OPPOSITION No B 2 725 847

Adam’s Consulting SPRL, Houtemsestraat, 42, 1980 Zemst, Belgium (opponent), represented by Pronovem Marks Société Anonyme, avenue Josse Goffin, 158, 1082 Brussels, Belgium (professional representative)

a g a i n s t

Qingdao John’s Farm Pet Food Company Limited, Room 806, No. 15 Qinling Road, Laoshan District, Qingdao, Shandong Province 266061, People’s Republic of China (applicant), represented by Inmaculada Moreno Delgado, Nubla 31, 1, Jaen, Spain (professional representative).

On 27/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 725 847 is upheld for all the contested goods, namely:

Class 31:         Fodder; meal for animals; pet food; edible chews for animals; fish meal for animal consumption; bran mash for animal consumption; beverages for pets; animal foodstuffs; dog biscuits; bird food; stall food for animals.

2.        European Union trade mark application No 15 268 816 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 268 816, namely against all the goods in Class 31. The opposition is based on, inter alia, international trade mark registration designating the European Union No 1 230 078. 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 international trade mark registration designating the European Union No 1 230 078.

1. The goods

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

Class 29:         Meats, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and dairy products; edible oils and fats.

Class 30:        Cereal-based preparations; breads; biscuits, cookies; edible ices; pastry and confectionery; cakes; cocoa and chocolate-based beverages; coffee, tea, cocoa; farinaceous foods; sauces (condiments); spices.

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

The contested goods are the following:

Class 31:        Fodder; meal for animals; pet food; edible chews for animals; fish meal for animal consumption; bran mash for animal consumption; beverages for pets; animal foodstuffs; dog biscuits; bird food; stall food for animals.

Contested goods in Class 31

Animal foodstuffs are identically contained in both lists of goods, although worded differently.

The contested fodder; meal for animals; pet food; edible chews for animals; fish meal for animal consumption; bran mash for animal consumption; beverages for pets; dog biscuits; bird food; stall food for animals are 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.

The degree of attention is considered to be 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).

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the signs contain elements that are meaningful in countries where English is understood; therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public and the part of the relevant public in countries where English is widely spoken, such as Sweden, Denmark, the Netherlands and Finland.

The earlier mark is a figurative mark depicted on a light yellow, oval-shaped background framed by two black lines. In the centre is an oval-shaped frame surrounding the picture of a man. The word elements ‘JOHN FARMER’ are depicted above the picture and the word elements ‘FINEST PRODUCT’ below it. The phrase ‘THE BEST FARMER OF THE WEST’ is at the bottom of the oval in slightly smaller text. The aforementioned word elements appear in black upper case letters in a standard typeface but of different sizes. The word elements ‘JOHN FARMER’ are bold and bigger than the other word elements. Two red labels framed with white borders are depicted on the right and left of the frame. The left-hand label shows the word ‘PREMIUM’ and the right-hand label the word ‘QUALITY’, both being depicted in standard, white, upper case letters. Black stars are depicted above and below each label.

The word elements ‘PREMIUM’, ‘QUALITY’ and ‘FINEST PRODUCT’ are laudatory, as they constitute a reference to high-quality products and are therefore descriptive and non-distinctive in relation to the goods. The stars are merely decorative. The phrase ‘THE BEST FARMER OF THE WEST’ is laudatory and non-distinctive in relation to the goods. Part of the relevant public will perceive the word elements ‘JOHN FARMER’ as a male first name and a surname, whereas another part of the relevant public will perceive ‘JOHN’ as a name and ‘FARMER’ as a person whose occupation is farming. The figurative element depicting a man appears in the centre of the mark and is clearly visible due to its size. Furthermore, it reinforces the meaning of ‘JOHN FARMER’ and since it has no relation to the goods, it is distinctive.

Taking the above into account, the verbal elements ‘JOHN FARMER’ and the picture are considered the most distinctive elements in the earlier mark.

The verbal element ‘JOHN FARMER’ and the picture are the co-dominant elements, as they stand out visually due to their size and position.

The contested sign is a figurative mark consisting of the verbal elements ‘JOHN’S FARMS’, depicted in standard, grey letters on a black label. Below it are the verbal elements ‘Natural Treats Made With Love’ in smaller, standard, black letters.

The verbal elements ‘Natural Treats Made With Love’ are descriptive and non-distinctive in relation to the goods, since they describe the characteristics of the goods and how they are manufactured, namely that they are made using natural ingredients and ‘with love’ during the manufacturing process.

