OPPOSITION No B 3 021 873

Aldi GmbH & Co. KG, Burgstr. 37, 45476 Mülheim/Ruhr, Germany (opponent), represented by Schmidt, Von Der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft MBB, Haumannplatz 28, 45130 Essen, Germany (professional representative)

a g a i n s t

Francisco Agredas González, Calle Pintor Tomás Alfaro, 9, 1º C, 01008 Vitoria, Spain (applicant), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain (professional representative).

On 06/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 021 873 is upheld for all the contested goods.

2. European Union trade mark application No 17 290 115 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 17 290 115 for the figurative trade mark . The opposition is based on German trade mark registration No 30 306 564 for the word mark ‘Dormia’ and German trade mark registration No 30 620 442 for the figurative trade mark . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of both German trade marks on which the opposition is based. The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the date of filing of the contested application, namely 04/10/2017. Furthermore, contrary to the opponent’s claims, the request for proof of use was duly submitted as an unconditional request in a separate document by the applicant

Therefore, the opponent was required to prove that the trade marks on which the opposition is based were put to genuine use in Germany from 04/10/2012 to 03/10/2017 inclusive. In addition, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

German trade mark No 30 306 564

Class 20: Pillows.

Class 24: Bed clothes and blankets; pillow covers; mattress sheets; mattress covers; bed covers.

German trade mark No 30 620 442

Class 20: Furniture; beds; pillows; bedding (except bedclothes); mattresses, air mattresses (not for medical purposes); bed bases (not of metal).

Class 24: Textiles and textile goods, included in class 24; woven fabrics; bed and table covers; bedclothes; bedding (included in class 24); eiderdowns, quilt bedding mats, bed throws; table cloths (not of paper); home textiles; linens; oilcloth for use as table covers; textile wallpaper; drapery and window shades, made of textiles or plastics; curtain loops of textile material; shower curtains of textile or plastic.

Class 27: Carpets.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 04/10/2018, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 09/12/2018 to submit evidence of use of the earlier trade marks. On 03/12/2018, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

 Item 1: An affidavit signed on 30/11/2018 by Ines Carlé, Buying Director of the Opponent. This document gives information regarding the time the earlier trade marks were used and, specifically, it provides the dates on which the enclosed advertisements (Items 2 and 6) were published. Moreover, the affidavit states that products bearing the earlier trade marks were placed in more than 1 800 ALDI SOUTH Group retail stores in Germany during the relevant period and gives a list of the products sold along with their minimum sales figures per year. The names of the products listed are in German and have not been translated apart from the product ‘Bettwäsche Mako-Satin Komfort’ (Bedding mako satin comfort).

 Item 2: Extracts of ALDI advertising magazines featuring the products in relation to which the earlier trade marks are used. These contain pictures of the relevant goods, such as mattresses, duvets, eiderdowns, blankets, sheets, pillows, bed covers and pillowcases, alongside the earlier trade marks, the name and description of the products in German and their price. They are undated and their place of distribution is not indicated. However, according to the opponent’s affidavit (Item 1), these magazines were placed as handouts to take-away in ALDI South Group retail stores in Germany or distributed as newspaper supplements in approximately 25 German daily newspapers. Moreover, the affidavit lists the weeks and years of publication of the magazines, for example. ‘cw 41 of 2012’, meaning that one of these magazines was published on the 41^st calendar week of 2012. These dates correspond to the relevant period and their validity is supported by the content of the invoices of the company printing the magazines WKS Print Partner GmbH (Item 4).

 Item 3: An overview prepared by the opponent of the print run of the aforementioned advertisement magazines (Item 2). The dates listed (in calendar week and year) are within the relevant period and match those of the affidavit (Item 1) as well as those shown in the invoices of the printing company WKS Print Partner GmbH (Item 4).

 Item 4: 55 invoices issued by the company WKS Print Partner GmbH for the printing of several of the aforementioned ALDI magazines (Item 2). The subject matter of most of these invoices appears in this form: ‘ALDI KW 41/2012’, therefore showing the intended publication date of these magazines (in this case the 41^st week of 2012). As mentioned above, these dates are within the relevant period and match the information of Items 1 and 3.

 Item 5: An overview prepared by the opponent of German newspapers in which some of the aforementioned advertising magazines (Item 2) were added as newspaper supplements. The overview shows the publishing company, the title and the year of publication of the newspapers, which correspond to the relevant period.

