OPPOSITION No B 2 596 503

Primavera, SARL, Les Fontaines de l’Aunay BP 79, 49250 Beaufort en Vallée, France (opponent)

a g a i n s t

Pelagos Akvaryum Sanayi Ve Ticaret Limited Sirketi, Keresteciler Sitesi, Mehmet Akif Ersoy Caddesi No:44/A, Merter-Instanbul, Turkey (holder), represented by Silex IP, Poeta Joan Maragall 9, Esc. Izq., 3º Izq., 28020 Madrid, Spain (professional representative).

On 16/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 596 503 is upheld for all the contested goods, namely:

Class 31:         Agricultural and horticultural products not included in other classes; seeds; forestry products not included in other classes; live animals; fertilized eggs for hatching; plants; dried plants for decoration; fresh garden herbs; dried garden herbs for decoration; animal foodstuffs; malt not for human consumption; animal feed, non-medicated additives for animal feed; malt extracts for consumption by animals, namely, food for animals; sanded paper for pets for animal litter, aromatic sand for pets for animal litter, pet food, bird seed, cuttlebones for birds.

2.        International registration No 1 266 101 is refused protection in respect of the European Union for all of the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of international registration designating the European Union No 1 266 101, namely against all the goods in Class 31. The opposition is based on European Union trade mark registration No 11 890 472. 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: Agricultural and forestry products, neither prepared nor processed; Live animals; Fresh fruits and vegetables; Grains (seeds), natural plants and flowers; Foodstuffs for animals; Malt; Sod; Crustaceans, live; Fishing bait, live; Cereal seeds, unprocessed; Plants; Seedlings; Trees, shrubs including rose bushes and other horticultural products; Citrus fruit; Unsawn timber; Fodder.

The contested goods are the following:

Class 31: Agricultural and horticultural products not included in other classes; seeds; forestry products not included in other classes; live animals; fertilized eggs for hatching; plants; dried plants for decoration; fresh garden herbs; dried garden herbs for decoration; animal foodstuffs; malt not for human consumption; animal feed, non-medicated additives for animal feed; malt extracts for consumption by animals, namely, food for animals; sanded paper for pets for animal litter, aromatic sand for pets for animal litter, pet food, bird seed, cuttlebones for birds.

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.

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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the holder’s list 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.

The contested agricultural and horticultural products not included in other classes; forestry products not included in other classes; live animals; animal foodstuffs; plants are identically covered by both lists of goods including synonyms.

In addition, the contested seeds include as a broader category the opponent’s cereal seeds. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s cereal seeds.

The contested malt not for human consumption is included in the opponent’s broad category malt. Therefore, they are identical.

The contested animal feed, non-medicated additives for animal feed; malt extracts for consumption by animals, namely, food for animals; pet food, bird seed, cuttlebones for birds are included in or overlap with the opponent’s broad category foodstuffs for animals. Therefore, they are identical.

The contested dried plants for decoration; fresh garden herbs; dried garden herbs for decoration are included in or overlap with the opponent’s natural plants. Therefore, they are identical.

The contested fertilized eggs for hatching are similar to a high degree to the opponent’s live animals. Indeed, since hatching eggs are fertile eggs that can be incubated and hatched, they are intended to become live animals. Therefore, they have a similar nature to the opponent’s live animals and they have the same purpose. In addition, they are likely to have the same usual origins and the same distribution channels as the opponent’s live animals. Finally, as fertilized eggs for hatching and specific products that would be included in the opponent’s broad category of live animals, such as chickens, are interchangeable, these goods are considered in competition.

The contested sanded paper for pets for animal litter, aromatic sand for pets for animal litter are similar to the opponent’s foodstuffs for animals, as they can have the same producers, end users and distribution channels.

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 are directed at the public at large as well as professionals in the agricultural sector. The degree of attention of the public will vary between average and high (25/05/2017, R 2302/2016-2, MACRO SEED (fig.) / makro (fig.), § 31).

3. The signs

HOT WINGS
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The marks in dispute in the present case comprise words that are meaningful in certain territories, for example in those countries where English is understood. As the coinciding element ‘Wings’ could be perceived, in such territories, as referring to the parts of the body that an insect or a bird uses for flying and, hence, would be weak for those parts of the public in relation to the goods in question, which have a close connection with animals, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-speaking part of the public.

