OPPOSITION No B 3 077 216

DIA Retail Espaňa S.A., C/ Jacinto Benavente, 2A Parque Empresarial de las Rozas, Edificio Tripark, 28232, Las Rozas-Madrid, Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Michael Weber, Gartenstrasse 3, 10115 Berlin, Germany, CTF Markets, Gotthardstrasse 26, 6300 Zug, Switzerland (applicants)

On 06/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 077 216 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 985 710 is rejected in its entirety.

3. The applicants bear the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 985 710 for the word mark ‘DIA’, namely against all the goods in Classes 9 and 35. The opposition is based on, inter alia, European Union trade mark registration No 17 872 993 for the figurative mark . The opponent invoked Articles 8(1)(b) and 8(5) EUTMR.

Preliminary Remark

The Opposition Division takes note of the fact that ownership of the earlier European Union trade mark registration No 17 872 993 has been transferred during the proceedings and that the transfer has been recorded in the register of the Office. Consequently, the new owner of the opposing mark, DIA RETAIL ESPAŇA, S.A., replaces the previous owner of this trade mark as the opponent in the current proceedings.

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 European Union trade mark registration No 17 872 993 for the figurative mark .

1. The goods and services

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

Class 9: Computer software applications, downloadable; Cash cards; Encoded loyalty cards; Magnetic payment cards.

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

Class 35: Advertising; Business management; Business administration; Office functions; Dissemination of advertising matter (pamphlets, prospectuses, printed matter, samples); Newspaper subscription services (for others); Business management and organization consultancy; Accounting; Document reproduction; Employment agencies; Computerized file management; Organization of exhibitions for commercial or advertising purposes; Online advertising on a computer network; Publication of publicity texts; Rental of advertising space; Dissemination of advertising matter; Public relations services; Procurement services for others [purchasing goods and services for other businesses]; Commercial information agencies; Rental of vending machines; Rental of photocopying machines; Rental of vending machines; Publicity material rental; Office machines and equipment rental; Rental of advertising time on communication media; Market research.

The contested goods and services are the following:

Class 9: Databases (electronic); Interactive databases; Computer documentation in electronic form; Downloadable electronic publications in the nature of magazines; Electronic publications, downloadable; Application development software; Application server software; Application simulation software; Computer game software downloadable from a global computer network; Business intelligence software; Computer chatbot software for simulating conversations; Computer application software; Computer utility programs for file management; Computer programs for accessing, browsing and searching online databases; Computer software in the field of electronic publishing; Computer software to enable the provision of information via communications networks; Computer software to enable the provision of information via the Internet; Computer software for document management; Computer software for database management; Computer software to enable the provision of electronic media via communications networks; Computer software to enable the provision of electronic media via the Internet; Computer software to enable browsing on global computer networks; Computer software for business purposes; Computer software for entertainment; Computer software for processing market information; Computer software for electronic bulletin boards; Computer software relating to the handling of financial transactions; Computer software relating to financial history; Computer programmes relating to financial matters; Computer software to automate data warehousing; Computer software to enable the searching of data; Computer software to enable searching and retrieval of data; Computer software for creating searchable databases of information and data; Computer software programs for spreadsheet management; Computer database servers (software); Data processing programs; Data storage programs; Recorded data files; Directories [electric or electronic]; Data recorded electronically; Data recorded electronically from the internet; Computer databases; Computer database servers; Database engines; Computer databases; Computer software for database management; Database synchronization software; Software for data and file management and for databases.

