OPPOSITION No B 3 051 701

S.C. Dragonul Rosu S.A., str. Dragonul Rosu 1-10,etaj 3, Biroul 29, Centrul Comercial Dragonul Rosu Mega Shop, Sat Fundeni, județul Ilfov, Dobroești, Romania (opponent), represented by S.C. Weizmann Ariana & Partners Agentie de Proprietate Intelectuala S.r.l., str 11 Iunie, nr 51, sc A, etaj 1, ap 4, sector 4, 040171 Bucuresti, Romania (professional representative)

a g a i n s t

Cruzel Limited, First Floor, Thavies Inn House, 3-4 Holborn Circus, London EC1 N2HA, United Kingdom (applicant), represented by Taliens, 33 rue de Miromesnil, 75008 Paris, France (professional representative).

On 10/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 051 701 is upheld for all the contested services.

2. European Union trade mark application No 17 497 504 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 497 504 for the word mark ‘EUROPEAN DRAGONS’, namely against all the services in Classes 35 and 36. The opposition is based on, inter alia, Romanian trade mark registration No 133 738 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remark

In its observations, the applicant argued that the opponent never substantiated its opposition by providing further reasoning. The Opposition Division notes that the opponent provided, together with its opposition notice, the registration certificate for the aforementioned Romanian trade mark registration, as well as the corresponding English translations. Furthermore, in its notice of opposition, the opponent accepted that the Office imports the necessary information from the relevant official online database, accessible through TMView, and that this source would be used for substantiation purposes as referred to in Article 7(3) EUTMDR. For these reasons the Opposition Division finds that the opponent’s aforementioned Romanian registered trade mark has been duly substantiated.

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 aforementioned Romanian trade mark registration.

a) The services

The applicant argued, in its observation, that the opponent operates a Chinese supermarket, which differs from the contested services, and that consequently they operate in different sectors and target different clients. The Opposition Division notes that the comparison of the services must be based on the wording indicated in the respective lists of services. Any actual or intended use not stipulated in the list of services is not relevant for the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71). Therefore, the applicant’s arguments must be dismissed as irrelevant for the purposes of the present assessment.

The services on which the opposition is based are, inter alia, the following:

Class 35: Advertising; business management; business administration; office functions.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs.

The contested services are the following:

Class 35: Advertising; business administration; office functions; advisory services for business management; business organization consultancy; economic forecasting; efficiency experts; professional business consultancy.

Class 36: Financial affairs; monetary affairs; real estate affairs; capital investments; fund investments; raising of capital and funds; financial analysis; financial consultancy; financial evaluation; financial information; financial management; financial sponsorship; development of financial instruments, including funds; financing services; management of financial portfolios; financial products namely investment products, capital and fund raising mechanism, financial instruments; mutual funds; advisory services relating to corporate finance; asset management services; investment management and investment advisory services; designing, developing, arranging and managing investments and investment products; economic, financial and investment analysis and research services; investment risk management, analysis and services; advisory services with respect to all the foregoing.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘including’, used in the applicant’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

Contested services in Class 35

Advertising; business administration; office functions are identically contained in both lists of services.

The contested advisory services for business management; business organization consultancy; economic forecasting; efficiency experts; professional business consultancy are included in, or overlap with, the broader category of the opponent’s business management. Therefore, they are identical.

Contested services in Class 36

Financial affairs; monetary affairs; real estate affairs are identically contained in both lists of services.

The contested advisory services with respect to all the foregoing [in relation to the contested financial affairs; monetary affairs; real estate affairs] are included in the broader categories of the opponent’s financial affairs; monetary affairs; real estate affairs. Therefore, they are identical.

The contested capital investments; fund investments; raising of capital and funds; financial analysis; financial consultancy; financial evaluation; financial information; financial management; financial sponsorship; development of financial instruments, including funds; financing services; management of financial portfolios; financial products namely investment products, capital and fund raising mechanism, financial instruments; mutual funds; advisory services relating to corporate finance; asset management services; investment management and investment advisory services; designing, developing, arranging and managing investments and investment products; economic, financial and investment analysis and research services; investment risk management, analysis and services; advisory services with respect to all the foregoing are included in, or overlap with, the broader categories of the opponent’s financial affairs; monetary affairs. Therefore, they are identical.

b) 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 services in question.

In the present case, the services found to be identical are directed at the public at large and at business customers with specific knowledge or expertise within the sectors of advertising, business, finance or real estate. Taking into account the specialised nature of the relevant services, the degree of attention is considered to be higher than average.

As regards financial services, since such services are specialised services that may have important financial consequences for their users, consumers’ level of attention would be higher when choosing them (03/02/2011, R 719/2010‑1, f@ir Credit (fig.) / FERCREDIT, § 15; 19/09/2012, T‑220/11, F@ir Credit, EU:T:2012:444, dismissed; 14/11/2013, C‑524/12 P, F@ir Credit, EU:C:2013:874, dismissed).

