OPPOSITION No B 2 703 984

Happy Pet Products Limited, Unit 1, Flatten Way, Syston, Leicester LE7 1GU, United Kingdom (opponent), represented by Spearing Waite LLP, 34 Pocklingtons Walk, Leicester, Leicestershire LE1 6BU, United Kingdom (professional representative)

a g a i n s t

Logistica Mayorista 20.20 S.L., Calle Hiladores 2, 03350 Alicante, Spain (applicant)

On 05/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 703 984 is upheld for all the contested goods.

2.        European Union trade mark application No 15 307 044 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 307 044. The opposition is based on United Kingdom trade mark registration No 3 026 416. 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 18: Covers and wraps for animals; blankets for animals; rugs for animals.

Class 20: Beds for animals; beds for pets.

Class 28: Toys for animals; toys for pet animals.

The contested goods are the following:

Class 18: Animals wraps.

Class 20: Beds for animals.

Class 28: Toys for animals.

The goods are identically contained in both lists.

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 degree of attention is considered average.

3. The signs

HAPPYPET
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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 earlier mark is a word mark consisting of the verbal element ‘HAPPYPET’. Being a word mark, it has no elements that are more dominant (visually eye-catching) than others. However, the Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, 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, ECLI:EU:C:1997:528, § 57). Therefore, consumers, when encountering the earlier mark, will perceive the elements ‘HAPPY’ and ‘PET’, since both words have a clear and evident meaning for the relevant consumers.

The contested sign is a figurative mark consisting of the words ‘HAPPY PET’ on a red banner below a depiction of the head of a Dalmatian dog on a yellow triangle outlined in green.

Regarding the meaning of the words present in both signs, ‘HAPPY and ‘PET’, the relevant public will perceive them as forming an expression referring to a domestic animal showing contentment.

The combination ‘HAPPYPET’ or ‘HAPPY PET’ is weak in relation to goods for pets. The same applies to the figurative element of a Dalmatian dog in the contested sign, although it is somewhat more eye-catching. It must, however, be borne in mind – contrary to the applicant’s arguments – that 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).

Consequently, both marks are composed of elements that are of limited distinctiveness for the relevant goods.

Visually, the signs coincide in the words ‘HAPPY’ and ‘PET’. Aside from the fact that, in the contested sign, there is a space between the words, whereas in the earlier mark the words are conjoined, the signs also differ in the figurative elements of the contested sign, although, as explained above, the figurative elements will be paid less attention than the verbal elements.

Therefore, the signs are visually similar to a low degree.

Aurally, the signs are identical.

Conceptually, the signs convey the same concept, that associated with the expression ‘HAPPY PET’, as explained above; the figurative element depicting a Dalmatian dog in the contested sign merely reinforces the concept of a pet. Therefore, 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods.

5. Global assessment, other arguments and conclusion

The goods are identical. The similarity between the signs results from the fact that they both include the letters ‘HAPPY(*)PET’, which are the sole constituents of the earlier mark.

The earlier mark’s degree of inherent distinctiveness is low for the goods in question, as is the distinctiveness of the verbal element of the contested sign, which has some commonalities with the earlier mark. In this regard, the finding of a weak distinctive character for the earlier trade mark does not prevent the finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Therefore, even in a case involving an earlier mark of weak distinctive character, on the one hand, and a trade mark applied for which is not a complete reproduction of it, on the other, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T-112/03, Flexi Air, EU:T:2005:102, § 61).

Therefore, the assessment of likelihood of confusion in the present case will focus on the impact of the non-coinciding components on the overall impressions of the conflicting marks. In this regard, as demonstrated in section c) of this decision, the differences between the signs are of secondary importance, especially taking into consideration the weakness of the figurative elements of the contested sign in relation to the relevant goods.

It should be pointed out that it is common practice, in the relevant market, for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or by adding verbal or figurative elements to them, in order to denote new product lines, or to endow a trade mark with a new, fashionable image. Moreover, consumers are well accustomed to word marks being stylised and embellished with logotypes and other devices. Therefore, when encountering the conflicting signs, the relevant public is likely to mentally register the fact that they contain the words ‘HAPPY PET’ and perceive the contested sign as a variation of the earlier mark, or vice versa. Consequently, the public may attribute the same commercial origin to the goods.

The applicant refers to a previous decision of the Fourth Board of Appeal of the Office to support its arguments. However, the Office is not bound by previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous case referred to by the applicant is not relevant to the present proceedings, since the signs in the previous case were found to be visually and conceptually similar to a low degree.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration No 3 026 416. It follows that the contested trade mark must be rejected for all the contested goods.

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

Plamen IVANOV

Cynthia DEN DEKKER

Jessica LEWIS

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.