OPPOSITION No B 3 039 289

adp Gauselmann GmbH, Merkur-Allee 1-15, 32339 Espelkamp, Germany (opponent), represented by Wolfgang Schröder, Paul-Gauselmann-Straße 1, 32312 Lübbecke, Germany (employee representative)

a g a i n s t

Christian Palmgren, Box 608, 11479 Stockholm, Sweden (applicant).

On 22/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 039 289 is upheld for all the contested goods.

2. European Union trade mark application No 17 554 718 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 554 718 for the word mark ‘The Dragon Gold’. The opposition is based on European Union trade mark registration No 12 859 997 for the word mark ‘Dragon’s Gold’. The opponent invoked Article 8(1)(a) and (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.

a) The goods

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus; Musical jukeboxes and parts for the aforesaid automatic machines; Apparatus for recording, transmission, processing or reproduction of data, including sound or images, including parts for all the aforesaid goods, except radio sets, television receivers, hi-fi systems, video recorders, telephone apparatus, fax machines and telephone answering machines; Electric, electronic or automatic apparatus for identifying data carriers, identity cards and credit cards, bank notes and coins; Electric or electronic alarm and monitoring installations, including video cameras and apparatus for image transmission and image processing; Data processing apparatus and computers, including data processing apparatus and computers being components for data networks and parts facilitating data network communications; Electric wiring harnesses; Circuit boards, printed circuit boards (electronic components) and combinations thereof, being assemblies and parts for apparatus, included in class 9.

The contested goods are the following:

Class 9: Software.

The contested software includes, as a broader category, the opponent’s computer software. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 goods or services in question.

In the present case, the goods found to be identical are directed at the public at large. The degree of attention is considered average.

c) The signs

Dragon’s Gold	The Dragon Gold
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).

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. In the present case, as the signs are composed of English words, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The element ‘DRAGON’, included in both signs, will be understood as ‘a mythical monster like a giant reptile’ (information extracted from Oxford Dictionary on 11/02/2019 at https://en.oxforddictionaries.com/definition/dragon). The apostrophe followed by the letter ‘S’ in the earlier mark is the possessive form of a singular noun.

The element ‘GOLD’, included in both signs, will be understood as ‘a yellow precious metal, the chemical element of atomic number 79, used especially in jewellery and decoration and to guarantee the value of currencies’ (information extracted from Oxford Dictionary on 11/02/2019 at https://en.oxforddictionaries.com/definition/gold).

The contested sign contains the English definite article ‘THE’ used to refer to ‘a person, place, or thing that is unique; denoting one or more people or things already mentioned or assumed to be common knowledge’ (information extracted from Oxford Dictionary on 11/02/2019 at https://en.oxforddictionaries.com/definition/the). According to case-law, definite articles are used in everyday language to highlight the nouns that follow them and have a weaker impact on consumers than the words that follow them (05/11/2018, R 928/2018‑2, La passiata / Passina, § 41; 24/06/2014, T‑330/12, The Hut, EU:T:2014:569, § 44). Consequently, this element will be seen as secondary to the other two words comprising the sign.

As a whole, the earlier mark will be understood as the gold than belongs to the dragon, whereas the contested sign will be understood as the dragon named Gold. The expressions forming the signs have no meaning for the relevant public in relation to the goods in question and therefore they have a normal degree of distinctiveness.

Visually and aurally, being long signs, they have almost the same number of letters/phonemes, since they coincide in the elements ‘DRAGON’ and ‘GOLD’, placed in the same order. However, they differ in the possessive ‘S’ of the earlier mark and the definite article ‘THE’ of the contested mark, both being commonly used articles and considered secondary.

Therefore, the signs are visually and aurally highly similar.

Conceptually, the marks will be perceived as described above. Therefore, the signs are conceptually similar at least to an average degree.

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 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.

e) Global assessment, other arguments and conclusion

According to the Court of Justice’s case law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

The global appreciation of the likelihood of confusion must, as regards the visual, aural or conceptual similarities between the marks in question, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components. The wording of Article 8(1)(b) EUTMR, ‘...there exists a likelihood of confusion on the part of the public...’, shows that the perception of marks in the mind of the average consumer of the category of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion.

In the present case, the goods are identical and target the public at large with an average degree of attention. The earlier mark has a normal degree of distinctiveness.

As the goods are identical and the marks are visually and aurally highly similar, a likelihood of confusion exists. Contrary to the applicant’s observations, the marks are not examined only by the exact wording. Indeed, the signs are conceptually similar at least to an average degree on account of their coinciding elements ‘DRAGON’ and ‘GOLD’, even if the expressions forming the respective signs differ to a certain extent.

Average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, since they rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25). In the present case, the Opposition Division considers that the presence of the coinciding distinctive elements ‘DRAGON’ and ‘GOLD’, placed in the same order, are sufficient to counterbalance the small differences found in the apostrophe ‘S’ and the article ‘THE’, respectively.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 12 859 997. 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.

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(1)(a) EUTMR, as the signs are not identical.

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, he 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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Marta GARCÍA COLLADO

Stanislava STOYANOVA

Carlos MATEO PÉREZ

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.