OPPOSITION No B 3 076 663

Dreams Limited, Knaves Beech Business Centre, 14 Davies Way Loudwater, HP10 9YU, High Wycombe,, United Kingdom (opponent), represented by Lane IP Limited, The Forum, St Paul’s, 33 Gutter Lane, EC2V 8AS, London, United Kingdom (professional representative)

a g a i n s t

Foshan Xinyimei Hotel Supplies Co. Ltd., East side of the 2nd floor ,1 group of Meidong, Meizhen Village, Jiujiang Town, Nanhai District, Foshan City,Guangdong, People’s Republic of China (applicant), represented by Agency Arnopatents, Brivibas street 162/2-17, 1012 Riga, Latvia (professional representative).

On 13/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 076 663 is upheld for all the contested goods.

2. European Union trade mark application No 17 972 512 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 972 512 for the word mark ‘Dreamevent’. The opposition is based on, inter alia, European Union trade mark registration No 17 963 494 for the word mark ‘DREAMS’. The opponent invoked Article 8(1)(b) and Article 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 earlier European Union trade mark registration No 17 963 494.

1. The goods

The goods (and services) on which the opposition is based are, inter alia, 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; 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.

The contested goods are the following:

Class 20: Furniture; chairs [seats]; armchairs; tables; lecterns; furniture of metal; plate racks; rocking chairs; towel stands [furniture]; settees; seats of metal; cabinet work; benches [furniture]; beds; sofas; deck chairs; mirrors [looking glasses]; furniture fittings, not of metal; cushions; showcases [furniture].

The contested furniture; chairs [seats]; armchairs; beds; mirrors [looking glasses] are identically contained in the opponent’s specification (including synonyms).

The contested tables; lecterns; furniture of metal; plate racks; rocking chairs; towel stands [furniture]; settees; seats of metal; cabinet work; benches [furniture]; sofas; deck chairs; showcases [furniture] are various furniture items, including kitchen furniture (i.e. plate racks, benches), office furniture (i.e. lecterns), bedroom furniture (i.e. cabinet work). Therefore, they are included in the broad category of the opponent’s furniture. Therefore, they are identical.

The contested furniture fittings, not of metal are included in or overlap with the broad category of the opponent’s parts and fittings for all the aforesaid goods (Furniture). Therefore, they are identical.

The contested cushions include, as a broader category the opponent’s air cushions.

Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 an average degree of attention.

3. The signs

DREAMS	Dreamevent
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 case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the sign is represented in upper or lower case characters. Additionally, the word marks have no elements that could be considered more dominant (visually eye-catching) than other elements.

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.

Since the signs in question are composed of the terms which are meaningful in certain territories, for example in those countries where English is understood, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public. The understanding of the terms, may, in the opinion of the Opposition Division contribute to the likelihood of confusion.

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).

The expression ‘Dreamevent’, considered as such, may be perceived by the relevant public as a great, wonderful event, experience; however it is not used in common parlance as it would be the case of the expressions ‘dream analysis’, ‘dream guest’, ‘dream team’, etc. In any event and notwithstanding the perception of the meaning of the contested sign as a conceptual unit, it is clear that the relevant English-speaking will intuitively comprehend the elements ‘Dream’ and ‘event’ in the contested sign. Consequently, the contested sign will be perceived by the relevant public as a combination of two meaningful elements, ‘Dream’ and ‘event’.

The term DREAMS’ of the earlier mark and its singular form ‘DREAM’ of the contested sign will be understood 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’. Consequently, the state of dreaming may in fact appear when sleeping however it does not mean that the words ‘DREAMS’ or ‘DREAM’ per se describe the opponent’s goods in question as it would be the case for example with the word ‘SLEEP’. Therefore, these terms are at most suggestive of what can be achieved by soundly sleeping on a bed. They have an average degree of inherent distinctiveness because they do not have any clear and unambiguous meaning in relation to the relevant goods from the relevant public’s perspective.

The remaining term ‘event’ of the contested sign refers to an occasion, experience, something that happens (all definitions extracted from Collins English Dictionary, online version on 03/12/2019). Its inherent distinctiveness is average as as it does not have any clear and unambiguous meaning in relation to the relevant contested goods from the perspective of the relevant public.

Visually and aurally, the signs coincide in the word ‘DREAM’, which constitutes the initial and distinctive element of the contested sign and the singular form of the word ‘DREAMS’ of the earlier mark.

Consumers generally tend to focus on the first/initial element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right and from top to bottom, which makes the part placed at the beginning of the sign (its initial part) the one that first catches the attention of the reader.

The Opposition Division is of the opinion that the little difference arising from the final letter ‘S’ in the earlier mark can be easily overlooked by the relevant public. The verbal element ‘event’ occupies a second position within the contested sign and although it is distinctive in relation to the goods in question, the coinciding initial element ‘Dream’ of the contested sign will attract the public’s attention to a greater extent, as explained above.

Consequently, taking into account the fact that the initial and distinctive element of the contested sign - ‘DREAM’ reproduces the earlier mark almost in its totality, the signs are considered visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. As mentioned above and notwithstanding the perception of the meaning of the contested sign as a conceptual unit, it is clear that the relevant English-speaking consumers will instantly recognise the term ‘Dream’ in the beginning of the contested sign, followed by the word ‘event’. The term ‘Dream’ is inherently distinctive in relation to the goods at issue and, therefore, the coincidence in the term ‘DREAM(S)/’DREAM’ generates an average degree of conceptual similarity between the marks.

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 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 contested goods are identical to the opponent’s ones and they are directed at the public at large with an average degree of attentiveness.

The inherent distinctiveness of the earlier mark is normal in relation to all the relevant goods.

The signs under comparison are visually, aurally and conceptually similar to an average degree on account of the common element ‘DREAM’, which constitutes almost the entire earlier mark and is fully included and clearly perceptible as its distinctive element at the beginning of the contested sign. The signs differ mainly in the additional term ‘EVENT’ of the contested sign, which will be given less attention than the initial element ‘DREAM’. As analysed above, the final letter ‘S’ of the earlier mark can be easily overlooked by the relevant public; in any case, it will be associated with the plural form of the term ‘DREAM’.

Consequently, given the reproduction of the distinctive element ‘DREAM’ at the beginning of the contested sign, it is likely that the relevant public will, at least, associate the contested sign with the earlier mark.

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

Indeed, in the present case, the relevant consumers may legitimately believe that the contested trade mark is a new brand line or a recent development (represented in a singular form with an addition) of the earlier mark ‘DREAMS’ because it is a common market practice for brands to identify a new version or a new sub-brand through the use of additional verbal elements in combination with the main (‘house’) brand. In other words, consumers may believe that the contested sign ‘DREAMEVENT’ constitutes a new product line of the earlier ‘DREAMS’ mark, and consequently, confuse the origins of the goods at issue by assuming that they come from the same or economically-linked undertakings.

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 all the contested goods found identical to the opponent’s goods come from the same or economically linked companies.

Considering all the above, it is concluded that the differences between the signs are not sufficient to counteract the similarity resulting from the coinciding initial and independent element ‘DREAM’ and, therefore, there is a likelihood of confusion in the form of a likelihood of association, for the English-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the European Union trade mark registration No 17 963 494 and it 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 17 963 494 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Moreover, 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, 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

Anna MAKOWSKA

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.