OPPOSITION No B 2 764 358

Açucareira Quatá S/A, 15 de Novembro 865/890, Lençóis Paulista, São Paulo 18680-030, Brasil (opponent), represented by Ruo Patentes y Marcas S.L.P., C/ Padre Recaredo de los Ríos, 30. Entlo., 03005 Alicante, Spain (professional representative)

a g a i n s t

proWIN Winter GmbH, Zeppelinstr. 8, 66557 Illingen, Germany (applicant), represented by Stephan Kropf, Hindenburgstr. 59, 66119 Saarbrücken, Germany (professional representative).

On 31/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 764 358 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 464 076 , namely against all the goods in Class 31. The opposition is based on, inter alia, European Union trade mark registration No 12 501 839 . 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 European Union trade mark registration No 12 501 839.

1. The goods

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

Class 31:        Foodstuffs for animals.

The contested goods are the following:

Class 31:        Pet food; Beverages for pets; Foodstuffs and fodder for animals; Beverages for pets; Edible chews for animals; Strengthening animal forage; Dog biscuits; Edible pet treats.

Foodstuffs for animals are identically contained in both lists of goods.

The contested pet food; beverages for pets; fodder for animals; beverages for pets; edible chews for animals; strengthening animal forage; dog biscuits; edible pet treats are included in the broad category of the opponent’s foodstuffs for animals, as ‘foodstuff’, by definition, is ‘any substance that is used as food or to make food’. Therefore, they 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 goods found to be identical are directed at the public at large.

The degree of attention is considered average.

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark is figurative and consists of an abstract violet circular figurative element and, to the right, two moderately stylised verbal elements, ‘Pro’ and ‘Wean’. The verbal elements will be perceived as separate, since they both start with upper case letters and are depicted in different colours: violet and black respectively. The relevant public will understand the word ‘Pro’ with the meaning of ‘for’ or ‘in favour of’, and it may well also be understood as relating to ‘professional’ (in this context, see also 11/09/14, T-127/13, Pro outdoor, EU:T:2014:767, § 58). In this sense, the element ‘Pro’ is descriptive of characteristics (the quality) of the relevant goods. For the English-speaking part of the public, the element ‘Wean’ means ‘to cause a baby or young animal to stop feeding on its mother’s milk and to start eating other food, especially solid food, instead’ (information extracted from Cambridge dictionary at http://dictionary.cambridge.org/dictionary/english/wean) and is therefore weak, as the relevant goods are foodstuffs. For the rest of the public, the element ‘Wean’ does not have a meaning and so is distinctive.

The figurative element serves only as a decoration in the overall composition of the earlier mark. Besides, when a sign consists 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).

The opponent claims that ‘Prowean’ is the dominant element in the earlier mark; however, as explained above, there are two separate verbal elements in this mark and neither of them will be perceived as dominant; also because none of the verbal elements clearly grows over the figurative element.

The contested sign is figurative and consists of a figurative element depicting three leaves in yellow, light blue and green and, to the right, the two verbal elements ‘prowin’ and, underneath it, ‘international’. ‘Prowin’ is in a standard black bold typeface while ‘international’ is in smaller light blue italic letters. In this regard, the Court has held that, although the average consumer normally perceives a mark as a whole and does 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, EU:T:2007:46, § 57). Therefore, the English-speaking part of the public will have no difficulties in recognising in the word ‘prowin’, due to their meanings, the elements ‘pro’, which was described and assessed above, and ‘win’, which means ‘be successful or victorious’ (information extracted from Oxford Living Dictionaries at https://en.oxforddictionaries.com/definition/win), and it is therefore distinctive. The same is not true, however, for the rest of the public, for which the word ‘win’ will not suggest a meaning and, consequently, the element ‘prowin’ will not be dissected but will be seen as a coined word without any particular meaning; and therefore, the word ‘prowin’ will be distinctive. The element ‘international’ is a word widely used in trade and understood throughout the relevant territory. It merely indicates the cross-border scope of the goods and/or the entity and is therefore non-distinctive. The figurative element will be associated with plant-based foodstuffs for animals; therefore, it is non-distinctive for the relevant goods. No element in the sign is clearly dominant.

Visually, the signs coincide in the letters ‘p-r-o’, ‘w’ and ‘n’. For the English-speaking part of the public, the signs coincide visually in their non-distinctive elements ‘pro’ and the first and last letters of the elements ‘wean’ and ‘win’. For the rest of the public, the verbal part of the earlier mark will be perceived as two words, as explained above, while the distinctive verbal element ‘prowin’ in the contested sign will be seen as one word. Furthermore, the signs clearly differ in their figurative elements and stylisation and in the additional verbal element in the contested sign. Therefore, the signs are visually similar to a lower than average degree.

The opponent’s arguments with regard to the visual similarity between the signs are not in line with the findings of the Opposition Division, as the opponent considers the two verbal elements in the earlier mark as a single word. Therefore, these arguments do not affect the comparison of the signs.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sounds of the letters ‘p-r-o’, ‘w’ and ‘n’, present in the verbal elements of the earlier mark and in the verbal element(s) ‘pro-win’ in the contested sign. The pronunciation of the abovementioned elements differs in the vowels ‘ea’ and ‘i’, which, at least by the English-speaking part of the public, will be pronounced in rather similar ways. The contested sign also contains a non-distinctive verbal element, ‘international’, which, however, will not be completely disregarded and can be pronounced. The figurative elements of the marks will not be pronounced. 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. As the signs coincide only in the meaning of the common non-distinctive element ‘Pro’ and there is no conceptual similarity between the rest of the elements in the signs, they signs are conceptually not 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, for the reasons described in section c), the distinctiveness of the earlier mark is below average for the English-speaking part of the public. For the rest of the public, the distinctiveness of the earlier mark must be seen as normal, despite the presence of non-distinctive elements.

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 goods are identical and the signs are visually similar to a lower than average degree, aurally similar to an average degree and conceptually not similar. The distinctiveness of the earlier mark is below average for the English-speaking part of the public and normal for the rest of the public.

For the English-speaking part of the public, the similarities between the signs lie in the non-distinctive element ‘Pro’, which the signs have in common, and in the other elements of the earlier mark and the contested sign, which are ‘wean’ and ‘win’ respectively; ‘wean’ being weak. For the rest of the public, the similarities between the signs lie in the non-distinctive element ‘Pro’ in the earlier mark, which will not be singled out as an element in the contested sign, and in the coinciding letters ‘w’ and ‘n’. Since the similarities between the signs concern elements that are not distinctive or are weak, they are not sufficient to lead to a likelihood of confusion on the part of the public, even when the goods are identical.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade mark: European Union trade mark registration No 11 872 587 . Since this mark is highly similar to the one which has been compared and obviously has even less similarity to the contested sign and covers the same scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Denitza STOYANOVA-VALCHANOVA

Milda CERNIAUSKAITE

Martin EBERL

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.