OPPOSITION Nо B 3 114 542

 

Coldspring GmbH, Duvenstedter Damm 52b, 22397 Hamburg, Germany (opponent)

a g a i n s t

 

Gunna Music, LLC, 4 Victoria Drive, Fairburn, Georgia 30213, United States of America (applicant), represented by WP Thompson, 8th Floor No. 1 Mann Island, L3 1BP Liverpool, United Kingdom; Patio Ab, Barometergatan 16b, 211 17 Malmö, Sweden (professional representatives).

On 06/05/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 114 542 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 180 418 is rejected in its entirety.

 

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

 

REASONS

 

On 20/03/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 180 418 ‘DRIP OR DROWN’ (word mark). The opposition is based on European Union trade mark registration No 18 037 950 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

The Opposition Division takes note of the fact that ownership of the earlier European Union trade mark registration No 18 037 950 has been transferred in relation to all the goods in Classes 30 and 32 during the proceedings. The corresponding partial transfer has been recorded in the Register of the European Union Intellectual Property Office on 09/11/2020. Following this partial transfer, earlier European Union trade mark registration No 18 037 950 only designates the goods in Class 25, which are to be taken into account in the present 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.

 

a) The goods

 

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

Class 25: Clothing, Particularly tee-shirts, Sweat shirts, Sweaters; Footwear; Headgear, in particular caps and hats.

The contested goods are the following:

Class 25: Clothing.

The terms ‘particularly’ and ‘in particular’ used in the opponent’s list of goods indicate that the specific goods are only examples of items included in the categories and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

Bearing in mind the non-restrictive impact of the use of the term ‘particularly’ in relation to the broad category of clothing, the contested clothing is identically contained in the list of the opponent’s goods.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question. In the present case, the goods found to be identical are directed at the public at large whose degree of attention is average.

 

 

c) The signs

 

	DRIP OR DROWN
Earlier trade mark	Contested sign

The relevant territory is the European Union.

 

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public in the relevant territory, for the reasons that will be explained below. This public consists, for example, of the German- and Polish-speaking consumers, who are deemed to mainly speak the languages predominant in their respective territories (23/10/2002, T‑6/01, Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, § 27).

The English word ‘DRIP’ is not considered to form part of basic English vocabulary. Nor has the applicant submitted sufficient evidence to demonstrate that this term is used on the relevant market to such an extent that could have altered the public’s perception thereof and thus might affect the term’s distinctiveness in relation to the goods at issue.

The words ‘OR DROWN’ of the contested sign are meaningless terms for the non-English-speaking part of the relevant public, such as in the German- and Polish-speaking territories. They are, therefore, distinctive in relation to the relevant goods.

The earlier mark is a figurative mark composed of the verbal element ‘DRIP’ written in a regular white standard font and lower case letters. At the end of the verbal element, there is a figurative element made up of two sets of white dots each forming a drop shape. All of the elements are placed within a blue rectangle. Whilst the drop-shape is distinctive in relation to the goods, the blue rectangle is a mere carrier of the other elements of the mark and has no distinctiveness in itself. The earlier mark has no elements that can clearly be described as dominant (visually more outstanding).

The contested sign is a word mark composed of the words ‘DRIP OR DROWN’.

As outlined above, in those parts of the European Union where familiarity with English is generally considered low, the word ʻDRIPʼ which is identically contained in both signs, is not likely to be understood or associated with any meaning, and will be perceived as a distinctive term. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public in order to take into account the perception of consumers in the European Union who are more prone to confusion, such as the German- and Polish-speaking consumers.

The Opposition Division notes the applicant’s argument that the word ‘DRIP’ is a slang word meaning ‘being fashionably attractive or impressive’ akin to ‘being cool’. The applicant also claims that this word has been made popular by the known rapper Gunna, who constantly used it in the titles of his songs and albums. To support these claims, the applicant submits some definitions from The Urban Dictionary. The Opposition Division finds, however, that both the words ‘DRIP’ and ‘DRIP OR DROWN’ will be seen as invented terms by the non-English-speaking consumers in the abovementioned language areas, which form a significant part of the public in the relevant territory. The notions stemming from English slang or pop culture cannot be expected to be common knowledge for the public under analysis. The applicant’s arguments must be, therefore, set aside.

Visually, the signs coincide in the letters ‘DRIP’ which are the entirety of the earlier mark’s verbal element and are identically contained at the beginning of the contested sign. The signs differ in the figurative elements of the earlier mark and in the words ‘OR DROWN’ placed at the end of the contested sign. However, the lettering of the earlier mark is fairly standard and does as such not create a different visual overall impression. The difference in upper and lower case also has to be put into context given that the contested sign is a word mark meaning that protection is sought for the word itself rather than the way in which it is represented. Consumers generally also tend to focus on the first element of a sign when being confronted with a trade mark because the public reads from left to right, which makes the part placed at the left of the contested sign (the initial part) the one that first catches the attention of the reader. The difference resulting from the words ‛OR DROWN’, therefore, has a somewhat lesser impact in the visual comparison of the signs. Despite the differing lengths of the signs, and considering that the contested sign entirely reproduces the sole verbal element of the earlier mark, the signs are similar to an average degree.

Aurally, the pronunciations of the signs coincide in the sound of the letters ‛DRIP’, present identically in both signs. The pronunciation of the contested sign differs in the sound of the additional words, ‛OR DROWN’, which have no counterpart in the earlier mark. However, the impact of this difference on the aural comparison of signs does not counteract the aural similarity created by the identical pronunciation of the element ‘DRIP’ contained at the beginning of the contested sign. The signs are, therefore, also aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. Neither of the signs has a meaning for the public in the relevant territory. Although the figurative element of the earlier mark is reminiscent of a drop, it can be reasonably assumed that it will not evoke any clear semantic content in the perception of the public under analysis, since the word element of the mark is meaningless. Nor will the earlier mark be associated with ‘water’ only due to the blue background, contrary to the applicant’s arguments. Since a conceptual comparison is not possible for the public under analysis, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

 

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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).

Account must also be 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).

The present assessment of likelihood of confusion considers the perception of the non-English-speaking parts of the public in the relevant territory. As concluded above, the contested goods are identical to the opponent’s goods and the goods at issue are directed at the general public whose degree of attention is average. The earlier mark is endowed with an average degree of inherent distinctiveness, which affords it a normal scope of protection.

The signs are visually and aurally similar to an average degree. The similarity between the signs results from the fact that the verbal element in the earlier mark is identically reproduced at the beginning of the contested sign which catches the attention of the relevant public first. Conceptually, the signs cannot be compared by the public under analysis. Overall, the differences between the signs are therefore insufficient for safely ruling out any likelihood of confusion.

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 or services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the public under analysis 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 goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, and taking into account the principle of imperfect recollection, the Opposition Division concludes that there is a likelihood of confusion on the part of the non-English-speaking part of the public in the European Union, such as the German- and Polish-speaking consumers. 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 18 037 950. It follows that the contested trade mark must be rejected for all the contested goods.

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.

 

Although the winning party is no longer represented by a professional representative at the time of rendering this decision, it was represented by a professional representative within the meaning of Article 120 EUTMR in the course of the opposition proceedings. Therefore, the winning party incurred representation costs which it is entitled to recover, in accordance with Article 18(1)(c) EUTMIR.

 

 

 

The Opposition Division

 

 

Solveiga BIEZA

Philipp HOMANN

Andrea VALISA

 

 

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.