OPPOSITION No B 3 086 403

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

Emma Sleep GmbH, Wilhelm-Leuschner-Str. 78, 60329 Frankfurt am Main, Germany (applicant), represented by Danckelmann und Kerst, Mainzer Landstr. 18, 60325 Frankfurt am Main, Germany (professional representative)

On 30/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 086 403 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 016 906 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 and services of European Union trade mark application No 18 016 906 for the word mark ‘Engineers of Dreams’. 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 European Union trade mark registration No 17 963 494 for the word mark ‘DREAMS’.

a) The goods and services

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

Class 9: Scientific, measuring, checking (supervision), life-saving and teaching apparatus and instruments; data processing equipment; computer software; computer hardware; mobiles apps; downloadable software applications; wearable monitors; monitoring instruments; monitoring apparatus, other than for medical purposes; monitoring units [electric]; electronic sensors; bio-sensors; movement sensors; sensors for scientific use to be worn by a human to gather human biometric data; electronic tracking apparatus and instruments; wearable activity trackers; measuring apparatus and instruments; computer software in the field of tracking, monitoring and analysing of sleep, movement and heart rate; electronic devices for tracking, monitoring and analysing of sleep, movement and heart rate [other than for medical use]; mobiles apps in the field of tracking, monitoring and analysing of sleep, movement and heart rate; downloadable software applications in the field of tracking, monitoring and analysing of sleep, movement and heart rate; parts and fittings for all the aforesaid goods.

Class 10: Medical and surgical apparatus and instruments, namely medical devices for sensing, measuring, diagnostic and treatment purposes in the field of sleep including wearable medical devices to be worn while sleeping; pulse rate monitors; medical devices for measuring sleep; precision sensors for medical use; sensor apparatus for medical use; parts and fittings for all the aforesaid goods.

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.

Class 24: Textiles; fabrics and textiles for beds and furniture; bed linen; duvets; bed covers; bed blankets, bed clothes; covers for duvets; mattress covers; covers for pillows and pillow cases; covers for cushions; bedspreads; covers for hot water bottles; furniture coverings of textile; quilts; parts and fittings for all the aforesaid goods.

Class 42: Design and development of computer hardware and software; software as a service (SaaS); project studies (technical -); research and development for others; development of multimedia software applications; application provider services (ASP); hosting an interactive website and online non-downloadable software that enable users to post, search, watch, share, critique, rate, and comment on, messages, comments, multimedia content, videos, movies, films, photos, audio content, animation, pictures, images, text, information, and other user-generated content via a global computer network and other computer and communications networks; hosting an interactive website and online non-downloadable software for uploading, downloading, posting, showing, displaying, tagging, sharing and transmitting messages, comments, multimedia content, videos, movies, films, photos, audio content, animation, pictures, images, text, information, and other user-generated content; providing online non-downloadable software tools; design and development of computer hardware and software in the field of tracking, monitoring and analysing of sleep, movement and heart rate; non-downloadable computer software in the field of tracking, monitoring and analysing of sleep, movement and heart rate; software as a service (SaaS) for use in designing, creating and analyzing data, metrics and reports in the areas of sleep.

The contested goods and services are the following:

Class 9: Apparatus for monitoring sleep for non-medical domestic use; testing apparatus, wearable during sleep, for measuring and influencing body activity for non-medical domestic use; non-medical electronics for measuring sleep for private individuals; mobile apps; application software for mobile devices; application software for wireless devices; computer application software; computer software to enable the provision of information via communications networks; computer software to enable the provision of information via the internet; computer software relating to the medical field; computer software for wireless content delivery; computer software for entertainment; computer software for mobile phones.

Class 10: Bed bases for beds especially made for medical purposes; support mattresses for medical use; sheets [drapes] for medical use; contoured cushions for patients' use on beds [adapted for medical purposes]; support mattresses for preventing pressure sores; medical furniture and bedding, equipment for moving patients; childbirth mattresses; heat beds for medical treatment; alternating pressure mattresses for medical use; analysers for medical use; diagnostic apparatus for medical purposes; electronic apparatus for medical purposes; electronic analyzers for medical purposes; electromagnetic medical apparatus; electronic medical instruments; apparatus for measuring brain waves; apparatus for monitoring sleep, namely medical apparatus for sensor, measuring, diagnostic and treatment purposes; testing apparatus, wearable in sleep, for measuring and influencing body activity; electronics for measuring sleep in the medical field.

