OPPOSITION No B 3 048 422

dm-drogerie markt GmbH + Co. KG, Carl-Metz-Str. 1, 76185 Karlsruhe, Germany (opponent), represented by Lemcke, Brommer & Partner Patentanwälte Partnerschaft mbB, Siegfried-Kühn-Straße 4, 76135 Karlsruhe, Germany (professional representative)

a g a i n s t

Dental Monitoring, 47 avenue Hoche, 75008 Paris, France (applicant), represented by Nony, 11 rue Saint Georges, 75009 Paris, France (professional representative).

On 19/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 422 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 582 404 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 17 582 404 . The opposition is based on European Union trade mark registration No 11 654 456 ‘dm’. The opponent invoked Article 8(1)(b) 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.

a) The goods and services

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

Class 9: Computer software.

Class 10: Artificial limbs, eyes and teeth; orthopedic articles; suture materials; aerosol dispensers for medical purposes; cases fitted for use by surgeons and doctors; teething rings; surgical apparatus and instruments; surgical cutlery; suture needles; sponges (surgical -); surgical mirrors; defibrillators; ice bags for medical purposes; bandages, elastic; electric acupuncture instruments; finger guards for medical purposes; feeding bottle teats; hearing protection devices; body cavities (appliances for washing -); plaster bandages for orthopedic purposes; belts for medical purposes; belts for orthopaedic purposes; hair prostheses; gloves for medical purposes; urinals [vessels]; blankets, electric, for medical purposes; pads (heating -), electric, for medical purposes; hearing aids; corsets for medical purposes; douche bags; cushions for medical purposes; stockings for varices; crutches; lamps for medical purposes; lasers for medical purposes; air pillows for medical purposes; air cushions for medical purposes; air mattresses, for medical purposes; masks for use by medical personnel; massage apparatus; esthetic massage apparatus; gloves for massage; medical apparatus and instruments; physical exercise apparatus, for medical purposes; spoons for administering medicine; breast pumps; non-chemical contraceptives; ear picks; plugs (ear -) [ear protection devices]; orthopedic articles; arch supports for footwear; bandages for joints, anatomical; orthopaedic knee bandages; orthotic footwear; orthopedic soles; condoms; pulse meters; pumps for medical purposes; feeding bottle receptacles; feeding bottle valves; scissors for surgery; surgical splints; slings [supporting bandages]; dummies for babies; scalpels; containers especially made for medical waste; elastic stockings for surgical purposes; thermal packs for first aid purposes; thermometers for medical purposes; ultraviolet ray lamps for medical purposes; maternity belts; incontinence sheets; hypogastric belts; urological apparatus and instruments; sprayers for medical purposes; veterinary apparatus and instruments; vibromassage apparatus; compresses (thermo-electric -) [surgery]; mirrors for dentists; tongue scrapers.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; updating of computer software; architectural consultation; consultancy in the field of energy-saving; information technology [it] consulting services; consultancy in the design and development of computer hardware; web site design consultancy; providing search engines for the internet; computer software consultancy; computer software design; computer system design; architecture; design of interior decor; dress designing; packaging design; computer virus protection services; digitization of documents [scanning]; chemical analysis; computer programming; monitoring of computer systems by remote access; cosmetic research; creating and maintaining web sites for others; graphic arts design; hosting computer sites [web sites]; installation of computer software; data conversion of computer programs and data [not physical conversion]; conversion of data or documents from physical to electronic media; duplication of computer programs; server hosting; software as a service [saas]; styling [industrial design]; maintenance of computer software; recovery of computer data.

The contested goods and services are the following:

Class 9: Downloadable computer software applications enabling dental sector professionals to remotely simulate, monitor and analyse the dental state of their patients, in particular teeth position and movement; computer software (recorded programs) enabling dental sector professionals to remotely simulate, monitor and analyse the dental state of their patients, in particular teeth position and movement; computer programs (downloadable software) enabling dental sector professionals to remotely simulate, monitor and analyse the dental state of their patients, in particular teeth position and movement; electric control apparatus enabling dental sector professionals to remotely simulate, monitor and analyse the dental state of their patients, in particular teeth position and movement.

Class 10: Orthodontic apparatus; dental equipment; dental prostheses; artificial teeth; orthodontic rubber bands; teeth protectors for dental purpose.

