OPPOSITION No B 2 661 067

Christian Faust, Dieselstr. 4-6, 47228 Duisburg, Germany (opponent), represented by Demski & Nobbe, Mülheimer Str. 210, 47057 Duisburg, Germany (professional representative)

a g a i n s t

Design Fishing Sp. z o.o., ul. Szubińska 2, 86-005 Białe Błota, Poland (applicant), represented by Daniel Kurdubski, Al. Jana Pawła II 39a, 31 864 Kraków, Poland (professional representative).

On 18/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 661 067 is upheld for all the contested goods, namely

Class 31: Ground bait [live or natural].

2.        European Union trade mark application No 14 825 401 is rejected for all the contested goods. It may proceed for the remaining non-contested goods in Classes 25 and 28.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 825 401, namely against all the goods in Class 31. The opposition is based on German trade mark registration No 30 026 533. The opponent invoked Article 8(1)(a) and (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.

1. The goods

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

Class 31: Animal bedding; animal feed, including living insects, for reptiles.

The contested goods are the following:

Class 31: Ground bait [live or natural].

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

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods 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 (see the judgment of 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.

Contested goods in Class 31

The contested ground bait [live or natural] is fishing bait that is cast into the water in order to attract fish to the fishing area. It is normally a mixture of various natural ingredients, for example fishmeal, bread crumbs, vanilla sugar, hemp seeds or oil, maize, etc., which are then moistened with water and formed into balls that are cast into water at the fishing site.  

As claimed by the applicant, the contested goods differ from the opponent’s animal feed, including living insects, for reptiles in their method of use and intended purpose. This is because the opponent’s goods are used to feed animals, whereas the purpose of the contested goods is to entice fish as prey. Nevertheless, these sets of goods coincide in nature (animal foodstuffs) and are likely to be produced by the same undertakings and sold in the same retail outlets. Therefore, they are considered to be similar.

2. 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 and at professional consumers. 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.

3. The signs

	DRAGON BIG BAIT
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 earlier mark is figurative and consists of verbal element ‘DRAGON’ written in green standard capital letters. The letters ‘D’ and ‘N’ are slightly bigger than the remaining letters. The mark further contains the smaller black verbal elements ‘Terraristik-Bedarf’ and ‘www.dragon-terraristik.de’ and additional figurative elements, namely two green lines and a device element resembling the head of a reptile in black, white and yellow colours.

The contested mark is a word mark and consists of the three verbal elements ‘DRAGON BIG BAIT’.

The verbal element ‘DRAGON’ included in both signs has no meaning in German but will be associated by at least part of the public (with some knowledge of English) with a mythical monster like a giant reptile. Nevertheless, whether understood or not, this element has no specific, descriptive, allusive or otherwise weak meaning in relation to the relevant goods and therefore, its inherent distinctive character is normal.

The word ‘Terraristik’ of the earlier mark means herpetology, the branch of zoology concerned with reptiles and amphibians and ‘Bedarf’ means a need, demand, requirements  in German. Therefore, the phrase ‘Terraristik-Bedarf’ will be associated with ‘supplies, needs, requirements for herpetology’. Bearing in mind the nature of the goods, this phrase is not particularly strong, as it may be seen as a description of characteristics of the goods (their intended purpose and use). Therefore, these elements are weak in relation to the goods. The verbal elements www.dradon-terraristik.de will be perceived as a German-based domain name address. Therefore, the elements (www.) and (.de) identifying the domain name are non-distinctive, as they will be perceived as a mere indication of the place and address where the goods can be obtained. Finally, as regards the depiction of a reptile head, bearing in mind the nature of the relevant goods (related to animals), it is considered that this element is not particularly strong in relation to the goods.

The word elements ‘Big Bait’ will be associated with a meaning only by the English-speaking part of the relevant German public. In those cases, since they will refer in a descriptive and laudatory manner to the type and size of the goods, these elements are non-distinctive and will have limited impact in indicating a concrete commercial origin. However, the words ‘Big Bait’ are of normal distinctive character in relation to those consumers who will not associate them with any particular meaning.

Furthermore, as regards the distinctive elements of the signs, it should be borne in mind that the green lines of the earlier mark are purely decorative features, as they are very commonplace and banal and their impact in the earlier mark is very limited. In addition, as regards the other figurative elements of the earlier mark (such as the slight stylisation of the letters, reptile head device, colours, etc.), account must be taken that 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).

