OPPOSITION No B 2 798 570

WOKO Tierbedarf GmbH, Further Weg 15, 42799 Leichlingen, Germany (opponent), represented by Uexküll & Stolberg Partnerschaft von Patent- und Rechtsanwälten mbB, Beselerstr. 4, 22607 Hamburg, Germany (professional representative)

a g a i n s t

La Normandise, Rue de l’Alliere BP 60083, 14500 Vire, France (applicant), represented by Bastien Masson, 1 Rue Claude Bloch CS 15093, 14078 Caen CEDEX 05, France (professional representative).

On 12/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 798 570 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 116 511, . The opposition is based on, inter alia, German trade mark registration No 30 447 485, ‘ECOSTAR’. 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 German trade mark registration No 30 447 485.

1. The goods

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

Class 31: Animal food, in particular food for birds and winter food for birds, additionally litter for pets, bird grit, seeds and foodstuffs for animals as well as grain, as far as included in class 31.

The contested goods are the following:

Class 31: Foodstuffs for animals; Meal for animals; Supplementary feed for animals; The aforesaid goods not being or not containing barley (Hordeum vulgare L.), flax (Linum usitatissimum L.) or potatoes (Solanum tuberosum L); Beverages for pets.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

The contested foodstuffs for animals; meal for animals; supplementary feed for animals; the aforesaid goods not being or not containing barley (Hordeum vulgare L.), flax (Linum usitatissimum L.) or potatoes (Solanum tuberosum L); beverages for pets are all included in the broad category of the opponent’s foodstuffs for animals. 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 and at professional customers with specific knowledge or expertise in the field of breeding or taking care of animals.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, because consumers tend to pay more attention to the specifics of the goods and the trade marks under which they are sold when the goods are rarer and intended for specific purposes. Supplementary feed for animals and certain other specialised foodstuffs may require consumers to strictly evaluate the qualities of these feeds in order to find the most suitable product for their needs. Therefore, in such a case the consumer’s degree of attention will be high, whereas it will be average when, for instance, quickly picking up regular food for pets in a supermarket.

3. The signs

ECOSTAR
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 verbal element ‘eco’ of the contested sign is an abbreviation that commonly stands for ‘ecological’ in several English word combinations. The abbreviation ‘eco’ is also used in advertising jargon and is understood not only in English-speaking areas, but also by German consumers (09/04/2014, R 119/2014-5, eco cosmetics, § 23, 24 and the case-law cited therein).

Consequently, ‘eco’ is a customary English prefix that is also understood by the general consumer in Germany as an abbreviation for ‘ecological’. The word ‘ecological’ refers to a practice that causes minimal damage to the environment. Bearing in mind that the relevant goods are foodstuffs for animals, the element ‘eco’ is non-distinctive for these goods, as it will be perceived as an indication that the foodstuffs are produced in a sustainable and environmentally friendly manner. The graphical element of the contested trade mark consists of a rectangle with rounded corners, which is a basic geometric shape and, therefore, non-distinctive.

The element ‘OSCAR’ of the contested sign will be understood as a male name by the relevant public. As it has no particular meaning in relation to the goods at issue, it is the most distinctive element in the contested sign.

As regards the earlier sign, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). As explained above, the relevant public will understand the meaning of the word ‘ECO’. In addition, the word ‘STAR’ conveys several meanings for the German-speaking public. First of all, the word ‘STAR’ refers to a type of bird. This species of bird is not bred or normally fed by people, and therefore the consumer is not likely to make a direct association between the goods in question and this bird. Second of all, the General Court has already held that the word ‘STAR’ is part of the basic English vocabulary generally known by a large part of the public in the European Union, including the German public. Accordingly, the General Court has held that the English word ‘STAR’ is generally understood as a laudatory term which emphasises quality or as a reference to a star or a famous person (07/07/2015, T-521/13, A ASTER / A-STARS, EU:T:2015:474, § 45, 48 and the case-law cited therein). For these reasons, the relevant public will in all likelihood perceive the earlier mark as an invented expression comprising the words ‘ECO’ and ‘STAR’. While the word ‘STAR’ has some laudatory quality to it, it does not precisely describe the goods, unlike the word ‘ECO’, but it is only allusive, giving the goods a positive connotation. Therefore, this element is not considered entirely lacking in distinctive character.

Neither of the signs has elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the non-distinctive component ‘eco’. The allusive component ‘STAR’ and the distinctive component ‘OSCAR’ coincide in the letters ‘*S*AR’ but differ in the number of letters, four versus five, and in the first and third letters of the contested sign. Furthermore, the signs differ in that the earlier mark is composed of two words written together, whereas in the contested sign the element ‘eco’ is written on a black graphical element above the element ‘OSCAR’.

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

Aurally, the signs coincide in the pronunciation of the non-distinctive element ‘eco’. The pronunciation of the elements ‘STAR’ and ‘OSCAR’ coincides in the sound of the letters ‛*S*AR’, present identically in both signs. However, the pronunciation differs in the sound of the letters ‛O*C**’ of the contested mark, which have no counterparts in the earlier sign, which on the other hand has the letter ‘T’ following the first letter, ‘S’, of its second element.

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

Conceptually, the signs are dissimilar because they overlap in a non-distinctive element and the differentiating elements convey different distinctive concepts. Therefore, the overlap has no impact.

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

The signs are visually and aurally similar to a low degree and conceptually dissimilar. The goods are identical.

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).

The similarities between the signs concern elements that are not distinctive. The similarities between the allusive element ‘STAR’ and the distinctive element ‘OSCAR’ are not sufficient to overcome their differences, namely the additional letter ‘O’ in the contested sign and the sound of the letter ‘C’ of the contested sign, pronounced as ‘K’ here, which is very different from the sound of the letter ‘T’ in the corresponding position between the letters ‘S’ and ‘A’ in the earlier mark. Furthermore, visually the contested sign is depicted over two lines, whereas the earlier mark is written as one word. Consumers will also associate the signs with different meanings. Therefore, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public, even though the goods are identical.

Therefore, the opposition must be rejected on the basis of the opponent’s German trade mark registration No 30 447 485. 

The opponent has also based its opposition on the following earlier trade mark:

Austrian trade mark registration No 220 233 for the word mark ‘ECOSTAR’.

Since this mark is identical to the one compared and covers the same scope of goods, and as the evaluation would equally be based on the German-speaking public, as correctly pointed out by the opponent, 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

Janja FELC

Birgit Holst FILTENBORG

Ana MUÑIZ RODRIGUEZ

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.