OPPOSITION No B 2 449 430

D'Orsay Paris Sas, 99 boulevard Haussmann, 75008 Paris, France (opponent), represented by Hugotavocats, 4 Place André Malraux, 75001 Paris, France (professional representative)

a g a i n s t

Marcel Kloppenburg, Hegelplatz 1, 10117 Berlin, Germany (applicant), represented by Merleker & Mielke, Hardenbergstr. 10, 10623 Berlin, Germany (professional representative).

On 15/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 449 430 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of Community trade mark application No 13 194 824, namely against all the goods in Class 3. The opposition is based on Community trade mark registration No 6 615 983. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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.

1. The goods

The goods on which the opposition is based are the following:

Class 3: Perfumes, perfumery, moisturising creams and milks for the skin; soaps; shower gels; bath salts and oils (not for medical purposes).

The contested goods are the following:

Class 3: Perfume water; Cosmetics; Shaving soap; Soaps; Moustache wax; Hair lotions; Skin cream; Skin care preparations; Aftershave; Shampoo.

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.

2. The signs

DANDY	Confessions of a Dandy
Earlier trade mark	Contested sign

The relevant territory is the European Union.

Visually, the signs are similar to the extent that they coincide in the verbal element ‘DANDY’. However, they differ in the additional elements ‘Confessions of a’ placed at the beginning of the contested sign, which have no counterparts in the earlier mark.

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 ‛DANDY’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‛Confessions of a’ of the contested sign, which have no counterparts in the earlier mark. Due to the presence of the additional three words at the beginning of the contested sign, the conflicting marks differ significantly in their length, rhythm and intonation.

Conceptually, the word ‘dandy’, present in both signs, will be associated by the part of the relevant public, such as the English-, French- and German-speaking consumers with ‘a man greatly concerned with smartness of dress; beau, gallant’. The English-speaking part of the public may also perceive the term ‘dandy’ as an adjective meaning ‘very good or fine’ (information extracted from Collins English Dictionary on 10/12/2015 at http://www.collinsdictionary.com/dictionary/english/dandy).

The term ‘confessions’ of the contested sign will be understood by the English- and French-speaking part of the public as a plural form of a noun meaning ‘an acknowledgement that one has done something about which one is ashamed or embarrassed’ or as referring to ‘intimate personal revelations, especially as presented in a sensationalized form in a book, newspaper, or film’ (information extracted from Oxford English Dictionary on 10/12/2015 at http://www.oxforddictionaries.com/definition/english/confession). This term will be perceived as such also by a part of the non-English- and non-French-speaking consumers, as the word ‘confession’ is very close to the equivalent word in the other official languages in the relevant territory, e.g. Italian (‘confessione’) or Spanish (‘confesión’).

The word ‘of’ in the contested sign is an English preposition used to indicate possession, origin, or association and the term ‘the’ is an English determiner used preceding a noun, that has been previously specified.

For the part of the public who understands all of these terms, the contested sign as a whole will be perceived as ‘personal revelations of the beau’, while the earlier mark as denoting ‘a man greatly concerned with smartness of dress; beau; gallant’. The marks are therefore conceptually similar to the extent that they both refer to the concept of a man who places particular importance upon physical appearance.

For the consumers who will understand only the word ‘dandy’, the signs are similar to this extent. For the part of the public, who will only understand the meaning of the word ‘confessions’, the conflicting marks are conceptually dissimilar.

For the remaining part of the relevant public 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.

Taking into account the abovementioned visual, aural and, for part of the public, conceptual coincidences, the signs under comparison are similar to a certain degree.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The earlier mark is a word mark composed of a single verbal element and, therefore, has no element that could be clearly considered more distinctive than other elements.

The element ‘dandy’ in the contested sign will be associated by the part of the relevant public, inter alia, English-, French- and German-speaking customers with ‘a man greatly concerned with smartness of dress; beau, gallant’ or, by the English-speaking public, with an adjective meaning ‘very good or fine’. Bearing in mind that the relevant goods are perfumes, various cosmetics, soaps etc., it could be considered as somewhat allusive or laudatory by the relevant public that will associate it with this meaning. Nevertheless, the link between this term and the goods at issue is not direct enough for this element to be considered weak or non-distinctive. Therefore, the contested sign has no elements which could be considered clearly more distinctive than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

4. 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, bearing in mind that the relevant goods are perfumes, various cosmetics, soaps etc., the earlier trade mark as a whole could be considered as somewhat allusive or laudatory by the relevant public that will associate it with a meaning, since the term ‘dandy’ will be associated by the part of the relevant public, inter alia, English-, French- and German-speaking customers with ‘a man greatly concerned with smartness of dress; beau, gallant’ or, by the English-speaking public, with an adjective meaning ‘very good or fine’. Nevertheless, the link between this term and the goods at issue is not direct enough for the earlier mark to be considered weak or non-distinctive. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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 assumed to be identical are directed at the public at large. The degree of attention will be average.

6. Global assessment, other arguments and conclusion

The goods were assumed to be identical. The conflicting signs are visually, aurally and, for part of the relevant public, conceptually similar to the extent that they coincide in the element ‘DANDY’. The differences between the signs lie in the additional verbal elements ‘Confessions of a’, placed at the beginning of the contested sign. For a part of the public, who will understand only the word ‘confessions’ of the contested sign, the marks are also conceptually dissimilar.

The earlier mark is composed of five letters and is rather short. The contested sign is significantly longer, as it comprises four verbal elements and the total of 19 characters. The marks have different length, structure and will be pronounced with different rhythm and intonation. Such striking visual and aural differences will not go unnoticed by the relevant public. Even though the earlier mark is entirely included in the contested sign, the abovementioned significant differences between the signs result in different overall impression.

The first parts of the conflicting marks are different. 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. Consequently, the different first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

Furthermore, the goods in question are normally arranged on shelves in self-service areas and where consumers are guided more by the visual impact of the mark.

Whilst oral communication in respect of the products and the trade mark is not excluded, the choice of the goods in question is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion. Therefore, the significant visual differences between the signs caused by the additional verbal elements of the contested sign and, therefore, strikingly different length and structure of the conflicting marks, are particularly relevant when assessing the likelihood of confusion between them.

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) CTMR, 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 (7)(d)(ii) CTMIR, 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.

The Opposition Division

Gordana TRIPKOVIĆ

Eamonn KELLY

Ana MUÑIZ RODRÍGUEZ

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.