OPPOSITION No B 2 377 979

MIP Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (opponent), represented by MIP Metro Group Intellectual Property GmbH & Co. KG, Anna Sophie Steinmeister, Metro-Str. 1, 40235 Dusseldorf, Germany (employee representative)

a g a i n s t

Pet-Food AB, Bygelvägen 2, 945 91 Norrfjärden, Sweden (applicant), represented by Zacco Sweden AB, Valhallavägen 117, 114 85 Stockholm, Sweden (professional representative).

On 28/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 377 979 is upheld for all the contested goods.

2.        European Union trade mark application No 12 565 495 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 350.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 565 495 ‘ZOOMETRO’. The opposition is based on European Union trade mark registration No 779 116 ‘’ and on international trade mark registration No 1 096 843 ‘’ designating Bulgaria, Denmark, France, Croatia, Italy, Hungary, Austria, Romania and Slovakia. The opponent invoked Article 8(1)(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.

The opposition is based on more than one than one designation in relation to international trade mark registration No 1 096 843. The Opposition Division finds it appropriate to first examine the opposition in relation to international trade mark registration insofar as it designates France, and on European Union trade mark registration No 779 116.

1. The goods

The goods and services on which the opposition is based are, inter alia, the following goods:

EUTM No 779 116 for the figurative mark

Class 16: Paper and cardboard and goods made from cardboard, namely containers for packaging, bags for packaging; bookbinding material, namely bookbinding yarn, linen and other textile materials for bookbinding; instructional and teaching material (except apparatus) in the form of games, animal and plant preparations, geological models and preparations, globes, drawing implements for wall boards; electric and electronic typewriters, office requisites (except furniture), namely addressing machines, franking machines, document files, letter trays, letter openers, writing pads, perforators, stapling presses, dictating apparatus, paper clips and staples, inking ribbons, correcting agents for offices, stamps (seals), inking pads, ink for stamps, inks for writing and drawing, Indian ink, fastening holders for documents, files and file covers for documents, backs for files and file covers, holders for pens and pencils, pencil sharpeners, desk furniture, fountain pen cups, card index boxes, desk files, paper trays, office scissors, paper cutters, letter scales, slide rules; printers' type and printing blocks; playing cards; ring binders, conference folders, correspondence folders, document folders, writing and accounting pads, note books, vocabulary books, homework diaries, packaging material of plastic, namely sleeves, bags and films; photographs, stationery, photograph albums, adhesives for stationery or household purposes, including adhesives for handicraft work; self-adhesive tapes for stationery or household purposes; artists' materials, namely modelling clay, canvas, Indian inks, palettes and easels for painters, mordants and sheet metals for artists; paint brushes.

Class 18: Leather and imitations of leather and goods made of these materials, namely bags and other containers not specifically designed for the objects being carried, and small goods of leather, in particular purses, pocket wallets, key wallets; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; hand bags, briefcases, shopping bags, school satchels, back packs, rucksacks. 

Class 21: Cleaning instruments; articles for cleaning purposes; steel wool; cooking pot sets of metal, including pots, pans and kettles, buckets; household and kitchen goods of glass, porcelain and earthenware, namely plates, cups, saucers, pans, bowls, jars, tureens, beer mugs, beer glasses, wine and water glasses, vases, glasses, dishes, marmalade and jam containers, sugar and cream sets, sets for vinegar, pepper and oil, fruit bowls, mixing bowls, cooking pots, carafes and bottles; small hand operated household and kitchen apparatus (except vaporisers and spraying machines for liquids and powders of all kinds) and portable containers for household and kitchen use (not of precious metal or coated therewith); apparatus for making ices; cosmetics utensils, electric combs and toothbrushes, electric manicure equipment, mouth washes, shaving sprays; combs and sponges; brushes (except paint brushes).

Class 31: Agricultural, horticultural and forestry products, namely grains and other propagation material, unprocessed grains, unprocessed wood; natural plants and flowers, flower bulbs and tubers; fresh fruit and vegetables, in particular potatoes, seeds; dried plants, straw mulch and litter peat, cat litter, foodstuffs for animals, in particular dog and cat food; live animals, in particular ornamental fish; salt for cattle.

International registration No 1 096 843 insofar as it designates France for the figurative mark

Class 16: Paper, paperboard (cardboard) and goods made therefrom, insofar as they are not included in other classes; printed matter; book binding material; photographs; stationery; photo albums; adhesives for paper or stationery or for household uses; self-adhesive tapes for paper or stationery or for household uses; art supplies; artists brushes, typewriters and office equipment (except furniture); teaching and training aids (except equipment) ring binders; conference maps; writing sets, exercise books; synthetic packaging material, not included in other classes, in particular envelopes, bags and wrapping films; printing type; printing blocks; paper towels for household and hygienic uses; (insofar as included in this class) and paper diapers, respectively made from cellulose, fleece and flocculants; paper and synthetic packaging bags for preservation of foodstuffs; paper cases.  

