OPPOSITION No B 2 954 454

Dreams Limited, Knaves Beech Business Centre, 14 Davies Way Loudwater, HP10 9YU, High Wycombe,, United Kingdom (opponent), represented by Lane IP Limited, 2 Throgmorton Avenue, EC2N 2DG, London, United Kingdom (professional representative)

a g a i n s t

ASI d.o.o. Idrija, Ljubljanska cesta 16, 1360 Vrhnika, Slovenia (applicant), represented by Patentni Biro AF D.O.O., Kotnikova 32 p.p. 2706, 1001 Ljubljana, Slovenia (professional representative).

On 18/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 954 454 is upheld for all the contested goods, namely

Class 20: Furniture for motorhomes; Built-in cupboards for motorhomes; Cupboards for motorhomes; Beds for motorhomes; Tables for motorhomes; Folding beds for motorhomes; Foldaway beds for motorhomes; Sofa beds for motorhomes; Folding tables for motorhomes; Foldaway tables for motorhomes.

2. European Union trade mark application No 16 646 002 is rejected for all the contested goods. It may proceed for the remaining goods

3. The applicant bears the costs, fixed at EUR 620.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 some of the goods of European Union trade mark application No 16 646 002 for the word mark ‘Dream4’, namely against all the goods in Class 20. The opposition is based on inter alia, European Union trade mark registration No 11 424 538 for the word mark ‘DREAMS’. The opponent invoked Articles 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 11 424 538 for the word mark ‘DREAMS’.

1. The goods and services

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

Class 20: Furniture; bedroom furniture; mirrors; beds; water beds; divans; bedsteads; headboards; bedding, other than bed linen; pillows; mattresses; open spring and pocket spring mattresses; memory foam and latex mattresses; futons; air cushions and air pillows; air mattresses; sleeping bags; bed casters not of metal; bed fittings not of metal; chairs; armchairs; cabinets; chests of drawers; desks; footstools; cots and cradles; parts and fittings for all the aforesaid goods.

Class 24: Fabrics and textiles for beds and furniture; bed linen; duvets; bed covers; bed blankets, bed clothes; covers for duvets; mattress covers; covers for pillows and pillow cases; covers for cushions; bedspreads; covers for hot water bottles; pyjama cases; furniture coverings of textile; quilts; parts and fittings for all the aforesaid goods.

Class 35: Retail services relating to the sale of furniture, bedroom furniture, mirrors, beds, water beds, divans, bedsteads, headboards, bedding, pillows, mattresses, open spring and pocket spring mattresses, memory foam and latex mattresses, futons, air cushions and air pillows, air mattresses, sleeping bags, bed casters not of metal, bed fittings not of metal, chairs, armchairs, cabinets, chests of drawers, desks, footstools, cots and cradles, fabrics and textiles for beds and furniture, bed linen, duvets, bed covers, bed blankets, bed clothes, covers for duvets, mattress covers, covers for pillows and pillow cases, covers for cushions, bedspreads, covers for hot water bottles, pyjama cases, furniture coverings of textile, eiderdowns, quilts, parts and fittings for all the aforesaid goods, all provided in a retail furniture and bedding superstore, online via the Internet or other interactive electronic platforms, via mail order or catalogues or by means of telecommunications; information, advisory and consultancy services relating to all of the aforesaid.

The contested goods are the following:

Class 20: Furniture for motorhomes; Built-in cupboards for motorhomes; Cupboards for motorhomes; Beds for motorhomes; Tables for motorhomes; Folding beds for motorhomes; Foldaway beds for motorhomes; Sofa beds for motorhomes; Folding tables for motorhomes; Foldaway tables for motorhomes.

In its observations, the applicant explains amply the differences between the furniture produced for motorhomes and the furniture, as known in general. In this regard, the Opposition Division notes that the applicant’s goods, although produced for motorhomes, are covered by the broad category of the opponent’s furniture that consist of large objects such as tables, chairs, or bed that are used in a room (including motorhome’s rooms) for sitting or lying on or for putting things on or in (definition extracted from the Collins Dictionary, online version).

Consequently, the contested Furniture for motorhomes; Built-in cupboards for motorhomes; Cupboards for motorhomes; Beds for motorhomes; Tables for motorhomes; Folding beds for motorhomes; Foldaway beds for motorhomes; Sofa beds for motorhomes; Folding tables for motorhomes; Foldaway tables for motorhomes are included in the opponent’s broad category of furniture. Therefore, these goods are identical.