Class 20: Beds; beds; wooden beds; children's beds; beds incorporating inner sprung mattresses; bedding, except linen; mattresses; box springs; bedsprings; beds, bedding, mattresses, pillows and cushions; bed frames; wood bedsteads; bed rails; mattresses; stools; stuffed pillows; rods for beds; cushions; mattress cushions; pillows; bed heads; bed bases; slatted bases for beds; mattress bases; mattress toppers; adjustable beds.

Class 24: Bath towels; bed pads; duvet covers; nightdress cases of textile; textile covers for duvets; bed covers; comforters; bed blankets made of cotton; bed blankets made of man-made fibres; silk bed blankets; bed sheets; woolen blankets; bed linen; bed linen; infants' bed linen; bed linen; cushion covers; comforters; quilts; turkish towel; bath towels; bath sheets; towels of textile; towelling [textile]; hand towels of textile; children's towels; nightdress cases of textile; shams; contoured mattress covers; ticks (mattress and pillow coverings); mattress covers; protective loose covers for mattresses and furniture; quilt covers; quilt bedding mats; bed covers; towels of textile; bed throws.

Class 42: Computer programming in the medical field; computer programming and software design; smartphone software design; development of driver software.

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

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods 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 and opponent’s lists of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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

Mobile apps are identically contained in both lists of goods.

The contested apparatus for monitoring sleep for non-medical domestic use; testing apparatus, wearable during sleep, for measuring and influencing body activity for non-medical domestic use; non-medical electronics for measuring sleep for private individuals are identical to the opponent’s electronic devices for tracking, monitoring and analysing of sleep, movement and heart rate [other than for medical use], either because they are identically contained in both lists (including synonyms) or because the opponent’s goods overlap with the contested goods.

The contested application software for mobile devices; application software for wireless devices; computer application software; computer software to enable the provision of information via communications networks; computer software to enable the provision of information via the internet; computer software relating to the medical field; computer software for wireless content delivery; computer software for entertainment; computer software for mobile phones are included in the broad category of, or overlap with, the opponent’s computer software. Therefore, they are identical.

Contested goods in Class 10

The contested analysers for medical use; diagnostic apparatus for medical purposes; electronic apparatus for medical purposes; electronic analyzers for medical purposes; electromagnetic medical apparatus; electronic medical instruments; apparatus for measuring brain waves; apparatus for monitoring sleep, namely medical apparatus for sensor, measuring, diagnostic and treatment purposes; testing apparatus, wearable in sleep, for measuring and influencing body activity; electronics for measuring sleep in the medical field include, as broader categories, or overlap with, the opponent’s medical and surgical apparatus and instruments, namely medical devices for sensing, measuring, diagnostic and treatment purposes in the field of sleep including wearable medical devices to be worn while sleeping. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested support mattresses for medical use; support mattresses for preventing pressure sores; childbirth mattresses; alternating pressure mattresses for medical use are similar to a low degree to the opponent’s mattresses in Class 20. These goods have the same broad purpose and method of use as they are upper parts of a bed, made of a strong cloth cover filled with firm material, that makes the bed comfortable to lay on and/or to sleep. They can be produced by the same manufacturers. Furthermore, they can be in competition.

The contested bed bases for beds especially made for medical purposes are similar to a low degree to the opponent’s bedsteads in Class 20. These goods have the same broad purpose and method of use as they are frameworks of a bed. They can be produced by the same manufacturers. Furthermore, they can be in competition.

The contested contoured cushions for patients' use on beds [adapted for medical purposes] are similar to a low degree to the opponent’s air cushions in Class 20. These goods have the same broad purpose and method of use as they are bags of cloth stuffed with a mass of soft material, used as a comfortable support for sitting, laying and/or leaning on. They can be produced by the same manufacturers. Furthermore, they can be in competition.

The contested medical furniture are similar to a low degree to the opponent’s furniture in Class 20. These goods have the same broad purpose and method of use as they are movable articles that are used to make a room or building suitable for living or working in, such as tables, chairs, cabinets, shelves or beds. They can be produced by the same manufacturers. Furthermore, they can be in competition.

The contested medical bedding; sheets [drapes] for medical use are similar to a low degree to the opponent’s bedding, other than bed linen in Class 20. These goods have the same broad purpose and method of use as these are sheets, blankets (= covers to keep a person warm), and other covers that are put on a bed. They can be produced by the same manufacturers. Furthermore, they can be in competition.

