OPPOSITION No B 3 069 008

S.C. Dante International S.A., 148 Virtutii Road, District 6, null, Bucuresti, Romania (opponent), represented by Eugen Ardeleanu, Aleea Fetesti nr. 11, bl .F1 AP. 26, Sector 3, 032562, Bucuresti, Romania (professional representative)

a g a i n s t

Guangming Qu, Changshan Group, Changshan Village, Economic Development Zone

237400 Huoqiu County, Anhui, Peoples Republic of China (applicant), represented by Isabelle Bertaux, 55 rue Ramey, 75018 Paris, France (professional representative).

On 08/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 069 008 is upheld for all the contested services in Class 35.

2. European Union trade mark application No 17 934 720 is rejected for all the contested services. It may proceed for the remaining uncontested goods in Class 7.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 934 720 for the word mark ‘DMAG’, namely against all the services in Class 35. The opposition is based on, inter alia, Romanian trade mark registration No 119 313 for the word mark ‘eMAG’. 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.

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 Romanian trade mark registration No 119 313.

a) The services

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

Class 35: Advertising; business management; business administration; office functions; and all the services in the alphabetical list of this class of the 10^th edition of the Nice Classification (2012 version).

The contested services are the following:

Class 35: Online advertising on a computer network; presentation of goods on communication media, for retail purposes; business inquiries; professional business consultancy; commercial information and advice for consumers in the choice of products and services; provision of commercial and business contact information; commercial intermediation services; negotiation and conclusion of commercial transactions for third parties; providing business information via a web site; import-export agency services; auctioneering; sales promotion for others; procurement services for others [purchasing goods and services for other businesses]; provision of an online marketplace for buyers and sellers of goods and services; employment agency services.

The earlier mark is a national mark from Romania filed before 19/06/2012, and the services on which the opposition is based include one entire class heading with an implicit claim to the alphabetical list.

The earlier Romanian trade mark registration No 119 313 is registered for the entire class heading of Class 35 of the Nice Classification. It was filed on 08/03/2012. In accordance with the Common Communication on the Implementation of ‘IP Translator’ of the European Trade Mark and Design Network, the Office considers that its scope of protection includes both the natural and usual meaning of the general indications in the heading and the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 10^th edition.

In the case of Class 35 of the 10^th edition of the Nice Classification, the Opposition Division has identified the following items in the alphabetical list covered by the earlier mark in question that do not fall within the natural and usual meaning of its general indication:

Class 35: Auctioneering; Rental of vending machines.

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.

Contested services in Class 35

The contested auctioneering is identically covered by the alphabetical list of the earlier mark in question. Consequently, these services are identical.

The contested online advertising on a computer network; presentation of goods on communication media, for retail purposes; sales promotion for others are included in the broad category of the opponent’s advertising. Therefore, they are identical.

The contested business inquiries; professional business consultancy; provision of business contact information; providing business information via a web site are all intended to help companies to manage their business and consequently, they are included in the broad category of the opponent’s business management. These services are identical.

The opponent’s business administration services are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities towards common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since they enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by inter alia employment agencies, auditors and outsourcing companies.

Therefore, the contested employment agency services are included in or overlap with the opponent’s business administration. These services are identical.

The contested procurement services for others [purchasing goods and services for other businesses] are services that relate to the acquisition of goods, services or works from an external source. Issues in procurement include identifying the needs of customers and suppliers, choosing and preparing tools and processes to communicate with suppliers, preparing requests for proposals and requests for quotations, and setting policies for evaluating proposals, quotes and suppliers. In light of the above, the contested services and the opponent’s business management services are similar, since these services have the same general purpose of contributing to the smooth running of a company, they may be provided by the same consultant companies, and the end users of the services are also the same.

The contested provision of an on-line marketplace for buyers and sellers of goods and services is a specialized service essentially concerned with providing a platform allowing for the arrangement of (or facilitating) transactions between buyers and sellers. They are considered similar to the opponent’s business management services. These services are likely to be offered through the same channels and by the same providers and they target the same public.

The contested import-export agency services are similar to the opponent’s business management. These services usually coincide in their providers, relevant public and distribution channels.

The contested commercial information and advice for consumers in the choice of products and services; provision of commercial contact information; commercial intermediation services; negotiation and conclusion of commercial transactions for third parties provide the users, (both professionals and individuals) with necessary information, advice or business representation services. They are rendered by professional consultants, advisers, negotiators or mediators. A customer is an individual or business that purchases another company’s goods or services. The contested services are, therefore, aimed at supporting or helping other business to carry out or improve their business as well as to support individual consumers in their commercially-related decisions. The opponent’s business management services are usually rendered by business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand their market share. Accordingly, the services at issue coincide at least in end user and commercial origin. In the light of the above considerations, they are similar at least to a low degree.

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 services found to be identical and similar to various degrees are directed mostly at business customers with specific professional knowledge or both, the business professionals and the public at large at the same time (i.e. commercial information and advice for consumers in the choice of products and services).