 Item 6: Several copies of advertisements of the goods labelled with the earlier trade marks, which, according to the opponent’s affidavit, were published in various newspapers in Germany throughout the relevant period. These advertisements contain pictures of the relevant goods, such as mattresses, sheets, pillows, bed covers and pillowcases, alongside the earlier trade marks, the name and description of the products in German and their price. On the bottom of some of these advertisements the years 2013, 2014, 2015, 2016 and 2017 are faintly visible, which corroborates the dates given in the affidavit and the opponent’s statement that the earlier trade marks were advertised throughout the relevant period.

 Item 7: An overview prepared by the opponent showing the dates on which the aforementioned newspaper advertisements were published (which are the same as the dates provided in the opponent’s affidavit).

 Item 8: 62 copies of package samples of the goods ‘Bettwäsche’ and ‘Kissenbezüge’ labelled with the earlier trade mark No 30 620 442 which is clearly visible on all the packages. These packages consist of photos of bed covers and pillowcases alongside the name, description and other specifications of those goods in German.

 Item 9: 5 pictures of a retail store in Düsseldorf, Germany and store shelves in it showing, inter alia, packages of the good ‘Bettwäsche’ which have attached the earlier trade mark No 30 620 442 as well as their respective store tags depicting the earlier trade mark No 30 306 564 ‘Dormia’ and the price of the goods.

 Item 10: 67 invoices of suppliers Bierbaum Wohnen GmbH & Co and Wilh. Wülfing GmbH & Co. KG to the Opponent’s sales companies showing supplies of several different goods. Although the opponent has indicated that there are 124 invoices, it is noted that this number corresponds to the number of pages submitted but not to the number of invoices, which are in fact 67, as some invoices have more than one page). The invoices have been issued on various dates from 11/10/2012 to 25/07/2017 (within the relevant period) and most of them depict the earlier trade mark ‘Dormia’. Specifically, the invoices showing the earlier trade mark concern the goods ‘Bettwäsche’ (sometimes written as ‘Bettw.’), ‘Kissenbezüge’, ‘Spannbettuch’, ‘Inkontinenzauflage’ and ‘Matratzentopper’. They also contain the product codes of these goods and the quantities in which they were supplied (which are usually in the range of a couple of thousand items per invoice).

 Item 11: 2 letters (and their translations) by the aforementioned suppliers Bierbaum Wohnen GmbH & Co and Wilh. Wülfing GmbH & Co. KG confirming that during the relevant period they supplied goods to the opponent labelled with the trade mark ‘Dormia’, including the goods ‘Bettwäsche’ (translated as ‘bed linen’) and ‘Kissenbezüge’ (translated as ‘pillowcases’).

 Item 12: 37 invoices showing sales of the goods ‘Bettwäsche Mako-Satin Komfort’ (Bedding mako satin comfort) by the opponent in Germany. Specifically, the invoices reflect sales made by 27 different retail stores of the opponent in more than 18 German cities/towns and they are dated from 04/11/2014 to 31/07/2017 (within the relevant period). Although these invoices do not depict the earlier trade marks, they all contain the product code of the aforementioned good sold (34037) which matches the code in the supplier invoices (Item 10) corresponding to the same product (e.g. Bierbaum Wohnen invoice No. 4254, dated 23/06/2014). Therefore, taken together, these pieces of evidence contain proof that the aforementioned product, labelled with the trade mark ‘Dormia’, was supplied to and subsequently sold by the opponent during the relevant period in Germany.

 Item 13: 3 extracts of the opponent’s website advertising two products (‘Bettwäsche’ and ‘Kissen’) under the trade mark ‘Dormia’.

 Item 14: 37 copies of customer inquiries sent to the opponent mentioning the earlier trade mark ‘Dormia’ alongside the names of various goods, including the good ‘Bettwäsche’ (mentioned in 15 of these inquiries). The inquiries are in German and have been sent within the relevant period.

Assessment of the evidence

It is important to note that when evaluating the evidence submitted, the Opposition Division has to make an overall assessment and all the circumstances of the specific case have to be taken into account. Furthermore, all the materials submitted must be assessed in conjunction with each other. Pieces of evidence may be insufficient by themselves to prove the use of an earlier trade mark, but may contribute to proving use in combination with other documentation and information. This premise is of particular importance because even in the event that certain pieces of evidence may be deficient in some aspects, the other pieces of evidence allow connections to be made in order to have a complete picture of the kind of use that has taken place. Indeed, this is the situation with some of the evidence in the present case, for example the evidence that has not been translated from German or the evidence contained in Item 12 not showing the earlier trade marks. Despite their deficiencies, these pieces of evidence, when viewed together with the other pieces of evidence, allow a clearer image of the use and indeed offer indirect information.

