DECISION

of the Fourth Board of Appeal

of 10 January 2017

In Case R 635/2016-4

 

Affinity Petcare, S.A.
Plaça Europa 54-56 08902 L´Hospitalet de Llobregat (Barcelona) Spain	Opponent / Appellant

represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain

v

 

Dieter Harms
Glinde 12 A 23843 Bad Oldesloe Germany	Applicant / Respondent

represented by Jan Sroka, Düsseldorfer Straße 8, 40545 Düsseldorf, Germany

 

APPEAL relating to Opposition Proceedings No B 2 420 522 (European Union trade mark application No 13 045 174)

THE FOURTH BOARD OF APPEAL

composed of D. Schennen (Chairperson), C. Bartos (Rapporteur) and E. Fink (Member)

Registrar: H. Dijkema

gives the following

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Decision

Summary of the facts

1. By an application filed on 1 July 2014, the respondent sought to register the word mark

masterpremium

for goods in Classes 29, 30 and 31.

2. On 15 October 2014, the appellant filed an opposition against the following goods:

Class 31 – Foodstuffs and fodder for animals; live animals; bedding and litter for animals.

3. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR. The opposition was based on the earlier French trade mark No 1 491 385

PREMIUM

for the goods

Class 31 – Animal feed

registered on 30 September 1988 and duly renewed.

4. By decision of 4 March 2016 (‘the contested decision’), the Opposition Division rejected the opposition in its entirety. Comparing the signs, the Opposition Division noted that the similarity of the signs rests solely on the element ‘PREMIUM’, to which the public would not pay much attention being a non-distinctive element. The difference between the signs, namely the element ‘master’, outweighs their similarity and hence likelihood of confusion is excluded even for identical goods.
5. The appellant filed an appeal against the contested decision, followed by the statement of grounds. The appellant requests that the decision be annulled and the opposition upheld for all the contested goods, arguing that the signs were similar due to the common verbal element ‘PREMIUM’ which is distinctive for the French public  as it is not a French word.
6. The respondent did not reply to the statement of grounds.

Reasons

7. The appeal is admissible and well founded. The signs are similar at least to an average degree. The goods are partially identical, and partially similar. A likelihood of confusion exists within the meaning of Article 8(1)(b) EUTMR.

Article 8(1)(b) EUTMR

8. According to Article 8(1)(b) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
9. Since the earlier mark is a French trade mark, the relevant territory for analysing the likelihood of confusion is that of France.
10. The goods are directed to the public at large, at least in so far as the term ‘animal’ includes also pet. The public’s attention is of an average degree.
11. The conflicting goods, all in Class 31, are partly identical and partly similar to an average degree. The contested ‘foodstuffs and fodder for animals’ are identical to the appellant’s ‘animal feed’. The contested ‘live animals; bedding and litter for animals’, albeit different in nature, share the same distribution channels, namely pet shops, and address the same public as ‘animal feed’ of the earlier trade mark. Furthermore, these goods are complementary to each other.
12. As regards the comparison of the signs, the assessment of the visual, phonetic or conceptual similarities must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 23; 06/10/2005, C120/04, Thomson Life, EU:C:2005:594, § 28).
13. Both signs consist of a single word. The earlier sign is fully included in the contested sign.
14. The French public will understand the English word ‘PREMIUM’ as a laudatory expression often used in France as well as in other countries to express high quality (22/05/2012, T-60/11, Suisse Premium, EU:T:2012:252). It is therefore highly allusive and has, at the best, only a very weak distinctive character per se. The element ‘master’ is, as in English, a general reference to an exceptional skill or superiority of the products. It is therefore also very weak with respect to the relevant goods.
15. The conflicting signs are aurally and visually similar to an average degree since they coincide in the term ‘premium’. They differ as the beginning of the contested sign as the term ‘master’ does not have a counterpart in the appellant’s sign.
16. Conceptually, the signs are highly similar, if not identical. The English word ‘MASTER’ will be perceived as a general reference to an exceptional skill or superiority of the products. Used as a prefix preceding the term ‘premium’, the term ‘master’ reinforces the laudatory message of the term ‘premium’. The contested sign ‘masterpremium’ will be understood by the relevant public as an expression for a quality standard which is above ‘premium’.

Global assessment of a likelihood of confusion

17. According to the case-law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. It follows from the very wording of Article 8(1)(b) EUTMR that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope (29/09/1998, C39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).
18. The degree of inherent distinctive character of the earlier trade mark is very low considering the laudatory character of the sign. Increased distinctive character has not been claimed.
19. The Board disagrees with the Opposition Division’s assessment that the term ‘premium’ bears less weight than the term ‘master’ in the overall impression produced by the contested sign on the relevant public. ‘Master’ is not more distinctive or less laudatory for the goods in issue than the term ‘premium’. Indeed, they are both laudatory. Adding a non-distinctive element to another element having the same level of distinctive character per se does not reduce the risk of likelihood of confusion. ‘Master’ will be understood by the relevant public as belonging to the same scale of quality standard as ‘premium’ but with an extra ‘master’ level above the mere ‘premium’ standard. The consumer will believe that the same undertaking offers the two product qualities ‘premium’ and ‘master premium’. Therefore, and in view of the similarity and identity of the goods and the similarity of signs, as well as the average attention of the relevant public, a likelihood of confusion exists between the conflicting trade marks.
20. The appeal is allowed and the contested decision annulled. The opposition is upheld for all the contested goods.

Costs

21. As the respondent is the losing party within the meaning of Article 85(1) EUTMR, it must be ordered to bear the costs of the opposition and the appeal proceedings.

Fixing of costs

22. In accordance with Article 85(6) EUTMR and Rule 94(7)(d)(i) and (vi) CTMIR, the Board fixes the amount of representation costs to be paid by the respondent to the appellant at EUR 550 for the appeal proceeding and at EUR 300 for the opposition proceedings. To this the opposition fee of EUR 350 and the appeal fee of EUR 720 incurred by the appellant must be added, in total EUR 1 920.

 

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Order

On those grounds,

THE BOARD

hereby:

 

1. Annuls the contested decision;
2. Rejects European Union trade mark application No 13 045 174 for

Class 31 – Foodstuffs and fodder for animals; live animals; bedding and litter for animals.

3. Orders the respondent to bear the costs of the opposition and appeal proceedings;
4. Fixes the total amount of costs to be paid by the respondent to the appellant at EUR 1 920.

 

 

 

 

 

Signed   D. Schennen

Signed   C. Bartos

Signed   E. Fink

 

 

Registrar:   Signed   H.Dijkema