OPPOSITION No B 2 394 115
PETCO Animal Supplies Stores, Inc., 9125 Rehco Road, San Diego, California 92121, United States of Amercia (opponent), represented by Beck Greener, Fulwood House 12 Fulwood Place, London WC1V 6HR, United Kingdom (professional representative)
a g a i n s t
CSR Group, ul. Obornicka 49 lok. 8, 51113 Wrocław, Poland (applicant), represented by Kancelaria prawno-patentowa rzecznik patentowy Magdalena Filipek-Marzec, ul. Kossutha 11/508, 40-844 Katowice, Poland (professional representative).
On 09/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 394 115 is partially upheld, namely for the following contested services:
Class 44: Veterinary aid; care treatments for pets.
2. European Union trade mark application No 12 599 478 is rejected for all the above services. It may proceed for the remaining services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 12 599 478. The opposition is based on the following earlier rights:
1. European Union trade mark registration No. 10 114 081 ‘PETCO’ for services in Class 35.
2. European Union trade mark registration No. 11 629 334 ‘PETCO’ for goods in Class 3.
in relation to which the opponent invoked Article 8(1)(b) and 8(5) EUTMR.
3. Well-known trade mark ‘PETCO’ for goods and services in Classes 3, 5, 7, 18, 20, 21, 28, 31, 35, 38, 42 and 44.
4. Well-known trade mark for goods and services in Classes 3, 5, 7, 18, 20, 21, 28, 31, 35, 38, 42 and 44.
in relation to which the opponent invoked Article 8(1)(b) EUTMR.
5. The non-registered trade mark ‘PETCO’ for goods and services in Classes 3, 5, 7, 18, 20, 21, 28, 31, 35, 38, 42 and 44.
6. The non-registered trade mark for goods and services in Classes 3, 5, 7, 18, 20, 21, 28, 31, 35, 38, 42 and 44.
in relation to which the opponent invoked Article 8(4) EUTMR.
I ASSESSMENT OF THE SUBMITTED EVIDENCE
The outcome of the opposition depends to a great extent on the conclusions in relation to the evidence submitted by the opponent in order to prove the enhanced distinctiveness/well-known character/reputation of the earlier marks and the use of more than mere local significance. Therefore, in this section the Opposition Division will first set out the submitted evidence in its entirety and will determine whether the earlier allegedly well-known marks qualify as such; whether the earlier EUTM acquired enhanced distinctiveness/reputation and/or whether the earlier non-registered trade marks have been put to genuine use of more than mere local significance in the relevant territories.
In the present case, the contested trade mark was filed on 14/02/2014. Therefore, the opponent was required to prove that the signs on which the opposition is based were used in the course of trade of more than mere local significance or acquired reputation/are well-known in the designated territories prior to that date. The evidence must also show that the opponent’s signs have been used in the course of trade for the designated goods and services as specified above in the ‘REASONS’ section of the decision.
On 19/12/2016 the opponent submitted the following evidence in order to support its claim regarding the well-known character/reputation/use of more than mere local significance of the earlier marks mentioned above:
Attachment B A decision of the Chilean National Institute of Industrial Property dated 28/10/2016 (in Spanish, not accompanied by a translation in the language of proceedings) accepting a cancellation action of Chilean trade mark registration No. 92 0731 PET&CO on grounds of violation of Article 20 letter G, which according to the opponent reproduces Article 6bis of the Paris Convention.
Attachment C A letter dated 20/05/2016 from the local attorneys in Turkey regarding an opposition decision of the Turkish Patent Office stating, among others, that the opponent’s mark PETCO was ‘highly known’. The letter informs that the decision is not final, but is subject to appeal before a higher instance (Court).
Attachment D Newspaper articles from various European member states published in the period 2000 – 2012 mentioning the company Petco. Some of the articles are not translated into the language of proceedings (for instance the article ‘Renditekiller Retouren’ published in ‘Logistik Heute’ is in German and is not accompanied by a translation; the article ‘He demostrado que la gente estaba equivocada’ in Spanish, not accompanied by a translation, published in ‘El Mundo’). Others (most of the documents, if not all of them) refer to events and happenings that took place in the United States (for instance the article ‘Transaction action: Oakland Acquires Kevin Kouzmanoff from San Diego’ published in ‘The biz of baseball’; articles with pictures showing Christina Aguilera, Paris Hilton and other people from the show business shopping at the Petco store in West Hollywood in Los Angeles, California; articles referring to sport events (baseball) taking place at the Petco Park in southern California).
