OPPOSITION No B 2 786 500

Eberhard Dürrschmid, Antonigasse 3/4, 1180 Wien, Austria (opponent), represented by Franz-Martin Orou, Kapitelgasse 7/5, 1170 Vienna, Austria (professional representative)

a g a i n s t

21cPets Ltd., Foxglove Manor Whitchurch on Thames, Reading, Central Bedfordshire RG8 7NT, United Kingdom (applicant).

On 29/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 786 500 is upheld for all the contested services, namely:

Class 38:        Telecommunication services.

2.        European Union trade mark application No 15 621 477 is rejected for all the contested services. It may proceed for the remaining uncontested goods in Classes 21 and 31.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 621 477 , namely against all the services in Class 38. The opposition is based on Austrian trade mark registration No 275 843  and international trade mark registration No 1 210 180  designating the European Union. 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 earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 1 210 180 designating the European Union.

1. The services

The services on which the opposition is based are the following:

Class 38:        Telecommunications, especially data transmission services, interactive communication services, provision of telecommunication access to databases, provision of access to computer networks and mailboxes; provision of access to an interactive platform for exchanging information, especially contact information.

The contested services are the following:

Class 38:        Telecommunication services.

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

The term ‘especially’, used in the opponent’s list of services, indicates that the specific services 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).

The contested telecommunication services are also contained in the list of services of the earlier trade mark as telecommunications (as regards the remaining part of the wording of the opponent’s services, reference is made to the explanation on use of the term ‘especially’ given above). Therefore, the services under comparison 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 services found to be identical are directed at the public at large and at professionals with specific knowledge or expertise in the field of telecommunications.

The degree of attention of the average consumer may vary from average to high, depending on the technical level of the services, the frequency of purchase and their price (05/05/2015, T-423/12, Skype, EU:T:2015:260, § 22; 27/03/2014, T-554/12, Aava Mobile, EU:T:2014:158, § 27; 08/09/2011, T-525/09, Metronia, EU:T:2011:437, § 37).

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).

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.

All the verbal elements of the signs are meaningful for the English-speaking part of the public in the relevant territory. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.

The earlier mark is a figurative mark consisting of the verbal element ‘mypetnet’ depicted in slightly stylised lower case bold black letters. To the left of this word, there is a figurative element of a stylized heart-shaped paw in red.

The contested sign is also a figurative sign composed of the word ‘PetTime’ written in a slightly stylised title case italic typeface in which the first part ‘Pet’ is in bold orange letters and the second part ‘Time’ appears in thin dark grey letters. To the top right corner of the verbal element of the sign, there is a figurative element of a stylized heart-shaped paw in orange.

The Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

With respect to the present case, it can be reasonably assumed that the English-speaking part of the relevant public will break up the verbal elements of the signs, ‘mypetnet’ and ‘PetTime’, into separate meaningful words. This is because in the contested sign, the word ‘Pet’ is visually separated from the word ‘Time’ by a different colour and a bold font and, furthermore, both words start with a capital letter and have particular meanings for the abovementioned part of the public. In the earlier mark, even though there are no parts, letters or elements that would stand out visually as in the case of the contested sign, the English-speaking consumers will naturally split the word ‘mypetnet’ into elements which have a clear and specific meaning for them and thus, they will perceive it as a combination of the words ‘my’, ‘pet’ and ‘net’.

The word ‘pet’/‘Pet’ included in both signs will be understood by the English-speaking public as ‘a domestic or tamed animal kept for companionship or pleasure’ (information extracted from Oxford Dictionaries online at https://en.oxforddictionaries.com/definition/pet). Since this word has no connection with the characteristics of the relevant services, it has an average degree of distinctiveness.

The word ‘my’ in the earlier mark refers to a possessive determiner (information extracted from Oxford Dictionaries online at https://en.oxforddictionaries.com/definition/my). The distinctiveness of this element is considered normal, since it does not refer to any characteristics of the relevant services.