For the reasons explained below, the Opposition Division will proceed with the examination of the present opposition in relation to the professional public only.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the services purchased.

c) The signs

eMAG	DMAG
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).

Both signs 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 reasons, they have no elements that could be considered more dominant (visually eye-catching) than other elements. Therefore, the fact that in the decision the first letter of the earlier mark will be referred to as a capital letter ‘E’ is immaterial.

It should be noted that the Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

Considered as a whole, the conflicting signs have no clear univocal meaning for the relevant public and are not used in the common parlance. The Opposition Division is of the opinion that in the present case it is reasonable to assume that the relevant consumers will intuitively dissect the elements of the signs ‘E’ and ‘MAG’ of the earlier mark and ‘D’ and ‘MAG’ of the contested sign as they will look for a meaning when encountering the signs in question. This is also reinforced by the fact that the pronunciation of the conjoined expressions ‘EMAG’ and ‘DMAG’ split into two syllables (‘E’ - ‘MAG’ and ‘DE’ - ‘MAG’), which correspond precisely to the two elements which the combined terms comprise.

The common element ‘MAG’ will be understood by the relevant public in the relevant territory as referring to ‘sorcerer’ or ‘magician’ (information extracted from dexonline on 18/10/2019 at https://dexonline.ro/definitie/mag). Since it does not have any clear and unambiguous meaning in relation to the relevant services from the relevant public’s perspective its inherent distinctiveness must be considered average.

It is also reasonable to assume that the relevant professional public that usually has a good command in English, in particular, when dealing with the relevant services, will perceive the elements ‘E’ of the earlier mark as referring to an electronic/online availability and ‘D’ of the contested sign meaning ‘data’, due to similarity to its equivalent word in Romanian language: ‘Date’. The degree of the inherent distinctiveness of these elements is low in relation to all the relevant services, which are mainly business- and advertising-related services. Consequently, their impact on the assessment of the likelihood of confusion in the present case will be limited.

To sum up, considering the aforementioned principles, it is reasonable to conclude that the relevant consumers will instantly perceive the distinctive verbal element ‘MAG’ in both signs as a badge of origin for the relevant services.

Visually and aurally, the signs coincide in the distinctive term ‘MAG’, which plays an independent role in the signs. They differ in their respective first letters ‘E’ of the earlier mark and ‘D’ of the contested sign, which have been found weak in relation to all the relevant services. The Opposition Division notes however, that these initial letters bear some resemblance from the aural perspective (‘E-MAG’ and ‘DE-MAG’). The signs coincide in the same number of syllables and their rhythm and intonation are also similar.

As analysed above, the initial different letters introduce an important visual difference given that the public normally focuses their attention on the beginning of the marks. Nevertheless, bearing in mind the above-mentioned and the fact that the common distinctive term ‘MAG’ is composed of the majority of their letters the signs are aurally similar to a higher than average degree and visually similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Taking into account the fact that the elements ‘MAG’ in both signs are semantically identical and the lower impact of the remaining initial elements ‘E’ and ‘D’ in the signs, they are considered conceptually similar to at least 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced degree 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 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, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

e) 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 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 signs are visually similar to an average degree and from the aural and conceptual perspective the similarity between them is stronger.

The conflicting services have been found identical and similar to various degrees. The analysis of the likelihood of confusion in the present case has been based on the professional public whose degree of attentiveness varies from average to high.

The earlier mark enjoys an average degree of inherent distinctiveness.

The signs share the distinctive term ‘MAG’, which is clearly perceivable in them. Furthermore, it plays an independent role in both signs.

It is also acknowledged that the signs’ first letters mark a certain distance between them. In this regard, it should be noted that in word signs or in signs containing a verbal element, the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009 T-109/07, Spa Therapy, EU:T:2009:81, § 30).

However, in this case, these initial letters have been found weak in relation to all the relevant services and they are not on themselves sufficient to safely exclude likelihood of confusion between the conflicting signs. Therefore, even if the relevant consumers see different first letters in the signs they will attribute higher attention to the distinctive term ‘MAG’, the signs have in common and, this contributes to the fact that they will still associate the marks due to this common and distinctive component.

On this occasion, it should be mentioned that account is also 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)

Moreover, 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 goods/services covered are from the same or economically linked undertakings. In this respect, it is highly conceivable that professionals even when displaying a higher degree of attentiveness, aware of the difference between the signs, placed in a weak element will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Consequently, the above mentioned difference between the signs is not sufficient to counterbalance their similarities and safely differentiate them.

Therefore, there is a likelihood of confusion in the form of a likelihood of association on the part of the professional public in the relevant territory and, therefore, the opposition is well founded on the basis of the earlier Romanian trade mark registration No 119 313. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Consequently, it follows that the contested trade mark must be rejected for all the contested services.

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 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 Romanian trade mark registration No 119 313 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

Liliya YORDANOVA

Monika CISZEWSKA

Patricia LOPEZ FERNANDEZ DE CORRES

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.