DOMIGO | Decision 2730722
Date Published: Sep 25, 2017
OPPOSITION No B 2 730 722
Domino Printing Sciences Plc, Trafalgar Way, Bar Hill, Cambridge, Cambridgeshire CB3 8TU, United Kingdom (opponent), represented by Barker Brettell LLP, 100 Hagley Road, Edgbaston, Birmingham B16 8QQ, United Kingdom (professional representative)
a g a i n s t
Chongqing Song One Music Technology Co., Ltd., Standard Workshop 2, JiangQiao Road No. 9, Nan’an District, ChongQing, People’s Republic of China (applicant), represented by Global IP Law Ltd., Wisteria House, Clarendon Road, South Woodford, London E18 2AW, United Kingdom (professional representative).
On 25/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 730 722 is upheld for all the contested goods, namely:
Class 9: Computer software, recorded; computer software applications, downloadable; computer programs [downloadable software].
2. European Union trade mark application No 15 215 668 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 215 668, namely against some of the goods in Class 9. The opposition is based on, inter alia, European Union trade mark registration No 14 497 309. The opponent invoked Article 8(1)(b) and 8(5) 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 14 497 309.
- The goods
The goods on which the opposition is based are the following:
Class 7: Printing machines and apparatus; printing machines (not for office use); digital printers; impact printers; off-set printers; card printing machines; Ink jet printing apparatus and machines; print and apply labelling machines; laser printing machines and thermal printing machines; thermal transfer overprinters; commercial or industrial radio frequency identification (RFID) printing and encoding machines; ribbons for thermal transfer overprinters being part of printing machines; tapes for thermal transfer overprinters being part of printing machines; laser marking apparatus; labelling machines; ribbons for printing machines, print and apply labelling machines being part of printing machines; coding machines; engraving machines; industrial marking machines; bar code printers; laser coding machines; print heads for coding or marking machines being parts of printing machines; continuous ink jet coding or marking printers; drop on demand piezo ink jet coding or marking printers; drop on demand valve ink jet coding or marking printers; binary ink jet coding or marking printers; laser etching apparatus; scribing laser coding or marking apparatus for industrial use; laser tube or laser generator for laser coding or marking machines being parts of printing machines; filters for ink jet coding or marking printers, laser coding or marking apparatus; ribbons used for coding apparatus being part of printing machines; shaft encoders for use with ink jet coding or marking printers and laser marking or coding machines being parts of printing machines; print heads for printing machine and apparatus being parts of printing machines; ink-jet printing machines, laser coding or marking apparatus, thermal transfer overprinters, print and apply labelling machines being part of printing machines; ink circulating apparatus for printing machines; ink dispensing apparatus for printing machines; ink stirrers for printing machines; inked ribbons for printing machines being part of printing machines; inking apparatus for printing machines; pumps for ink feeding; thermal application machines for coding and marking; laminators (surface treatment for plastic printing); pumps for ink jet coding or marking printers, laser coding or marking apparatus; panels or keyboards, all being integrated with, inkjet coding or marking printers, laser coding or marking apparatus; stands for machines; mounting for machines; bracketing for machines; cabinets for ink jet coding or marking printers, laser coding or marking apparatus, thermal transfer overprinters, industrial mark apparatus, print and apply labelling machines; electrical and electronic control apparatus for all the aforesaid goods, being integrated into those goods; off-set printers; parts, fittings and accessories for all the aforesaid goods.
Class 9: Printers (for home and office use); printers; digital printers; impact printers; laser printers; Ink jet printing apparatus; ink jet marking apparatus; laser marking apparatus; ink jet printers; electrical and electronic control apparatus for the aforesaid goods; computer software for use in controlling the operation of industrial ink jet printers, of industrial ink jet marking apparatus and of industrial laser marking apparatus; printheads for ink jet printers; parts and fittings for all the aforesaid goods.
The contested goods are the following:
Class 9: Computer software, recorded; computer software applications, downloadable; computer programs [downloadable software].
The contested computer software, recorded; computer software applications, downloadable; computer programs [downloadable software] overlap with the opponent’s computer software for use in controlling the operation of industrial ink jet printers, of industrial ink jet marking apparatus and of industrial laser marking apparatus, to the extent that it is possible to find on the market computer programs with both the characteristics of the contested goods and the application of the opponent’s goods. 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 at issue are directed at the public at large. The public’s degree of attention is average.
- The signs
DOMINO | |
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, which means that the word as such is protected and not its written form. It consists solely of the word ‘DOMINO’, which will be understood throughout at least a substantial part of the territory as referring to a small rectangular block used in the game of dominoes (e.g. by the English-speaking part of the public) or said game itself (e.g. by the Italian-speaking part of the public), or as a misspelling of the game (e.g. by the French-speaking part of the public, for which the equivalent is ‘dominos’). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
The contested sign is a figurative sign that consists of the verbal element ‘DOMIGO’, in slightly stylised red bold upper case letters, in which the letter ‘I’ is depicted upside down. The word has no meaning for the relevant public and is therefore distinctive, while the graphic features of the sign have limited relevance in the present comparison. When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).
The signs have no elements that could be considered clearly more dominant than other elements.
Visually, the signs coincide in the letters ‘DOMI*O’. They differ in their fifth letters, namely the letter ‘N’ of the earlier mark and the letter ‘G’ of the contested sign.
Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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. In the present case, the marks have in common five out of six letters, four of which are identically reproduced in their first, and therefore most important, parts.
In view of the above and of the fact that the marks otherwise differ only in elements that are of limited relevance (i.e. the stylisation of the contested sign), they are visually similar to an 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 ‛DOMI*O’, present identically in both signs. The pronunciation differs in the sounds of the letters ‘N’ of the earlier mark and ‘G’ of the contested sign. Therefore, the signs are aurally highly similar.
Conceptually, although the public in the relevant territory will perceive the meaning of the earlier mark, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, 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.
According to the opponent, the earlier mark enjoys a reputation. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark’s meaning as a whole has no connection with 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 goods are identical, the degree of attention of the relevant public is average and the earlier mark has been considered as having a normal degree of distinctive character.
The signs are visually similar to an average degree and aurally similar to a high degree, because they coincide in five out of six letters/sounds and four of these are placed at the beginnings of the marks, where consumers tend to focus their attention. The signs differ in elements of limited relevance, namely the stylisation of the contested sign, and placed where consumers do not focus their attention (i.e. the differing fifth letters). Admittedly, the marks are conceptually not similar. However, 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). Therefore, the lack of conceptual similarity is outweighed by the facts that the marks differ in less relevant elements, in only a single letter and that the relevant goods are identical.
Moreover, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
Therefore, the differences between the marks are not sufficient to avoid a likelihood of confusion on the relevant consumers.
Consequently, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 497 309. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier right ‘DOMINO’ 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).
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.
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
Michele M. BENEDETTI-ALOISI | Orsola LAMBERTI | Francesca CANGERI SERRANO |
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.