The contested equipment for moving patients are similar to a low degree to the opponents beds; chairs; parts and fittings for all the aforesaid goods in Class 20. Equipment for moving patients includes wheeled chairs/beds. Consequently, the broad purpose and method of use of the goods in conflict can overlap. They can be produced by the same manufacturers. In addition, they can be in competition.

The contested heat beds for medical treatment are similar to a low degree to the opponent’s beds. These goods have the same broad purpose and method of use as they are large, rectangular pieces of furniture, often with four legs, used for lying or sleeping on. They can be produced by the same manufacturers. Furthermore, they can be in competition.

Contested goods in Class 20

Beds (listed three times); bedding, except linen; mattresses (listed three times); bed heads; pillows (listed twice) are identically contained in both lists of goods (including synonyms).

The contested wooden beds; children's beds; beds incorporating inner sprung mattresses; box springs; bedsprings; adjustable beds are included in the broad category of, or overlap with, the opponent’s beds; parts and fittings for all the aforesaid goods. Therefore, they are identical.

The contested bedding includes, as a broader category, or overlaps with, the opponent’s bedding, other than bed linen. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested stuffed pillows are included in the broad category of the opponent’s pillows. Therefore, they are identical.

The contested bed frames; wood bedsteads; bed rails; rods for beds; bed bases; slatted bases for beds are included in the broad category of, or overlap with, the opponent’s bedsteads; parts and fittings for all the aforesaid goods. Therefore, they are identical.

The contested stools includes, as a broader category, the opponent’s footstools. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cushions (listed twice); mattress cushions overlap with the opponent’s air cushions. Therefore, they are identical.

The contested mattress bases; mattress toppers overlap with the opponent’s mattresses; parts and fittings for all the aforesaid goods. Therefore, they are identical.

Contested goods in Class 24

Bed linen (listed three times in the list of the contested sign); cushion covers; mattress covers; bed covers (listed twice) are identically included in the lists of goods of the signs in conflict.

The contested infants' bed linen; bed sheets; bath sheets; shams; comforters (listed twice); duvet covers; textile covers for duvets; protective loose covers for mattresses and furniture; quilt covers; contoured mattress covers; ticks (mattress and pillow coverings); quilt bedding mats; bed blankets made of cotton; bed blankets made of man-made fibres; silk bed blankets; woolen blankets; quilts; bed throws; bed pads are included in the broad category of, or overlap with, the opponent’s bed clothes. Therefore, they are identical.

The contested bath towels; bath towels; towels of textile (listed twice); towelling [textile]; turkish towel; hand towels of textile; children's towels are similar to textiles. They have usually the same distribution channels, sales outlets and producers.

The contested nightdress cases of textile (listed twice) are similar to a low degree to the opponent’s covers for cushions, since they can originate from same undertakings (i.e. textile companies in the field of home-decor) and may coincide in distribution channels and points of sale. included in the broad category of the opponent’s textiles for beds. Therefore, they are identical.

Contested services in Class 42

The contested computer programming in the medical field; computer programming and software design; smartphone software design; development of driver software are included in, or overlap with, the opponent’s broad category of design and development of computer hardware and software. 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 goods or services in question.

In the present case, the goods and services found to be identical or similar (to varying degrees) are directed mostly at the public at large and also, to some extent, at the professional public (e.g. the goods in Class 10 and the services in Class 42).

In the present case, the attention paid by consumers during the purchase of the goods and services concerned could vary from average (e.g. in relation to chairs) to a higher than average degree of attention (e.g. in relation to equipment for moving patients and computer programming in the medical field). This higher than average degree of attention is likely to occur in relation to goods and services that are expensive and/or not frequently purchased and/or are purchased for professional purposes and/or that can have some impact on the user´s health.

c) The signs

DREAMS	Engineers of Dreams
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 marks in conflict are word marks as can be seen above. In the case of word marks, it is the word as such that is protected and not its written form. Consequently, it is irrelevant whether the signs are represented in upper- or lower-case characters unless the word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing (‘irregular capitalisation’), which is not the present case.

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.

The verbal element ‘Dreams’, present both in the earlier mark and in the contested sign, is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking parts of the public.