Class 18: Leather and imitation leather and goods made therefrom, not included in other classes, in particular pouches, bags, sacks and small leather goods; skins and furs; suitcases and valises; umbrellas; parasols and canes; whips, harnesses and saddleware; packing sacks for luggage; backpacks; document cases.  

Class 21: Devices and containers for the household and cooking; combs and sponges; brushes; brush-making material; cleaning utensils; steel wool; raw or partially prepared glass (except for building glass); glassware; porcelain and earthenware, insofar as they are included in this class; hand-operated home and cooking devices as well as portable containers for the household and cooking (insofar as included in this class) electric combs, toothbrushes and dental floss; sprinklers; cooking pot sets (also made from metal) in particular pots, pans and cauldrons; buckets; glass articles; porcelain and stoneware for the household and cooking; rodent and insect traps; gloves for the household and garden; watering cans; glass for vehicle windows (semi-finished product); glass with embedded, thin electrical conductors; heat-insulated containers and vessels; food cooling devices, containing heat exchange fluids, for household purposes; cooking containers and devices; works of art of porcelain, clay, glass, stoneware, glass and similar ceramic material; paper holders and plastic containers; toiletry utensils; paper towel dispensers; cleaning, polishing devices (hand-operated); signboards of porcelain or glass; toiletry kits; microwave tableware; room aquariums and terrariums and covers thereof; dinner servers and centerpieces (except for cutlery); napkin rings, cooking pots; water apparatus for cleaning teeth and gums; cleaning instruments (hand operated); brushes (except paint brushes); table cutlery and dishes made from plastics.  

Class 31: Land, garden and forestry products as well as grains, not included in other classes; live animals; fresh fruits and vegetables; seeds, living plants and natural flowers; malt; flower bulbs; dried plants, mulch and peat litter, animal bedding; animal feed; algae for human or animal nutrition; fish spawn, living crustaceans and shellfish; edible fresh flowers.  

The contested goods are the following:

Class 16: Newspapers and magazines intended for members of loyalty clubs for pets.

Class 18: Collars, leads and lead hooks for animals (not of metal); harness traces; collars for pets; harness; leather leashes; muzzles; straps (leather -); collars with built-in or detachable pendants, for pets; collars and leads for dogs and cats; harness straps and fittings; covers and blankets for pets; protective pants for female dogs; shoes for dogs and cats and other protective clothing for dogs and cats; luggage intended for pets; travelling bags intended for pets, made of materials included in this class; parts and fittings for all the aforesaid goods; all the aforesaid goods being made of materials included in this class.

Class 21: Brush-making materials; transportable cages and travel cages intended for pets; carriers for animals (cages); articles for cleaning purposes, included in this class.

Class 31: Foodstuffs for animals, including dog and cat treats, dog biscuits, chews and food for animals.

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

Expressions such as ‘in particular’ and ‘including’, used in the applicant’s and the opponent’s lists of goods, indicate 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).

However, the term ‘namely’, used in the opponent’s lists of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 16

The contested newspapers and magazines intended for members of loyalty clubs for pets are included in the broad category of the opponent’s printed matter protected under International registration No 1 096 843. Therefore, they are identical.

Contested goods in Class 18

The contested harness; all the aforesaid goods being made of materials included in this class are identically contained in its plural form (harnesses) in the opponent's list protected under International registration No 1 096 843. Therefore, they are identical.

The contested collars, leads and lead hooks for animals (not of metal); harness traces; collars for pets; leather leashes; muzzles; straps (leather -); collars with built-in or detachable pendants, for pets; collars and leads for dogs and cats; harness straps and fittings; parts and fittings for all the aforesaid goods; all the aforesaid goods being made of materials included in this class as well as the contested [harness] parts and fittings for the aforesaid goods; all the aforesaid goods being made of materials included in this class are similar to the opponent's harnesses under International registration No 1 096 843 as they have the same nature. They can coincide in producer, end user and distribution channels.

The contested luggage intended for pets; travelling bags intended for pets, made of materials included in this class are included in the broad category of, or overlap with, the opponent’s travelling bags protected under EUTM No 779 116. Therefore, they are identical.

The contested parts and fittings for all the aforesaid goods [luggage intended for pets and travelling bags intended for pets, made of materials included in this class]; all the aforesaid goods being made of materials included in this class are similar to travelling bags to the extent that they can have the same nature and that they can coincide in producer, end user and distribution channels.

The contested covers and blankets for pets; protective pants for female dogs; shoes for dogs and cats and other protective clothing for dogs and cats; parts and fittings for all the aforesaid goods; all the aforesaid goods being made of materials included in this class and the opponent's foodstuffs for animals, in particular dog and cat food in Class 31 under earlier EUTM No 779 116 are similar to a low degree in that they can all be found in specialised outlets and are targeted at the same public.