Furthermore, in relation to real estate services, the purchase and sale of property are business transactions that involve both risk and the transfer of large sums of money. For these reasons, the relevant consumer is deemed to possess a higher than average degree of attention, since the consequences of making a poor choice through lack of attentiveness might be highly damaging (17/02/2011, R 817/2010‑2, FIRST THE REAL ESTATE (fig.) / FIRST MALLORCA (fig.) et al., § 21).

c) The signs

	EUROPEAN DRAGONS
Earlier trade mark	Contested sign

The relevant territory is Romania.

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 comprising of the Romanian word ‘Dragonul’, meaning ‘the dragon’, in slightly stylised, red typescript. A dragon is a large, serpent-like legendary creature that appears in the folklore of many cultures around the world.

The applicant argued, in its observations, that the word ‘dragon’ is widely used in relation to Chinese food products and supermarkets and, therefore, it is highly evocative or the opponent’s services. The Opposition Division again remarks that the relevant services that are the subject of assessment in the present case are the ones indicated in the opponent’s list of services. This includes services of advertising, business management, business administration, office functions, financial services and real estate services in Classes 35 and 36. Although ‘Dragonul’ has a meaning, it does not indicate any of the relevant services or their characteristics. Therefore, it is considered distinctive. The stylisation of the word ‘Dragonul’, in the earlier mark, is of secondary and very limited (if any) importance for the perception of the earlier mark, by the relevant public.

The contested sign consists of the words ‘EUROPEAN’ and ‘DRAGONS’. In the case of word marks, it is the word, as such, that is protected and not its written form. Therefore, it is irrelevant whether a word mark is presented in upper- or lower-case characters, or a combination of both. The word ‘EUROPEAN’ has the same meaning in both Romanian and English, will be perceived as ‘relating to Europe’ and the relevant public may perceive it as a reference to the origin of the services found to be identical. Therefore, ‘EUROPEAN’ is considered non-distinctive. As for the word ‘DRAGONS’, it is probable that it will be associated with the Romanian word ‘dragon’ (exists as a synonym for ‘dragonul’) and evokes the same meaning, due to its similarity. As for the distinctiveness of ‘DRAGONS’, it is considered distinctive for the same reasons as given above for the verbal element ‘Dragonul’.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually, the signs coincide in the string of letters ‘Dragon’, which forms the initial part of the earlier mark ‘Dragonul’, as well as forming the initial part of the second verbal element ‘Dragons’ of the contested sign (also being its only distinctive element). The signs differ in the suffixes of these verbal elements, namely ‘-ul’ and ‘-s’. Furthermore, they differ in the additional elements of the signs, for example, the word ‘EUROPEAN’ of the contested sign and the stylisation of the earlier mark, which for the reasons mentioned previously are of very limited, if any, importance for the comparison of signs.

For these reasons, also considering that the signs coincide in the majority of the letters of their distinctive elements, they are considered visually similar to an above-average degree.

Aurally, the signs coincide in the pronunciation of the letters ‘DRAGON’. They differ in the endings of the verbal elements ‘DRAGONUL’ and ‘DRAGONS’, namely in the sound of the letters ‘UL’ and ‘S’. However, the endings have, in general, less impact than the initial part. Furthermore, they differ in the verbal element ‘EUROPEAN’, which has quite a limited impact on the comparison, given its lack of distinctiveness.

The signs are therefore considered aurally similar to an above-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will evoke the same association with a dragon, despite being represented slightly differently by the words ‘Dragonul’ and ‘Dragons’. Although the additional word ‘EUROPEAN’, of the contested sign, will be perceived to have clear meaning, it will not alter the conceptual similarities between the signs, as it is non-distinctive and cannot indicate commercial origin. Therefore, the signs are rendered conceptually highly similar.

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

d) 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 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.

e) Global assessment, other arguments and conclusion

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 services covered are from the same or economically linked undertakings.

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).

In the present case, all the contested services were found identical to the ones of the opponent. The relevant public consists of the public at large and business customers with expertise in the sectors of advertising, business, finance or real estate, and their degree of attentiveness is considered to be higher than average.

The signs were found visually and aurally similar to an above-average degree as they share the string of letters ‘Dragon’, which are a substantial part of the only verbal element of the earlier mark, as well as the only distinctive element of the contested sign. The different endings of the two words, ‘-ul’ and ‘-s’, have less impact than the initial part of the words. Also, the additional verbal element, ‘EUROPEAN’, of the contested sign and the stylisation of the earlier mark, which are both of very limited importance to the comparison of signs, are not sufficient to counterbalance the similarities between the signs.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, in particular taking into account the abovementioned principle of interdependence together with the fact that all of the relevant services are identical, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Romanian trade mark registration No 133 738. It follows that the contested trade mark must be rejected for all the contested services.

As the aforementioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the 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).

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, 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

Claudia MARTINI

Tu Nhi VAN

Astrid Victoria WÄBER

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.