OPPOSITION No B 2 681 974

Hipercor, S.A., Calle Hermosilla, 112, 28009 Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 – 1º izda, 28010 Madrid, Spain (professional representative)

a g a i n s t

Julius-K9 Zrt., Szigetszentmiklós, Ipar utca 10-12., 2310, Hungary (applicant), represented by Jambrik Ügyvedi Iroda, Budapest, Boráros tér 7. (Duna Ház) 3. Iph. VI. em. 13., 1095, Hungary (professional representative).

On 10/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 681 974 is partially upheld, namely for the following contested goods:

Class 16:        Boxes of cardboard or paper; catalogues; stationery; notebooks; calendars; prospectuses; advertising pamphlets; advertising publications; advertising posters; notepaper; packaging materials; wrapping materials made of paper; wrapping materials made of card; logos, labels, removable name tags for use on dog harnesses and clothing; adhesive labels.

Class 18:        Harnesses for animals; leashes for animals; dog collars; muzzles; fittings for dog harnesses; clothing for animals; pet food bags; bags for sports.; bags; shoe bags; casual bags; work bags; athletic bags; Boston bags; waterproof bags; athletics bags; sport bags; belt bags; gym bags; belt bags and hip bags; electronic pet collars; collars for pets bearing medical information; dog apparel.

Class 25:        Gloves as clothing; mittens; socks; scarves; sports jerseys; tee-shirts; waistcoats; coats; headbands for clothing; uniforms; pullovers; shirts; outerclothing; waterproof outerclothing; outerclothing for men; womens’ outerclothing; clothing; weatherproof clothing; clothing for sports; headwear; caps [headwear]; hooded sweatshirts; hooded pullovers; sleeveless jackets; sleeveless jerseys; sleeveless shirts; sports shirts with short sleeves; pants; trousers; trousers shorts; waterproof trousers; belts [clothing]; money belts [clothing]; work clothes; overalls; underwear; trunks [underwear]; ladies’ underwear; briefs [underwear]; bathing costumes; bathing costumes for women.; shoes; sports shoes.

2.        European Union trade mark application No 14 590 831 is rejected for all the above goods. It may proceed for the remaining goods, namely:

Class 28:        Play balloons; balls for games; games; pet toys; elbow guards [sports articles]; knee guards [sports articles]; forearm guards [sports articles]; gloves for games; men’s athletic supporters [sports articles]; protective paddings [parts of sports suits]; stuffed toys; devices for training and exercise with dogs.; remote control toys.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 590 831, namely against all the goods in Classes 16, 18, 25 and 28. The opposition is based on:

• European Union trade mark registration No 9 182 718 ;

• Spanish trade mark registration No 2 935 503 .

The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remark

In its observations of 03/08/2016, the opponent also referred to a third mark, EUTM application No 14 766 604 ‘UNIT’ (figurative mark). The Opposition Division cannot take this mark into account, since it was not mentioned in the original notice of opposition and, furthermore, its application date (05/11/2015) is later than that of the mark opposed (24/09/2015); it therefore cannot be used to oppose the contested sign.

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 9 182 718.

1. The goods

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

Class 16:        Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes).

Class 18:        Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery with the exclusion of sheets of leather and imitation of leather for footwear’s soles.

Class 25:        Clothing, footwear, headgear with the exclusion of rubber soles and heels for footwear.

The contested goods are the following:

Class 16:        Boxes of cardboard or paper; catalogues; stationery; notebooks; calendars; prospectuses; advertising pamphlets; advertising publications; advertising posters; notepaper; packaging materials; wrapping materials made of paper; wrapping materials made of card; logos, labels, removable name tags for use on dog harnesses and clothing; adhesive labels.

Class 18:        Harnesses for animals; leashes for animals; dog collars; muzzles; fittings for dog harnesses; clothing for animals; pet food bags; bags for sports.; bags; shoe bags; casual bags; work bags; athletic bags; Boston bags; waterproof bags; athletics bags; sport bags; belt bags; gym bags; belt bags and hip bags; electronic pet collars; collars for pets bearing medical information; dog apparel.