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 found to be identical are directed at the public at large with a normal level of attentiveness.

3. The signs

DREAMS	Dream4
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).

Both marks are word marks. In the word marks, it is the word as such that is protected and not its written form. Additionally, for the same reason, the signs have no element(s) that could be considered more dominant (visually eye-catching) than other element(s).

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The word ‘Dream’, which is the first element of the contested sign and the singular form of the word ‘DREAMS’ which is the only element of the earlier mark are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The elements ‘Dream’ and its plural form ‘Dreams’ present in the signs will be understood by the relevant public as referring to an imaginary series of images, thoughts and emotions, often with a story-like quality generated by mental activity during sleep or simply as a wish, fantasy, plan or ambition’ (Collins English Dictionary online version). Consequently, the state of dreaming may in fact appear when sleeping; however, this does not mean that the words ‘DREAMS’ or ‘DREAM’ per se describe the relevant goods in question, in particular beds, as it would be the case for example with the word ‘SLEEP’. As a result, these words are neither descriptive nor lacking distinctiveness for any of the relevant goods, as they do not describe or even allude to any of their essential characteristics. Therefore, they enjoy an average degree of distinctiveness.

The Opposition Division observes that the contested sign ‘Dream4’ as a whole does not convey any concrete meaning in contrast to the expressions commonly used in the English language, as suggested by the applicant, such as ‘4life’, ‘cash4health’, where the numeral 4 plays a role of the preposition ‘for’. In the present case, the numeral 4 is not followed by any word which would create with it a semantic whole, as it is demonstrated in the examples mentioned above. In the case at stake, the number 4 is placed at the end of the contested sign and will be seen as its separate element. As it is a very common market practice to add numerals at the end of the trade marks, as correctly suggested by the applicant, the number 4 may be perceived by the relevant English-speaking part of the public as a reference to a specific or new product series and, therefore, it will be considered as semantically subordinate in relation to the element ‘Dream’; it follows that the public will afford more trade mark significance to the referred verbal element, than to the numeral following it.

Visually and aurally, the signs coincide in the term ‘DREAM’, which constitutes the main indicator of commercial origin in the contested sign and the singular number of word ‘DREAMS’, present in the earlier mark. Additionally, the Opposition Division is of the opinion that the difference arising from the final letter ‘S’ of the earlier mark can be easily overlooked by the relevant public. The signs also differ in the numeral ‘4’ present at the end of the contested sign, which, as explained above, is likely to be perceived as a indicating a particular brand-line of the mark ‘Dream’.

Consequently, the degree of visual and aural similarity must be considered high.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As a result the signs are conceptually highly similar.

Therefore, 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.

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 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

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 contested goods are identical to the goods for which the earlier mark is registered. They are directed at the public at large with a normal degree of attention.

The inherent distinctiveness of the earlier mark is normal.

The signs under comparison are visually, aurally and conceptually highly similar on the account of the common, independent and normally distinctive term ‘DREAM’, which is the initial and fully distinctive element of the contested sign and is totally included in the only element of the earlier mark.

As explained above, the additional elements present in both signs have a reduced impact on the assessment of the likelihood of confusion between the signs in question as they are limited to the final letter ‘S’ placed at the end of the verbal element of the earlier mark and the numeral 4 placed at the end of the contested sign. The latter one may be perceived by the relevant consumers as a reference to a specific or new product series and, therefore, its impact will be limited when assessing the likelihood of confusion between the signs in question. As a result, these differing elements are not sufficient to exclude a likelihood of confusion between the marks under dispute resulting from their coinciding distinctive element ‘DREAM’.

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, considering the visual, aural and conceptual similarities between the signs, it is concluded that consumers, relying on their imperfect recollection of the earlier mark, may think that the contested goods, found to be identical, come from the same or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion, including a likelihood of association on the part of the English-speaking part of the public and, therefore, the opposition is well founded on the basis of the European Union trade mark registration No 11 424 538. 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.

If follows that the contested trade mark must be rejected for all the contested goods.

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 extensive use and 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 European Union trade mark registration No 11 424 538 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 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.

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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Gueorgui IVANOV

Monika CISZEWSKA

Marzena MACIAK

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.