OPPOSITION No B 2 726 043

Dibaq-Diproteg, S.A., c/ La Cruz, 3, 40260 Fuentepelayo (Segovia), Spain (opponent), represented by Padima, Calle Gerona, 17, 1º A-B, 03001 Alicante, Spain (professional representative)

a g a i n s t

Josera GmbH & Co. KG, Industriegebiet Süd, 63924 Kleinheubach, Germany (applicant), represented by Astrid Nitz, Goldbacher Str. 14, 63739 Aschaffenburg, Germany (professional representative).

On 25/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 726 043 is upheld for all the contested goods.

2.        European Union trade mark application No 15 216 682 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 216 682. The opposition is based on European Union trade mark registration No 10 171 676. 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.

1. The goods and services

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

Class 31:        Foodstuffs for animals.

Class 35:        Advertising; Business management; Business administration; Office functions; Wholesaling and retailing in shops and wholesaling and retailing via global communication networks of animal foodstuffs; Import and export.

Class 44:        Veterinary services.

The contested goods are the following:

Class 5:        Additives for animal feed (not for medical purposes), namely animal feed supplements (not for medical purposes).

Class 31:        Foodstuffs for animals, in particular supplements for animal foodstuffs.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the applicant’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).

However, the term ‘namely’, also used in the applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 additives for animal feed (not for medical purposes), namely animal feed supplements (not for medical purposes) are similar to the opponent’s Class 31 foodstuffs for animals, given that they are not for medical purposes and therefore often coincide in distribution channels and sales outlets. Furthermore, they may coincide in producers and be complementary, considering that supplements are often added to foodstuffs in order to increase their nutritional properties.

Contested goods in Class 31

The contested foodstuffs for animals, in particular supplements for animal foodstuffs 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 or similar are directed at the public at large and the professional public. The degree of attention is considered to be average.

3. The signs

	naturecat
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.

The verbal elements composing the signs are meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English speaking part of the public such as, for example, the Bulgarian-speaking part of the public in the EU.

The contested sign is the word mark ‘naturecat’ and therefore it is immaterial whether the element is written in upper or lower-case letters, given that in the case of word marks, it is the word as such that is protected, regardless of its written form.

The earlier mark is a figurative mark containing the word elements ‘NAT’ and ‘CAT’, written in black standard upper-case lettering and separated by a hyphen. A figurative element consisting of a vertically aligned rectangular shape with a black border and rounded corners is located to the left of the word elements. The two upper corners and the lower left corner of this element additionally have small arrows that slightly protrude from the rectangular border. A long line with an arrow on its right tip extends horizontally outwards from the inside of the lower right portion of the element and is positioned below the sign’s word elements. It should be noted that this figurative element is mostly ornamental and the public will perceive it as a graphic element used to embellish the sign and bring their attention to the word elements of the mark.

The earlier mark has no elements that could clearly be considered more dominant than other elements. Additionally, it is composed of distinctive verbal elements that have no meaning for the relevant public and a less distinctive figurative element of an essentially decorative nature. Therefore, the verbal elements are more distinctive than the figurative element.

As a whole, the contested sign ‘naturecat’ has no meaning for the relevant public and is, therefore, distinctive. 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).

Thus, the Opposition Division considers that the relevant public will perceive the word element ‘nature’ in the contested sign, given that it composes the beginning of the sign in question. Furthermore, this element will be associated by the relevant consumers as alluding to the ‘natural’ quality of the contested goods or their respective ingredients, due to, inter alia, the common use of synonymous terms such as ‘naturalen’ in the Bulgarian language. For this reason, the ‘nature’ word element is considered to be of a weaker than average distinctiveness for the goods in question.

Visually, the signs coincide in the sequence of letter strings ‘NAT-’ and ‘-CAT’, which encompass the earlier mark’s word elements and respectively account for the first three and final three letters of the contested ‘naturecat’ sign. However, they differ due to the additional letter string ‘URE’ found in the middle of the contested sign, as well as the earlier mark’s previously described stylization and weak figurative element.

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).

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. In addition, the ending of the signs also coincides.

Therefore, the signs are visually similar to a lower than average degree.

Aurally, the signs coincide in the sound of the letter strings ‘NAT-’ and ‘-CAT’, which, as was concluded above, encompass the earlier mark’s verbal elements and compose the beginning and ending of the contested sign. They differ due to the sound of the additional letter string ‘URE’ found in the middle of the contested sign.

Thus, the initial phonetic parts of the signs are identical, which, as was previously stated, is important, given that consumers tend to focus on the beginning of a sign. Additionally, they completely coincide in the sound of their last three letters.

Consequently, the signs are aurally similar to an average degree.

Conceptually, the presence of the word element ‘nature’ in the contested sign and the previously described figurative element in the earlier mark will create some conceptual distance between the marks in contention. Therefore, to that extent, the signs are not conceptually similar.  Nevertheless, this conceptual difference will have a limited impact on the relevant public, given that it originates from weak elements.

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

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.

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).

As has been concluded above, the contested goods are identical or similar and the signs are visually similar to a lower than average degree and aurally similar to an average degree, while their conceptual difference will have a limited impact on the relevant public, given that it originates from weak elements. Furthermore, the earlier right has no elements that could clearly be considered more dominant than other elements.

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).

In the present case, the signs under comparison identically share their initial three letter sequence ‘NAT-’. This is particularly important given that 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. Furthermore, as was concluded above, the signs also coincide in their final three letter sequence ‘-CAT’, which are meaningless and distinctive for the relevant public at issue. Therefore, the additional letter string ‘URE’ found in the middle of the contested sign is not enough to clearly set them apart, as it may go unnoticed in relation to identical or similar goods, bearing in mind the above-mentioned principle of imperfect recollection and the visual and aural similarities between the marks.

Additionally, as was also previously mentioned, the contested sign’s weak ‘nature’ word element and the earlier mark’s stylization and weak figurative element do not create the necessary distance needed to safely exclude any likelihood of confusion between the marks. Indeed, consumers may perceive the ‘naturecat’ mark as a sub-brand or a new product line, originating from the same undertaking responsible for the ‘NAT-CAT’ mark, consisting of a play of words in relation to the initial element ‘NAT’, which is altered as ‘nature-’, in order to allude to the ‘natural’ or healthier qualities of this particular brand line. As mentioned above, the likelihood of confusion includes the likelihood of association with the earlier mark.

In addition, considering the abovementioned likelihood of association and the identity and similarity of the relevant goods, as well as the interdependence principle, the Opposition Division concludes that the lower than average visual similarity between the marks is outweighed by all the previously mentioned similarities and, consequently, a likelihood of confusion cannot be safely excluded.

Considering all the above, there is a likelihood of confusion on the part of the Bulgarian-speaking public in the relevant territory. 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 registration No 10 171 676. It follows that the contested trade mark must be rejected for all the contested 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 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

Gueorgui IVANOV

José Alexandre DE PAIVA ANDRADE TEIXEIRA

Dorothée SCHLIEPHAKE

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.