Class 25:        Gloves as clothing; mittens; socks; scarves; sports jerseys; tee-shirts; waistcoats; coats; headbands for clothing; uniforms; pullovers; shirts; outerclothing; waterproof outerclothing; outerclothing for men; womens’ outerclothing; clothing; weatherproof clothing; clothing for sports; headwear; caps [headwear]; hooded sweatshirts; hooded pullovers; sleeveless jackets; sleeveless jerseys; sleeveless shirts; sports shirts with short sleeves; pants; trousers; trousers shorts; waterproof trousers; belts [clothing]; money belts [clothing]; work clothes; overalls; underwear; trunks [underwear]; ladies’ underwear; briefs [underwear]; bathing costumes; bathing costumes for women.; shoes; sports shoes.

Class 28:        Play balloons; balls for games; games; pet toys; elbow guards [sports articles]; knee guards [sports articles]; forearm guards [sports articles]; gloves for games; men’s athletic supporters [sports articles]; protective paddings [parts of sports suits]; stuffed toys; devices for training and exercise with dogs; remote control toys.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 16

The contested boxes of cardboard; wrapping materials made of card are included in the broad category of the opponent’s cardboard and goods made from these materials, not included in other classes. Therefore, they are identical.

The contested boxes of paper; notepaper; wrapping materials made of paper are included in the broad category of the opponent’s paper and goods made from these materials, not included in other classes. Therefore, they are identical.

The contested stationery overlaps with the opponent’s paper and goods made from these materials, not included in other classes. Therefore, they are identical.

The contested catalogues; notebooks; calendars; prospectuses; advertising pamphlets; advertising publications; advertising posters; logos, labels, removable name tags for use on dog harnesses and clothing; adhesive labels are included in the broad category of the opponent’s printed matter. Therefore, they are identical.

The contested packaging materials include as a broader category the opponent’s plastic materials for packaging (not included in other classes). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 18

The contested harnesses for animals are included in the broad category of the opponent’s harness and saddlery. Therefore, they are identical.

The contested leashes for animals; dog collars; muzzles; fittings for dog harnesses; clothing for animals; electronic pet collars; collars for pets bearing medical information; dog apparel are included in the broad category of, or overlap with, the opponent’s leather and imitations of leather, and goods made of these materials and not included in other classes. Therefore, they are identical.

The contested pet food bags; bags for sports; bags; shoe bags; casual bags; work bags; athletic bags; Boston bags; waterproof bags; athletics bags; sport bags; belt bags; gym bags; belt bags and hip bags are included in the broad category of, or overlap with, the opponent’s travelling bags. Therefore, they are identical.

Contested goods in Class 25

The contested gloves as clothing; mittens; socks; scarves; sports jerseys; tee-shirts; waistcoats; coats; headbands for clothing; uniforms; pullovers; shirts; outerclothing; waterproof outerclothing; outerclothing for men; womens’ outerclothing; clothing; weatherproof clothing; clothing for sports; hooded sweatshirts; hooded pullovers; sleeveless jackets; sleeveless jerseys; sleeveless shirts; sports shirts with short sleeves; pants; trousers; trousers shorts; waterproof trousers; belts [clothing]; money belts [clothing]; work clothes; overalls; underwear; trunks [underwear]; ladies’ underwear; briefs [underwear]; bathing costumes; bathing costumes for women are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested headwear; caps [headwear] are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested shoes; sports shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

Contested goods in Class 28

The contested play balloons; balls for games; games; pet toys; elbow guards [sports articles]; knee guards [sports articles]; forearm guards [sports articles]; gloves for games; men’s athletic supporters [sports articles]; protective paddings [parts of sports suits]; stuffed toys; devices for training and exercise with dogs; remote control toys all have a different nature, purpose and method of use from the opponent’s goods in Classes 16, 18 and 25, which include goods made of paper and cardboard, bags and harnesses, clothing and footwear items. These goods are not in competition or complementary; they have different manufacturers and distribution channels. Therefore, these goods are dissimilar.

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 public’s degree of attention varies from average to high; it will be high in relation to certain goods in Class 18, such as electronic pet collars, owing to the specialised nature of the products.

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

The common element ‘UNIT’ is not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the Czech- and Slovak-speaking parts of the public that does not understand English.

The earlier mark is a figurative mark consisting of the verbal element ‘unit’ written in standard white lower case letters on a blue rectangle with rounded corners.