Attachment E A printout (not dated) from the website www.forbes.com providing information regarding the company Petco Animal Supplies showing the sign . According to the printout which looks like a ranking of America´s largest private companies, Petco Animal Supplies is ranked under No. 108. Further information reveals that it is a United States company with headquarters in San Diego, California, which operates more than 1 000 pet stores in all 50 states and the District of Columbia.
Attachment F A printout of the website www.statista.com (not dated), providing information about the revenue of Petco Animal Supplies in the United States from 2011/12 to 2016/17.
Attachment G Printouts from the websites www.trackalytics.com, www.twitter.com and www.facebook.com, showing the number of likes received by the social media pages of PETCO. According to the evidence Petco has the highest number of likes as compared to other pet supplies. The Facebook page has 2.9 million likes and the Twitter account has 180 000 followers.
It is obvious that none of the documents refers to the use of the signs in the European Union/a Member State of the Union. The majority of the evidence refers to the United States and some pieces of evidence refer to Chile or Turkey which are countries outside of the territorial focus of the examination. While the numbers of likes of Petco’s social media websites are indeed impressive, there is no information from where the likes come from. Bearing in mind that there is absolutely no evidence for any commercial presence of the opponent and its trade marks in the relevant territory, it can be assumed that the majority of the likes comes from outside of the relevant territory. The fact that European media mentions ‘Petco’ in articles related to events and happenings that took place in the United States does not show that the signs have been used of more than mere local significance and/or acquired enhanced distinctiveness/well-known character/reputation in the relevant territory – the European Union or a Member State as required by Article 8(2)(c), Article 8(4) and Article 8(5) respectively.
Based on the examination of the evidence the Opposition Division draws the following conclusions which are relevant for the analysis of the opposition further below:
1. The opponent did not prove the enhanced distinctiveness/reputation of European Union trade mark registration No. 10 114 081 ‘PETCO’ for services in Class 35 and European Union trade mark registration No. 11 629 334 ‘PETCO’ for goods in Class 3 in the European Union.
2. The opponent did not prove that the trade marks ‘PETCO’ and for goods and services in Classes 3, 5, 7, 18, 20, 21, 28, 31, 35, 38, 42 and 44 are well-known in a Member State of the European Union.
3. The opponent did not prove that the non-registered trade marks ‘PETCO’ and for goods and services in Classes 3, 5, 7, 18, 20, 21, 28, 31, 35, 38, 42 and 44 have been put to use of more than mere local significance in the European Union.
II SUBSTANTIATION
1. Earlier well-known marks ‘PETCO’ and and earlier trade marks with reputation ‘PETCO’
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.
In particular, if the opposition is based on a well-known mark within the meaning of Article 8(2)(c) EUTMR the opposing party must provide evidence showing that this mark is well-known in the relevant territory — according to Rule 19(2)(b) EUTMIR.
According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
Based on the above provisions and taking into account the conclusions reached after examining the submitted evidence, the opposition is rejected at this stage of the examination as far as it is based on the following rights:
(i) European Union trade mark registration No. 10 114 081 ‘PETCO’ for services in Class 35.
(ii) European Union trade mark registration No. 11 629 334 ‘PETCO’ for goods in Class 3.
in relation to which the opponent invoked Article 8(5) EUTMR.
(iii) Well-known trade mark ‘PETCO’ for goods and services in Classes 3, 5, 7, 18, 20, 21, 28, 31, 35, 38, 42 and 44.
(iv) Well-known trade mark for goods and services in Classes 3, 5, 7, 18, 20, 21, 28, 31, 35, 38, 42 and 44.
in relation to which the opponent invoked Article 8(1)(b) EUTMR.
2. Earlier non-registered trade marks ‘PETCO’ and
According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.