As regards the place of use, most of the evidence listed above, inter alia the invoices (Items 10 and 12), the advertisements (Items 2 and 6) and the product samples (Item 8), contain proof that the earlier trade marks have been used in Germany. This can be inferred from the language of the documents (German), the currency mentioned in the invoices (Euro) and the addresses of the opponent’s stores in Germany. Therefore, the evidence relates to the relevant territory.

Regarding the time of use, it is noted that the vast majority of the evidence submitted by the opponent is dated within or concerns the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, in particular the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Even though the invoices in Item 10 do not show sales of the opponent’s goods directly to the consumers, the quantities and frequency of product supplies from other undertakings that can be inferred from those invoices suggest that the products concerned must have been sold with some consistency by the opponent throughout the relevant period. Moreover, the dates and quantities featured in these invoices for some of the products (e.g. ‘Bettw. Flanell’, ‘Bettw. Mako-Satin’) complement the respective quantities and sales figures contained in the affidavit, which are not insignificant (around or above 1 000 000 euros per item per year).

This evidence is further supported by the invoices enclosed in Item 12, which are intended to show exemplary sales of one of the goods in relation to which the earlier trade marks have been used, namely ‘Bettwäsche Mako-Satin Komfort’ (Bedding mako satin comfort). As mentioned above, although these invoices do not show the earlier mark ‘Dormia’, the product reference they contain links them to the supplier invoices in Item 10 where the earlier mark can be seen. It is, therefore, reasonable to conclude that this product was sold to end consumers under the mark ‘Dormia’. The 37 invoices submitted show sales of one or two products amounting to 10-20 euros per invoice. Nevertheless, this somewhat low commercial volume is offset by the fact that the sales cover a significant part of the relevant period (from 04/11/2014 to 31/07/2017) and have taken place in more than 18 German cities.

Moreover, apart from the invoices, the numerous advertisements that have been submitted by the opponent, when read in conjunction, demonstrate that during the whole of the relevant period the opponent made serious efforts to advertise and sell its products under the earlier trade marks.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier marks.

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The evidence shows that the earlier trade mark No 30 306 564 has been used as registered, namely as the word mark ‘Dormia’. As for the earlier trade mark No 30 620 442, this has also been used as registered, namely , but also in slightly different versions using different colours, namely and . However, these differences relate to purely decorative elements of this mark (i.e. its colours) which are not the elements from which the mark derives its distinctive character. Therefore, these changes are not considered to alter the distinctive character of the mark in the form in which it was registered.

It is noted that not all pieces of evidence contain both earlier trade marks, namely both the word mark ‘Dormia’ and its figurative version protected by German registration No 30 620 442. However, it is considered that the reason for this relates to the different types of evidence submitted; for example, it is reasonable to assume that in the particular market sector it may not be common for figurative trade marks to appear on invoices. In any case, it is considered that the word element ‘Dormia’ – which forms the entirety of earlier mark No 30 306 564 – is also the element of earlier mark No 30 620 442 that essentially gives this mark distinctive character. Therefore, since this element appears unchanged in all relevant pieces of evidence, the Opposition Division considers that the evidence sufficiently shows use of both earlier trade marks as registered.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

In the present case, the evidence shows that the earlier trade marks have been used by the opponent as a trade mark and in accordance with their essential function. In particular, the evidence contains proof that the opponent offered and sold its products in the relevant territory under the earlier trade marks. Indeed, the earlier trade marks can clearly be seen affixed on the packages of the opponent’s goods (Item 8), on store shelves where the goods can be purchased (Item 9) and are also present in the invoices showing supplies of the products to the opponent for their subsequent retail.

Moreover, the marks have been used by the opponent in a considerable volume of advertising, as they are seen present in all advertising material enclosed in Items 2, 6 and 13, which also constitutes use of the trade marks in accordance with their essential function. Indeed, this has been confirmed by the Court which has held that use of a mark must relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 37).

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods covered by the earlier trade marks.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

According to case-law, when applying the abovementioned provision, the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45‑46.)

In the present case, the advertisements that have been submitted by the opponent (Items 2, 6 and 13) show that a large variety of goods have been advertised under the earlier trade marks. Although the names of these goods appear in German and the majority of them have not been translated, it can be understood by the accompanying pictures that they relate to several of the goods covered by the earlier trade marks, both in Class 20 (e.g. mattresses, pillows) and in Class 24 (e.g. bed clothes, pillowcases).

