OPPOSITION No B 3 021 626

Dreams Limited, Knaves Beech Business Centre, 14 Davies Way Loudwater, High Wycombe, Buckinghamshire HP10 9YU, United Kingdom (opponent), represented by Lane IP Limited, 2 Throgmorton Avenue, London EC2N 2DG, United Kingdom (professional representative)

a g a i n s t

Диана Минкова, ул. Борисова № 96 ап. 19, 7000 Русе, Bulgaria (applicant), represented by Ruskov and Colleagues, Verila Str. 5 Fl. 2, 1463 Sofia, Bulgaria (professional representative).

On 05/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 021 626 is upheld for all the contested goods.

2. European Union trade mark application No 17 260 712 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 17 260 712 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 11 424 538 for the word mark ‘DREAMS’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR. In relation to the remaining earlier rights the opponent also 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 11 424 538 for the word mark ‘DREAMS’.

1. The goods

The goods 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; sleeping bags; 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: 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; pyjama cases; furniture coverings of textile; quilts; parts and fittings for all the aforesaid goods.

The contested goods are the following:

Class 20: Pillows; Scented pillows; Inflatable pillows; Cushions; Bolsters; Latex pillows; Bean bag cushions; Bath pillows; Stuffed pillows; Seat cushions; Mattress cushions; Beds, bedding, mattresses, pillows and cushions; Inflatable neck support cushions; Accent pillows; Cushions filled with hair; Neck-supporting pillows; U-shaped pillows; Air pillows, not for medical purposes; Back support cushions, not for medical purposes; Air cushions in the nature of furniture [not for medical purposes]; Bedding for cots [other than bed linen]; Seat pads being parts of furniture; Covers for clothing [wardrobe].

Class 24: Comforters; Silk blankets; Duvets; Duvet covers; Eiderdowns [down coverlets]; Textile covers for duvets; Quilts filled with feathers; Blankets for household pets; Covers for eiderdown and duvets; Textile goods for use as bedding; Bed blankets made of man-made fibres; Bed covers; Valanced bed covers; Bed covers of paper; Bed clothes and blankets; Bed linen and blankets.

Contested goods in Class 20

The contested pillows (mentioned twice); beds; mattresses are identically included in the opponent’s specification.

The contested air cushions in the nature of furniture [not for medical purposes] are included in the opponent’s broad category of air cushions. They are identical.

The contested bolsters are firm pillows shaped like a long tube and, therefore, they are identical to the opponent´s pillows.

The contested bean bag cushions; seat cushions; mattress cushions; inflatable neck support cushions: cushions filled with hair; back support cushions, not for medical purposes being different kinds of cushions, overlap with the opponent`s air cushions. Therefore, they are identical.

The contested scented pillows; inflatable pillows; latex pillows; bath pillows; stuffed pillows; accent pillows; neck-supporting pillows; U-shaped pillows; air pillows, not for medical purposes are included in the broad category of the opponent’s pillows. These goods are identical.

The opponent’s bedding, other than bed linen includes, as a broader category, the contested bedding for cots [other than bed linen]. These goods are, therefore, identical.

The contested bedding includes, as a broader category, 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 seat pads being parts of furniture are included in the opponent’s broad category of parts and fittings for all the aforesaid goods (furniture). Consequently, they are identical.

The contested cushions (mentioned twice) as a broader category, includes 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.

The contested covers for clothing [wardrobe] are furnishings and have the same purpose as the opponent’s furniture. They can coincide in end user and distribution channels. Therefore, they are considered similar.

Contested goods in Class 24

The contested duvets; bed covers are identically mentioned in the opponent’s specification.

The contested Bed clothes and blankets; bed linen and blankets are also mentioned in the opponent’s list albeit as separated categories. They are, thus identical.

The contested silk blankets overlap with the broad category of the opponent’s bed blankets. These goods are identical.

The contested textile covers for duvets; covers for eiderdown and duvets; duvet covers; valanced bed covers; bed covers of paper are included in the broad category of the opponent’s bed covers. These goods are identical.

The contested quilts filled with feathers are included in the broad category of the opponent’s quilts. They are identical.

The contested comforters; eiderdowns [down coverlets] are bed coverings and as such they are included in the broad category of the opponent’s bed covers. They are identical.

The broader category of the contested textile goods for use as bedding includes the opponent’s bed covers. 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 bed blankets made of man-made fibres; blankets for household pets overlap with the opponent’s bed blankets. Consequently, they 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 found to be identical and similar are directed at the public at large with an average degree of attention.

3. The signs

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 earlier sign is a word mark, consisting of the word ‘Dreams’.

The contested sign consists of two word elements ‘Dream’ and ‘Dreams’ connected with an ampersand and written in standard letters in bold with the first letters in capital. There is a feminine head outlined in profile, in grey, above the word 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.

The element ‘Dream’ and its plural equivalent ‘Dreams’, which form the verbal elements of the signs, are 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 part of the public. The ampersand placed between the verbal elements in the contested sign represents for the English-speaking consumers the word ‘and’.

The terms ‘Dream’ and ‘Dreams’ will be understood by the relevant public 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’ (information extracted from Collins English Dictionary online on 28/01/2019 at www.collinsdictionary.com). 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’. Consequently, these words are neither descriptive nor lacking distinctiveness for any of the relevant goods, as they do not describe or even allude to any of their essential characteristics.