The earlier mark is a word mark containing two elements, namely ‘HOT’ and ‘WINGS’. The contested sign is a figurative mark containing two word elements, namely ‘Gold’, along with the registered symbol ®, and ‘Wings’, displayed one above the other in standard gold title case letters.

According to the case-law, the understanding of a foreign language cannot be presumed (24/05/2011, T-144/10, SPS space of sound, EU:T:2011:243, § 63; 21/05/2015, T-271/13, Cuétara MARIA ORO, EU:T:2015:308, § 35; 26/05/2016, T-254/15, Casale Fresco, EU:T:2016:319, § 28). Therefore, as the word ‘Wings’ does not belong to basic English vocabulary, it has to be considered that this coinciding element will most probably not be understood by the Polish-speaking part of the public. Moreover, the same holds true for the element ‘Hot’ of the earlier mark.

By contrast, the element ‘Gold’ of the contested sign, as it is a basic English word that is commonly used in the course of trade in the European Union, will evoke the concept of the precious metal or the colour, at least for part of the Polish-speaking public (21/03/2011, T-372/09, GOLD MEISTER, EU:T:2011:97, § 32). As the word ‘Gold’ could be associated with something considered to be precious, beautiful or of the most superior quality, it could be perceived as laudatory by part of the Polish-speaking public in relation to the goods in question (13/10/2016, R 382/2016-5, THAT’S GOLD, § 24).

Finally, considering, on the one hand, that the typeface is banal and, on the other hand, that the registered symbol (®) will not be given any trade mark significance, these elements will be perceived as non-distinctive.

As neither of the words of the earlier mark is descriptive, allusive or otherwise weak in relation to the goods in question for the Polish-speaking part of the public, they are equally distinctive. As a result, the earlier mark has no element that could be considered clearly more distinctive than other elements.

As regards the contested sign, in the light of the above, it is concluded that the word elements themselves are more distinctive than their graphical depiction. Moreover, it is considered that the element ‘Wings’ is the most distinctive element of the contested sign for part of the public, while for the remaining part the marks have no verbal element that could be considered clearly more distinctive than other elements.

Furthermore, none of the contested sign’s elements could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in ‘Wings’. However, they differ in ‘Hot’ of the earlier mark versus ‘Gold’ of the contested sign. They further differ in the gold typeface of the contested sign, which has no counterpart in the earlier mark.

The coincidence in the element ‘Wings’ results in at least a low degree of visual similarity between the signs.

Aurally, the pronunciation of the signs coincides in the sound of the element ‘Wings’, present identically in both signs. However, they differ in the sound of the elements ‘Hot’ of the earlier mark versus ‘Gold’ of the contested sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, although part of the Polish-speaking public will perceive the meaning of the contested sign’s element ‘Gold’, it will perceive it as weak and, in any event, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any 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 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).

In the present case, the earlier mark has an average degree of distinctive character. In addition, the goods are identical and similar (for some to an average degree and for others, to a high degree). Finally, the marks are similar to an average degree from an aural perspective on account of the coinciding element ‘Wings’ and they are visually similar to at least a low degree for the same reason. However, since the earlier mark has no meaning for the Polish-speaking public, the signs are not conceptually similar.

Taking due account of the fact that of the differing elements, ‘Hot’ in the earlier mark versus ‘Gold’ in the contested sign, the element ‘Gold’ is weakly distinctive for part of the Polish-speaking public, a likelihood of confusion between these marks cannot be safely excluded.

Indeed, bearing in mind, on the one hand, that 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) and, on the other hand, that even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54), it is considered that they could overlook the difference between the signs.

Moreover, even if consumers clearly notice such a difference, given the low degree of distinctive character of the contested sign’s element ‘GOLD’ for part of the public, it is highly conceivable that the relevant consumer will perceive the contested mark ‘Gold Wings’ as a sub-brand, a variation of the earlier mark ‘Hot Wings’, configured in a different way according to the type of goods that it designates, in this case, goods of superior quality (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Since 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, there is a likelihood of confusion, at least on the part of the Polish-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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 890 472. 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 grounds 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 holder 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

Marianna KONDAS

Marine DARTEYRE

Julie GOUTARD

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.