OPPOSITION No B 2 608 449

Natural Instinct Limited, 5 Admiralty Way, Camberley Surrey GU15 3DT, United Kingdom (opponent), represented by Murgitroyd & Company, Scotland House, 165-169 Scotland Street, Glasgow  G5 8PL, United Kingdom (professional representative)

a g a i n s t

M.I. Industries, Incorporated, 6200 North 56th Street Lincoln Nebraska 68504, United States (of America) (applicant), represented by Garreta i Associats Agència de La Propietat Industrial S.L., Gran Via de les Corts Catalanes 669 bis, 1º 2ª, 08013 Barcelona, Spain (professional representative).

On 21/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 608 449 is upheld for all the contested goods.

2.        European Union trade mark application No 14 290 589 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 290 589. The opposition is based on European Union trade mark application No 11 438 074, on UK trade mark registration No 2 626 609 as well as on two non-registered trade marks. The opponent invoked Article 8(1)(b), Article 8(5), and Article 8(4) 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.

The opposition is based on more than one earlier trade mark. Since the earlier EUTM is not registered yet, the Opposition Division will examine the opposition in relation to the opponent’s UK trade mark registration No 2 626 609.

Preliminary remark

The applicant argues that the earlier UK trade mark is not substantiated because the official document from the UK’s intellectual property office initially submitted by fax with the notice of opposition features a black and white figurative trade mark whereas it appears from the version of the same document submitted at the substantiation stage by e-filing that the trade mark is in colour.

It is noted, in this respect, that the evidence submitted by the opponent reveals that UK trade mark registration No 2 626 609 is a series registration of two trade marks. The second trade mark of the series is indeed in colour (green) but the first one is in greyscale. Grey is not considered a colour by the UK Office and the EUIPO as long as it used only for delimiting or contrasting. In the present case, there is no significant difference between the black and white representation initially submitted and the greyscale representation submitted at a later stage, other than the fact that some words are depicted in grey. Therefore, the greyscale trade mark of the series registration is deemed substantiated. Indeed, it is noted that the EUTM application invoked by the opponent as a further earlier mark in these proceedings was accepted by the Office for formality purposes, without requiring a colour claim, and granting priority of the UK earlier trade mark.

1. The goods

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

Class 31:        Foodstuffs for dogs and cats; dog food; cat food; dog biscuits; bones and chewing bones for dogs; treats (foods) for dogs and cats; litter for dogs and cats.

The contested goods are the following:

Class 31:        Animal foodstuffs; pet foods; pet treats.

Contested goods in Class 31

The contested animal foodstuffs; pet foods; pet treats include, as broader categories, or overlap with the opponent’s foodstuffs for dogs and cats. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

	NATURE’S VARIETY INSTINCT
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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 trade mark consisting of a stylised depiction of the verbal elements ‘Natural Instinct’ in grey and underneath, in much smaller size, and also stylised, the verbal elements ‘Dog and Cat food as nature intended’ in black.

The phrase ‘Natural Instinct’ is the dominant element of the sign by virtue of its size and position.

‘Natural instinct’ as a whole will be understood as meaning ‘innate/spontaneous tendency that a person or animal has to behave or react in a particular way’.

The applicant argues that the phrase as a whole lacks distinctiveness because natural instincts are ‘relevant to the feeding habit of dogs and cats’. It considers that the expression suggests that animals should be fed with food that they would select by their natural instinct. The applicant also argues that the verbal element ‘Instinct’ is ‘descriptive or devoid of distinctive character’ because it is used in a number of trade marks on the market. In support of its arguments the applicant submits copies of two online articles and refers to three German trade marks including the verbal element ‘INSTINCT’ or even ‘NATURAL INSTINCT’.

In the first place, it is noted that the trade marks mentioned do not concern the United Kingdom’s market and do not, therefore, demonstrate that the relevant consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘INSTINCT’ in relation to the goods in question. In any case, the existence of similar trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning the situation on a register only, it cannot be assumed that such trade marks have also been effectively used.

As far as the submitted articles are concerned, they just emphasise the importance of natural instinct in the behaviour of dogs and do not allow any inference as to the distinctiveness of the phrase ‘Natural instinct’.

