23 November 2018

A good night’s sleep or nightmares for Dreams - confused?

Last week Ms. Heather Harrison of the UK Intellectual Property Office (UK IPO) delivered the decision.

Nicole Hoch’s trade mark application for LIVINGDREAMS has been rejected in the UK, following an opposition by Dreams Limited, the bedroom accoutrements retailer.

In May 2017, Nicole Hoch sought protection in the UK for International Trade Mark Registration number 1356340 LIVINGDREAMS. The mark was published for opposition purposes in August 2017 in respect of “furniture; garden furniture” in class 20.

Dreams Limited, a well-known UK bed and mattress retailer opposed the mark against all of the goods in the application relying upon its earlier EU trade mark registrations; two registered in 2013 for the word DREAMS and a registration in 2014 for a figurative mark showing the word DREAMS in purple on a curved pink line.

All three marks are registered for goods in classes 20 and 24 for bedroom furniture and bed linen, and services in class 35 for retail services related to the sale of beds, bedroom furniture, mattresses and bed linen. Dreams claimed the marks are similar and the goods are identical or similar. It claimed that there is, as a consequence, a likelihood of confusion, including the likelihood of association. Ms. Hoch filed a counterstatement denying the grounds of opposition and putting the opponent to proof of its claims. It claimed that DREAMS is non-distinctive and that the differences between the marks are sufficient to avoid any likelihood of confusion.

Taking into account consumers’ imperfect recollection, Ms. Harrison concluded that consumers are likely to confuse the marks and may believe that LIVINGDREAMS is an addition to the Dreams brand.

The UKIPO representative stated that given the identity of the above goods, the opponent’s position would not be improved were she to assess the similarity between its remaining goods and services and those in the contested specification. She did not intend to do so and would make no further mention of the remaining goods and services.

Ms. Harrison said she accept that the order and conjoining of the words LIVINGDREAMS is somewhat unusual but it is not, in her view, sufficient to mitigate the likelihood of the consumer misremembering the marks and being confused.

Whilst the goods at issue are identical, the consumer is likely to pay an above average level of attention in their selection. The distinctiveness of the earlier mark will vary from fairly low in respect of goods such as beds to medium for other items of furniture. The marks have a medium degree of visual and aural similarity and a reasonably high, or very high, level of conceptual similarity, depending on how the contested mark is perceived by the consumer.

As far as direct confusion is concerned, it seems to me that there is a likelihood that a significant proportion of consumers will perceive the word “LIVING” as having only low distinctiveness in relation to the goods and that they will, when the effects of imperfect recollection are taken into account, directly confuse the marks, even in respect of goods for which the earlier mark is distinctive to a fairly low degree. I accept that the order and conjoining of the words “LIVINGDREAMS” is somewhat unusual but it is not, in my view, sufficient to mitigate the likelihood of the consumer misremembering the marks and being confused. If the consumer does recall the differences between the trade marks, or does not construe “LIVING” as weakly distinctive, there is, in my view, a likelihood of indirect confusion, with the perception being of an addition to the “DREAMS” brand, perhaps with furniture specifically for the living room as opposed to, for example, the dining room. There is a likelihood of confusion.

Dreams have succeeded with their opposition and registration for the mark LIVINGDREAMS in the UK will be refused and the UKIPO awarded costs to Dreams.

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