Contested goods in Class 21

Articles for cleaning purposes, included in this class are identically contained in the opponent's list of EUTM No 779 116.

The contested brush-making materials are identically contained in the singular form in the opponent's list of International registration No 1 096 843.

The contested transportable cages and travel cages intended for pets; carriers for animals (cages) and the opponent's cat litter in Class 31 under earlier EUTM No 779 116 are similar to a low degree in that they can all be found in specialised outlets and are targeted at the same public.

Contested goods in Class 31

Taking into account the observations above with regard to the interpretation of the wording of the lists of goods and services at issue, the contested foodstuffs for animals, including dog and cat treats, dog biscuits, chews and food for animals and the opponent's foodstuffs for animals, in particular dog and cat food EUTM No 779 116 refer to the same goods. Therefore, these are identical.

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 or similar to different degrees are directed at the public at large whose degree of attention is deemed average.

3. The signs

EUTM No 779 116 International registration No 1 096 843	ZOOMETRO
Earlier trade marks	Contested sign

The relevant territory is the European Union in relation to EUTM No 779 116 (trade mark 1) and France in relation to International registration No 1 096 843 (trade mark 2).

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.

When perceiving a verbal sign, consumers will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58). This is why, in certain parts of the relevant territory of earlier mark 1, for example, in those parts where French is understood, the contested sign will be broken down into 'ZOO' and 'METRO'. Indeed, both elements, of which one coincides with the earlier mark, are meaningful in those parts where French is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the contested sign with trade mark 1 on the French-speaking part of the public.

The common element 'METRO' will be associated by the public under analysis with an urban underground railway system. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

In French, the element ‘ZOO’ of the contested sign is short for jardin zoologique which translates as 'zoological garden'. The public under analysis will associate this element with animals and bearing in mind that the relevant goods are all either intended for or related to animals or can be used in the care of animals, this element is weak for these goods.

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). Therefore, in the earlier marks, the word element 'METRO' is considered to have a stronger impact on the consumer than the graphic elements, namely the specific black typeface and the yellow colour in earlier trade mark 1 and the white typeface on a black rectangular background in earlier mark 2.

While it is true that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, it must be stressed that this argument cannot hold true in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by them bearing in mind, in particular, their distinctive and dominant components.

Visually, the signs coincide in that the word element 'METRO' of the earlier marks is entirely reproduced in the contested sign. The signs differ in the weak initial component 'ZOO' of the contested sign and in the graphic elements of the earlier marks described above. However, as seen above, the former, 'ZOO', is weak and the latter have a lesser impact on the consumer than the word element 'METRO'. Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛METRO’, present identically in all the signs whereas it differs in the sound of the letters ‛ZOO’ of the contested mark, which have no counterparts in the earlier marks but form a less distinctive element in the contested sign. Therefore, the signs are similar to an average degree.

Conceptually, although the contested sign as a whole does not have any meaning for the public in the relevant territory, the signs at issue overlap in the distinctive element ‘METRO'’, included in all the signs, since they will be associated with the meaning explained above. The differentiating element 'ZOO' of the contested sign also has a meaning in French but it is less distinctive and weighs therefore less in the comparison. Therefore, the signs are conceptually similar to an average degree.

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 marks

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

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods that have been compared from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

The goods, found to be identical or similar to different degrees, are directed at the public at large whose degree of attention is deemed average. The signs are visually, aurally and conceptually similar to an average degree in that the word element of the earlier marks, 'METRO', is completely reproduced in the contested sign and plays an independent distinctive role in the latter.

The degree of distinctiveness of the earlier signs is one of the factors to be taken into account in the overall assessment (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23) and in the present case, for reasons of economy of procedure it rests on their distinctiveness per se. Therefore, it must be seen as normal.

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).

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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier marks, configured in a different way according to the type of goods that they designate (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). It may well be that the contested sign be perceived as a line of goods that is specifically intended for or are specifically related to animals.

Considering all the above, there is a likelihood of confusion on the part of the French-speaking part of the relevant public (earlier trade mark 1) 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 also a likelihood of confusion on the part of the French public (earlier trade mark 2).

Therefore, the opposition is well founded on the basis of the opponent’s EUTM No 779 116 and International registration No 1 096 843 insofar as it designates France. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier EUTM No 779 116 and International registration No 1 096 843 lead to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine International registration No 1 096 843 insofar as it designates Bulgaria, Denmark, Croatia, Italy, Hungary, Austria, Romania and Slovakia, invoked by the opponent, (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268, by analogy).

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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Sandra IBAÑEZ

Martina GALLE

Benoit VLEMINCQ

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.