OPPOSITION No B 3 055 626

Dreams Limited, Knaves Beech Business Centre, 14 Davies Way Loudwater, HP10 9YU, High Wycombe, United Kingdom (opponent), represented by Lane IP Limited, The Forum St Paul’s, 33 Gutter Lane, EC2V 8AS, London, United Kingdom (professional representative)

a g a i n s t

S10berg Ab, Köpmannagatan 15, 296 31, Åhus, Sweden (applicant), represented by Awa Sweden Ab, Södra Hamngatan 37-41, 404 28 Göteborg, Sweden (professional representative).

On 26/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 055 626 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 873 921 for the word mark ‘SWANSTRÖMS BEDS & DREAMS’. 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.

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 based are 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.

Class 35: Retail services relating to the sale of furniture, bedroom furniture, mirrors, beds, water beds, divans, bedsteads, headboards, bedding, 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, 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, eiderdowns, quilts, parts and fittings for all the aforesaid goods, all provided in a retail furniture and bedding superstore, online via the Internet or other interactive electronic platforms, via mail order or catalogues or by means of telecommunications; information, advisory and consultancy services relating to all of the aforesaid.

The contested goods are the following:

Class 20: Furniture; bed heads; bed frames; mattresses; box springs; mattress toppers; pillows.

Class 24: Bed throws; bed linen; duvets; comforters; bed blankets; mattress covers; sleeping bag liners; pillowcases; throws.

Some of the contested goods are identical or similar to goods on which the opposition is based in Classes 20 and 24. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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

c) The signs

DREAMS	SWANSTRÖMS BEDS & 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 English term ‘DREAM’ means a ‘series of images, thoughts, and emotions, often with a story-like quality, generated by mental activity during sleep; the state in which this occurs’. It is, at most, suggestive of what can be achieved by soundly sleeping on a bed. The term ‘DREAMS’ has an average degree of inherent distinctiveness because it does not have any clear and unambiguous meaning in relation to the opponent’s goods and services from the relevant public’s perspective. This applies all the more to those consumers in the European Union who do not understand the meaning of ‘DREAMS’ (20/10/2016, R 89/2016‑1, DREAMCELL / DREAMS et al., § 25).

However, for the English-speaking public the term ‘BEDS’ in the contested mark is descriptive of the kind of goods in Class 20, namely beds and their accessories, and the purpose of the goods in Class 24, namely textiles used for beds. The term ‘BEDS’ is meaningless and distinctive in the rest of the relevant territory. The symbol ‘&’ will be recognised throughout the relevant territory as denoting ‘and’. Due to its linking function, the symbol has limited distinctiveness.

‘SWANSTRÖMS’ in the contested mark is likely to be recognised in the relevant territory as a surname of Scandinavian origin, which has no relation to the goods, and its distinctiveness is therefore normal.

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.

Visually and aurally the signs coincide in ‘DREAMS’. They differ in the contested mark’s additional elements ‘SWANSTRÖMS BEDS &’. The Office notes the limited distinctiveness of ‘BEDS’ (for the English-speaking public) and the ‘&’ symbol. The distinctive element ‘SWANSTRÖMS’ is placed at the beginning of the contested sign. It is composed of ten letters and two syllables, in contrast to the six letters and one syllable of the element ‘DREAMS’ at the end of the contested sign.

Therefore, the signs are visually and aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the English-speaking public, the signs will be associated with a similar meaning in ‘DREAMS’. However, there is a surname in the contested sign that specifies the person who the dreams (and the beds) belong to. Therefore, the signs are conceptually similar to a low degree for this part of the public. In the rest of the relevant territory, where ‘DREAMS’ is meaningless, the signs are conceptually not similar, on account of the recognisable surname in the contested mark.

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

d) Distinctiveness of the earlier mark

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

According to the opponent, the earlier trade mark has a reputation in the European Union in connection with all the goods and services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

The opponent submitted the following evidence:

 Annex 4: Screenshots from the opponent’s website www.dreams.co.uk, which the opponent claims has over 15 million views a year. One screenshot states: ‘established in 1985, Dreams is the UK’s number one specialist bed retailer’; ‘Dreams sells 10 000 mattresses, bases and headboards per week through its store network of 181 sites and online’. The following sign is displayed: .

 Annex 5: Extracts from the opponent’s annual reports for 2014-2017 and financial statements submitted to the UK Companies House. Turnover figures ranged from GBP 147 to 290 million.

 Annex 6: Undated screenshot of the Dreams Facebook page showing over 37 000 likes.

 Annex 7: Articles about the opponent displaying ‘DREAMS’ as a word mark or :

o Article from Furniture News, dated 06/01/2017, according to which Dreams (http://www.dreams.co.uk) has signed up for a long-term partnership with Heart, the UK’s biggest commercial radio brand.

o Article from an unspecified website labelled ‘advertising’, stating that ‘Dreams booked a 7.2 % increase in sales for GBP 300 million in 2017’.

o Article from Campaign, dated 07/02/2018, according to which ‘Mumsnet’ and bedding brand Dreams have joined forces to develop a co-branded pair of mattresses;

 Annex 8: English-language articles on awards received by the opponent:

o According to www.letsrecycle.com, Dreams was the winner of Awards for Excellence in Recycling and Waste Management in 2008.

o According to screenshots from the opponent’s website (where the sign is displayed):

 In March 2015, the opponent won the British Safety Council International Award in 2015 for protecting its employees from the risk of injury and ill health at work. It was awarded for the Dreams manufacturing facility based in Oldbury.

