OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS)
DECISION of 11/0/09
RULING ON OPPOSITION No B 795 106
42, avenue du Général de Gaulle 95350 Saint Brice Sous Foret France
Cabinet Germain & Maureau
8, avenue du Président Wilson 75016 Paris
Distribuidora Internacional de Alimentación
Plaza Carlos Trías Beltrán 7-4o Edificio Sollube
rue Edouard Vaillant
92593 Levallois Perret Cédex France
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I. FACTS AND PROCEDURE
On 31/10/2003 the applicant filed application No 3 546 405 to register the trade mark shown on the cover page for goods in classes 16, 35 and 39.
The opposition is directed against some of the goods and services covered by the contested trade mark, namely against the goods in class 16.
The opposition is based on French trade mark registration No 03 3 251 978 of the trade mark shown on the cover page, filed on 17/10/03 and registered on 26/03/04 for, among others, goods in class 16.
The opposition is based on part of the goods covered by the earlier mark, namely, the goods in class 16.
The grounds of the opposition are those laid down in Article 8(1)(b) of the Community Trade Mark Regulation (CTMR).
The opponent argues that the high similarities between the two signs and the identical goods are likely to result in confusion arising among the relevant public.
The applicant argues that the signs are different enough to be distinguished in the market by the general public and that therefore, no likelihood of confusion will arise among the public.
1. Likelihood of Confusion – Article 8(1)(b) CTMR
a) Comparison of the goods
In assessing the similarity of the goods concerned, all the relevant factors relating to these goods should be taken into account. These factors include, inter alia, their nature, their purpose of use and their method of use and whether they are in competition with each other or are complementary (see Judgment of the Court of Justice, Case C-39/97, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. (‘Canon’)  OJ OHIM 12/98, p 1419, paragraph 23).
Further factors include the purpose of the goods and services, whether or not they may be expected to be manufactured, marketed or provided by the same undertaking, or by economically linked undertakings, as well as their distribution channels and sales outlets.
The goods on which the opposition is based are the following:
Paper, cardboard, boxes made of paper or cardboard, bags (envelopes, ponches) for packaging (of paper); printed matters, bookbinding material, photographs,
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stationery; adhesives for stationary or household purposes; artists material; paint brushes; typewriters and office requisites (except furniture); instruction and teaching material (except apparatus); plastic materials for packing namely bags, layers and sheets, printing types, printing blocks.
The contested goods are the following:
Paper, cardboard and goods made from these materials, not in other classes; printing materials; bookbinding material; stationery; adhesives for stationary or household purposes; artists material; paint brushes; typewriters and office requisites (except furniture); instruction and teaching material (except apparatus); plastic materials for packing (not included in other classes); printing types.
Part of the goods are verbally identical, namely “paper, cardboard, bookbinding material, stationery; adhesives for stationary or household purposes; artists material; paint brushes; typewriters and office requisites (except furniture); instruction and teaching material (except apparatus), printing types.
The applicant’s “plastic materials for packing” are a broader category of goods, than the “plastic materials for packing namely bags, layers and sheets” covered by the earlier mark. Thus, the contested goods encompass the opposing goods. As the contested list cannot be split into goods which are identical with the opposing goods and goods which are not, these goods are to be considered identical as a whole.
Likewise, the contested “printing materials” are a broader category which also encompasses the opposing “printing types, printing blocks”. As the contested list cannot be split up ex officio, these goods are also considered to be identical as a whole.
Finally, the rest of the contested goods, namely ”goods made from these materials” (i.e. paper and cardboard) comprise also the opponent’s “boxes made of paper or cardboard, bags (envelopes, ponches) for packaging (of paper)”, because the goods applied for are a general category and the opposing goods are therefore included in this broader category. These goods, too, are identical as a whole.
It follows from the above that all the goods at issue are either identical.
b) Comparison of the signs
The signs to be compared are the following:
Earlier trade mark Contested trade mark The relevant territory is France.
