OPPOSITION DIVISION
OPPOSITION No B 1 503 435
MIP Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235
Düsseldorf, Germany (opponent), represented by MIP Metro Group Intellectual
Property GmbH & Co. KG, Thomas Honnet, Metro-Str. 1, 40235 Düsseldorf,
Germany (employee representative)
a g a i n s t
Metrodogs Holdings Pty Ltd, 26-28 Donaldson Street, Corryong VIC 3707,
Australia (holder), represented by CSY St Albans, 45 Grosvenor Road, St. Albans,
Hertfordshire AL1 3AW, United Kingdom (professional representative).
On 10/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 1 503 435 is upheld for all the contested goods.
2. International registration No 966 161 is entirely refused protection in respect of
the European Union.
3. The holder bears the costs, fixed at EUR 350.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of international registration
designating the European Union No 966 161 . The opposition is based on,
inter alia, European Union trade mark registration No 779 116 . 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
Decision on Opposition No B 1 503 435 page: 2 of 7
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 779 116.
a) The goods and services
The goods and services on which the opposition is based include the following
goods:
Class 3: Bleaching preparations and other substances for laundry use; cleaning,
polishing, scouring and abrasive preparations; soaps; laundry starch; perfumery,
essential oils, cosmetics, deodorants for hygienic purposes, hair lotions, hair sprays;
dentifrices; scented sprays and room sprays (included in class 3); essential oils for
foodstuffs.
Class 5: Chemical and sanitary preparations, algicides, insecticides, fungicides,
herbicides, molluscicides, nematicides; dietetic food for babies; antiseptics and
disinfectants; plasters, materials for dressings; hygienic articles for women, namely
sanitary towels, panty liners, tampons, sanitary pants; deodorants for sanitary
purposes, deodorising room sprays; adhesives for dentures; preparations for
destroying vermin, in particular rodenticides; medicinal teas and drugs; vitamin
preparations; medicines (other than prescription medicines); dietetic substances
adapted for medical use, dietetic substances with a vitamin base, being foodstuffs for
nutrient-reduced and/or calorie-controlled consumption; medicinal herbs in dried or
preserved form; medicinal herb extracts, food supplements, namely preparations for
enriching food for human consumption with trace elements, vitamins, flavouring and
flavour enhancing substances and roughage.
The contested services are the following:
Class 44: Pet and animal washing, cleaning, grooming and drying services; washing,
cleaning, grooming and drying services for dogs; hygiene and beauty treatments for
pets and animals; hygiene and beauty treatments for dogs; dietary advice relating to
dogs, animals and pets; self-service pet and animal washing, cleaning and grooming
services; self-service washing, cleaning and grooming services for dogs; provision of
information and advice relating to animals, animal health, animal diet and animal
nutrition via electronic mail; information, consultancy and advisory services relating to
the aforesaid.
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 services in Class 44
Decision on Opposition No B 1 503 435 page: 3 of 7
The contested pet and animal washing, cleaning, grooming and drying services;
washing, cleaning, grooming and drying services for dogs; hygiene and beauty
treatments for pets and animals; hygiene and beauty treatments for dogs; self-
service pet and animal washing, cleaning and grooming services; self-service
washing, cleaning and grooming services for dogs; consultancy and advisory
services relating to the aforesaid are at least similar to a low degree the opponent’s
cosmetics in Class 3. Indeed, the opponent’s goods include all sorts of articles for the
grooming of animals. Therefore, the goods at issue can have the same purpose
(grooming). They can coincide in end user and distribution channels. Furthermore
they may be complementary.
The contested dietary advice relating to dogs, animals and pets; provision of
information and advice relating to animals, animal health, animal diet and animal
nutrition via electronic mail; information, consultancy and advisory services relating to
the aforesaid are similar to a low degree to the opponent’s dietetic substances
adapted for medical use in Class 5, as they can coincide in end user and distribution
channels. Furthermore they are complementary.
b) 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 and services found to similar to a low degree, at least,
are directed at the public at large. The degree of attention is deemed to be average.
c) 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
Decision on Opposition No B 1 503 435 page: 4 of 7
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 ‘METRO’ and the word ‘Dogs’ in the contested sign are
meaningful in certain territories, for example in those countries where English is
understood. This part of the public will associate ‘METRO’ with the underground
railway system in some cities (see Collins Dictionary online) and the word ‘Dogs’ in
the contested sign with the plural form defining a very common four-legged animal
that is often kept by people as a pet or to guard or hunt. In view of the foregoing, the
Opposition Division finds it appropriate to focus the comparison of the signs on the
English-speaking parts of the public.
