OPPOSITION DIVISION
OPPOSITION No B 2 759 341
Affinity Petcare, S.A. Plaça Europa 54-56, 08902 L´Hospitalet de Llobregat
(Barcelona), Spain (opponent), represented by Isern Patentes y Marcas, S.L.
Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional
representative)
a g a i n s t
Kalinka Peneva, 21 Hrizantema str, fl. 6, 5300 Gabrovo, Bulgaria (applicant),
represented by Snezhana Traychova Krasteva, 129 Dondukov blvd.,1504 Sofia,
Bulgaria (professional representative).
On 13/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 759 341 is partially upheld, namely for the following
contested goods and services:
Class 5: Medicinal herbs, flour for pharmaceutical purposes; vitamin
preparations; dietetic substances adapted for medical use; dietetic
foods adapted for medical use; gelatine for medical purposes;
fennel for medical purposes; medicinal roots; flaxseed meal for
pharmaceutical purposes; flaxseed for pharmaceutical purposes;
medicinal herbs in dried or preserved form; malt for pharmaceutical
purposes; pectin for pharmaceutical purposes; mustard for
pharmaceutical purposes; tinctures for medical purposes;
medicated food supplements; dietetic food preparations adapted for
medical use; dietetic preparations adapted for medical use; extracts
of medicinal plants.
Class 31: Garden herbs, fresh; organic fresh herbs.
Class 35: Wholesale services in relation to foodstuffs; wholesale services in
relation to horticulture products.
2. European Union trade mark application No 14 581 276 is rejected for all the
above goods and services. It may proceed for the remaining goods and
services.
3. Each party bears its own costs.
Decision on Opposition No B 2 759 341 page: 2 of 10
REASONS
The opponent filed an opposition against some of the goods and services of
European Union trade mark application No 14 581 276 for the figurative mark
.
The opposition is based on, inter alia, European Union trade mark registration
No 9 578 791 for the figurative mark . In relation to this
earlier right the opponent invoked Article 8(1)(b) EUTMR.
For the sake of completeness and after a thorough analysis of the notice of
opposition the Opposition Division notes that in the present case the opponent de
facto filed the opposition against all the goods and services of the above-mentioned
European Union trade mark application and, therefore, the analysis of the likelihood
of confusion will refer to all these goods and services listed in the notice of
opposition.
On 26/10/2016 the applicant limited its application and withdrew the following goods
from Class 31: Meal for animals; Seaweed for human or animal consumption.
Preliminary remarks
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.
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 9 578 791.
Decision on Opposition No B 2 759 341 page: 3 of 10
a) The goods and services
The goods on which the opposition is based are the following:
Class 31: Food for pets, namely dogs and cats.
Following the limitation done by the applicant in its communication with the Office on
26/10/2016 the contested goods and services are the following:
Class 5: Asthmatic tea; medicinal herbs; herbal teas for medicinal purposes;
flour for pharmaceutical purposes; vitamin preparations; glucose dietary
supplements; dietetic substances adapted for medical use; dietetic foods adapted for
medical use; enzyme dietary supplements; gelatine for medical purposes; drug
delivery agents in the form of edible wafers for wrapping powdered pharmaceuticals;
cachets for pharmaceutical purposes; fennel for medical purposes; medicinal roots;
flaxseed oil dietary supplements; flaxseed meal for pharmaceutical purposes;
flaxseed for pharmaceutical purposes; lecithin dietary supplements; medicinal tea;
medicinal herbs in dried or preserved form; malt for pharmaceutical purposes;
reducing tea for medical purposes; pectin for pharmaceutical purposes; protein
dietary supplements; mustard for pharmaceutical purposes; tinctures for medical
purposes; nutritional supplements; medicated food supplements; dietary and
nutritional supplements; anti-oxidant food supplements; mineral food supplements;
dietetic food preparations adapted for medical use; dietetic preparations adapted for
medical use; extracts of medicinal plants; artificial sweeteners adapted for diabetics.
Class 31: Sunflower seeds; almonds [fruits]; raw nut kernels; peanuts, fresh; raw
cereals [unprocessed]; algae for human consumption; garden herbs, fresh; organic
fresh herbs; rye seed; nuts (fruits); unprocessed nuts; roots for food.
Class 35: Wholesale services in relation to dietary supplements; wholesale
services in relation to dietetic preparations; wholesale services in relation to
foodstuffs; wholesale services in relation to teas; wholesale services in relation to
horticulture products; advertising and marketing.
An interpretation of the wording of the list of the opponent’s goods is required to
determine the scope of protection of these goods.
However, the term namely’, used in the opponent’s list of goods to show the
relationship of individual goods and services to a broader category, is exclusive and
restricts the scope of protection only to the goods specifically listed.