The contested sign is a word mark and as such has no element(s) that could be considered clearly more dominant (visually eye-catching) than other elements.

In relation to the earlier mark, the verbal element ‘DRAGON’ and the device of a reptile head are the dominant elements, as they are the most eye-catching and overshadow the remaining elements.

Visually, the signs coincide in the distinctive verbal element ‘DRAGON’, present identically in both signs, and represented in rather standard letters in both signs. In addition, it is a co-dominant and the most distinctive element in the earlier mark and forms the beginning of the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. 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.

The signs differ in the verbal elements ‘BIG BAIT’ in the contested sign, which are, however, non-distinctive for a part of the public. As regards the remaining different elements in the earlier sign, they are all weak, non-distinctive and/or of less importance as compared to the distinctive and co-dominant element ‘DRAGON’. Consequently, in view of the above findings, it is considered that the signs are visually similar, but to not more than an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛DRAGON’, present identically in both signs. The pronunciation differs in the sound of the verbal elements ‘BIG BAIT’ of the contested sign, which are non-distinctive for a part of the public. As regards the remaining verbal elements of the earlier mark, they will not be aurally referred to due to their small size and descriptive character. Therefore, the signs are similar to at least an average degree as regards the non-English speaking public which will attribute normal weight to the words ‘BIG BAIT’ in the contested sign. The degree of similarity is higher than average as regards the remaining public for which the impact of the words ‘BIG BAIT’ will be reduced due to their descriptive meaning.

   

Conceptually, the concepts present in the signs have been defined above in detail. As mentioned, the part of the public with some command of English will associate the signs with the same meaning on account of the normally distinctive element ‘DRAGON’. Although this part of the public will also associate the signs with other differing concepts (in particular, the reptile head and the remaining German words in the earlier sign versus the concept of ‘big bait’ in the contested sign), their conceptual impact is reduced as these elements are either non-dominant, weak and/or non-distinctive. Consequently, as regards the part of the public with a command of English, the signs are conceptually similar to a higher than an average degree due to the common concept of a ‘dragon’.

In relation to the remaining part of the public with no knowledge of English, as the contested sign lacks any meaning and the earlier sign will be associated with some meaning(s), since one of the signs will not be associated with any meaning, the signs are not conceptually similar. Nevertheless, the concepts in the earlier mark are all due to weak/non-distinctive elements, so the impact of this conceptual difference between the signs is not that decisive in establishing a significant distance between them.

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

4. 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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak and non-distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The contested goods are similar to the opponent’s goods and they are directed at the public at large and at professional consumers, whose degree of attention may vary from average to high. The earlier trade mark and the contested sign are visually similar to an average degree. They are aurally similar to at least an average degree in relation to part of the public and aurally similar to a higher than average degree in relation to another part of the public. The signs are conceptually similar to a higher than an average degree for the English-speaking part of the German public and they are not conceptually similar for the remaining part of the relevant German public.

The similarities between the signs are on account of the common and normally distinctive element ‘DRAGON’, which constitutes the most distinctive and a co-dominant element of the earlier mark and represents the first verbal element of the contested sign.

Although there are certain visual, aural and conceptual differences between the signs, it is considered that the circumstances of the case are such that there is a risk of likelihood of confusion/association between the marks. This is because the coinciding element in the signs plays an independent distinctive role in both signs. It is conceivable that the relevant consumer will perceive the mark applied for as a sub-brand of the earlier mark configured in a different way according to the type of goods, which it designates. Therefore, consumers could be led to believe that the owner of the earlier trade mark has launched a new line of goods designated by the trade mark applied for.

The Opposition Division highlights the fact that, even if the marks were not directly confused with one another, for the purposes of Article 8(1)(b) EUMTR, there is a likelihood of confusion when the average consumer, although aware of the differences between the signs, nevertheless assumes owing to their similarities that they are derived from the same undertaking or indeed an economically-linked undertaking. This is clearly the case and the relevant consumer may see the contested mark as being a brand variation for a different line of goods.

In view of the foregoing and taking into account all the relevant circumstances of the case, the Opposition Division concludes, that the signs are sufficiently similar to induce a likelihood of confusion on the part of all members of the relevant public in relation to similar goods.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 026 533. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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

Marzena MACIAK

Liliya YORDANOVA

Gueorgui IVANOV

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 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. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.