Considering the contested sign as a whole, the expression ‘Dream & Dreams’ has no univocal meaning for the relevant public and is not used in common parlance. In any case, it is clear that the relevant English-speaking consumers will instantly recognise and perceive the words ‘Dream’ and its plural equivalent ‘Dreams’ according to their aforementioned meanings, because they are both words known to them.

The figurative elements of the contested sign representing a feminine head in profile is also normally distinctive in relation to the relevant goods. Nonetheless, the Opposition Division respectfully disagrees with the applicant’s contention that this element dominates the contested sign and will attract more consumers’ attention that the verbal elements present in the sign. Although it is true that the depiction of feminine profile is placed above the verbal elements and occupies a large space in the sign, it is also clear that it does not overshadow the verbal elements, which are sufficiently large in size and remain clearly noticeable and readable. Indeed, all the elements in the sign are of the same relevance.

Moreover, 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, for the aforementioned reasons, even considering the normal inherent distinctiveness of the figurative component of the contested sign, the public will attribute more trade mark significance to the verbal elements ‘Dream & Dreams’, as it will perceive them as the main indicator of commercial origin of the relevant goods and will use them in order to refer to these goods.

Therefore, considering all the above, the contested sign has no elements which could be considered more dominant (visually eye‑catching) than other elements.

Visually, the signs coincide in the term ‘Dreams’, which constitutes the only verbal element of the earlier mark and the second verbal element of the contested sign. Furthermore, they play an independent and distinctive role in them. It’s worth observing that the additional word ‘Dream’ is included in the first position of the contested sign, and represents the singular form of the coinciding term ‘Dreams’. The remaining visual differences between the signs are limited to the ampersand, which plays merely a role of conjunction for the relevant English consumers and the figurative elements present in the contested sign, however, for the aforementioned reasons, the relevant public will attribute more trade mark significance to the verbal elements of the sign than to its figurative and stylisation components.

Consequently, the degree of visual similarity must be considered average.

Aurally, the signs coincide in the sound of the letters forming the verbal elements ‘DREAM/S’, which constitute independent and distinctive elements of the contested sign. They differ in the ampersand of the contested sign, which will be pronounced as ‘and’. The applicant points out, that the earlier mark consists of one word and the contested sign consists of two words and that marks an important difference when pronouncing them. In this regard, the Opposition Division observes that the contested sign contains a repetition of almost the same word in its first position, and the little difference arising from the absence of the final letter ‘S’ in its first verbal element will be attributed just to the plural form of the coinciding word ‘Dreams’.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Contrary to the argumentation of the applicant, the Opposition Division notes that although the relevant public in the relevant territory will recognize the feminine profile in the contested sign, it will be equally aware of the semantic content of the terms ‘Dream/s’ placed in the signs. These words are inherently distinctive and generate 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 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 8 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 partly identical and partly similar to the goods on which the opposition is based. They are directed at the public at large with a normal degree of attention.

The earlier mark enjoys an average degree of distinctiveness.

As regards the main figurative element of the contested sign representing a feminine profile, although it cannot be denied that it is noticeable and quite stylised, this does not invalidate the aforementioned principle that consumers will attribute more trade mark significance to the verbal elements ‘Dream’ and Dreams’, as they will perceive them as the main indicator of commercial origin of the relevant goods and will use them in order to refer to these goods. In addition, it must be noted that the stylisation and overall graphic arrangement of this figurative element is not such as to obscure the verbal elements of the sign or otherwise detract the public’s attention from them.

It should also be noted that the signs under comparison are visually and conceptually similar to an average degree and aurally highly similar on account of the common, independent and normally distinctive verbal element ‘DREAMS’, which is the only element of the earlier mark and is included in its singular form as the first element and totally included as the second element in the contested sign.

As explained above, the additional elements present in the contested sign have a reduced impact on the assessment of the likelihood of confusion between the signs and, as a result, are not sufficient to exclude a likelihood of confusion between the marks under the present dispute.

Therefore, given the reproduction of the element ‘Dreams’ in the contested sign, it is likely that the part of the relevant public displaying a normal level of attention will associate the contested sign with the earlier mark.

Article 8(1)(b) EUTMR states that, upon opposition, a 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, consumers may believe that the contested sign, ‘Dream & Dreams’, is a new extension or a new brand line of goods, provided under the opponent’s ‘Dreams’ mark.

For the sake of completeness, the Opposition Division wishes to clarify that under the present opposition proceedings the applicant did not request the opponent to submit the evidence of use of its earlier trade marks on which the opposition is based. Therefore, the applicant’s observations in this regard are immaterial. It should be noted that the Office does not inquire ex officio whether the earlier mark has been used. Such examination takes place only when the EUTM applicant makes an explicit request for proof of use. Such a request, if the legal requirements are met, triggers the procedural and substantive consequences laid down in the EUTMR and the EUTMIR and EUTMDR. Consequently, the arguments of the applicant in this regard must be put aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion, including a likelihood of association, on the part of the English-speaking part of the public and, therefore, the opposition is well founded on the basis of the European Union trade mark registration No 11 424 538. 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.

If 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 European Union trade mark registration No 11 424 538 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 rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Finally, 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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Marta GARCÍA COLLADO

Monika CISZEWSKA

Eva Inés PEREZ SANTONJA

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.