Case-law confirms that proof of use of the sign relied on is one of the conditions for entitlement to the protection conferred under Article 8(4) EUTMR and, therefore, only proprietors of signs used in the course of trade may claim such protection. This constitutes a significant difference compared with the European Union trade marks and national trade marks referred to in Article 8(2)(a) EUTMR, which are relied on in opposition proceedings. Under Article 42(2) and (3) EUTMR, it is necessary to prove the use of those marks only where this is required by the applicant. Under Rules 22(2) EUTMIR, the Office is required in this case to invite the opposing party to submit proof of use within a specific period (24/03/2009, T-318/06 – T-321/06, General Optica, EU:T:2009:77, § 52).
It has been already concluded that the opponent did not prove the use of the signs in the course of trade of more than mere local significance in the relevant territory.
Given that one of the necessary requirements for the application of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned in relation to the following earlier rights on which the opposition is also based:
(i) The non-registered trade mark ‘PETCO’ for goods and services in Classes 3, 5, 7, 18, 20, 21, 28, 31, 35, 38, 42 and 44.
(ii) The non-registered trade mark for goods and services in Classes 3, 5, 7, 18, 20, 21, 28, 31, 35, 38, 42 and 44.
The examination proceeds in relation to the European Union trade mark registration No. 10 114 081 ‘PETCO’ for services in Class 35 and European Union trade mark registration No. 11 629 334 ‘PETCO’ for goods in Class 3 in relation to which the opponent invoked Article 8(1)(b) EUTMR.
III 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 goods and services
The goods and services on which the opposition is based are the following:
European Union trade mark registration No. 11 629 334:
Class 3: Medicated pet grooming preparations and treatments for hair care and skin care, namely, pet shampoos, pet conditioners, pet colognes, pet powders, pet soaps, pet sprays, pet wipes, pet drops.
European Union trade mark registration No. 10 114 081:
Class 35: Retail services and on-line store services connected with the sale of sports and sporting goods.
The contested services are the following:
Class 38: Operating of online blogs, forums, photo galleries, chat rooms and electronic display boards for the transmission and dissemination of messages among users; Operating an Internet portal, Providing access to databases, Forums [chat rooms] for social networking, Collection and transmission of data relating to current events, local information, transmission of text and images via computers and computer networks, facilitating the sharing of information and conversation in real time via the internet.
Class 44: Animal breeding, veterinary aid, advice in the field of pharmacology for animals, care treatments for pets, medical clinics for animals.
An interpretation of the wording of the list of goods of the opponent is required to determine the scope of protection of these goods. The term ‘namely’, used in the opponent’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.
It is to be noted also 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 services in Class 38
The contested services in Class 38 are services allowing persons to communicate by a sensory means via computer networks, including the Internet.
The goods and services of the opponent are pet grooming preparations and retail of sporting goods. Even without further explanations and in the light of the criteria applicable to the comparison of goods and services specified above it is quite obvious that the compared goods and services do not have any relevant points in common and are, therefore, dissimilar. They do not share the same origin, purpose, method of use and distribution channels. Moreover, they are neither complementary nor in competition. The mere fact that they can occasionally coincide in end user is not enough to render them similar.
Contested services in Class 44
The contested veterinary aid and care treatments for pets are rather broadly defined services which may include also animal grooming services and are, therefore, considered similar to the opponent’s goods in Class 3. The goods and services in conflict have the same purpose, distribution channels and end users. Moreover, they are complementary.
Pharmacology is the branch of biology concerned with the study of drug action. The contested advice in the field of pharmacology for animals are services provided by specialised research and consultancy institutions which do not manufacture goods in Class 3. On the other hand the goods in Class 3 of the opponent are mass consumption productions and even though they may have some medical characteristics, the latter are rather basic and their application do not require a preliminary advice in the field of pharmacology. That is to say that also the end users of the goods and services under comparison are in principle different. They also have different purpose and method of use, cannot substitute each other and are neither in competition, nor complementary. Therefore, the goods and services are dissimilar. It is even more obvious that there are absolutely no relevant coinciding criteria for finding similarity between the contested services and the opponent’s services in Class 35.