Class 35: Computerized file management; Computerized file management; Updating and maintenance of data in computer databases; Computerized file management; Provision of information relating to data processing.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 goods in Class 9

The contested Application development software; Application server software; Application simulation software; Computer game software downloadable from a global computer network; Business intelligence software; Computer chatbot software for simulating conversations; Computer application software; Computer utility programs for file management; Computer programs for accessing, browsing and searching online databases; Computer software in the field of electronic publishing; Computer software to enable the provision of information via communications networks; Computer software to enable the provision of information via the Internet; Computer software for document management; Computer software for database management; Computer software to enable the provision of electronic media via communications networks; Computer software to enable the provision of electronic media via the Internet; Computer software to enable browsing on global computer networks; Computer software for business purposes; Computer software for entertainment; Computer software for processing market information; Computer software for electronic bulletin boards; Computer software relating to the handling of financial transactions; Computer software relating to financial history; Computer programmes relating to financial matters; Computer software to automate data warehousing; Computer software to enable the searching of data; Computer software to enable searching and retrieval of data; Computer software for creating searchable databases of information and data; Computer software programs for spreadsheet management; Software for data and file management and for databases; Data processing programs; Data storage programs; Computer software for database management; Database synchronization software; Computer database servers (software) are various types of software/computer software or programmes that is, in fact, a collection of data or computer instructions which have application in various domains. They are, consequently, identical or at least highly similar to the opponent’s Computer software applications, downloadable. At the very least, all of these goods are often offered by the same companies and sold through the same distribution channels. Furthermore, they have same nature and same method of use and they target the same customers.

The contested Computer database servers are servers (hardware) which use a database application that provides database services to other computer programs or to computers, as defined by the client–server mode. Therefore, they are similar to the opponent´s Computer software applications, downloadable. These goods usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

The contested Recorded data files; Data recorded electronically; Data recorded electronically from the internet are at least similar (if not identical) to the opponent´s Computer software applications, downloadable as these goods coincide at least in purpose, distribution channels and points of sale. Furthermore, they target the same consumers and their commercial origin can also be the same. In addition, the above-mentioned goods are also complementary.

The contested Computer documentation in electronic form; Downloadable electronic publications in the nature of magazines; Electronic publications, downloadable are similar to the opponent’s Computer software applications, downloadable as they usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

The contested Databases (electronic); Interactive databases; Directories [electric or electronic]; Computer databases; Database engines; Computer databases are various examples of electronic databases and directories. The contested goods need a computer program whose primary purpose is entering and retrieving information from a computerized database. Therefore, these goods have some relevant points in common with the opponent’s Computer software applications, downloadable in Class 9, since they can target the same consumers, have the same distribution channels and points of sale, they are likely to originate from the same kinds of companies. Moreover, they can be complementary. Therefore, these goods are similar.

Contested services in Class 35

The contested Computerized file management; Computerized file management; Updating and maintenance of data in computer databases; Computerized file management; Provision of information relating to data processing refer to the internal day-to-day operations of an organisation, including the administration and support services in the ‘back office’. Therefore, they are included in the broad category of the opponent´s Office functions. Consequently, these services are identical.

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 and services found to be identical or similar to various degrees are directed at the public at large and at business public.

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

3. The signs

	DIA
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 earlier mark is a figurative mark composed of the verbal element ‘DIA’ depicted in white standard uppercase letters in bold. Below, there is a smaller verbal element ‘online’, represented in standard lowercase letters in white. On the right side of the verbal elements there is a figurative element depicting a white shopping trolley with the percentage symbol placed on it, within a red frame. All these elements are placed against a red rectangular background.

The contested sign is a word mark ‘DIA’. In case of word marks it is immaterial whether it is depicted in upper- or- lowercase letters. For the same reason, the contested sign has no element that could be considered clearly 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).

In view of the considerations made hereunder in the comparison of signs and, in particular, bearing in mind the conceptual comparison, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public as this is considered to increase the likelihood of confusion in the present case.

The common verbal element ‘DIA’ will be perceived by the relevant public as a noun referring to a ‘day’, the period of time of 24 hours reckoned from one midnight to the next (consulted on 24/03/2020 at https://dle.rae.es; Real Academia Española). As it has no direct and immediate relation with the relevant good and services, it is inherently distinctive to an average degree in relation to them.

