OPPOSITION No B 2 584 616

Nanta S.A., Ronda de Poniente, 9, 28760 Tres Cantos (Madrid), Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Teadena Oy, PL 132, 04201 Kerava, Finland, (applicant), represented by Kolster Oy Ab, Salmisaarenaukio 1, 00180 Helsinki, Finland (professional representative)

On 13/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 584 616 is upheld for all the contested goods.

2.        European Union trade mark application No 14 423 636 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 423 636. The opposition is based on, inter alia, European Union trade mark registration No 1 120 278. The opponent invoked Article 8(1)(b) EUTMR.

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 1 120 278.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of, inter alia, European Union trade mark registration No 1 120 278.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 11/08/2015. The opponent was therefore required to prove that this trade mark on which the opposition is based was put to genuine use in the European Union from 11/08/2010 to 10/08/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 31:        Agricultural, horticultural and forestry products and grains not included in other classes; living animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals, malt.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 15/08/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 15/10/2016 to submit evidence of use of the relevant earlier trade marks. Upon request by the opponent, this time limit was extended until 15/12/2016. On 15/12/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Invoices (attachments 3 and 10): numerous invoices from the whole of the relevant time period between 2010 and 2015 from various Member States, namely Portugal, Spain, Poland, France, Denmark, Italy, Slovakia, Belgium and Estonia. The invoices contain references to different products with descriptions including the earlier mark, ARION, such as: ARION FR ADULT CAT, ARION PREM CAT ADULT, ARION PREM CAT STERIL, ARION FR CAT SENSITIVE, ARION PREM MAINT LARGE, ARION FR BRAV CROC, ARION FR MULTI-VITAL, ARION BR PUPPY LARGE, ARION BR PERFORMANCE, ARION BR WINNER, ARION PETIT and ARION JUNIOR.

• Brochures (attachment 2): a few extracts from a brochure in Spanish dated February and October 2011 respectively including pictures of different cat food and dog food products and their prices (expressly in euros in the extracts from February). The names of the different products shown correspond to many of the names described in the invoices and show use of the earlier mark, inter alia, as follows:

• Catalogues (attachments 5 and 6): extracts from undated product catalogues in different languages, namely Dutch, English, French, German and Danish. The product catalogues include pictures of different cat food and dog food products offered for sale under the earlier mark as shown in the examples included above and also provide information about the different products on offer. The product names shown in the catalogue extracts submitted also correspond to the product descriptions included in the invoices.

• Facebook (attachment 9): numerous screenshots from the Facebook page ARION PetFood Italia showing posts from April to July 2015. Some of the posts include pictures of different ARION branded cat and dog food products in line with the examples included above.

• Websites (attachments 1 and 8): extracts dated 14/12/2016 from the website www.arion-petfood.dk  submitted in Danish together with, according to the opponent, a Spanish Google translation of the same. Undated screenshots from a website, which the opponent indicates is www.arionpetfood.com, in different languages, namely English, German, Dutch and French. The websites show use of the earlier mark as follows respectively:

 

• Declarations (attachments 4 and 11): a declaration signed on behalf of the opponent, Nanta S.A., with a statement of the amount of dog and cat food sold in kilos under the earlier mark, ARION, in Spain and Portugal during the years from 2010 to 2015 and indicating an average of 10.000 tonnes per year. A declaration signed by the Financial Manager of Fides Petfood NV stating that it has a licence to use the opponent’s earlier mark, ARION, and that Fides Petfood NV has sold dog and cat food under the ARION brand in the European Union during the years from 2010 to 2015 in the volumes of, on average, 10.000 tonnes per year. The opponent has also clarified in its observations that the volumes indicated in this declaration do not include Spain or Portugal.

• Articles (attachment 7): extracts in English from the opponent’s website www.arionpetfood.com with information about and pictures from ARION CUP, a canicross (cross-country sport running with dogs) event held in Germany in 2014, sponsored by ARION and a press announcement in German related to the same event.

• Miscellaneous (attachment 12): extracts in Spanish from different websites which the opponent indicates relate to the following:

• www.ifema.es, a report from the Exhibition Fair of Madrid (IFEMA) where ARION was the main sponsor in the Pets Fair called ‘100×100 mascotas’ in May 2015;
• www.perros365.com (a dog-owner focused website), an article related to the ‘100×100 mascotas’ event and an article concerning the presence of ARION as a sponsor of ‘Siegerschau’ in October 2014, an important dog competition in Segovia;
• www.protegamayorista.com (a breeder focused website), an article which shows ARION as a sponsor of the Autumn Canine International Exhibition in November 2014; and
• www.arion-petfood.es (the opponent’s Spanish website), an article that shows the presence of ARION in ‘FIMASCOTA 2015’, an important event during the Canine International Exhibition held in February 2015.