Nevertheless, subsequent pieces of evidence containing proof of the actual retail of the goods by the opponent, such as the invoices (Items 10 and 12) and the product samples (Item 8), only relate to some of the goods that were advertised, namely the goods ‘Bettwäsche’, ‘Kissenbezüge’, ‘Spannbettuch’, ‘Inkontinenzauflage’ and ‘Matratzentopper’. From the translations included in the opponent’s affidavit (Item 1) and the suppliers’ confirmation letters (Item 11), as well as the pictures contained in Items 2,6 and 8, it can be understood that the first two goods refer to bedding/bed linen and pillowcases, respectively. Further, although translations have not been provided of the remaining three products, it can be inferred from numerous pictures of the goods in Items 2 and 6 – for example , and – that these goods are sheets (‘Spannbettuch’), mattress covers (‘Matratzentopper’) and some kind of waterproof bed cover (‘Inkontinenzauflage’). All these goods are mentioned in one or several of the supplier invoices enclosed in Item 10. Therefore, apart from them being advertised under the earlier trade marks, there is proof that, at the very least, they were also supplied to the opponent for their subsequent retail using these marks.

Therefore, it is considered that genuine use of the earlier trade marks has been proven in relation to the following goods:

German trade mark No 30 306 564

Class 24: Bed clothes; pillow covers; mattress sheets; mattress covers; bed covers.

German trade mark No 30 620 442

Class 24: Textiles and textile goods, included in class 24; woven fabrics; bed covers; bedclothes; bedding (included in class 24); bed throws; home textiles; linens; all the aforementioned goods being exclusively for use as bedding and bed linen.

As is clear from the evidence and assessment, the opponent has proven genuine use for goods that can be considered in general terms as bedding and bed linen in Class 24. As concerns the second German trade mark above, as can be seen, the broad categories that it covers, such as textiles and textiles goods, can be limited accordingly.

It is considered that the evidence is not sufficient to prove genuine use of the earlier trade marks in relation to the remaining goods covered by them, namely furniture; beds; pillows; bedding (except bedclothes); mattresses, air mattresses (not for medical purposes); bed bases (not of metal) in Class 20, blankets; table covers; eiderdowns, quilt bedding mats; table cloths (not of paper); oilcloth for use as table covers; textile wallpaper; drapery and window shades, made of textiles or plastics; curtain loops of textile material; shower curtains of textile or plastic in Class 24 and carpets in Class 27. It is to be noted that there is a distinction between bedding included in Class 20, which encompasses goods such as mattresses and pillows, and bedding included in Class 24, which encompasses textile goods such as bed linen.

It follows that the evidence submitted by the opponent in relation to bedding in Class 24 cannot be considered as proving use for its goods in Class 20. Therefore, the Opposition Division will not consider these goods in its further examination of the opposition.

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 German trade mark registration No 30 306 564 as this earlier mark is a word mark and, therefore, has less visual differences with the contested trade mark application.

a) The goods

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

Class 24: Bed clothes; pillow covers; mattress sheets; mattress covers; bed covers.

The contested goods are the following:

Class 20: Beds, bedding, mattresses, pillows and cushions.

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.

The contested beds and mattresses are similar to the opponent’s bed clothes. Although these goods are different in nature, they are used for the same primary purpose which is to enhance the rest and sleep of the user (25/09/2014, T‑516/12, Sensi Scandia, EU:T:2014:811, § 26). Furthermore, the goods covered by the earlier mark are used to cover/clothe the contested goods and are, thus, complementary to the latter. They are also directed at the same consumers, who use them mostly in conjunction and simultaneously. In addition, the aforementioned goods are frequently sold through the same outlets, given that consumers generally buy a bed, a mattress and bed clothes to cover them at the same time. The same reasoning applies by analogy to the contested pillows and cushions when compared to the opponent’s pillow covers. Therefore, these goods are also similar.

The contested bedding, given its classification in Class 20, encompasses goods such as mattresses and pillows, as opposed to things like bed linen and blankets which belong in Class 24 as textile goods. Therefore, for the same reasons provided above, this contested good is considered to be similar to the opponent’s bed clothes; pillow covers.

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 similar are directed at the public at large. The degree of attention is considered to be average.

c) Comparison of the signs and distinctiveness of the earlier mark

Dormia
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 word elements ‘Dormia’ and ‘DORMIK’ of the signs have no meaning in German. Therefore, these elements are distinctive for the public in the relevant territory.

Given that the earlier mark merely consists of one element, the Opposition Division finds it appropriate to examine its distinctive character within the comparison of signs given the impact this may have. It is relevant to note that the opponent did not claim an enhanced distinctive character of any kind. Considering that the earlier mark as a whole has no meaning for the relevant public, its distinctiveness is considered to be normal.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many European consumers, in particular Spanish, French and Italian consumers, will associate it with the word ‘dormir’, which means ‘sleep’ in French and Spanish, or the Italian equivalent ‘dormire’. Therefore, according to the applicant, these consumers will perceive the earlier trade mark ‘Dormia’ as descriptive or suggestive of the relevant goods. However, it should be born in mind that the relevant public in this case consists of German speaking consumers for whom the word for ‘sleep’ is totally different (‘schlafen’). It is, therefore, not considered that the relevant consumers would associate ‘Dormia’ with any meaning linking it to the relevant goods.

