OPPOSITION No B 2 637 232

Markus Olberts, Unterer Mühlenweg 8, 56459 Langenhahn, Germany (opponent), represented by Dr. Müller Patentanwälte, Mühlstr. 9a, 65597 Hünfelden-Dauborn, Germany (professional representative)

a g a i n s t

Lupex SAS, 353 avenue de Bellevue, 83150 Bandol, France (applicant), represented by Philippe Vaquier, 488 Rue Paradis, 13008 Marseille, France (professional representative).

On 19/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 637 232 is partially upheld, namely for the following contested goods:

Class 31:        Foodstuffs and fodder for animals; bedding and litter for animals; agricultural and aquacultural crops, horticulture and forestry products.

2.        European Union trade mark application No 13 965 249 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 965 249, namely against all the goods in Class 31. The opposition is based on European Union trade mark registration No 8 869 299. 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:        Foodstuffs for pets and farm animals.

The contested goods are the following:

Class 31:        Foodstuffs and fodder for animals; live animals, organisms for breeding; bedding and litter for animals; agricultural and aquacultural crops, horticulture and forestry products.

The contested foodstuffs for animals overlap with the opponent’s foodstuffs for pets and farm animals. Therefore, they are identical.

The contested agricultural and aquacultural crops; horticulture and forestry products include, as a broader category, the opponent’s foodstuffs for farm animals in Class 31 since the contested goods contain products which are typically used as food for animals. 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 fodder for animals designates bulk feed for livestock, esp. hay, straw, etc. are similar to the opponent’s foodstuffs for pets and farm animals. Both foodstuffs for animals and fodder share a similar nature and, in particular, purpose, namely that of feeding animals. Moreover, there is a certain complementary relationship between the two, to the extent that they may be used together. Consequently, these goods are similar.

The contested bedding and litter for animals are similar to the opponent’s foodstuffs for farm animals in Class 31, as they can coincide in producer, relevant public and distribution channels.

The contested live animals; organisms for breeding are dissimilar to all the opponent’s goods. They are different in nature, purpose and method of use; they are

not in competition with each other and have different providers/producers.

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 identical are directed at the public at large (in particular, foodstuffs for pets and some farm animals of a smaller size, e.g. chickens, ducks or pot-bellied pigs) and at business customers, for instance breeders and farmers with specific knowledge in the field of animal nutrition. The public’s degree of attention may vary from average to higher than average, depending on the price and specialised nature of the purchased goods.

3. The signs

LUPO
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 earlier trade mark is a word mark, consisting of the string of letters ‘LUPO’. The contested sign consists of the verbal elements ‘Lupus’ and ‘expert’, depicted in a stylised typeface, in a green and goldish colour, respectively. Furthermore, the term ‘expert’ is written in a smaller size and positioned under the term ‘Lupus’.

The verbal component 'LUPO' of which the earlier mark consists, is the Italian term for ‘wolf’; the verbal element ‘Lupus’ in the contested sign is the Latin word for ‘wolf’ and also refers to an autoimmune skin disease; nevertheless, both terms will be meaningless for a significant part of the relevant public and are thus considered to be distinctive in relation to the goods. The English term ‘expert’ in the contested sign will be understood by the majority of the relevant public throughout the Union as meaning ‘experienced professionals’, due to the identical or similar equivalents in the respective languages of the Member States. Consequently, this term will be perceived as a promotional laudatory statement which serves merely to highlight positive aspects of the relevant goods: namely that they are provided by professionals or produced for professionals. Furthermore, this is enforced by the goldish colour in which the term ‘expert’ is depicted.

As regards the contested sign, it is composed of a distinctive verbal element (‘Lupus’), a non-distinctive, laudatory term (‘expert’) and the relatively basic stylisation of these verbal elements, which will be perceived as being of a decorative nature. Therefore, it will not be capable of drawing the consumer's attention away from the word components in the contested sign.

Indeed, 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).

Consequently, and although the contested sign has no element that is clearly more visually eye-catching (dominant) than other elements, the verbal element ‘Lupus’ is the most distinctive element in the contested sign.

Since the term ‘LUPO’ and ‘Lupus’ are not meaningful in certain territories, for example, in Poland, the Czech Republic and Slovakia, the Opposition Division finds it appropriate to focus the decision on the Polish, Czech and Slovak-speaking part of the public.

Visually, the first three letters of the four letters of which the earlier mark is made up are also the first three letters of the verbal and most distinctive element of the contested sign. The marks differ in their endings (the letter ‘-O’ in the earlier mark / the letters ‘-us’ in the contested mark), as well as in the additional (laudatory) term 'expert’ and the stylisation of the verbal components of the contested sign.  

Account is taken of the fact that 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.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛LUP-’, present in both signs. The pronunciation differs in the sound of the final letter ‘-O’ in the earlier mark and in the sound of the final letters '-us', as well as of the additional term ‘expert’ (if pronounced, since the term written in a smaller size and also clearly laudatory, and thus non-distinctive) of the contested sign.

Consequently, the signs are aurally similar to a high degree.

Conceptually, for the relevant part of the public the distinctive verbal elements are meaningless. Although the word ‘expert’ in the contested sign will evoke a concept, this element is non-distinctive and cannot indicate a commercial origin. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning.

Therefore, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

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 covered are from the same or economically linked undertakings.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The goods are partly identical and partly similar, while the signs target the public at large with an average degree of attention. The differences between the signs are confined to non-distinctive or secondary elements and aspects. Due to the visual similarity to an average degree and the aural similarity to a high degree, while a conceptual comparison is not possible, and taking into account the identical beginnings of the distinctive elements of both marks, in the view of the Opposition Division, a likelihood of confusion exists.

Indeed, it is conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, 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).

In its observations, the applicant argues that it owns older trade mark rights in the same sign (and for the same coverage) in France dating back to 16/08/2000. However, this argument is not relevant to the present proceedings. Indeed, the Court of Justice has stated that the sole purpose of opposition proceedings is to decide whether the application may proceed to registration and not to pre-emptively settle potential conflicts (11/05/2006, T-194/05, Teletech International, EU:T:2006:124, § 25-27). Consequently, the applicant’s arguments must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the Polish, Czech- and Slovakian-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.

Considering all the above, there is a likelihood of confusion on the part of the general public with an average degree of attention. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 869 299. It follows that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs are obviously not identical.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Gueorgui IVANOV

Edith Elisabeth VAN DEN EEDE

Michele M. BENEDETTI-ALOISI

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.