OPPOSITION No B 2 390 352

Sorgal – Sociedade de Óleos e Rações, S.A., Estrada 109, Lugar da Pardala, 3880-728 São João OVR, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative).

A g a i n s t

Techmix LLC, 740 Bowman Street, Stewart, Minnesota 55385, United States of America (applicant), represented by Maucher Jenkins, 26 Caxton Street, London SW1H 0RJ, United Kingdom (professional representative).

On 31/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 390 352 is partially upheld, namely for the following contested goods:

Class 31:        Animal feeds.

2. European Union trade mark application No 12 704 748 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 704 748. The opposition is based on European Union trade mark registration No 11 961 794. 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.

1. The goods

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

Class 31:        Mixed feed.

The contested goods are the following:

Class 31:        Animal feeds; animal nutritional supplements.

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.

The contested animal feeds include, as a broad category, or overlap with, the opponent’s mixed feed, since both these categories include mixed animal feed.  Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

In the present edition of the Nice Classification (i.e. the 10th edition) all dietary and nutritional supplements are classified in Class 5. Although in the present case the contested animal nutritional supplements have been classified in Class 31, it is clear that they are proper to classification in Class 5. The classification of these goods in Class 31 does not change their nature. In this regard, it should be noted that the Nice Classification serves purely administrative purposes and, as such, is not decisive for the comparison of goods and services. Therefore, in this case, the contested animal nutritional supplements in Class 31 must be assessed as if they were classified in Class 5. Consequently, the contested goods must be considered as being supplements prepared for special dietary requirements, intended, in general, to provide nutrients that may otherwise not be consumed in sufficient quantities. Bearing this in mind, the contested animal nutritional supplements have a different purpose than the opponent’s mixed feed and these goods differ in nature and methods of use (mixed feeds for, inter alia, animals versus dietary supplements for animals, intended to supplement a normal diet or to have health benefits). The contested goods are not foodstuffs like the goods of the earlier trade mark. Therefore, the conflicting goods are likely to originate from different manufacturers and they are neither strictly complementary or in competition. Bearing this in mind, they are deemed dissimilar.  

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 in question.

In the present case, the goods found to be identical are directed at the public at large and at a more specialised public with specific knowledge and expertise, such as the animal farming industry. As the goods of both marks target the public at large and professionals, the assessment of the likelihood of confusion will be assessed against the perception of the part of the public that is more prone to confusion, that is, the general public. For the public under analysis the degree of attention is considered average.  

3. The signs

	TriStart
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).

Both signs are composed of the suffix ‘START’, which will be understood by the vast majority of the relevant public with the same meaning as in English, namely, as ‘begin or be reckoned from a particular point in time or space; come into being’ (information extracted from Oxford Dictionaries online on 28/08/2017 at https://en.oxforddictionaries.com/definition/start). The public under analysis will not make an immediate and direct association between ‘START’ and the goods at issue. Therefore, ‘START’ is of normal distinctiveness.  

Furthermore, the earlier mark, a figurative mark, depicted in yellow and white, contains the prefix ‘Avi’, which will be perceived with no meaning and as distinctive for the public, whereas ‘Tri’ (in the contested sign) will be perceived as ‘three’ or ‘triple’ and merely as product information, for example, that the animal feeds contain triple ingredients; vitamins, minerals and nutrients. The prefix of the contested sign will, therefore, be perceived as weaker than average. Finally, the figurative elements of the earlier mark have less importance on the comparison of the signs, since consumers generally tend to focus on the word elements of signs. Indeed, 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 word element ‘START’, placed last in both signs. They differ in the prefixes (‘Avi’ and ‘Tri’) and in the graphical representation of the earlier mark, described above. The Opposition Division notes that since ‘START’ has a capital ‘S’ in the contested sign and is rendered in upper case in the earlier mark, ‘START’ appears as separated from ‘Avi’ and ‘Tri’ in the signs. It is true that ‘Avi’ is the first element that catches the attention of the consumers in the earlier mark, since it is the initial element of the sign and since consumers read from left to right. In addition, ‘Avi’ is a distinctive element that manages to create some visual differences between the signs as a whole. However, ‘START’ is composed of more letters than the differing verbal elements of the conflicting signs and is the more distinctive element in the contested sign. Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories, the signs differ in the pronunciation of their initial elements (‘Avi’ and ‘Tri’), while they coincide in the pronunciation of their following element ‘START’. Since their third letter (‘i’) is the same, followed by the sounds of ‘S-T-A-R-T’, the signs share six out of eight sounds, placed in the same positions in the signs. Moreover, they share the same amount of letters (a total of eight letters). Therefore, the conflicting signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks, that is, ‘START’, present in both signs, will be understood by the vast majority of the public as something that begins, and will be perceived as distinctive for the goods at issue. The prefix ‘Avi’ of the earlier mark is meaningless (and distinctive) for the public, whereas ‘Tri’ is of weaker than average distinctiveness in the contested sign. Consequently, ‘Tri’ has less impact on the conceptual comparison of the signs, while the figurative elements of the earlier mark will not influence on the comparison (for the reasons explained above). Bearing this in mind, the signs are conceptually highly 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

According to settled case-law, 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 (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).

In the present case, the goods are partly identical and partly dissimilar. The signs are visually and aurally similar to an average degree, while they are conceptually highly similar for the public taken into account. In this regard, the Opposition Division makes reference to that ‘Avi’ and ‘Tri’ may be perceived as sub brands or product information originating from ‘START’ and that this creates a risk of association between the signs. Moreover the earlier mark is distinctive and the degree of attention is average for the public under analysis.

In its observations, the applicant argues, and has also provided evidence for, that ‘START’ is weak for the goods at issue, since it tells ‘the precise nature and purpose’ of animal feeds, namely that these products are designed for use in ‘the first phase of growth of the animal’. Moreover, the applicant makes reference to that there are many trade marks that include ‘START’ and has, in support of its argument, referred to some trade mark registrations in the European Union.

It is true that ‘START’ may be perceived as weak for the goods referred to by the applicant. However, the Opposition Division finds that ‘START’ will only be understood as weak by the professional part of the public, for example, by professionals in the animal farming industry. Nevertheless, and as explained in section b) of this decision, likelihood of confusion is in this case assessed against the perception of the general public, which will not make any direct and immediate association between ‘START’ and the relevant goods.

Furthermore, the Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. Although the applicant has submitted evidence in order to show use of ‘START’, the majority of these examples are undated and merely show the date they were printed on (in most cases on 08/02/2017). Therefore, the evidence cannot be taken into account as showing a continuous use of ‘START’ as a weak element for the relevant goods. Although some of the examples are dated, for example, the attachments referring to ‘VitoStart’ and ‘VitaStart’, and the one containing a project report named ‘Studies on growth rates in pigs and the effect of birth weight’, these examples only relate to one territory of the European Union, namely to the United Kingdom. Moreover, in the case of ‘VitoStart’ and ‘VitaStart’ these examples are dated in May 2015, which is after the filing date of the opposition (i.e. on 29/07/2014), whereas the project report, although published almost ten years prior to the filing of the opposition (i.e. in March 2006), does not sufficiently demonstrate that ‘START’ has been perceived as a weak element for the relevant goods between 2006 and the filing date of the opposition. It therefore follows that the evidence filed does not demonstrate that consumers of the European Union have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘START’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the general public. It is sufficient to focus on the general public if a significant part of the relevant public for the goods in question may be confused about the origin of the goods. Therefore, there is no need to establish that all actual or potential consumers of the relevant goods are likely to be confused.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 11 961 794.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Justyna GBYL

Christian RUUD

Boyana NAYDENOVA

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.