NATUREDIET | Decision 0012792

CANCELLATION No 12 792 C (INVALIDITY)

Best Nutrition S.L., Avda. De Nazaret, 13 D, 1°D Izq., 28009 Madrid, Spain (applicant), represented by Ars Privilegium, S.L., Felipe IV, 10, 28014 Madrid, Spain (professional representative)

a g a i n s t

Naturediet Pet Foods Limited, Swaffham Road, Ickburgh, Thetford Norfolk IP26 5HX, United Kingdom (EUTM proprietor), represented by IP21 LTD, Central Formalities Department, Lakeside 300, Old Chapel Way, Broadland Business Park, Norwich, Norfolk, NR7 0WG, United Kingdom (professional representative).

On 20/06/2017, the Cancellation Division takes the following

DECISION

1.        The application for a declaration of invalidity is upheld.

2.        European Union trade mark No 14 374 276 is declared invalid for all the contested goods, namely:

Class 5:        Supplements for pet foods, for foodstuffs for animals, for edible treats for animals; food additives for animals.

Class 31:        Pet foods; foodstuffs for animals; edible treats for animals.

3.        The European Union trade mark remains registered for all the uncontested goods and services, namely:

Class 8:        Scissors and clippers for pet animals.

Class 16:        Paper; paper articles; cardboard; cardboard articles; cardboard packaging, boxes for packaging; containers of cardboard; packaging materials of cardboard for use with food articles; paperboard trays for packaging food; bags of plastic for packaging food; printed publications; printed matter; fact sheets; guides; brochures; instructional leaflets; instructional and teaching materials.

Class 18:        Collars and harnesses, bits, leads, muzzles, blankets, articles of clothing and non-edible chews, all for animals.

Class 20:        Identification barrels for pet animals.

Class 21:        Trays and rings for pet animals; brushes, combs, litter trays, food and water containers all for pet animals; cages for animals and parts and fitting therefor; covers for animal cages.

Class 28:        Toys and playthings for pet animals; training aids for pet animals.

Class 44:        Information, advisory and consultancy services relating to nutrition for animals and pets; veterinary advice and information; information, advisory and consultancy services relating to animal health, animal wellbeing and animal care.

4.        The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 14 374 276 ‘NATUREDIET’ (word mark) (the EUTM). The request is directed against some of the goods and services covered by the EUTM, namely:

Class 5:        Supplements for pet foods, for foodstuffs for animals, for edible treats for animals; food additives for animals.

Class 31:        Pet foods; foodstuffs for animals; edible treats for animals.

The applicant invoked Article 52(1)(a) EUTMR in conjunction with Article  7(1)(b), (c) and (g) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The case for the applicant

The applicant argues that the expression ‘NATUREDIET’ will be readily understood by English speakers as referring to ‘a natural collection of daily victuals’ or as a reference to healthy and balanced food for animals. To support this, the applicant supplies definitions from the Collins English Dictionary, namely:

Furthermore, terms like ‘nature’ and ‘diet’ are commonly used as a promotional laudatory message in many trade marks and should be kept free for use by all. The expression ‘NATUREDIET’ informs consumers that the goods at issue are a range of food adapted to an animal’s special needs and way of eating. Therefore, the mark is descriptive of the nature and intended purpose of goods pursuant to Article 7(1)(c) EUTMR.

The trade mark is also deceptive pursuant to Article 7(1)(g) EUTMR because it contains the word ‘DIET’ which leads consumers to think that the products at issue have no additives or preservatives or that they are low in calories.

The applicant refers to many marks which it considers similar to the EUTM and which have been refused by the Office on absolute grounds.

In a second round of observations filed by the applicant, it largely reiterates all the arguments raised in the initial observations. In addition, it provides a screenshot from the EUTM proprietor’s website to support its assertion that the expression is descriptive and lacks distinctiveness in connection with the goods:

The case for the EUTM proprietor

The EUTM proprietor asserts that the term ‘NATUREDIET’ is neither descriptive nor non-distinctive in connection with the goods. The word ‘NATURE’ means ‘a wild primitive state untouched by man or civilization’ and in connection with pet foods and related goods, this word is highly distinctive. The EUTM proprietor disputes the definition of ‘DIET’ given by the applicant namely, ‘the selection of food to control body weight or nutrient intake’. The proprietor lists several other meanings of ‘DIET’ and states that this word should not be understood as referring to weight reduction or nutrient intake, but rather the regular consumption of food. Furthermore, since the products at issue are food for animals, the general public would be unlikely to associate losing weight and monitoring nutrient intake with pet food. ‘NATUREDIET’ is a neologism which has no meaning and is sufficiently distinctive for registration.