Taking into account the evidence in its entirety, the evidence submitted by the opponent gives sufficient indications concerning the place (several different EU Member States), time (for the whole relevant period), extent (declarations and invoices of sales of dog and cat food) and nature of use (as shown in brochures, catalogues and other documents submitted). Therefore, the Opposition Division considers the evidence sufficient to prove genuine use of the earlier European Union trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark but only for dog and cat food as mentioned above.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In addition, according to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

Dog and cat food can be considered to form an objective subcategory of foodstuffs for animals, namely foodstuffs for dogs and cats. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for foodstuffs for dogs and cats.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 and for which use has been proven are the following:

Class 31: Foodstuffs for dogs and cats.

The contested goods are the following:

Class 31: Pet foods and fodder for animals.

Contested goods in Class 31

The contested pet foods overlap with the opponent’s foodstuffs for dogs and cats. Therefore, they are identical.

The contested fodder for animals is similar to the opponent’s foodstuffs for dogs and cats. Fodder for animals are agricultural foodstuffs used specifically to feed domesticated livestock, such as cattle, goats, sheep, horses, chickens and pigs and includes not only feed such as hay, straw and silage but also compressed and pelleted feeds. Foodstuffs for dogs and cats include both wet food as well as dry food in the form of kibbles or pellets. Therefore, although the goods under comparison are intended for different animals, they serve the same purpose and can have a similar nature and method of use. In addition, although fodder is aimed at a professional public consisting of farmers and other livestock owners, the opponent’s goods are aimed at the public at large, including farmers and other livestock owners who may also own dogs and/or cats. Therefore, these goods can share the same relevant public. Even if these goods may generally be produced by different manufacturers, at least some fodder, such as horse food may also be manufactured by the same companies. Moreover, although fodder is generally sold in specialised outlets, it is not uncommon that, in particular compressed and pelleted horse feed is at least partially distributed via the same channels as foodstuffs for dogs and cats.

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 and at a professional public consisting of farmers and other livestock owners.

In view of the frequency of purchase of the relevant goods and their price, the degree of attention is considered to be average.

3. The signs

ARION	AARON
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark is the word mark ‘ARION’. In Greek mythology, Arion is a divinely-bred, extremely swift immortal horse that, according to the Latin poet Sextus Propertius, was endowed with speech and may therefore be associated with this meaning by part of the relevant public. However, most of the public in the relevant territory is unlikely to be aware of this reference to Greek mythology and will rather perceive the earlier mark as consisting of a fanciful word without any meaning. Either way, ‘ARION’ will not have any particular meaning in relation to the goods concerned and is, therefore, distinctive.

The contested sign is the word mark ‘AARON’. Aaron is an anglicised Hebrew masculine given name and will be perceived as such by part of the public in the relevant territory. However, for part of the public, in Member States where Aaron is not a common given name, the contested sign will be perceived as consisting of a fanciful word without any meaning. Either way, ‘AARON’ will not have any particular meaning in relation to the goods concerned and is, therefore, distinctive.

The Opposition Division finds it appropriate to first focus the comparison of the signs on the part of the public in the European Union that will perceive both signs as consisting of fanciful words without any meaning.

Visually, the signs, which both consist of five letters, coincide in the letters ‘*AR*ON’ and only differ in the additional ‘A’ letter at the beginning of the contested sign and the additional ‘I’ in the middle of the earlier mark.

Therefore, the signs are visually similar to at least an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier mark will be pronounced ‘A-RI-ON’ and the contested sign ‘AA-RON’. The double ‘AA’ in the contested sign will only produce a very slight difference, if at all, to the pronunciation of the single ‘A’ in the earlier mark and the pronunciation of the syllable ‘RON’ is highly similar to the pronunciation of the syllables ‘RI-ON’ in the earlier mark.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the part of the public under analysis in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 has no meaning for any of the goods in question from the perspective of the public under analysis 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).

Account should also be taken of the fact that average 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).

In the present case, the goods concerned are identical or similar and the degree of attention of the relevant public is average. The earlier mark has a normal degree of distinctiveness and the signs are visually similar to at least an average degree, aurally highly similar and neither of the signs has any concept for the part of public under analysis. Both signs consist of five letters and begin with the letter ‘A’, albeit duplicated in the contested sign, and the additional ‘I’ in the earlier mark does not have a significant impact on the overall impression produced by the signs as they follow the same structure, sharing the same beginning and ending ‘AR-ON’.  

Considering this and taking into account the principles of interdependence and imperfect recollection as outlined above, the Opposition Division considers that there is a likelihood of confusion on part of the public under analysis in the relevant territory within the meaning of Article 8(1)(b) EUTMR in relation to all the contested goods.

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, there is no need to analyse the remaining part of the public that may perceive the earlier mark and/or the contested sign as having the meanings explained above.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 1 120 278. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 1 120 278 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights 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

Katarzyna ZANIECKA

Sam GYLLING

Adriana VAN ROODEN

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.