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Visually, the marks coincide in their main component, the term “DIA” and differ in the letter “M” followed by a dot at the beginning of the earlier sign, which is not present in the contested sign. Also, the earlier mark is represented in a stylized way reminiscent of artful hand writing, and the final “a” is underlined by a tail stemming from the letter.
Bearing in mind the foregoing the Office considers that there is a low degree of visual similarity.
Aurally, the earlier sign is pronounced as “EM-DI-A” and the contested mark as “DI-A”.
Aurally, the signs coincide in the term “DIA” and differ in the initial letter “M”. The stylization of the earlier mark is not perceptible aurally. Furthermore, the accent is in an identical vowel and the signs share three letters in the same position (of which two of them are vowels) and differ in only one letter (M). Consequently, the rhythm and the intonation are identical.
Bearing in mind the foregoing the Office considers that there is a high degree of aural similarity.
Conceptually, neither of the two signs has a meaning in French. Therefore, the conceptual comparison does not influence the assessment of similarity of the signs.
c) Global assessment
According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, phonetic and conceptual similarities between the marks. The comparison “must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components” (see Judgment of the Court of Justice, Case C-251/95, Sabèl BV v Puma AG, Rudolf Dassler Sport (‘Sabèl’)  OJ OHIM 1/98, p. 91, paragraph 22 et seq.).
Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. Furthermore, the more distinctive the earlier mark, the greater the risk of confusion. Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (see Judgment of the European Court of Justice, Case C-39/97 Canon Kabushiki Kaisha v Metro Goldwyn Mayer Inc. (‘Canon’) , OJ OHIM, No 12/98, p. 1419, paragraph 17 et seq.).
For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see Judgment of the Court of Justice Case C-342/97, Lloyd Schuhfabrik
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Meyer & Co. GmbH v Klijsen Handel BV (‘Lloyd’), OJ OHIM No 12/1999, p. 1585, paragraph 26).
The goods have been found to be identical and they are directed at the public at large.
The signs in dispute are short marks. They are identical in their main component, only differing in the absence of the letter “M” in the contested sign.
With regard to the argument that the main visual/aural difference is placed in the initial part of the signs, it should be noted that this difference may or may not be relevant depending on several factors.
In some cases it can be considered that the initial part of the sign is the most important. This is justified by the fact that 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 (see Judgment of 22 June 2005, Case T-34/04, Plus Warenhandelsgesellschaft mbH v OHIM, (TURKISH POWER/POWER), paragraph 56, ECR II-2401).
Notwithstanding the foregoing, this will only be true when the sign contains a verbal element (which would explain reading from left to right) and when this verbal element is not very short (otherwise the sign will be perceived immediately in its entirety). In the case at hand, the signs at issue are, however, quite short. The decisive factor in evaluating whether there is a likelihood of confusion is not so much, therefore, the fact that the main visual/aural difference is placed in the initial part of the signs.
In summary, the goods covered by the marks are identical. The signs are visually similar to a low degree and phonetically similar to a high degree. The similarities between the signs due to the common element “DIA” outweigh the differences caused by the additional letter “M” of the earlier mark and the design of the letters of the earlier mark.
Consequently, the Office finds that there is a likelihood of confusion on the part of the public in France.
According to Article 85(1) CTMR, 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 Rule 94(3)(6) and (7)(d)(i) of Community Trade Mark Implementing Regulation (CTMIR), the costs to be paid to the opponent are the opposition fees and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
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THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS)
Uphold opposition number B 795 106 for all the contested goods, namely all the goods in class 16.
Reject application number 3 546 405 for all the contested goods. It may proceed for the remaining services of the application, namely those in classes 35 and 39.
Order the applicant to bear the costs, which are fixed as follows:
The Opposition Division
Costs of representation Opposition fee
EUR 300 EUR 350 _______ EUR 650
Under Article 59 CTMR any party adversely affected by this decision has a right to appeal against this decision. Under Article 60 CTMR notice of appeal must be filed in writing at the Office within two months from the date of notification of this decision and within four months from the same date a written statement of the grounds of appeal must be filed. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. Under Rule 94(4) CTMIR such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) of the Community Trade Mark Fees Regulation (CTMFR)) has been paid.