The word ‘net’ included in the earlier mark means, inter alia, ‘a network of interconnected computers; the Internet’ (information extracted from Oxford Dictionaries online at https://en.oxforddictionaries.com/definition/net). Considering this, and bearing in mind that the relevant services are telecommunications in Class 38, this element is non-distinctive for these services, as it merely indicates that they are related to internet and/or computer network communications. The public will understand the meaning of this element and will not pay as much attention to this non-distinctive element as to the other, more distinctive, elements of the mark. Consequently, the impact of this non-distinctive element is limited when assessing the likelihood of confusion between the marks at issue.

Finally, the word ‘Time’ of the contested sign is used in English to refer, inter alia, to ‘a point of time as measured in hours and minutes past midnight or noon’ (information extracted from Oxford Dictionaries online at https://en.oxforddictionaries.com/definition/time). This element has no clear concept in relation to the relevant services and is, therefore, distinctive to an average degree.

As regards the figurative element that the signs have in common, it consists of a fancy representation of an animal’s paw. As it does not refer to any characteristics of the relevant services, its distinctiveness is deemed normal.

In terms of dominance, neither of the signs has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the distinctive verbal element ‘pet’/‘Pet’, notwithstanding the different typefaces and colours of the letters, as well as in the distinctive figurative element of a red/orange heart-shaped paw which only slightly differs in the shade of colour. 

On the other hand, the signs differ in their remaining verbal elements, namely ‘my’ and ‘net’ in the earlier mark, the latter being a non-distinctive element, as explained above, and ‘Time’ in the contested sign.

As regards the different graphic stylisations in which the verbal components of the signs are written, namely the typefaces and colours of the letters, as described in detail above, they perform only a decorative function within the signs and, accordingly, have only a low impact on the consumer’s perception. In addition, these stylisations are not considered particularly overwhelming and they will not distract the consumer’s attention from the words they embellish.

Considering all the above, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘pet’/‘Pet’, forming a distinctive element in each sign.

However, the pronunciation differs in the sound of the letters ‘my’ and ‘net’ of the earlier mark, the latter constituting a non-distinctive element of the mark as stated above, and in the sound of the letters ‘Time’ of the contested sign.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and their individual elements. The meaning of each sign as a whole is nothing more than the sum of the parts mentioned above.

As the signs coincide in the concepts conveyed by the word ‘pet’/‘Pet’ and the figurative element of a heart-shaped paw, they 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 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 relevant services from the perspective of the English-speaking part of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

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, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The present assessment of likelihood of confusion considers the perception of the English-speaking part of the public in the relevant territory. The relevant public consists of the public at large and professionals.

As concluded above, the contested services are identical to the opponent’s services; the degree of attention varies from average to high and the earlier mark has an average degree of inherent distinctiveness.

The conflicting signs are similar to an average degree on all levels (visually, aurally and conceptually), as explained in detail above in section c) of this decision. This is, in particular, justified by the fact that the verbal element ‘pet’/‘Pet’ and the figurative element of a stylised animal’s paw, which the signs have in common, both play a distinctive and visually and conceptually important role in the signs.

The Opposition Division is of the opinion that the differences between the signs, as indicated above, are not sufficient to counteract their similarities, also for the reasons explained below.

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. Furthermore, it is common practice in the relevant market for manufacturers/providers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote a new product and/or service line or to endow a trade mark with a new, fashionable image.

In the present case, although the relevant public might detect certain differences between the conflicting signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). It is, therefore, conceivable that the relevant public, even part of it with a high degree of attention, will regard the services designated by the conflicting signs as belonging to two ranges of services coming from the same undertaking.

Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion (including a likelihood of association) on the part of the English-speaking part of the public in the relevant territory, and, therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 210 180 designating the European Union. 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.

It follows from the above that the contested sign must be rejected for all the contested services.

As the earlier international trade mark registration No 1 210 180 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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.

The Opposition Division

Chantal VAN RIEL

Martin MITURA

Saida CRABBE

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.