When a word has different concepts, and it is used in relation to certain goods or services (e.g. as in trade marks), consumers will attribute it the concept that is more closely related to the kind of goods or services it is used in relation to, since it is the meaning that will be naturally brought to mind. In this case, the word ‘DREAMS’, present in both signs, is a plural form of the English word ‘dream’ which means, inter alia, ‘a series of thoughts, images, and sensations occurring in a person's mind during sleep’ (extracted from Oxford Dictionary at https://www.lexico.com/en/definition/dream on 05/10/2020). Bearing in mind that some of the relevant goods are beds or bed linen (that can be used while sleeping), this element can be seen as somehow evocative of positive characteristics (i.e. the pleasant act of sleeping when using them). However, this is not a clear mental link, and the word itself does not give consumers any information as regards the goods concerned. Therefore, contrary to the applicant´s arguments, this is not enough to attribute it a degree of distinctiveness below average. With regard to the remaining goods the word ‘DREAMS’ is also distinctive to an average degree as it has no direct meaning for these goods and services.

The applicant argues that ‘the term “dreams” itself is highly connected to sleep’ and ‘is a descriptive element in “dreams” that refers to the state of sleeping, as sleep is a necessary condition to dream’. The applicant did not however submit any evidence showing that the relevant public will indeed perceive the word ‘dreams’ as descriptive in relation to the goods and/or services concerned. Therefore, the applicant’s claim must be set aside.

The word ‘of’ in the contested sign is an English preposition and serves to express ‘the relationship between a part and a whole’ (extracted from Oxford Dictionary at https://www.lexico.com/en/definition/of on 05/10/2020). Consequently, for the relevant public it has no trade mark significance.

As explained above, when a word has different concepts, and it is used in relation to certain goods or services (e.g. as in trade marks), consumers will attribute it the concept that is more closely related to the kind of goods or services it is used in relation to, since it is the meaning that will be naturally brought to mind. The word ‘Engineers’ of the contested sign is a plural form of the word English ‘engineer’, inter alia, ‘a person who designs, builds, or maintains engines, machines, or public works’ (extracted from Oxford Dictionary at https://www.lexico.com/en/definition/engineer on 05/10/2020). Bearing in mind the role and position of the word ‘Engineers’, this word will be perceived as a verbal element qualifying the word ‘Dreams’, and for this reason it will have less impact in the comparison than the word ‘Dreams’.

Furthermore, the applicant puts forward that ‘usually more attention is given to the beginning of a sign’. It should be however explained that even if the main differences of the signs are at their beginnings and consumers generally pay more attention to the beginning of a sign, this argument cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by those marks (15/07/2011, T-220/09, ERGO, EU:T:2011:392, § 31). In this regard the element, ‘Dreams’ of the contested sign is perfectly visible and is normally distinctive, whereas the words ‘Engineers of’ have a lesser role in the comparison due to their role as a qualifier of the verbal element ‘dreams’.

Visually and aurally, the signs coincide in the letters/the sound of the sequence of letters ‘D-r-e-a-m-s’. However, they differ in the first two verbal elements in the contested sign, namely the letters/the sound of the letters ‘Engineers of’.

Therefore, bearing in mind the above explanations, the signs are visually similar to a below average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning (due to the presence of the word ‘DREAMS’), the signs are conceptually 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.

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 territories. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The contested goods are partly identical and partly similar (to varying degrees). These goods target the public at large and, to some extent, professionals, whose degree of attention may vary from average to a higher than average degree of attention.

The signs are visually and aurally similar to a below average degree and conceptually similar. Furthermore, the earlier mark has a normal degree of distinctiveness.

The similarity between the signs resides in the coinciding verbal element ‘DREAMS’. The earlier mark is entirely incorporated in the contested sign as the third verbal element of the phrase ‘Engineers of Dreams’. The main difference between the signs is the words ‘Engineers of’ which are the first two verbal elements in the aforementioned phrase, but which have respectively a limited distinctiveness or have no trade mark significance and will be perceived as a qualifier of the element ‘Dreams’. The differences between the signs are clearly not capable to outweigh the visual, aural and conceptual similarities between them.

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). 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).

Considering all the above, there is a likelihood of confusion on the part of 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 opponent’s European Union trade mark registration No 17 963 494 for the word mark ‘DREAMS’. It follows that the contested trade mark must be rejected for all the contested goods and services, even with regard to the goods found to be at least similar to a low degree.

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/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, namely 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 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 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

Helen Louise MOSBACK

Michal KRUK

María del Carmen SUCH SÁNCHEZ

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.