OPPOSITION No B 2 667 759

Katrien Mornie, Fabriekstraat 39A, 9700 Oudenaarde, Belgium (opponent)

a g a i n s t

Julius-K9 Zrt., Szigetszentmiklós, Ipar utca 10-12., 2310 Hungary (applicant), represented by Jambrik Ügyvédi Iroda, Budapest, Boráros tér 7. (DUNA HÁZ) 3. Iph. VI. em. 13., 1095 Hungary (professional representative).

On 05/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 667 759 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 590 831, namely against all the goods in Classes 18, 25 and 28. The opposition is based on, inter alia, European Union trade mark application No 14 176 978. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

Preliminary remark

The opponent has also based its opposition on the following earlier trade marks:

• Benelux trade mark registration No 1 229 336 ;

• Benelux trade mark registration No 1 267 729 .

Since these marks have not been substantiated, the Opposition Department cannot take them into account in the proceedings. None of them is, however, more like the applicant’s mark than the earlier trade mark upon which the present comparison is based.

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 18:        Saddlery, whips and animal apparel.

Class 25:        Clothing.

Class 28:        Sporting articles and equipment.

The contested goods are the following:

Class 18:        Harnesses for animals; leashes for animals; dog collars; muzzles; fittings for dog harnesses; clothing for animals; pet food bags; bags for sports.; bags; shoe bags; casual bags; work bags; athletic bags; Boston bags; waterproof bags; athletics bags; sport bags; belt bags; gym bags; belt bags and hip bags; electronic pet collars; collars for pets bearing medical information; dog apparel.

Class 25:        Gloves as clothing; mittens; socks; scarves; sports jerseys; tee-shirts; waistcoats; coats; headbands for clothing; uniforms; pullovers; shirts; outerclothing; waterproof outerclothing; outerclothing for men; womens’ outerclothing; clothing; weatherproof clothing; clothing for sports; headwear; caps [headwear]; hooded sweatshirts; hooded pullovers; sleeveless jackets; sleeveless jerseys; sleeveless shirts; sports shirts with short sleeves; pants; trousers; trousers shorts; waterproof trousers; belts [clothing]; money belts [clothing]; work clothes; overalls; underwear; trunks [underwear]; ladies’ underwear; briefs [underwear]; bathing costumes; bathing costumes for women; shoes; sports shoes.

Class 28:        Play balloons; balls for games; games; pet toys; elbow guards [sports articles]; knee guards [sports articles]; forearm guards [sports articles]; gloves for games; men’s athletic supporters [sports articles]; protective paddings [parts of sports suits]; stuffed toys; devices for training and exercise with dogs; remote control toys.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

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. The public’s degree of attentiveness may vary from average to high for certain goods in Class 18, such as electronic pet collars, as, depending on the specialised nature of the products, the relevant public will have a higher degree of awareness for some products than for others.

3. The signs

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The element ‘K9’, which the signs have in common, would be perceived by English speakers as referring to canines or dogs and will therefore be of weak distinctiveness for some of the goods that are related to dogs and dog training. The Opposition Division will therefore focus the comparison of the signs on the parts of the public for which the element ‘K9’ is not meaningful, namely the parts for which English is not a native language, and that will therefore be more prone to a likelihood of confusion. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on those parts of the public of the European Union that do not understand English; for these parts of the public, the element ‘K9’ has a normal degree of distinctiveness. In addition, for these parts of the public the word ‘UNIT’ of the contested sign will have no meaning and will therefore also have a normal degree of distinctiveness. The word ‘EVOLUTION’ of the earlier mark on the other hand will be understood by both English speakers and non-English speakers as meaning ‘a gradual development, esp to a more complex form’ (Collins English Dictionary 22/05/2017), as the spelling and pronunciation of this word is more or less the same throughout the European Union.

The earlier mark is a figurative mark containing a red square. Inside the red square is written, in relatively large letters, ‘K9’ or ‘Kg’; in much smaller upper case letters underneath is written the word ‘EVOLUTION’ and in the upper-right corner is written the abbreviation ‘TM’. This last element is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison. All of the verbal elements are written in white.

The contested sign is a figurative sign containing the outlines of a pointing man and a leaping dog. Behind the man and the dog, although hardly perceptible, part of the letter ‘K’ and part of the number ‘9’ can be seen, and in the middle of the ‘9’ there is a star. In the upper-right corner of the mark, the word ‘UNIT’ is clearly depicted.

The verbal element that the marks have in common, ‘K9’, which may also be perceived as ‘KG’ in the earlier mark, and the word ‘UNIT’ in the contested sign are meaningless for the part of the relevant public on which the Opposition Division focuses its examination, and the word ‘EVOLUTION’ of the earlier mark is not descriptive for any of the relevant goods. The marks are, therefore, distinctive to an average degree for the relevant goods.

