OPPOSITION No B 2 733 478

UL International Demko A/S, Borupvang 5A, 2750, Ballerup, Denmark (opponent), represented by Wynne-Jones, Laine & James LLP, Essex Place, 22 Rodney Road, Cheltenham, GL50 1JJ, United Kingdom (professional representative)

a g a i n s t

Alexandre Urpí García, C/ Major de Sarriá, Nº 83, 2º-4ª, 08017, Barcelona, Spain (applicant), represented by R. Volart Pons y Cia., S.L., Pau Claris, 77, 2º, 1ª; 08010, Barcelona, Spain (professional representative).

On 12/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 733 478 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 227 821, . The opposition is based on Danish trade mark registration No VR 1989 03987, , and Danish trade mark registration No FR 1952 00002, . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods and services invoked, which is the best light in which the opponent’s case can be considered.

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 Danish trade mark registration No VR 1989 03987,

1. The goods and services

The goods and services on which the opposition is based are the following according to the alphabetical list of goods and services of the 5th edition of the Nice Classification, 1987:

Class 9: All goods.

Class 10: All goods.

Class 35: All services.

The contested goods and services are, after a limitation, the following:

Class 9: Enlarging apparatus [photography]; Phototelegraphy apparatus; Speed measuring apparatus [photography]; Photographic developing apparatus; Light boxes; Speed measuring apparatus [photography]; Spools [photography]; Darkrooms [photography]; Washing trays [photography]; Diaphragms [photography]; Shutter releases; Drying racks [photography]; Filters for ultraviolet rays, for photography; Flash bulbs; Instruments for analysing photographs; Plates (Carriers for dark -) [photography]; Lamps (Darkroom -) [photography]; Lenses for astrophotography; Shutters [photography]; Screens [photography]; Reflectors for photographing; Pouches for photographic apparatus; Computer software to enable the transmission of photographs to mobile telephones; Computer software for organizing and viewing digital images and photographs; Photographic filters and diffusers.

Class 35: Retailing, wholesaling and sale via global computer networks of enlarging apparatus (photography), phototelegraphy apparatus, speed measuring apparatus (photography), photographic developing apparatus, light boxes, spools (photography), darkrooms (photography), washing trays (photography), diaphragms (photography), shutter releases, drying racks (photography), flash bulbs, instruments for analysing photographs, carriers for dark plates (photography), darkroom lamps (photography), lenses for astrophotography, shutters (photography), screens (photography), reflectors for photographing, pouches for photographic apparatus, computer software to enable the transmission of photographs to mobile telephones, computer software for organising and viewing digital images and photographs, filters for ultraviolet rays, for photography, photographic filters and diffusers.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

2. 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 assumed 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 higher than average, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Denmark.

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 figurative mark, composed of a slightly stylised black upper case letter ‘D’, set against a white background in a black circle.

The contested sign is a figurative sign, containing a slightly stylised grey upper case letter ‘D’, placed inside a grey circle, against a horizontally striped background in grey and white. On the right of this figurative element is the stylised word ‘DENTALIZE’, with the letters ‘DENTAL’ in grey and the letters ‘IZE’ in black, grey and white. The letters ‘DENTALIZE’ are depicted with shadows that create an impression of three-dimensionality.

The element ‘D’ of the earlier mark and the contested sign will be understood as the letter ‘D’ by the relevant public. The element ‘D’ in the contested sign could also be perceived as the initial letter of the verbal element ‘DENTALIZE’. However, as it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.

The relevant public is familiar with English, and will therefore perceive the verbal element ‘DENTALIZE’ of the contested sign as a fanciful word having to do with teeth, since the word ‘dental’ is used to describe things that relate to teeth or to the care and treatment of teeth (information extracted from Collins English Dictionary on 30/05/2018 at https://www.collinsdictionary.com/dictionary/english/dental). As this verbal element is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.

The figurative elements of the signs are of limited distinctiveness, as they are of a purely decorative nature.

The earlier mark has no element that could be considered clearly more dominant than other elements.

In the contested sign, the verbal element ‘DENTALIZE’ is the dominant element, as it is the most eye-catching.

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).

Visually, the signs coincide to the extent that in each the figurative element represents a single letter ‘D’ in a circle. However, there are noticeable differences between these elements. Firstly, they have different colours, namely a black letter ‘D’ against a white background in the earlier mark, and a grey letter ‘D’ against a grey-and-white striped background in the contested sign. Secondly, their shapes differ, in that the element ‘D’ in the earlier mark is in a standard script, whereas the letter ‘D’ of the contested sign is slightly italicised. Furthermore, the marks differ because the additional and distinctive verbal element ‘DENTALIZE’ is dominant in the contested sign and has no counterpart in the earlier mark.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short marks, such as the earlier mark in the present case, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letter ‛D’, present identically in both signs. In the contested sign, the letter ‘D’ may not even be pronounced. The pronunciation differs in the sound of the letters ‛DENTALIZE’ of the contested sign, which have no counterparts in the earlier sign. Therefore, the pronunciations of the marks differ substantially in length and rhythm.

Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The public in the relevant territory will perceive the general concept of a single letter ‘D’ in both signs. However, the letter ‘D’ in the contested sign may also be perceived as the initial letter of the verbal element ‘DENTALIZE’.

As the signs will be associated with a similar meaning in the element ‘D’, they are conceptually similar to a low degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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, 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.

5. 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).

It must be borne in mind that the relevant public includes professionals, for example in the photography sector, as well as the general public. The degree of attention is deemed to vary between average and higher than average.

The signs are visually, aurally and conceptually similar to only a low degree. The similarities between the signs are limited to the fact that both figurative elements depict a single letter ‘D’ in a circle. The way in which this letter appears in each sign is determinant and the shapes and colours of the letters differ in the signs. Moreover, the dominant element ‘DENTALIZE’ of the contested sign creates a significant difference between the trade marks. Therefore, it is considered that the additional and different elements are clearly perceptible and sufficient to exclude any likelihood of confusion, or risk of association, between the marks.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

The opponent has also based its opposition on Danish trade mark registration No FR 1952 00002 for the figurative mark . Since this mark is identical to the one that has been compared and covers a narrower scope of goods, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

COSTS

According to Article 109(1) EUTMR, 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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Loreto URRACA LUQUE

Lena FRANKENBERG GLANTZ

Plamen IVANOV

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.