The EUTM proprietor attaches a Witness Statement given by Mr Daniel Masters, the Director of Naturediet Limited, to prove that ‘NATUREDIET’ products have been sold in the United Kingdom since 2001 and therefore the expression has also acquired distinctiveness through use. This evidence will be listed and examined below.

The EUTM proprietor refers to other marks which have been accepted by the Office for animal foods in Classes 5 and 31 and which contain the word ‘DIET’. Reference is also made to an earlier registration for ‘NATUREDIET’ made in colour.

The EUTM proprietor strongly disputes that ‘NATUREDIET’ is descriptive in any way of the goods at issue. The proprietor refutes the applicant’s claim that ‘NATUREDIET’ products are only aimed at pets with particular feeding needs. Indeed, the proprietor quotes from its own website as follows:

‘Naturediet produces high quality natural pet food that is both healthy and nutritious. We use only the finest quality ingredients carefully selected to produce nutritionally balanced, appetising meals for your dog’.

There are, therefore, no claims that the proprietor’s products intend to help pets lose weight, or that the products are part of any special diet with regard to vitamin intake. Therefore, ‘NATUREDIET’ is a skilful allusion to the goods and not directly descriptive.

Regarding the applicant’s claims that ‘NATUREDIET’ is deceptive pursuant to Article 7(1)(g) EUTMR, the EUTM proprietor states that the mark is not misleading with regard to the nature, quality or geographical origin of the goods. The products sold under the mark do contain natural ingredients without artificial preservatives. Furthermore, as ‘DIET’ will be understood as the regular consumption of food and not as being low in calories, the mark is not misleading in this sense either.

In a second round of observations, the EUTM proprietor reiterates all the arguments put forward originally and files some further evidence to prove that its mark has acquired distinctiveness through use. This evidence will be listed and examined below.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 52(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 52(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non-registrability obtain in only part of the Union.

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C-332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

The contested EUTM consists of the word ‘NATUREDIET’ and the contested goods are:

Class 5:        Supplements for pet foods, for foodstuffs for animals, for edible treats for animals; food additives for animals.

Class 31:        Pet foods; foodstuffs for animals; edible treats for animals.

The distinctive character and descriptiveness of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T-348/02, Quick, ECLI:EU:T:2003:318, § 29).

The average consumer’s level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C-342/97, Lloyd Schuhfabrik Meyer, ECLI:EU:C:1999:323, § 26).

Furthermore, when assessing the distinctive character of a trade mark consisting of a combination of elements, the mark needs to be considered as a whole. However, that does not preclude prior examination of each of the trade mark’s individual features (09/07/2003, T-234/01, Stihl, ECLI:EU:T:2003:202, § 32).

In the present case, the goods covered by the contested mark are aimed at both average consumers and a professional public. In view of the nature of the goods in question, the awareness of the relevant public will be either that of the average consumer who is reasonably well-informed and reasonably observant and circumspect or high, depending on the nature, intended use and price of the goods. In particular, a slightly higher degree of attention may be displayed in connection with supplements and food additives for animals owing to their specialised nature. Moreover, since the mark ‘NATUREDIET’ consists of English words, the relevant public with reference to which the absolute ground for refusal must be examined is the English-speaking consumer in the Union (22/06/1999, C-342/97, Lloyd Schuhfabrik Meyer, ECLI:EU:C:1999:323, §26; and 27/11/2003, T-348/02, Quick, ECLI:EU:T:2003:318, §30).

Descriptiveness – Article 7(1)(c) EUTMR

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 31).

The signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T-222/02, Robotunits, EU:T:2003:315, § 34).

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 102).

For the purposes of assessing descriptiveness, it must be determined whether the relevant public will make a sufficiently direct and specific association between the expression and the goods/services for which registration is sought (20/07/2004, T-311/02, LIMO, §ECLI:EU:T:2004:245 § 30).