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 5
The contested medicinal herbs; flour for pharmaceutical purposes; vitamin
preparations; dietetic substances adapted for medical use; dietetic foods adapted for
medical use; gelatine for medical purposes; fennel for medical purposes; medicinal
roots; flaxseed meal for pharmaceutical purposes; flaxseed for pharmaceutical
purposes; medicinal herbs in dried or preserved form; malt for pharmaceutical
purposes; pectin for pharmaceutical purposes; mustard for pharmaceutical purposes;
Decision on Opposition No B 2 759 341 page: 4 of 10
tinctures for medical purposes; medicated food supplements; dietetic food
preparations adapted for medical use; dietetic preparations adapted for medical use;
extracts of medicinal plants refer to specific articles prepared for special medical
requirements, with the purpose of treating or preventing disease in humans or
animals. These goods have some relevant points in common with the opponent’s
food for pets, namely dogs and cats. All these goods serve a similar purpose which is
to cover needs of the organism (human and animal) in order to maintain its healthy
condition. Furthermore, they may target the same relevant public, individual animals’
owners on the one hand and, on the side of the professional public, professional
breeders. Additionally, these goods may be offered through the same specialised
distribution channels such as whole sale distributors or pet shops. Therefore, the
contested goods are similar to a low degree to the opponent’s goods.
The contested asthmatic tea; herbal teas for medicinal purposes; medicinal tea;
reducing tea for medical purposes have all sorts of healing powers and are destined
for human consumption. The contested drug delivery agents in the form of edible
wafers for wrapping powdered pharmaceuticals; cachets for pharmaceutical
purposes refers to a range of dosage forms—techniques used to enclose medicines,
allowing them to, for example, be taken orally or be used as suppositories. The contested
glucose dietary supplements; enzyme dietary supplements; flaxseed oil dietary
supplements; lecithin dietary supplements; protein dietary supplements; nutritional
supplements; dietary and nutritional supplements; anti-oxidant food supplements;
mineral food supplements; artificial sweeteners adapted for diabetics refer
exclusively to dietary supplements and diabetic preparations. The opponent’s goods
refer to food destined for dogs and cats. The nature of the goods under dispute is
different. Furthermore, they do not share the same distribution channels and
consumers will not expect the contested goods to originate from the same
manufacturer as those of the opponent’s goods. Additionally, these goods are not
complementary to each other or in competition with each other. Consequently, they
are dissimilar.
Contested goods in Class 31
Some of the contested garden herbs, fresh; organic fresh herbs are considered very
good for pets’ health and useful for treating certain ailments they may have.
Consequently, as the Office cannot dissect the categories of the applicant’s goods,
they overlap with the opponent’s food for pets, namely dogs and cats. They are,
therefore, identical.
The remaining contested goods, namely, sunflower seeds; almonds [fruits]; raw nut
kernels; peanuts, fresh; raw cereals [unprocessed]; algae for human consumption;
rye seed; nuts (fruits); unprocessed nuts; roots for food are either unprocessed
products, or products specified as being destined for human consumption, like algae
for human consumption, without any concrete information that these goods can be
equally consumed by dogs and cats. The fact that dogs are generally happy to eat
almost anything and may, therefore, eat some of the contested goods as well, the
goods under dispute are not for this reason related to the market of food for dogs and
cats from a commercial perspective. Moreover, even if some of the contested goods
could be used as ingredients for dog food or cat food, this is not sufficient for a
finding of similarity between them. Therefore, the nature of the contested goods is in
general different (unprocessed products or products destined for human
consumption) from that of the opponent’s particular goods (finished food products for
cats and dogs). Furthermore, they do not share, in general, the same distribution
channels and consumers will not expect the contested goods to originate from the
Decision on Opposition No B 2 759 341 page: 5 of 10
same companies as those of the opponent’s goods. Furthermore, these goods are
not complementary to each other or in competition with each other. Consequently,
they are dissimilar.
Contested services in Class 35
The contested wholesale services in relation to foodstuffs refer in general to the
wholesale of substances that can be used as food. Consequently, these services are
similar to a low degree to the opponent’s goods.
Likewise, the contested wholesale services in relation to horticulture products include
also herbs that, as mentioned above, may be easily consumed by dogs and cats and,
therefore, these services are lowly similar to the opponent’s food for pets, namely
dogs and cats.
Although the nature, purpose and method of use of the above-mentioned goods and
services are not the same, it should be noted that they display similarities, having
regard to the fact that they are complementary and that those services are generally
offered in the same places as those where the goods are offered for sale.
Furthermore, they may be directed at the same public.
The remaining contested wholesale services in relation to dietary supplements;
wholesale services in relation to dietetic preparations; wholesale services in relation
to teas; advertising and marketing comprise wholesales services related to the goods
which are not identical to those for which the earlier mark is protected or to
advertising and marketing services which aim at supporting or helping other
businesses to do or improve business. These services have no points in common
with the opponent’s goods and therefore, they must be considered dissimilar to them.
