OPPOSITION No B 2 999 608

Dolce & Gabbana Trademarks S.r.l., Via Goldoni n. 10, 20129, Milano, Italy (opponent), represented by Barzano’ & Zanardo Milano S.P.A., Via Borgonuovo, 10, 20121, Milano, Italy (professional representative)

a g a i n s t

Shenzhen Siweier Technology Co. Ltd., 316 3F Blk. C Zhantao Technology Bldg., Minzhi Ave., Minzhi St., Longhua Dist., Shenzhen, People’s Republic of China (applicant), represented by Rolim Mietzel Wohlnick & Calheiros LLP, Graf-Adolf-Straße 14, 40212, Düsseldorf, Germany (professional representative).

On 11/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 999 608 is partially upheld, namely for the following contested goods:

Class 9: Computer peripheral devices; Sleeves for laptops; Covers for tablet computers; Smartwatches; Smartglasses; Pedometers; Cell phones; Global Positioning System [GPS] apparatus; Covers for smartphones; Cases for smartphones; Protective films adapted for smartphones; Virtual reality headsets; 3D spectacles; Earphones; Headphones; Cabinets for loudspeakers; Cameras [photography].

2. European Union trade mark application No 17 148 611 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 148 611, ‘DGwear’ (word mark), namely against all the goods in Class 9. The opposition is based on international trade mark registration No 649 385, ‘DG’, designating Benelux, Croatia, France, Germany, Hungary, Italy, Latvia, Portugal, Romania and Spain. The opponent invoked Article 8(1)(b)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.

1. The goods

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

Class 9: Spectacles, spectacle frames, optic instruments, radio devices, radio-recorders, radio-transmitters, radio-telephones, record players, audiotapes, tape recorders, videotapes and video recorders, compact disk readers, photo, film, optical, weighing, measuring and signaling cameras, video cameras, equipment for shooting and transmitting TV shows, radio and TV station repeaters, radio and TV antennas, amplification, reception and transmission equipment for radio and television signals, glasses for spectacles, control, inspection, emergency, rescue and teaching equipment, ear plugs for subs, coin- or token-operated automatic equipment, projectors and lamphouses, sound reproduction equipment, cash registers, calculators, fire extinguishers, electric irons, vacuum cleaners and electric brooms, computer software, computers, printers for computers, cards and microchips for computers, modems, fax machines.

The original registration certificate lists appareils photographiques, cinématographiques, optiques, de pesage, de mesurage et de signalisation; the Opposition Division will compare the goods in accordance with an exact translation, photo, film, optical, weighing, measuring and signaling apparatus, rather than the opponent’s translation, photo, film, optical, weighing, measuring and signaling cameras.

The contested goods are the following:

Class 9: Computer peripheral devices; Sleeves for laptops; Covers for tablet computers; Smartwatches; Smartglasses; Pedometers; Cell phones; Global Positioning System [GPS] apparatus; Covers for smartphones; Cases for smartphones; Protective films adapted for smartphones; Virtual reality headsets; 3D spectacles; Rechargeable electric batteries; Earphones; Headphones; Cabinets for loudspeakers; Cameras [photography]; Electric wires.

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.

The contested computer peripheral devices include as a broader category the opponent’s printers for computers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cameras [photography] are included in the broad category of the opponent’s equipment for shooting and transmitting TV shows. Therefore, they are identical.

The contested pedometers are included in the broad category of the opponent’s weighing, measuring and signaling apparatus. Therefore, they are identical.

The contested smartwatches; cell phones; global positioning system [GPS] apparatus are similar to a high degree to the opponent’s computers. They have the same nature, are provided by the same undertakings and are sold through the same distribution channels. Furthermore, they target the same public.

The contested smartglasses; virtual reality headsets; 3D spectacles are similar to a high degree to the opponent’s computers. It is clear that a link exists between these goods and that they can be considered complementary to each other. These goods can be produced by the same manufacturers (a computer manufacturer will often also manufacture products specifically designed for use with computers, e.g. virtual reality headsets) and they are normally sold through the same distribution channels. Moreover, they target the same public.

The contested sleeves for laptops; covers for tablet computers; covers for smartphones; cases for smartphones; protective films adapted for smartphones are similar to a low degree to the opponent’s computers. Since nowadays mobile phones are increasingly smartphones that incorporate and function as computers, the link between these goods is clear. It is increasingly difficult to establish a dividing line between small tablet computers and large smartphones, both of which have protective covers that are manufactured by the same undertakings and target the same public. The contested goods are complementary to the opponent’s goods, they target the same public and they are sold in the same outlets.

The contested earphones; headphones; cabinets for loudspeakers are similar to the opponent’s sound reproduction equipment. They have the same nature, are normally provided by the same undertakings and are sold through the same distribution channels. Furthermore, they target the same public.

The contested electric wires; rechargeable electric batteries are dissimilar to all the opponent’s goods. These goods are exclusively used for transporting or producing electricity. The sole fact that the contested goods can be connected to any device that is operated using electricity does not make them, in the view of the consumer, similar. The nature and purpose of the contested goods are clearly different from those of the devices that may be connected to them. Therefore, the applicant’s goods are considered dissimilar to all the opponent’s goods in Class 9.

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 or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention, depending on the technical sophistication and price of the goods, may vary from average (e.g. for covers for laptop computers) to high (e.g. for computers).

3. The signs

DG	DGwear
Earlier trade mark	Contested sign

The relevant territories are Benelux, Croatia, France, Germany, Hungary, Italy, Latvia, Portugal, Romania and Spain.

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 signs are word marks. The earlier mark consists of the letters ‘DG’. The public will understand the sign as conveying the concept of letters of the alphabet. It is meaningless for the relevant public in relation to the relevant goods and, therefore, distinctive.

The contested sign, namely ‘DGwear’, is meaningless in relation to the relevant goods for the relevant public and, therefore, distinctive. The public will understand ‘DG’ as conveying the concept of letters of the alphabet; however, ‘wear’ is an English word and is meaningless for the relevant public.

Visually, the signs coincide in the letters ‘DG’, in the same order. However, they differ in the word ‘wear’ in the contested sign. The earlier mark is included in its entirety as the first element of the contested sign.

Therefore, the signs 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 ‛DG’, present identically in both signs. The pronunciation differs in the sound of the word ‛wear’ of the contested mark, which has no counterpart in the earlier sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as conveying the concept of the letters ‘DG’, they 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.

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, and the degree of similarity between the marks and between the goods or services identified (recital 11 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 are partly identical, partly similar to various degrees and partly dissimilar.

The signs are visually and aurally similar to an average degree and conceptually identical. They coincide in the letters ‘DG’, the sole element of the earlier mark, which is included in its entirety as the first element of the contested sign, in which it has an independent role. The remaining element of the contested mark does not suffice to counteract the aforementioned commonality. Account must be 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).

Consequently, the Opposition Division considers that there is a likelihood that the relevant public will confuse or associate the signs at issue and believe that the goods come from the same undertaking or from economically linked undertakings.

Indeed, it is highly conceivable that, in the present case, the relevant consumer will perceive the contested mark (‘DGwear’) as a sub-brand, a variation of the earlier mark (‘DG’), configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 649 385, designating Benelux, Croatia, France, Germany, Hungary, Italy, Latvia, Portugal, Romania and Spain. 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 the goods found to be identical or similar to various degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Volker MENSING Patricia LÓPEZ FERNÁNDEZ DE CORRES Dorothée SCHLIEPHAKE

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.