stated above.Consequently, 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.
In its observations, the opponent did explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation but did not file any evidence in order to prove such a claim.
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 average.
- Global assessment, other arguments and conclusion
A likelihood of confusion (including a likelihood of association) 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.
The goods and services at issue have been found identical or similar and the level of attention varies from average to above average. The earlier mark has a normal degree of distinctiveness.
The marks have been found visually and aurally similar to an above average degree, without this impression being altered by any conceptual perception for a part of the public.
In addition, account should also be taken of the fact that 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 has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
Considering all the above, there is a likelihood of confusion on the part of the public.
As the earlier right, EU registration No 6 399 356, ‘DK’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Chantal VAN RIEL | Alexandra APOSTOLAKIS | Richard BIANCHI |
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.