The verbal element ‘online’ of the contested sign is a well-known term, associated with internet communication. To the extent that online form of communication may be used for the provision of the goods and services in question, the term is descriptive and devoid of distinctiveness (24/11/2005, T-135/04, Online Bus, EU:T:2005:419, § 70).

As regards the figurative components of the earlier mark (its particular graphic arrangement, the red colour of the label and the figurative device), they are considered of weak inherent distinctiveness. The relevant public is used to encountering such labels and colours on the marketplace, and does not pay much attention to them, as it affords them an essentially ornamental role. Indeed, consumers normally perceive such elements as graphic embellishments of the corresponding brand and are used to refer to the respective mark by its verbal element. Furthermore, the schematic representation of a shopping trolley refers to means used when buying goods but also services, in particular, when purchasing them online and, therefore, is weak for them. Likewise, the percentage symbol placed inside a trolley conveys a message that the goods and services in question may be subject of a special discount and consequently, its inherent distinctiveness is weak.

It follows that the verbal element ‘DIA’ is the most distinctive element of the earlier mark and the one to which consumers will afford the most trade mark significance.

The Opposition Division notes that although the word ‘DIA’ is slightly bigger than the word ‘online’ in the earlier mark both terms are equally perceivable and, consequently, the earlier mark has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually and aurally, the signs share the distinctive term ‘DIA’ and they differ in the remaining non-distinctive word ‘online’ as well as weakly distinctive percentage symbol and figurative elements of the earlier mark (relevant only from the visual perspective).

It must be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). In addition, as previously explained, the figurative components of the earlier mark are inherently weak because they play an essentially ornamental role and, in addition, allude to the method of purchase and/or price of the relevant goods and services. Consequently, they will not divert the attention of the public from the most distinctive word ‘DIA’ of the earlier mark, as analysed above.

Considering all the above, the signs are considered visually similar to a higher than average degree and aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with a similar meaning due to the main coincidence in the distinctive element ‘DIA’. Bearing in mind the limited impact (if any) of the elements ‘online’, the percentage symbol and the figurative depiction the shopping trolley of the earlier mark, the signs are considered conceptually similar to a higher than 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.

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 and 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 some non‑distinctive and weak elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The global appreciation of the likelihood of confusion, as far as it concerns the visual, aural or conceptual similarity of the trade marks at issue, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (14/10/2003, T-292/01, Bass, EU:T:2003:264, § 47; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

Moreover, it follows from the case-law that marks containing or reproducing an element of the other may be considered, at least to that extent, similar (08/09/2010, T-152/08, Scorpionexo, EU:T:2010:357, § 66 et seq.).

The goods and services are identical and similar to various degrees. The level of attention of the relevant public varies from average to high.

The inherent distinctiveness of the earlier mark is normal.

The marks are visually similar to a higher than average degree and aurally highly similar due to the coincidence in the distinctive term ‘DIA’. Taking into account the limited impact of the remaining verbal and figurative components of the earlier mark, the signs are also conceptually similar to a higher than average degree.

It follows that the coincidence between the marks residing in the word ‘DIA’ has more value as a business identifier and cannot be outweighed by the remaining verbal and figurative elements present in the earlier mark, because they have less weight than the term ‘DIA’ within the overall impression conveyed by the sign.

It must also be highlighted that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Furthermore, it should be recalled that 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).

Consequently, in view of all the relevant factors in the present case, the Opposition Division finds that a likelihood of confusion including a likelihood of association between the marks cannot be safely excluded in relation to identical and similar goods and services, even if a higher degree of attention is displayed by the public.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-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 opponent’s European Union trade mark registration No 17 872 993. It follows that the contested trade mark must be rejected for all the contested goods and 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 European Union trade mark registration No 17 872 993 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and 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).

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 grounds 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 applicants are the losing party, they 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

Jakub MROZOWSKI

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.