Class 42: Installation of computer software enabling dental sector professionals to remotely simulate, monitor and analyse the dental state of their patients, in particular teeth position and movement; consultancy relating to computer software specialising in the dental and orthodontics sector; design of computer software specialising in the dental and orthodontics sector; rental of computer software specialising in the dental and orthodontics sector; software as a service [SaaS]; maintenance of computers specialising in the dental and orthodontics sector; updating of computer software specialising in the dental and orthodontics sector; engineering services, technical research and materials testing; server hosting; cloud computing.

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

The term ‘in particular’, used in the applicant’s list of goods and services, indicates that the specific goods and services 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).

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 applicant argues that its EUTM application relates to a computer program and a mobile application to optimise aligner treatment, whereas the opponent’s list of goods and services refers to products sold in a chemist’s shop, such as makeup, body-care products, baby-care products, or household products. It should be borne in mind that, within the context of opposition proceedings initiated on the basis of Article 8(1)(b) EUTMR by the proprietor of an earlier trade mark, the examination of a possible similarity between the goods and services covered by the mark applied for and by the earlier mark must be carried out by reference to the list of goods and services covered by those two marks and not to the goods or services actually marketed under those marks (04/04/2014, T‑568/12, Focus extreme, EU:T:2014:180, § 30 and the case-law cited therein). Consequently, the applicant’s claim must be set aside.

Contested goods in Class 9

The contested downloadable computer software applications enabling dental sector professionals to remotely simulate, monitor and analyse the dental state of their patients, in particular teeth position and movement; computer software (recorded programs) enabling dental sector professionals to remotely simulate, monitor and analyse the dental state of their patients, in particular teeth position and movement; computer programs (downloadable software) enabling dental sector professionals to remotely simulate, monitor and analyse the dental state of their patients, in particular teeth position and movement are included in the broad category of the opponent’s computer software. Therefore, they are identical.

The contested electric control apparatus enabling dental sector professionals to remotely simulate, monitor and analyse the dental state of their patients, in particular teeth position and movement is a specialised control apparatus intended for use in the dental field. As such, it has relevant points in common with the opponent’s medical apparatus and instruments in Class 10. They can have the same analysis and monitoring purposes in the field of dentistry and can be distributed through the same channels. Moreover, the relevant public may expect these goods to be produced under the control of the same entity. Although their natures are different, these goods are considered similar.

Contested goods in Class 10

Artificial teeth are identically contained in both lists of goods.

The contested dental prostheses include, as broader category, or overlap with, the opponent’s artificial teeth. 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 orthodontic apparatus; dental equipment are included in the broad category of, or overlap with, the opponent’s medical apparatus and instruments. Therefore, they are identical.

The contested teeth protectors for dental purpose; orthodontic rubber bands are similar to the opponent’s medical apparatus and instruments. They can be distributed through the same channels to the same public. Moreover, the relevant public may expect these goods to be produced under the control of the same entity.

Contested services in Class 42

Server hosting; software as a service [SaaS] are identically contained in both lists of services.

The contested installation of computer software enabling dental sector professionals to remotely simulate, monitor and analyse the dental state of their patients, in particular teeth position and movement; consultancy relating to computer software specialising in the dental and orthodontics sector; maintenance of computers specialising in the dental and orthodontics sector; updating of computer software specialising in the dental and orthodontics sector are included in the broad category of, or overlap with, the opponent’s computer programming. Therefore, they are identical.

The contested design of computer software specialising in the dental and orthodontics sector is included in the broad category of the opponent’s design of computer software. Therefore, they are identical.

The contested rental of computer software specialising in the dental and orthodontics sector is included in the broad category of, or overlaps with, the opponent’s software as a service [SaaS]. Therefore, they are identical.

The contested engineering services are included in the broad category of, or overlap with, the opponent’s scientific services and design relating thereto. Therefore, they are identical.

The contested technical research and materials testing is included in the broad category of, or overlaps with, the opponent’s scientific and technological services and research and design relating thereto. Therefore, they are identical.

The contested cloud computing is similar to the opponent’s computer programming as they usually coincide in provider, relevant public and distribution channel.

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 at the public at large and at business customers with specific professional knowledge or expertise (e.g. medical apparatus and instruments).

The degree of attention may vary from average to high depending on the specialised nature of the goods, the frequency of purchase and their price (e.g. for the goods in Class 10, the level of attention might be higher than average because of a possible impact on one’s health).

c) The signs

dm
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. The elements ‘GO LIVE’ 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 such as Ireland, Malta and the United Kingdom.