Apart from being different in nature, since services are intangible, whereas goods are
tangible, they serve different needs. Furthermore, their purpose differs as to their
producers, consumers and distribution channels.
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 be identical or similar to a low
degree are directed at the public at large and at professional public (medical
professionals in relation to the goods in Class 5 and business customers in relation to
the services in Class 35) with specific professional knowledge or expertise.
The level of attention is considered to vary from average to higher than average,
depending on the price and frequency of purchase of these goods or involvement in
the abovementioned services.
Decision on Opposition No B 2 759 341 page: 6 of 10
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 earlier mark is a figurative mark composed of the term ‘Maestro’, written in
slightly stylised title case letters in black. There is a stylised accent placed above the
letter ‘o’ in the word ‘Maestro’ and a figurative element in a form of an orange tag with
a hardly legible (if at all) word ‘affinity’.
The contested sign is a figurative mark that consists of the word elements ‘Mr.’ and
‘Maestro’, written in rather standard golden uppercase letters against a red
background with golden contours bringing to mind a signboard. These verbal
elements of the contested sign are accompanied by a figurative device – a chef’s hat,
placed above them.
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.
Since the signs in question are composed of the terms which are meaningful in
certain territories, for example in those countries where English is understood, in the
present case, the Opposition Division finds it appropriate to focus the comparison of
the signs on the English-speaking part of the public.
The common verbal element ‘MAESTRO’, borrowed from Italian, exists also in the
English language and will be understood by the relevant public in the relevant
territory as ‘a skilled and well-known musician or conductor’. This term is neither
descriptive nor lacking distinctiveness for any of the relevant goods and services in
question and, therefore, it enjoys a normal degree of distinctiveness.
The term ‘affinity’ within the earlier mark will be considered illegible due to its size
and script and, therefore, negligible for a substantial part of the relevant public
compared with the outstanding word ‘Maestro’ and, therefore, the relevant public will
not focus its attention on this negligible element when approaching the earlier mark.
Decision on Opposition No B 2 759 341 page: 7 of 10
As a result, in the present case, it is reasonable to assume that the substantial part of
the relevant public will not be able to read and pronounce the word ‘affinity’ within the
earlier mark and, for this reason, the assessment of the signs and, subsequently, of
the likelihood of confusion will continue in relation to only this part of the public.
The first verbal element of the contested sign ‘Mr’ is used by the relevant public in the
relevant territory as an abbreviation for the English word ‘Mister’, placed ‘before a
man’s name when you are speaking or referring to him’. In the case at hand, the term
‘MAESTRO’ appearing after the abbreviation ‘Mr’ will be perceived by the relevant
public in the relevant territory as referring to a man’s name or, at least, the verbal
element ‘MAESTRO’ will play such a role within the contested sign (all definitions
extracted from Collins online dictionary).
Consequently, the element ‘Mr’ of the contested sign will be perceived as having
somewhat subordinated/supporting role as regards the element ‘MAESTRO’ in the
contested sign because it will merely help to define it and, therefore, its impact on the
public as indicator of commercial origin for the relevant goods and services will be
slightly reduced.
It follows that the signs under comparison have no elements that could be considered
more distinctive than other elements.
The verbal element ‘MAESTRO’ dominates the earlier mark in comparison to the
element placed on its left side or to the figurative element placed (stylised accent)
above the letter ‘o’.
The contested sign has no elements that could be considered clearly more dominant
(visually aye-catching) than other elements.
In addition, as regards the figurative elements present in the signs (figurative device
of a chef’s hut, background, its shape and colour, orange circle, stylisation of the
letters, stylised accent above the letter ‘o’ in the earlier mark, etc.), account must be
taken 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) /
BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN
ELEPHANT (fig.), § 59). Therefore, in view of the composition of the contested sign,
the verbal elements ‘Maestro’ of the earlier mark and ‘Mr. Maestro’ of the contested
sign are the ones that will be used to refer to them.
Visually and aurally, the signs share the word ‘MAESTRO’, occupying the dominant
position within the earlier mark and the second position in the contested sign. The
coincidence in this element is a relevant one in the present case. Furthermore, the
term ‘MAESTRO’ plays an independent and distinctive role in both signs. The signs
differ in the illegible and, therefore, negligible term ‘affinity’ and the verbal element
‘Mr.’ of the contested sign. As referred above, the element ‘Mr’ has a reduced impact
on the public, as indicator of commercial origin for the goods and services at hand
because it will be directly associated with the term ‘MAESTRO’ within the contested
sign. Furthermore, the signs also differ in their figurative elements (only visually),
which, as mentioned above, will be less important/relevant in comparison to their
main verbal element ‘Maestro’.