The contested sign is a figurative sign consisting of the outline of a man pointing and a dog leaping. Behind the man and the dog, on a closer examination of the sign, part of a letter ‘K’ and a number ‘9’ can be seen, with a star in the middle of the number ‘9’. In the upper right-hand corner of the mark, the word ‘UNIT’ can be clearly seen.

All of the verbal elements of the signs are meaningless for the part of the relevant public on which the Opposition Division has chosen to focus its examination and are, therefore, distinctive to an average degree for the relevant goods.

The figurative element of the outline of a man pointing and a dog leaping in the contested sign could have a meaning for some of the goods, such as harnesses for animals; leashes for animals; dog collars; muzzles; fittings for dog harnesses; electronic pet collars; collars for pets bearing medical information; dog apparel, and it is therefore weak for these goods. For the rest of the goods, this element is distinctive to an average degree.

The blue rectangle of the earlier mark performs only a decorative function within the earlier sign and is, therefore, less distinctive than the other elements of that sign.

In this regard, it should be recalled that when signs consist of both verbal and figurative components (as do both of the signs under comparison), 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). Therefore, the figurative elements of the signs, along with their stylisation and colours, have only a limited impact on the consumer’s perception.

The earlier mark has no elements that could be considered clearly more dominant than other elements.

Even though the verbal element ‘UNIT’ in the contested sign is smaller than the element ‘K9’ and the outline of the man and the dog and is placed in a secondary position in the top-left corner of the sign, it is not less dominant than the other parts of the mark because the word ‘UNIT’ is clearly visible and the rest of the elements in the mark are jumbled together. The mark must be studied carefully to see the element ‘K9’ with the star, since only part of the letter ‘K’ can be seen, and, although the outline of the man and the dog is visible, it is not more dominant than the word ‘UNIT’. Consequently, the contested sign has no elements that could be considered clearly more dominant than other elements.

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).

Visually, the signs coincide in the word ‘UNIT’. However, they differ in the element ‘K9’ in the contested sign. The signs also differ in their figurative elements, stylisation and colours. Although the figurative elements in the contested sign are weak for some of the goods, as explained above, and will therefore have a limited impact, visually, for those goods, they are still a vital part of the mark and will influence the relevant public’s visual perception.

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

Aurally, the figurative elements will not be taken into account. The pronunciation of the signs coincides in the sound of the letters ‛UNIT’, present identically in both signs, which make up the only element of the earlier mark that will be pronounced. The pronunciation differs in the sound of the element ‛K9’ in the contested sign, which has no counterpart in the earlier sign.

The only element of the earlier mark that will be pronounced is included in its entirety in the contested sign. Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the concept of a man and a dog in the contested sign, as explained above, the earlier mark has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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, 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.

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5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Account must 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). Even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

The present assessment of likelihood of confusion considers the perception of the Czech- and Slovak-speaking parts of the public in the relevant territory. The relevant public is the public at large, the degree of attention varies from average to high and the earlier mark has a normal degree of inherent distinctiveness.

As concluded above, the contested goods are partly identical and partly dissimilar to the opponent’s goods.

The signs in conflict are aurally similar to a high degree, visually similar to a low degree and conceptually not similar, as explained in detail above in section c) of this decision. The differences between the signs are not sufficient to counteract their similarities, since the verbal element of the earlier mark is included in its entirety in the contested sign, and it is also the most distinctive part of the earlier mark, as outlined above. It is also taken into account that one of the figurative elements (the outline of the man pointing and the dog leaping) in the contested sign has a limited degree of distinctiveness for some of the contested goods, as outlined above.

Based on an overall assessment, and taking into account the principle of imperfect recollection, the Opposition Division concludes that there is a likelihood of confusion on the part of the Czech- and Slovak-speaking parts of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 9 182 718. 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.

It follows from the above that the contested sign must be rejected for the goods found to be similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

The applicant refers to previous national decisions to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T-292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

In the present case, the previous trade mark registrations referred to by the applicant are not relevant to the present proceedings, since the signs in those cases differ in their graphic depictions from the contested sign. In some of those cases, the element ‘K-9’ is dominant and in others the word ‘UNIT’ is not present.

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

• Spanish trade mark registration No 2 935 503 .

Since this mark is identical to the one which has been compared and covers the same or a narrower 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. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martin EBERL

Magnus ABRAMSSON

Sigrid DICKMANNS

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.