The applicant has further argued that the low distinctive character of the earlier trade mark can be attributed to the fact that many trade marks in Class 20 include the element ‘Dormi’. In support of its argument, the applicant refers to several trade mark registrations in France, Spain, Germany and Bulgaria.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. Furthermore, the applicant has only given the examples of one Spanish and one Bulgarian trade mark that have actually been used in the market, with no evidence that the public in the relevant territory (i.e., Germany) has been exposed to and become accustomed to these marks. Under these circumstances, the applicant’s claims must be set aside.

The contested sign also contains some figurative aspects, which however are deemed to have less of an impact on the consumer than this sign’s verbal element ‘DORMIK’. This is because the public generally does not tend to analyse signs and will more easily refer to the sign in question by its verbal element than by describing its figurative components (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). In addition, in the present case, the Opposition Division considers that the public will have difficulty discerning what exactly the sign’s blue graphic device depicts. Indeed, the perception of a travel pillow, as suggested by the applicant, is not immediately clear. It can therefore be concluded that this device, as well as the other figurative elements of the contested sign like its black background, are not particularly memorable and will rather be perceived as merely decorative features.

Visually and aurally, the signs’ distinctive word elements coincide entirely in their first five letters ‘Dormi’, which is particularly important because consumers tend to take more note of a mark’s beginning than of its ending (16/03/2005, T-112/03, Flexi Air, EU:T:2005:102, § 64). By contrast, their differing letters ‘a’ vs. ‘k’ are likely to go unnoticed by consumers, given their position at the end of each word.

In the visual aspect, the signs further differ in the figurative elements of the contested sign. However, given the merely decorative nature of these elements, they are not considered to produce a notable visual difference between the signs.

Therefore, the signs are considered to be visually and aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, 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) Global assessment, other arguments and conclusion

In the present case, the contested goods are similar to the goods covered by the earlier mark and are directed at the public at large with an average degree of attention. The distinctiveness of the earlier mark is normal, which affords it normal protection under this assessment. The signs are visually and aurally highly similar, while a conceptual comparison between them is not possible, given that neither mark has a meaning for the relevant public.

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/services covered are from the same or economically linked undertakings. 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). In light of this, it is considered that, in the present case, the differences in one letter in each sign and in the secondary graphic elements of the contested sign are clearly not sufficient to enable consumers to safely distinguish between the signs.

In its observations, the applicant has argued that since the signs in conflict are fairly short, the difference in their ending letter will be clearly perceived by consumers. In support, the applicant has cited two previous decisions of the Opposition Division (decision of 08/03/2010, B 1 426 073 regarding the marks ‘YOKI/YOMI’ and decision of 25/02/2010, B 1 529 992 regarding the marks ‘ZERO/ZYRO’) where no likelihood of confusion was found between signs whose verbal elements also differed in just one letter. However, it should first be noted that in these earlier cases, the Opposition Division considered that likelihood of confusion was prevented also due to additional differences between the signs (such as differences in figurative elements in the first case and a conceptual difference in the second case). In addition, unlike these earlier cases, in the present case the signs comprise six letters each, being thus rather long, and their differing letters appear at the end of each sign where they are less likely to be noticed by consumers.

The applicant has further referred to two other previous Office decisions where a coincidence in the beginning parts of signs was not considered significant enough to lead to likelihood of confusion (decision of 08/11/2013,B 2 132 325 regarding the marks ‘DURATEC/DURACOTE BLACK’ and decision of 27/07/2011, R 1123/2010-4 regarding the marks ‘DURACRYL/DURASINT-DURATINT-DURAXIL’). Nevertheless, these earlier cases concerned signs whose common element was non-distinctive or allusive and which also contained additional differing elements. Therefore, they are not comparable to the present case where the common element ‘Dormi’ of the marks at issue is distinctive for the relevant public and the differences are minor or confined to secondary elements of the contested sign.

Considering all the above, there is a likelihood of confusion on the part of the public. It follows that the contested trade mark must be rejected for all the contested goods.

As the opponent’s German trade mark registration No 30 306 564 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Eva Inés PÉREZ SANTONJA

Alexandra APOSTOLAKIS

Vanessa PAGE

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.