This phrase may indeed be construed by consumers as an allusion to the fact that the food for animals at issue is of the kind that animals would be driven to by their natural instinct. However, this requires some interpretation and does not in any case actually describe the goods or even any of their usual characteristics. Therefore, the applicant’s claims are dismissed and the phrase ‘Natural Instinct’, and particularly the element ‘instinct’, is considered to be distinctive.

Additionally, the phrase ‘Natural instinct’ is the more distinctive part of the trade mark since, in relation to food for animals, the verbal phrase ‘Dog and Cat food as nature intended’ will be perceived by the relevant public as a promotional slogan explicitly describing the kind of the goods (dog and cat food) and emphasising their positive qualities (food of natural origin, without preservatives or additives, not heavily processed).

The contested mark is a word mark consisting of the verbal phrase ‘NATURE’S VARIETY INSTINCT’. The expression does not make sense as a whole and is likely to be perceived as the juxtaposition of, on the one hand, ‘NATURE’S VARIETY’ and, on the other hand, ‘INSTINCT’. The initial phrase will be perceived as meaning ‘diversity of/from nature’ alluding to the fact that the food for animals at issue is characterised by the variety/diversity that can be found in nature, or as ‘kind/sort coming from nature’ explicitly referring to goods of a natural origin. In contrast, the term ‘INSTINCT’, as previously defined, has no straightforward meaning in relation to those goods and is, therefore, the most distinctive element of the sign.

The following principles established by case law are of relevance in the comparison of signs below.

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). Furthermore, in the present case, the stylised depiction of the verbal elements in the earlier trade mark is clearly a decorative feature.

In word signs or in signs containing a verbal element, the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (judgments of 15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009 T-109/07, Spa Therapy, EU:T:2009:81, § 30).

Furthermore, it is noted that the contested sign is a word mark, which is protected for the words and not for their stylisation; therefore, the different letter cases used as compared with the earlier mark have no impact on the comparison.

Visually, the signs coincide in the verbal element ‘INSTINCT’, in the same final position, and whose distinctive role in both signs has been established. They also have in common the initial string of letters ‘NATUR’. Despite the descriptive character of the respective elements ‘NATURAL/NATURE’, such commonality reinforces the similarity especially bearing in mind that it is placed at the beginning of the signs.

As far as the earlier mark is concerned, the differences have a limited impact since they lie in the expression ‘Dog and Cat food as nature intended’ whose impact is limited due to its promotional nature and very small size, and in the merely decorative letter font used. The additional element ‘VARIETY’ of the contested sign does not create a significant difference either, given its allusive/non-distinctive meanings when read together with the other verbal element ‘Nature’s’ (depending on the public’s perception of the meaning of the expression).

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the verbal element ‘INSTINCT’ and the verbal elements ‘NATURAL’ and ‘NATURE’ also have some commonalities when they are pronounced (/næ-tʃə-rəl v /neɪ-tʃə/). The difference in the verbal expression ‘Dog and Cat food as nature intended’ of the earlier mark is of little relevance given the expression’s descriptive nature and small size. The expression may even not be pronounced (order of 28/09/2012, T-568/11, interdit de me gronder IDMG, EU:T:2012:511, § 44). The difference in the verbal element ‘VARIETY’ of the contested sign is not a very significant one either given the reduced distinctive character (or even non-distinctiveness) of this element, as established above.

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

Conceptually, both signs include the concept of ‘instinct’ and a reference to nature. The additional concepts in both signs are linked to the descriptive or allusive elements ‘Dog and Cat food as nature intended’ in the earlier mark and ‘variety’ in the contested sign. Therefore, the signs are conceptually similar to an average degree.

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.

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, despite the presence of non-distinctive elements in the mark as stated above in section c) of this decision.

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).

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 goods are identical and will attract an average degree of attention on the part of the relevant public. The signs are visually, aurally and conceptually similar to an average degree, and the earlier mark is inherently distinctive to an average degree, which affords it a normal scope of protection in this assessment.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s UK trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods.

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/reputation 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 UK trade mark leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(4) EUTMR and Article 8(5) EUTMR.

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

Alexandra APOSTOLAKIS

Catherine MEDINA

Frédérique SULPICE

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.