The contested medical clinics for animals as a service in Class 44 relates to the provision of animal healthcare services. These are services that require high level of expertise in the provision of treatment of diseases, disorders and injuries in animals. They are considered dissimilar to the opponent’s goods in Class 3 and the services in Class 35 for the same reasons as those mentioned in the previous paragraph.
The contested animal breeding as a service in Class 44 is a branch of animal science that addresses the evaluation of the genetic value of livestock. These are very specific services provided by specialized institutions with a very distinct purpose. They do not have any relevant factors in common (by applying the above specified criteria) with the goods in Class 3 and services in Class 35 of the opponent which taken alone or in combination could lead to a level of similarity between them. These contested services are, therefore, dissimilar to the opponent’s goods and services.
It is also to be concluded in relation to the comparison of goods and services that the services covered by the earlier European Union trade mark registration No. 10 114 081 are dissimilar to any and all of the contested services. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this earlier right on the grounds of Article 8(1) EUTMR cannot be successful and has to be rejected at this stage of the examination.
The examination proceeds on the earlier European Union trade mark registration No. 11 629 334.
- 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 similar are directed at the public at large. The degree of attention is considered to be average.
- The signs
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PETCO |
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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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. The Opposition Division finds it appropriate to focus the examination on the Polish speaking part of the relevant public.
The earlier sign is a word mark representing the verbal element ‘PETCO’. The contested sign is a figurative mark comprising four circles of the same size, symmetrically placed at the same distance from each other above the verbal element ‘PETCOM’ represented beneath. Four stylised representations of a bone, an animal head (probably the head of a cat), a fish and a horseshoe are displayed within the circles from left to right respectively.
The verbal elements ‘PETCO’ and ‘PETCOM’ do not have a meaning in Polish; therefore, they are distinctive for the relevant goods and services. The figurative elements, taken separately and/or as a whole in relation to the relevant services, namely veterinary aid and care treatments for pets in Class 44 are considered weak as they refer directly (the representation of a fish and an animal head) or less directly (the bone and the horseshoe) to pets and domestic animals even if taken on their own and even more so if taken as a whole.
It is to be added that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).
Moreover, 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.
The earlier mark, as a one-word sign, has no elements that could be considered clearly more distinctive than other elements.
Neither of the marks has an element which can be considered dominant (visually more eye-catching) than other elements.
Visually, the signs coincide in ‘PETCO-’ which represents the entire earlier mark and differ in the last letter ‘M’ and the figurative elements of the contested sign.
Therefore, the signs are similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the sequence of letters ‛PETCO’, present identically in both signs and differs in the sound of the letter ‛M’ of the contested mark, which has no counterpart in the earlier sign. The figurative elements will not be pronounced.
Therefore, the signs are highly similar.
Conceptually, although the public in the relevant territory will perceive the meanings of the figurative elements of the contested sign, as explained above, the earlier sign has no meaning for the Polish speaking part of the public on which the examination is focused. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 trade mark has a reputation in the European Union in connection with all the goods for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).
The evidence submitted by the opponent has already been examined above and it was concluded that the opponent did not demonstrate that the earlier right European Union trade mark registration No. 11 629 334 ‘PETCO’ for goods in Class 3 acquired a high degree of distinctiveness through its use.
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 Polish-speaking part of the public. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
Some of the contested services are similar to the opponent’s goods and others are dissimilar. The marks are visually similar and aurally highly similar on account of the coinciding sequence of the signs’ first five letters ‘PETCO-‘. The distinctiveness of the earlier mark is average and so is the level of attention of the relevant public in relation to the conflicting goods and services.
The earlier mark is reproduced in the contested sign in its entirety. The differences in the letter ‘M’ of the contested sign and the figurative elements are not capable of counterbalancing the similarities between the signs since their impact on the consumers is limited – of the letter ‘M’ because it is placed at the end of the verbal element of the contested sign; of the figurative elements because they are weak in relation to the relevant services and in general of a lower importance for the visual perception as explained in section III c) above.
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).
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Polish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union European Union trade mark registration No. 11 629 334. 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.
It follows from the above that the contested trade mark must be rejected for the services found to be similar to the goods of the earlier trade mark.
The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.
IV COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
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Michal KRUK
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Plamen IVANOV |
Judit NÉMETH
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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.