 In April 2015, the opponent was nominated in the Digital Marketing Campaign of the Year category of the 2015 BT Retail Week Tech & Ecommerce Awards.

 In May 2015, the opponent was the winner of the Roses Creative Silber Award for best TV/cinema commercial under 21 seconds for an advertisement called ‘Train’, which was first aired in October 2014.

 In June 2015, two managers employed by Dreams were shortlisted for the Retail Week Rising Stars Awards — a store manager of Dreams High Wycombe and Area Manager for Dreams, Southern Region.

 In March 2017, ‘Dreams’ won Speciality Retailer of the Year Award 2016 at the annual Retail Week awards.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

The evidence, exclusively related to the United Kingdom, gives some indications of the existence of the earlier mark in relation to retailing of beds. The turnover figures of the opponent’s company show strong business activity for 2012–2017. However, the evidence does not indicate the market share of the trade mark, which could help the Opposition Division to interpret and put into context the turnover figures.

Furthermore, the evidence does not provide much information on the extent to which the trade mark has been promoted. The extent to which the mark is exploited through licensing, merchandising and sponsoring, as well as the importance of the respective schemes, are useful indications in assessing reputation, and therefore the partnerships the opponent entered into with a radio station or a blog may be important. However, only two newspaper articles were submitted on the establishment of these partnerships, without any information on the implementation of these joint programmes. In any event, these partnerships were launched in 2017-2018 — therefore, quite recently considering that the opponent needed to demonstrate that earlier mark had acquired a reputation by the filing date of the contested EUTM application, 14/03/2018.

The opponent submitted articles concerning awards received by the opponent’s company. Certifications, awards, and similar public recognition instruments usually provide information about the history of the mark, or reveal certain quality aspects of the opponent’s products, but as a rule they will not be sufficient in themselves to establish reputation and will be more useful as indirect indications. Moreover, these awards referred to by the opponent are the industry’s recognitions of the opponent’s company, for recycling, work safety and successes in retail or to employees. These awards provide information on the acknowledgement of the opponent’s company by the industry rather than by the public in relation to the opponent’s products and services. The recognitions therefore cannot give first-hand information about trade mark awareness.

Most importantly, the evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. In other words, the evidence falls short of giving sufficient information that would allow the Opposition Division to draw solid conclusions on whether the earlier mark was known by a significant part of the relevant public.

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

e) Global assessment, other arguments and conclusion

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.

It is true that the contested mark includes the earlier mark. However, this coincidence is at the end of the contested mark, and is preceded by three other elements. For the English-speaking public there is a conceptual link in the word ‘dreams’, however the contested sign’s additional surname specifies a person who is dreaming and therefore the degree of conceptual similarity is low.

In either event, the relevant public (with an average degree of attentiveness) is more likely to focus their attention on the initial, distinctive element of the contested mark, ‘SWANSTRÖMS’, a surname which identifies the commercial origin of the goods and thus will enable the average consumers to safely distinguish between the signs, even in the context of (presumably) identical goods.

It remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word component, ‘DREAMS’, constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark, which contains the same word component as the earlier marks, will be led to believe that the goods identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in the Bainbridge case (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65).

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics that give grounds for regarding them as forming part of a single ‘series’ or ‘family’, a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

The evidence filed by the opponent to demonstrate enhanced distinctiveness, as seen above, shows use of ‘DREAMS’ as a word mark and of one other mark the opposition is based on, (European Union trade mark registration No 12 933 362). These two trade marks are not sufficient to form a ‘family of marks’.

The opponent submitted a list of 37 trade mark registrations in the European Union and the United Kingdom. However, no evidence of use was submitted in relation to marks that are different from the two European trade mark registrations mentioned above.

The opponent 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 contested marks in the opposition decisions cited by the opponent, ‘DREAM Comfort’, ‘DREAMCELL’, ‘ROYAL DREAM’, ‘DreamFull’, ‘DREAMZEBRA’, ‘best dream’ included fewer distinguishing elements than the contested mark in the present case. In most of the cases cited by the opponent, the distinguishing elements were non-distinctive and/or ‘DREAM’ was placed at the beginning of the contested sign. Therefore, the previous cases referred to by the opponent are not relevant to the present proceedings.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

1. European Union trade mark registration No 12 933 362

2. European Union trade mark registration No 11 582 764

These other earlier rights invoked by the opponent are visually even less similar to the contested mark, because they contain figurative elements such as a lower-case typeface and underlining. Therefore, the outcome cannot be different; no likelihood of confusion exists with respect to those earlier marks either.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier word mark ‘DREAMS’ has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR. These findings also apply to the two earlier figurative trade marks comprised of the same word element.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Aldo BLASI

Marianna KONDAS

Victoria DAFAUCE

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.