OPPOSITION No B 2 655 622

Klaus Gritsteinwerk GmbH & Co. KG, Buchenstr. 7, 32257 Bünde, Germany (opponent), represented by Loesenbeck Specht Dantz, Am Zwinger 2, 33602 Bielefeld, Germany (professional representative)

a g a i n s t

Columbovet S.R.L., Nr. 227, 417029 Grosi, judet Bihor, Romania (applicant), represented by Carmen – Augustina Neacsu, 12/3 Rozelor Street, 430293 Baia Mare, Maramures, Romania (professional representative).

On 05/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 655 622 is partially upheld, namely for the following contested goods:

Class 31:        Animal feed.

2.        European Union trade mark application No 14 688 931 is rejected for the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 688 931. The opposition is based on German trade mark registration No 1 031 355. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant states that the earlier mark is registered in Germany, but it is not known to the applicant if the opponent had used the mark or not.

According to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected.

Since the applicant’s statement is not an explicit, unambiguous and unconditional request for proof of use, it has not been treated as such. Therefore, the opponent was not under any obligation to submit proof that its earlier trade mark had been put to genuine use.

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

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

Class 31:        Foodstuffs for birds.

The contested goods are the following:

Class 5:        Nutritional supplements and Medicines for veterinary purposes.

Class 31:        Live animals; Animal feed.

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 nutritional supplements for veterinary purposes are dietetic substances and food supplements prepared for special dietary requirements with the purpose of treating or preventing disease in animals. The contested medicines for veterinary purposes are substances used to treat diseases. Although such goods and the opponent’s foodstuffs for birds are directed at the same public (pet owners, breeders, farmers etc.) and are sometimes offered in the same sales outlets (e.g. veterinary supplies stores) these factors are insufficient in themselves to lead to a finding of similarity. Since the opponent’s goods in Class 31 are foodstuffs providing nourishment, but the contested goods, broadly speaking, are intended for improving animals’ health condition, their natures and purposes are different. Moreover, given that veterinary nutritional supplements and medicines are generally produced and marketed by licenced (pharmaceutical) companies, whilst foodstuffs for birds are produced by specialised companies dealing with animal feed, the usual origin of the goods at issue is not the same. Furthermore, they are neither complementary nor in competition. Therefore, the contested nutritional supplements and medicines for veterinary purposes are dissimilar to the opponent’s goods.

Contested goods in Class 31

The contested animal feed includes, as a broader category, the opponent’s foodstuffs for birds. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The applicant argues that due to the fact that the opponent’s goods are specifically intended for birds, whilst the contested goods are for cats or dogs, the goods under comparison would not appear on the same shelves in the sales outlets (pet shops or supermarkets).

In that regard, the Opposition Division notes that whilst the opponent’s goods indeed are intended for birds, the contested goods are defined as a broad category that encompasses foodstuffs for all kinds of animals. The comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Therefore, the applicant’s arguments must be set aside.

However, the rest of the contested goods in this class, namely live animals have no relevant commonalities with the opponent’s goods. Admittedly, birds and other domestic animals are often sold in pet shops that also deal with animal foodstuffs and other pet handling articles. They are directed at the same public. Nevertheless, the clearly different natures and purposes of these goods preclude from a finding of similarity between them. The usual commercial origin of live animals does not coincide with that of animal foodstuffs. Therefore, the contested live animals are dissimilar 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 and at business customers, for instance breeders and farmers with specific knowledge in the field of animal nutrition. The public’s degree of attention may vary from average to higher than average, depending on the price and specialised nature of the purchased goods.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

Tricom	TRICOGO
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 signs under comparison are both word marks in which the word as such is protected and not its written form. Taken as a whole, neither of the words exists in the relevant language.

The applicant argues that the first syllable of both marks, ‘TRI’, suggests the number ‘three’, the earlier mark’s second syllable, ‘COM’, may be a short form for the English words ‘company’ or ‘commercial’, whereas the syllables ‘CO-GO’ of the contested sign are a combination of an onomatopoeia in Romanian and the English word ‘go’, thus the contested sign as a whole may be interpreted as ‘go for the three roosters’.

Firstly, although the prefix ‘TRI’ may evoke the concept of ‘three’ or ‘triple’ for a part of the public, in the context of the relevant goods this element is vague as it is not clear what it refers to. Therefore, its distinctiveness is not diminished in either of the signs, but instead results in an average degree of conceptual similarity between them, as long as such a concept is perceived at all. However, for the rest of the public, a conceptual comparison between the signs is not possible and, therefore, the conceptual aspect does not influence the assessment of the similarity of the signs.

Secondly, it must be clarified that the relevant language for the present assessment is German, thus it can be reasonably assumed that when encountering the signs at issue the relevant public will not identify the English words or perceive any connotations stemming from the Romanian language. To that extent, the applicant’s arguments must be set aside.

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.

Visually and aurally, the signs coincide in the sequence of the letters/sounds ‘TRICO’. However, they differ in the last letter/sound of the earlier mark, ‘M’, and the two letters/sounds, ‘GO’, appearing in the ending of the contested sign.

Given that the coinciding letter/sound sequence appears in the initial parts of both signs and accounts for a larger proportion in each word than the differing letters/sounds, the signs are 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.

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 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

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).

Some of the contested goods are identical to those covered by the earlier mark. The degree of similarity between the signs is average, and the earlier mark enjoys an average degree of inherent distinctiveness.

Taking into account the interdependence principle, the differences between the signs are insufficient, in the present case, to remove the overall impressions given by the signs far enough to enable the relevant public to safely distinguish between them in the context of identical goods.

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).

The applicant argues that the relevant public is well-informed about the qualities and other characteristics of the goods they wish to purchase, thus the heightened degree of attention displayed by the public rules out any likelihood of confusion. Whilst it is accepted that the average consumer is sufficiently knowledgeable and attentive in relation to animal feed, it has to be borne in mind that even consumers who pay a higher degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is partly well-founded on the basis of the opponent’s German trade mark registration No 1 031 355.

It follows that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

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 goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Michele M. BENEDETTI ALOISI

Solveiga BIEZA

Julie GOUTARD

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.