‘METRO’ has no meaning in relation to the relevant goods and services from the
perspective of the public in question. Therefore, it is distinctive of these goods and
services.
As indicated above, the word ‘Dogs’ of the contested sign will be associated by the
public under analysis with the meaning given above and the same can be stated with
regard to the representation of a dog. Both elements will be perceived as an
indication that the services are designed for dogs. Therefore, they are non-distinctive.
Both signs contain graphic and/or figurative elements. In this respect, it should be
noted that 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). Moreover, while the signs at issue have no element that could
be considered clearly more dominant than other elements, consumers generally tend
to focus on the beginning of a sign when they encounter a trade mark. This is
because the public reads from left to right, which makes the part placed at the left of
the sign (the initial part) the one that first catches the attention of the reader.
Therefore, the element ‘METRO’ which is placed at the beginning of the contested
sign first catches the attention of the reader.
Visually, the signs coincide in that the word element ‘METRO’ of the earlier mark is
reproduced at the beginning of the contested sign. The signs differ in the graphic
elements of the earlier mark and in the remaining word and figurative elements of the
contested sign described above. Therefore, the signs are similar to an average
degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters
‛M-E-T-R-O’, present identically in both signs whereas it differs in the sound of the
non-distinctive word ‛D-O-G-S’ of the contested sign. Therefore, the signs are similar
to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As both signs will be associated with an
underground railway system, and the additional concepts in the contested sign are
conveyed by non-distinctive word and figurative elements, the signs are conceptually
highly similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
Decision on Opposition No B 1 503 435 page: 5 of 7
d) 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.
According to the opponent, the earlier mark has been extensively used and enjoys an
enhanced scope of protection. However, for reasons of procedural economy, the
evidence filed by the opponent to prove this claim does not have to be assessed in
the present case (see below in ‘Global assessment’).
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.
e) 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, C342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22). 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). In addition, the global assessment of the risk of confusion
entails certain interdependence between the factors taken into account and, in
particular, between the similarity of the trademarks and the similarity of the goods or
services covered. Accordingly, a low degree of similarity between those goods or
services may be offset by a high degree of similarity between the marks, and vice
versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).
In the present case, the contested services, found to be similar to a low degree, at
least, to the opponent’s goods, are directed at the public at large and the degree of
attention is deemed average. The signs are visually similar to an average degree but
they are also aurally and conceptually similar to a high degree in that the distinctive
word element of the earlier mark, ‘METRO’, is completely reproduced at the
beginning of the contested sign.
The degree of distinctiveness of the earlier sign is one of the factors to be taken into
account in the overall assessment (11/11/1997, C-251/95, Sabèl, EU:C:1997:528,
§ 23) and in the present case, for reasons of economy of procedure it rests on its
distinctiveness per se which has been considered as normal..
Account is 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).
Decision on Opposition No B 1 503 435 page: 6 of 7
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, it is highly conceivable that
the relevant consumer will perceive the contested mark as a sub-brand, a variation of
the earlier marks, configured in a different way according to the type of goods or
services that they designate (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). It
may well be that the contested sign be perceived as designating a specific line of
services offered by the opponent or by an undertaking that is economically linked to
the opponent.
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 European
Union trade mark No 779 116. It follows that the contested trade mark must be
rejected for all the contested services.
Since the opposition is successful on the basis of the inherent distinctiveness of the
earlier mark, there is no need to assess the enhanced degree of distinctiveness of
the opposing mark due to its extensive use as claimed by the opponent. The result
would be the same even if the earlier mark enjoyed an enhanced degree of
distinctiveness.
As the earlier European Union trade mark No 779 116 leads to the success of the
opposition and to the rejection of the contested trade mark for all the services 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 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the holder 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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. In
the present case, the opponent did not appoint a professional representative within
the meaning of Article 120 EUTMR and therefore did not incur representation costs.
Decision on Opposition No B 1 503 435 page: 7 of 7
The Opposition Division
Benoit VLEMINCQ Martina GALLE Begoña URIARTE
VALIENTE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.