Dna | Decision 2610684 - DNA Oy v. LAM Engineering
Date Published: Oct 10, 2017
OPPOSITION No B 2 610 684
DNA Oyj, Läkkisepäntie 21, 00620 Helsinki, Finland (opponent), represented by Krogerus Attorneys Ltd, Unioninkatu 22, 00130 Helsinki, Finland (professional representative).
a g a i n s t
LAM Engineering, Via Magellano 17, 20900 Monza, Italy, (applicant).
On 17/03/2017, the Opposition Division takes the following
1. Opposition No B 2 610 684 is upheld for all the contested goods and services.
2. European Union trade mark application No 14 654 032 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 654 032 , in Classes 7, 12 and 37. The opposition is based on, inter alia, European Unión trade mark registration No 5 717 971. 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 Unión trade mark registration No 5 717 971.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; remote controlled apparatus and instruments and programs used for mobile control; portable telecommunications apparatus; telecommunications networks; memory cards, SIM cards, smart cards; apparatus for recording, transmission or reproduction of sound or images; electronic entertainment apparatus; automatic vending machines and mechanisms for coin-operated apparatus; mobile terminals, PDA apparatus and associated programs; computer programs.
Class 16: Paper, cardboard and goods made from these materials, printed matter; photographs; stationery; artists' materials; office requisites; instructional and teaching material (except apparatus); packaging materials made of plastic.
Class 18: Leather and imitations of leather and goods of these materials; bags, rucksacks, travelling bags; umbrellas, parasols, and walking sticks.
Class 28: Games and playthings.
Class 35: Advertising; business management; business administration; office functions.
Class 37: Building construction; repair; installation services.
Class 38: Telecommunications.
Class 41: Education; providing of training; entertainment; online entertainment services for Internet, mobile and television environments; sporting and cultural activities.
Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
The contested goods and services are the following:
Class 7: Engines, powertrains, and generic machine parts.
Class 12: Vehicles and conveyances.
Class 37: Automobile repair and maintenance.
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 Classes 7 and 12
The contested goods engines, powertrains, and generic machine parts, in Class 7 and vehicles and conveyances, in Class 12 are similar to the opponent´s repair; installation services. Indeed, in the relevant market sector, it is common for the manufacturers of the contested goods to also provide the opponent’s repair; installation services. Additionally, the goods and services at issue are commercialized through the same channels and are intended for the same relevant consumer.
Contested services in Class 37
The contested automobile repair and maintenance are included in the broad category of, or overlap with, the opponent’s repair; installation services. 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 and services found to be identical or similar are directed at the public at large and directed at business customers with specific professional knowledge or expertise.
The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods and services.
- The signs
Earlier trade mark
The relevant territory is 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 common word ‘DNA’ is the English abbreviation for ‘Deoxyribonucleic acid’. However, it is not meaningful in non-English-speaking territories where other abbreviations are used, such as ‘ADN’ in French, Spanish and Portuguese. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public. For this part of the public, ‘DNA’ element is distinctive for the relevant goods and services.
The earlier mark is a figurative mark, consisting of the letters ‘DNA’ depicted in white stylised typescript against a black oval background.
The contested sign is a figurative mark, consisting of the word ‘DNA’, depicted in stylised black letters with the exception of the last letter “A” which is magenta.
Neither mark has any element that could be clearly considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the letters “DNA”. However, they differ in the respective representation of these letters in each sign, in the black oval background of the earlier mark and in the colour used in the contested sign. However, it should be noted that when the 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). This principle is fully applicable to the present case, since the relevant public will clearly read and pronounce the element ‘DNA’ in the marks under comparison. The stylised representation of the verbal element of trade marks does not alter the public’s perception of these letters. Consumers are accustomed to encountering trade marks in which one or more letters are depicted in a fanciful way, as in the present case and, therefore, the stylisation of the marks will be perceived as an ordinary graphical means of bringing the words in question to the public’s attention. In view of the foregoing, taking into account all the relevant factors, it is concluded that the marks are visually similar to a high degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛DNA’, present identically in both signs. Therefore, the signs are identical.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as the abbreviation for ‘Deoxyribonucleic acid’, the signs are conceptually identical.
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 has been extensively used and enjoys an enhanced scope of protection. 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 as a whole has no meaning for any of the goods and services 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
The goods and services under comparison are partly identical and partly similar. The signs are similar on account of the letters ‘DNA’ that they have in common. The marks differ only in the graphic and figurative elements of the signs, which have less impact on the consumer than the verbal elements of the sign.
Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods or services covered are from the same or economically linked undertakings. This finding is true even for those goods and services where the level of attention will be higher than average. In this regard, even consumers with a high level of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
In the present case, consumers may confuse both trade marks or legitimately believe that the contested mark is a new version or a brand variation of the earlier figurative mark ‘DNA’ and, consequently, that the contested goods and services originate from the same undertaking that provides services identified by the earlier mark or from economically linked undertakings. This is especially true considering 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 signs are not sufficient to offset the similar overall impressions created by the marks in the minds of consumers.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 5 717 971. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
It follows from the above that the contested trade mark must be rejected for all the contested goods and services.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As the earlier right No 5 717 971 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights 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.
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
Begoña URIARTE VALIENTE
Pedro JURADO MONTEJANO
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.