Decision on Opposition No B 2 759 341 page: 8 of 10
Therefore, considering that the signs share the distinctive element ‘Maestro’, which
plays an independent distinctive role within them, they are visually and aurally similar
to an average degree.
Conceptually, the public in the relevant territory will perceive the words contained in
the signs according to the abovementioned meanings. The term ‘Mr.’ of the contested
sign will be perceived as referring directly to the concept of ‘MAESTRO’ and,
therefore, its impact will be less than that of the term ‘MAESTRO’. As previously
indicated the term ‘affinity’ placed on an orange circle, constituting a non-dominant
element within the earlier mark will be considered illegible for the substantial part of
the relevant public. Therefore, it does have an impact on the conceptual comparison
between the signs at issue.
In any case, the relevant public will be aware of the semantic content of the word
‘MAESTRO’, present in both signs. This term is inherently distinctive in relation to the
goods and services in question and, therefore, this coincidence generates an
average degree of conceptual similarity between the marks.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
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.
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 and services 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
According to the case-law of the Court of Justice, in determining the existence of
likelihood of confusion, trade marks have to be compared by making an overall
assessment of the visual, aural and conceptual similarities between the marks. The
comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed
globally, taking into account all the circumstances of the case.
Such a global assessment of 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).
Decision on Opposition No B 2 759 341 page: 9 of 10
As concluded above, the contested goods and services are identical, similar to a low
degree and dissimilar to the ones covered by the earlier mark and they target the
public at large and the professional public.
The distinctiveness per se of the earlier mark is normal.
In general terms, two marks are similar when, from the point of view of the relevant
public, they are at least partially identical as regards one or more relevant aspects
(23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30; 12/07/2006, T-97/05,
Marcorossi, EU:T:2006:203, § 39; 22/06/2005, T-34/04, Turkish Power,
EU:T:2005:248, § 43).
The signs under comparison are visually, aurally and conceptually similar to an
average degree on the account of the common word ‘MAESTRO’, present in both
signs. Furthermore, this element plays an independent distinctive role in them.
The fact that a given sign includes additional elements, as in the case at hand, the
negligible element ‘affinity’ of the earlier mark, the abbreviation ‘Mr’ of the contested
sign and some figurative elements, does not outweigh the strong similarities resulting
from the coinciding distinctive element ‘MAESTRO’. Moreover, as mentioned above,
the relevant public will perceive the element ‘Mr’ in the contested sign as referring
directly to the element ‘Maestro’ in the contested sign. Likewise, the remaining
different elements are limited to figurative elements present in both signs however, as
concluded above, they are less important than the coincidence in the distinctive term
‘MAESTRO’.
As a rule, when one of the conflicting trade marks or a part thereof is reproduced in
the other mark as a distinctive element, the signs will be found similar, which,
together with other factors, may lead to a likelihood of confusion.
Account is also 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 who pay 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).
In its observations, the applicant argues that the common term ‘MAESTRO’ has a low
distinctive character; however, it does not bring any evidence or additional arguments
in support of its claim. Consequently, the Opposition Division does not see a valid
reason to consider the inherent distinctiveness of the earlier mark to be of a less than
normal degree. Therefore, in the absence of convincing arguments and evidence
thereof, this argument of the applicant must be rejected as unfounded.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the substantial part of the English-speaking part of the public, and,
therefore, the opposition is partially well founded on the basis of the opponent’s
European Union trade mark registration No 9 578 791. 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.
Considering all the above, the differences between the signs are not sufficient to
counteract the similarity resulting from their common and distinctive element
‘MAESTRO’ and, therefore, there is also a likelihood of confusion for the goods and
services found to be similar to a low degree.
Decision on Opposition No B 2 759 341 page: 10 of 10
It follows from the above that the contested trade mark must be rejected for the
goods and services found to be identical and similar (including to a low degree) to
those of the earlier mark.
The rest of the contested goods and services are dissimilar. As similarity of goods
and services is a necessary condition for the application of Article 8(1)(b) EUTMR,
the opposition based on this article and directed at these goods cannot be
successful.
The opponent has also based its opposition on the following earlier trade mark,
namely, the European Union trade mark registration No 8 734 584 for the word mark
‘AFFINITY MAESTRO’.
The other earlier right invoked by the opponent covers the same scope of the goods.
Therefore, the outcome cannot be different with respect to goods and services for
which the opposition has already been rejected; no likelihood of confusion exists with
respect to those goods and services.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
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 for only some of the contested goods and
services, both parties have succeeded on some heads and failed on others.
Consequently, each party has to bear its own costs.
The Opposition Division
Gueorgui IVANOV Monika CISZEWSKA Marzena MACIAK
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.