The contested sign consists of the letters ‘DM’ depicted in white on a turquoise square with rounded corners. This is followed by the elements ‘GO’ and ‘LIVE’ respectively in grey and turquoise. The letter ‘O’ is stylised as it is shown inside the shape of a drop, drawn horizontally.

The element ‘DM’ included in both signs does not convey a clear meaning for the relevant public in relation to the goods and services in question and is, therefore, distinctive. The applicant states in its observations that the verbal element ‘DM’ in the contested sign evokes its name (Dental Monitoring). However, as this name is not mentioned in the sign, the consumer would not see these letters as an acronym for Dental Monitoring but will only perceive the letters ‘DM’.

The element ‘GO LIVE’ of the contested sign will be understood by the relevant public as ‘to be put into operation; to begin active and ongoing use (esp. as distinct from a test or trial period)’ (information extracted from Oxford English Dictionary on 11/03/2019 at http://www.oed.com/). Bearing in mind that the relevant goods and services are ‘software, electronic or dental equipment and services related to computers or software’, this element is weak for part of these goods and services (all the goods and services in Classes 9 and 42).

The contested sign has no element that could be considered clearly more dominant than any other.

It is composed of a distinctive verbal element (DM) and a less distinctive figurative element of a purely decorative nature (the turquoise square). Therefore, the verbal element is more distinctive than this figurative element. 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). Therefore, the stylised typeface of the letter ‘O’ and the colours of the contested mark will not draw the consumer’s attention away from the verbal elements they embellish.

The fact that the earlier mark is depicted in lower-case letters, whilst the word element of the contested sign is in upper-case is irrelevant, since the protection of the earlier word mark applies to the word and not to the graphic or stylistic characteristics which that mark might eventually possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. This principle is fully applicable in the present case, as the earlier mark is included (and thus the coincidences are located), at the beginning of the contested sign.

Visually, the signs coincide in the letters ‘DM’, which form the entire earlier mark and the first verbal element of the contested sign. They are distinctive in both signs. The signs differ in their stylisation and in the fact that the contested sign contains colours and additional figurative and verbal elements. However, these are both weak for the majority of the goods and services and are either situated in a secondary position (‘GO LIVE’), purely decorative (the turquoise square), or have less impact (the typeface, colour and the drop shape).

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘DM’, which are distinctive in both signs. The pronunciation differs in the sound of the additional verbal element ‘GO LIVE’ in the contested sign, which is weak for the majority of the goods and services and situated in the second part of the sign.

Therefore, bearing in mind the identical beginnings of the signs, they are considered aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meanings of the element ‘GO LIVE’ of the contested sign as explained above, the other sign does not convey a clear meaning in relation to the goods and services in question. Since one of the signs will not be associated with any meaning, the signs are not 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.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The goods and services are identical or similar to varying degrees, and the degree of attention of the relevant public may vary between average and high. The earlier mark enjoys a normal degree of distinctiveness.

The earlier mark and the contested sign have been found to be similar to the extent that they have in common the distinctive verbal element ‘DM’. The differences between the signs are mainly confined to weak elements (at least for most of the goods and services), and to decorative aspects. These differences in stylisation and colour are not sufficient to distract the consumers’ attention from the fact that the earlier mark, ‘DM’, is entirely incorporated in the beginning of the contested sign.

As a rule, when the earlier trade mark is wholly incorporated in the contested sign and performs an independent and distinctive role therein, this is an indication that the two signs are similar (13/06/2012, T‑519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T‑260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T‑179/11, Seven Summits, EU:T:2012:254, § 26). This is the case here.

It is settled case-law that 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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark, ‘ ’, as a sub-brand, a variation of the earlier mark, ‘dm’, 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). Even a high degree of attention in relation to some of the goods and services would not eliminate the likelihood that the consumer would think that the owner of the contested mark was in some way economically linked to the owner of the earlier mark.

The earlier mark is a short sign consisting of two letters and it is settled case-law that the shorter a sign, the more easily the public is able to perceive all its single elements. However, this is not sufficient to outweigh the similarities between the signs. As established above, the element ‘dm’ retains its individual character at the beginning of the contested sign and will be immediately perceived by the relevant public.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The previous cases referred to by the applicant are not relevant to the present proceedings as the two letters of one of the signs are stylised. This different depiction can be enough to consider that there are sufficient reasons to exclude any likelihood of confusion between the marks.

For the sake of completeness, it must be mentioned that while the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

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 11 654 456. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Alicia BLAYA ALGARRA

Richard BIANCHI

Inés GARCÍA LLEDÓ

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.