The figurative element of the black label is merely decorative and has a less distinctive character. The verbal element ‘John’ will be perceived as a male name and the elements ‘JOHN’S FARMS’ will be perceived as the farms of John. The word elements ‘JOHN’S FARMS’ are distinctive in relation to the goods. Furthermore, the word elements ‘JOHN’S FARMS’ are considered the most distinctive elements in the contested sign.

The elements ‘JOHN’S FARMS’ are the dominant elements of the contested sign, and the phrase underneath, due to its size and position, plays a secondary role.

Visually, the signs coincide in the word ‘JOHN’ and in the sequence of four letters ‘FARM’. However, the signs differ in the apostrophe and letter ‘S’ in the word ‘JOHN’S’ in the contested sign and in the letters ‘ER’ and ‘S’ in the words ‘FARMER’ and ‘FARMS’ in the earlier and contested signs respectively. The signs also differ in the figurative elements and colours (labels, the picture of a man and the coloured framed background) of both signs, in the descriptive and non-distinctive word elements ‘PREMIUM QUALITY’ and ‘FINEST PRODUCT’, in the non-distinctive ‘THE BEST FARMER OF THE WEST’ in the earlier sign and in ‘Natural Treats Made With Love’ included in the contested sign.

The difference between the signs regarding the word element ‘JOHN’ consists in the apostrophe and letter ‘S’, which appear at the end and are visually less striking than the preceding word ‘JOHN’ . This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the word the one that first catches the attention of the reader.

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

Aurally, the pronunciation of the signs coincides in the syllables ‘JOHN*’ and ‘FARM*’, present identically in both signs. The pronunciation differs in the sound of the letter ‘S’ in the contested sign at the end of the words ‘JOHN’ and ‘FARM’ and in the sound of the letters ‘*ER’ in the earlier trade mark. The additional sound of the letter ‘S’ at the end of the verbal element ‘JOHN’ in the contested sign will not result in a pronunciation noticeably different from that of the earlier mark. Overall, the word elements ‘JOHN FARMER’ and ‘JOHN’S FARMS’ have similar sequences of sounds and stresses.

The remaining verbal elements of the earlier trade mark, namely ‘FINEST PRODUCT’, ‘THE BEST FARMER OF THE WEST’, ‘PREMIUM’ and ‘QUALITY’, are non-distinctive in relation to the goods, and the word elements of the contested sign ‘Natural Treats Made With Love’ are descriptive and non-distinctive, and they will not create any significant differences, since it is most likely that the relevant consumers will refer to the signs verbally as ‘JOHN FARMER’ and ‘JOHN’S FARMS’ rather than indicating their non-distinctive and descriptive elements.

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

Conceptually, reference is made to the previous assertions concerning the semantic content of the distinctive elements of the signs.

Part of the relevant public, namely the part in those countries where English is widely spoken, such as Sweden, Denmark, the Netherlands and Finland, will perceive ‘FARMER’ as a person whose occupation is farming or who owns a farm; consequently, this part of the relevant public will perceive ‘JOHN FARMER’ as a whole as ‘John whose occupation is farming or who owns a farm’.

Another part of the relevant public will perceive the element ‘FARMER’ as a surname that is derived from the occupation of farming and the element ‘JOHN’ as a male name.

As regards the contested sign ‘JOHN’S FARMS’, both parts of the relevant public will perceive it as meaning the farms of John.

Taking into account that the remaining word elements are non-distinctive or descriptive in relation to the goods and that the element ‘JOHN’ will be perceived as a male name in both signs, the signs are conceptually similar to an average degree on account of the concepts conveyed by the elements ‘JOHN’ and ‘FARMER’/’FARMS’ included in both signs.

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, despite the presence of some descriptive and/or non-distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

In the present case, the goods at issue are identical and target the general public. The degree of attention is average. The degree of inherent distinctiveness of the earlier mark is average. The signs are considered aurally similar to a high degree, visually similar to a low degree and conceptually similar to an average degree.

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, although overall the signs visually appear to contain striking differences, in descriptive and non-distinctive elements, the relevant public will recognise the signs by their most distinctive verbal elements, namely ‘JOHN FARMER’ and ‘JOHN’S FARMS’, and it is not possible to exclude the risk that the public might associate the signs and believe that the goods 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, taking into account that the goods at issue are identical.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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, the opposition is well founded on the basis of the opponent’s international trade mark registration designating the European Union No 1 230 078. It follows that the contested trade mark must be rejected for all the contested goods.

As international trade mark registration designating the European Union No 1 230 078 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 right 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

Carmen SÁNCHEZ PALOMARES

Biruté SATAITE-GONZALEZ

Michaela SIMANDLOVA

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.