For a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 32).

The contested EUTM was filed on 17/07/2015.

The applicant has succeeded in proving that by the date of filing of the challenged trade mark, the expression ‘NATUREDIET’ could be perceived as having a descriptive meaning in connection with the contested goods. According to the dictionary definitions given by the applicant, ‘NATURE’ may refer to ‘natural’ and ‘DIET’ to ‘the deliberate selection of food to control body weight or nutrient intake’. Taken together, the expression will be perceived as ‘a selection of food to control body weight or nutrient intake which is natural in origin’. No great mental acrobatics are required to see how the use of this expression in conjunction with Pet foods; foodstuffs for animals; edible treats for animals conveys the idea that the proprietor’s pet food constitutes a source of natural nutrition for animals. Likewise, ‘NATUREDIET’ is also descriptive in connection with supplements for pet foods, for foodstuffs for animals, for edible treats for animals; food additives for animals since these products will also contribute to providing a natural source of nutrition for animals.

The EUTM proprietor disputes the definitions given by the applicant and puts forwards alternative meanings for the words. In particular, it claims that ‘NATURE’ is a striking and unusual word to use in connection with pet food as it brings to mind the notion of a wild, primitive state. It also asserts that ‘DIET’ should not be understood as a reference to weight reduction or nutrient intake, but rather the regular consumption of food.

The Cancellation Division would like to remind the proprietor that for a trade mark to be refused registration under Article 7(1)(c) EUTMR,

it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added.)

While it is conceded that several alternative definitions may be proffered for the words ‘NATURE’ and ‘DIET’, there is little doubt that when used to label foodstuffs, in this case for animals, ‘DIET’ will be understood as a daily intake of nutrition and ‘NATURE’ will be seen as describing the quality and origin of the goods, which presumably contain natural ingredients. It is undeniable that consumers will read the expression ‘NATUREDIET’ as a simple, generic description of the goods on offer. Furthermore, it is a well-known fact that the word ‘NATURE’ is often combined with other nouns in English to create compound expressions describing something natural. One such example which is of particular relevance here is:

nature food   n. (originally) food provided by nature; (in later use) food which uses only natural or organically produced ingredients (taken from the Oxford English Dictionary on 13/06/2017).

So the combination of ‘nature’ and ‘diet’ will not seem striking or be viewed as a neologism by the relevant public, as claimed by the proprietor, since this public has been exposed to compound nouns beginning with the word ‘NATURE’ to describe natural products.

The EUTM proprietor sets great store by the fact that the applicant has suggested additionally that the proprietor’s products are aimed at animals with particular feeding needs. According to the proprietor, its products are neither intended to help pets lose weight nor do they provide a special vitamin intake. ‘NATUREDIET’ is merely a skilful allusion to the goods. However, it should be noted that the Cancellation Division may not take into consideration any restriction following from an intended or an actual product marketing practice, which, in any case, is subject to the actual commercial strategy adopted by the trade mark’s owner and may change in the course of time. The fact of the matter is that the wording of the contested goods is sufficiently broad so as to allow either the inference that the products supplied are part of the normal daily nutritional intake of an animal or that they may also cater for some special dietary requirements. The slight nuances in the meaning conveyed by ‘DIET’ do not detract from its descriptiveness in connection with the goods. Likewise, the EUTM proprietor’s express acknowledgement that ‘DIET’ means ‘the regular consumption of food’ leads to the conclusion that even if only that meaning is grasped by consumers, the word is clearly descriptive of the goods.

It follows that the expression ‘NATUREDIET’ may serve, from the point of view of the public concerned, to designate an essential and desired characteristic of these goods.

Therefore, the mark conveys obvious and direct information regarding the kind, quality and intended purpose of the goods in question.

It follows that the link between the word ‘NATUREDIET’ and the contested goods is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR.

As regards the EUTM proprietor’s argument that a number of similar registrations have been accepted by the EUIPO, according to settled case-law, ‘decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T-36/01, Glass pattern, EU:T:2002:245, § 35).