The figurative element of the man pointing and the leaping dog in the contested sign could have some meanings for some of the goods, such as harnesses for animals; leashes for animals; dog collars; muzzles; fittings for dog harnesses; electronic pet collars; collars for pets bearing medical information; dog apparel, and is, therefore, weak for these goods. For the rest of the goods, the sign is distinctive to an average degree.

The red square of the earlier mark performs only a decorative function within the sign and is, therefore, less distinctive than the other elements of the sign.

In this regard, it should be recalled that when signs consist of both verbal and figurative components (as do both of the signs under comparison), 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, the figurative elements of the signs, along with their stylisations and colours, have only a limited impact on the consumer’s perception.

In the earlier mark, the element ‘K9’, or ‘KG’, is dominant due to its size in comparison with the much smaller element ‘EVOLUTION’.

Even though the verbal element ‘UNIT’ in the contested sign is smaller than the element ‘K9’ and the outlines of the man and the dog, and is placed in a secondary position in the top-right corner of the sign, it is not less dominant than the other parts of the mark because the word ‘UNIT’ is clearly visible, whereas the rest of the elements in the mark are jumbled together. The mark must be studied carefully to see the element ‘K9’ with the star, since only part of the letter ‘K’ and part of the ‘9’ can be seen, and, although the outlines of the man and the dog are visible, they are not more dominant than the word ‘UNIT’. Consequently, the contested sign has no elements that could be considered clearly more dominant than other elements.

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).

Visually, the signs coincide in the element ‘K9’, which could be perceived in both marks, even though, as discussed above, it is questionable what exactly it will be perceived as in the earlier mark, and the contested sign has to be studied carefully to see the ‘K’ and the ‘9’. The signs differ in the element ‘EVOLUTION’ in the earlier mark and the word ‘UNIT’ in the contested sign. The signs also differ in their figurative elements, stylisations and colours. Although the figurative elements in the contested sign are weak for some of the goods, as explained above, and will therefore have a limited visual impact for those goods, they are still a vital part of the mark and will influence the relevant public’s visual perception.

Therefore, the signs are visually similar to a low 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 element ‛K9’, present in both signs. The pronunciation differs in the sound of the letters ‛EVOLUTION’ of the earlier sign, which have no counterparts in the contested sign, and in the sound of the letters ‛UNIT’ of the contested mark, which have no counterparts in the earlier sign.

Therefore, the signs are aurally similar to only a low degree.

Conceptually, although the public in the relevant territory will perceive the concepts of a man and a dog in the contested sign, as explained above, the earlier mark will be associated with the concept of something evolving. Since the signs will not be associated with the same meaning, the signs are not conceptually similar.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

The opponent submitted documents containing images and Google extracts showing that the element ‘K9’ is sometimes used in combination with the word ‘UNIT’, arguing that these verbal elements lack distinctiveness. As explained under section c), to create a best-case scenario for the opponent the Opposition Division focused the comparison on the part of the public of the European Union that does not understand English and for which these verbal elements have a normal degree of distinctiveness. The Opposition Division also notes that there is nothing to support the claim of a lack of distinctiveness, as the opponent has merely submitted a number of images from the internet, the context of which is vague. Furthermore, if the element ‘K9’ were considered to lack distinctiveness, the marks would be even less similar, since ‘K9’ is the only element the marks have in common.

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

Although the signs coincide aurally in the element ‘K9’, a likelihood of confusion does not exist since this element is hardly perceptible in the contested trade mark and because there are additional distinctive elements.

The goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (see in this regard judgment of 15/04/2010, T-488/07, Egléfruit, EU:T:2010:145).

Therefore, even though the goods are assumed to be identical and it is assumed that the relevant consumers will not connect any of the goods with any of the verbal elements of the marks, the marks are still visually and aurally different enough for no likelihood of confusion to be found. The marks are visually and aurally similar to only a low degree: both marks are figurative marks, but they have clearly different graphic depictions, allowing the signs to be safely distinguished.

On 30/11/2016, in her reply, the opponent submitted a document that is not in the language of the proceedings; therefore, the Opposition Division cannot take this document into account, since no translation of this document into the language of proceedings has been submitted.

There is no special rule for translations of the applicant’s first reply or other observations drawn up by the applicant or opponent at a later stage in the proceedings. Consequently, for these submissions Rule 96(1) EUTMIR applies. This means that the applicant’s first reply or the opponent’s reply to the applicant’s observations may be in any language of the Office.

If the applicant’s first reply or the opponent’s counter-reply is not in the language of proceedings but in one of the languages of the Office, the submission will not be taken into account unless the applicant or the opponent submits a translation of these documents in the language of the proceedings within the time limit of one month from the date of receipt of the original by the Office. The Office will not request the parties to send a translation; the parties have to send one on their own initiative.

For the above reasons, the opponent’s abovementioned observations cannot be taken into account in the proceedings.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘K9’ is weak. This is because, as a result of the weak character of that element, that part of the public will perceive the signs as being even less similar.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 04/05/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 09/09/2016.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded.

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 opponent is the losing party, she must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Martin EBERL

Magnus ABRAMSSON

Sigrid DICKMANNS

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.