In fact, the EUTM proprietor refers to several trade marks which have been accepted for registration by the Office containing the word ‘DIET’. However, the Cancellation Division would like to draw the proprietor’s attention to the fact that most of the marks listed contain distinctive elements which were considered to render the marks distinctive overall, paving the way for registration. For example, EUTM No 74 222 for the word mark ‘HILL’S PRESCRIPTION DIET’, despite containing the descriptive expression ‘prescription diet’, also contains the distinctive company name ‘HILL’S’. Furthermore, the Cancellation Division notes that some of the marks which could be considered descriptive per se in the list given by the proprietor did not even proceed to registration.

Finally, regarding the same mark in colour which the EUTM proprietor claims the Office has registered, even if that mark consists of the same words as the mark at issue here, if it is in colour, it is manifestly not the same as the contested mark, which is a plain word mark.

Non-distinctiveness – Article 7(1)(b) EUTMR

According to the case law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (judgment of 19/09/2002, C-104/00 P, DKV, § 21). This is clearly applicable to the present case.

Given that the mark has a clear descriptive meaning in relation to the contested goods, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

Consequently, taken as a whole, the contested mark – ‘NATUREDIET’ – is devoid of any distinctive character and is not capable of distinguishing the contested goods within the meaning of Article 7(1)(b) EUTMR and Article 7(2) EUTMR.

 

Acquired distinctiveness

The EUTM proprietor claims that the mark ‘NATUREDIET’ has acquired distinctiveness through use pursuant to Article 7(3) EUTMR, making reference to use which has been made of its mark in the United Kingdom since 2001 and throughout Europe since 2008, i.e. before the date of filing of its ETUM. To recall, the filing date of the contested EUTM is 17/07/2015.

Under Article 7(3) EUTMR, the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark EUTM proprietor. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) EUTMR, which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader.

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages.

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation … .

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied.

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect.(10/11/2004, T-396/02, Karamelbonbon, EU:T:2004:329, § 55-59; 04/05/1999, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/2006, C-25/05 P, Bonbonverpackung, EU:C:2006:422, § 75; and 18/06/2002, C-299/99, Remington, EU:C:2002:377, § 63).

On 28/07/2016, the EUTM proprietor filed the following evidence:

  • Witness Statement by Mr Daniel Alan Wilcox Masters, Managing Director of ‘Naturediet Pet Foods Limited’, dated 27/07/2016. Mr Wilcox Masters describes how his company develops and sells foodstuff for animals. The foodstuff is of a very high quality and contains no artificial colours or flavours, and is of a specialist nature. The end-buyers of the product have come to associate the mark with simple ingredients, and natural and healthy pet food.

Figures are given for the sales of Class 31 goods under the mark in the United Kingdom:

The annual amounts spent on promoting the goods in the UK are as follows:

Approximately six advertisements are attached to the Witness Statement displaying the sign in all cases as follows:

Two of the advertisements are for animal exhibitions, one of which is dated in 2011. Another advertisement is for a ‘bookazine’ and is dated in 2010. Another appeared in a Dutch publication (since the advertisement is in Dutch), but the name is not given and there is no date of publication. The final advertisement appeared in a publication called ‘Dispatch’ and is dated in 2009.

Finally, the Witness Statement includes a screenshot of a website where ‘NATUREDIET’ products are available online. Some online reviews by purchasers can be read.

On 02/12/2016, the EUTM proprietor filed the following evidence:

  • A second Witness Statement by Mr Daniel Alan Wilcox Masters, Managing Director of ‘Naturediet Pet Foods Limited’, dated 30/11/2016. Mr Wilcox Masters mainly reiterates all of the observations put forward already in the submissions. He also mentions that his company exports to the European Union primarily through a distributor called ‘Zooplus’. Several exhibits are attached to the Witness Statement, which may be summarised as follows:

  • Extracts from the website www.zooplus.fi showing that ‘NATUREDIET’ pet food is on sale in Spain, Belgium, Denmark, Finland, France, Germany, Greece, Hungary, Ireland, Italy, the Netherlands, Norway, Portugal and Sweden.

  • A table of export sales to other EU countries:

  • Evidence of some awards won by the EUTM proprietor between 2008 and 2016 given by industry associations.

  • More samples of advertisements placed in specialist magazines between 2008 and 2009. It is always a figurative version of the trade mark which appears in these advertisements, as can be seen in the following example: