OPPOSITION No B 2 253 691

Elmubas Iberica, S.L., Calle Estadio, 7 Entreplanta D, 47006 Valladolid, Spain (opponent), represented by Isern Patentes y Marcas, S.L., Paseo de la Castellana, 115 – 1º Dcha., 28046 Madrid, Spain (professional representative)

a g a i n s t

Tadeusz Ogrodnik trading as Tropical, ul. Wolności 69, 41-500 Chorzów, Poland (applicant), represented by Sulima Grabowska Sierzputowska, Biuro Patentów I Znaków Towarowych Sp. J., IO-1 Building, ul. Puławska 182, 02-670 Warszawa, Poland (professional representative).

On 17/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 253 691 is partially upheld, namely for the following contested goods:

Class 3:        Soaps, shampoos and cosmetics for dogs and cats.

Class 28:        Toys for dogs and cats; inedible toys for chewing and gnawing for dogs and cats.

Class 31:        Products and preparations for breeding dogs and cats; food in the form of flakes, granulates, extrudates, tablets, dried and lyophilised natural food for dogs and cats; food containing nutritional preparations for dogs and cats not for medical purposes; edible bones and edible goods for chewing and gnawing for dogs and cats; bedding, gravel bedding and sand for dogs and cats.

2.        European Union trade mark application No 11 851 052 is rejected for all the above goods. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 11 851 052. The opposition is based on, inter alia, Spanish trade mark registration No 2 503 050 for the word mark ‘TROPHY CAT’. 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 shall 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 shall be rejected.

The applicant requested that the opponent submit proof of use of both of the trade marks on which the opposition is based. However, for reasons of procedural economy, the Opposition Division will first examine the request in respect of Spanish trade mark No 2 503 050.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 15/07/2013. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 15/07/2008 to 14/07/2013 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 31:        Foodstuffs for animals, with the express exception of any other product included in this class.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 04/03/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 09/05/2016 to submit evidence of use of the earlier trade mark. On 09/05/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Annex 1: Catalogue, product information and packaging. The catalogue mentions various products which come under the brand ‘Trophy pet food’. An example of the packaging is as follows:

• Annex 2: Invoices. A considerable number of invoices have been filed, totalling 673 pages worth of documents. The invoices are dated mainly between 2010 and 2013. They are made out to numerous addresses in Spain. The trade mark is mentioned in the following terms: ‘TROPHY CAT MENU 20 KG’ together with the code GTRM20 or ‘TROPHY CAT MENU 4 KG’ together with the code GTRM4. The trade mark ‘TROPHY CAT’ is mentioned on many occasions, along with other products, and the amounts mentioned in the invoices are considerable, both in monetary terms and as regards the number of units sold.

• Annex 3: A list of product codes.

• Annex 4: Invoices issued by packaging companies for printing ‘TROPHY’ bags and diptychs for ‘TROPHY’ products. The packaging invoices are dated mainly between 2011 and 2013. A quick glance at them reveals that a considerable amount of packaging bearing the trade mark at issue has been ordered and paid for by the opponent over a period of time.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The invoices and packaging show that the place of use is Spain. This can be inferred from the language of the documents (‘Spanish’) and the addresses mentioned in the invoices, which are all in various different parts of Spain. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

The documents filed, namely the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. It is clear from the considerable number of invoices filed that the opponent has genuinely been using the mark over a substantial period of time in Spain.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the mark mostly appears in the evidence as ‘TROPHY CAT MENU’, as has been explained above. ‘TROPHY’ appears as slightly stylised on the packaging, with the words ‘CAT MENU’ below. In the invoices, reference is simply made to ‘TROPHY CAT MENU’. The applicant contends that the addition of other words such as ‘menu’ can only lead to the conclusion that the mark has not been used as registered. The Opposition Division does not agree. First, the earlier mark is a word mark, so use in a figurative form and slightly different configuration to that registered is acceptable as word marks only provide protection for the words as such, and not the form in which they are reproduced. Secondly, the word ‘MENU’ is descriptive, as acknowledged by the applicant. It refers in a general way to the type of food eaten. Since this element will be seen as descriptive in connection with cat food, ‘MENU’ does not alter the distinctive character of the mark in the form in which it was registered.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use only for foodstuffs for cats. These goods can be considered to form an objective subcategory of foodstuffs for animals. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for Foodstuffs for cats, with the express exception of any other product included in this class.

1. The goods and services

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

Class 31: Foodstuffs for cats, with the express exception of any other product included in this class.

The contested goods and services are the following:

Class 3: Soaps, shampoos and cosmetics for dogs and cats.

Class 28: Toys for dogs and cats; inedible toys for chewing and gnawing for dogs and cats.

Class 31: Products and preparations for breeding dogs and cats; food in the form of flakes, granulates, extrudates, tablets, dried and lyophilised natural food for dogs and cats; food containing nutritional preparations for dogs and cats not for medical purposes; edible bones and edible goods for chewing and gnawing for dogs and cats; bedding, gravel bedding and sand for dogs and cats.

Class 35: Organisation, operation and supervision of customer loyalty schemes; organisation of prize draws for promotional purposes; organisation of events for promotional purposes; the above-listed services in the field of breeding of dogs and cats.

Class 41: Organising and conducting lotteries, including prize draws; educational events; organisation of competitions for educational or entertainment purposes; organisation of contests for educational and entertainment purposes; the above-listed services in the field of breeding of dogs and cats.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 3

The contested goods soaps, shampoos and cosmetics for dogs and cats are all products for cleansing and grooming dogs and cats. The earlier goods are foodstuffs for cats. It is common on the market for the producers of pet food to branch into other related areas, which include areas such as cosmetics and cleansing articles for animals. Therefore, the goods at issue may originate from the same producers, be aimed at the same consumers, and distributed through the same channels, namely specialist pet shops. These goods are therefore similar.

Contested goods in Class 28

The contested toys for dogs and cats; inedible toys for chewing and gnawing for dogs and cats are playthings for animals. These goods are similar to the earlier goods for all the reasons given above in the comparison on Class 3, which may be applied here by analogy.

Contested goods in Class 31

The contested food in the form of flakes, granulates, extrudates, tablets, dried and lyophilised natural food for dogs and cats; food containing nutritional preparations for dogs and cats not for medical purposes; edible bones and edible goods for chewing and gnawing for dogs and cats all covers food in various different formats, either for dogs or cats. These goods are at least similar to the earlier goods because the goods at issue may originate from the same producers, be aimed at the same consumers, and distributed through the same channels, namely specialist pet shops, and have a similar purpose and method of use.

The contested products and preparations for breeding dogs and cats is a rather vague expression which requires some definition. The Opposition Division considers that since these goods belong to Class 31, they are necessarily special sorts of foodstuffs for dogs and cats which are going to be bred. As such, these goods are again at least similar to the earlier goods for all the reasons given in the paragraph above.

The contested bedding, gravel bedding and sand for dogs and cats are products which are used for hygienic purposes and to maintain the comfort of dogs and cats. These goods are similar to the earlier goods because they may originate from the same producers, be aimed at the same consumers, and distributed through the same channels, namely specialist pet shops.

Contested services in Class 35

The contested organisation, operation and supervision of customer loyalty schemes; organisation of prize draws for promotional purposes; organisation of events for promotional purposes; the above-listed services in the field of breeding of dogs and cats are very specific services concerned with organising loyalty schemes, prize draws and event organisation. While it is true that the services state that they are limited to a field which involves pets, this does not lead to a finding of similarity with the earlier foodstuffs for cats. It is clear that the contested services and the earlier goods will be provided by different companies, they will not be aimed at the same consumers and they have a different nature and purpose. There is no complementary relationship between them either. Therefore, the contested services are dissimilar to the earlier goods.

Contested services in Class 41

The contested organising and conducting lotteries, including prize draws; educational events; organisation of competitions for educational or entertainment purposes; organisation of contests for educational and entertainment purposes; the above-listed services in the field of breeding of dogs and cats are very specific services concerned with organising lotteries, educational events, and competitions and contests. While it is true that the services state that they are limited to a field which involves pets, this does not lead to a finding of similarity with the earlier foodstuffs for cats. It is clear that the contested services and the earlier goods will be provided by different companies, they will not be aimed at the same consumers and they have a different nature and purpose. There is no complementary relationship between them either. Therefore, the contested services are dissimilar to the earlier 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 similar are directed at the public at large. The degree of attention is average.

3. The signs

TROPHY CAT
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 ‘TROPHY CAT’ has no meaning for the relevant public and is therefore distinctive. It has no element which could be considered more dominant than others since it is a word mark. On the other hand, the contested sign contains a device element which is both visually dominant due to its size and less distinctive than the words in the mark since it portrays a cat and a dog. Since the relevant goods are all related to pets, the device element is deemed weak in connection with the goods.

The words ´TropiCat’ and ‘TropiDog’ have no meaning overall for the relevant public and are distinctive in connection with the goods, even if there is a possibility, as argued by the applicant, that ‘tropi’ might be associated with ‘tropical’. The words at the bottom of the sign, ‘International Breeders Club’, appear in very small print and where noticed by the public, only the word ‘CLUB’ will be understood as referring to an organisation of people interested in a particular activity or subject. However, overall these words are distinctive.

Visually, the signs coincide in ‘TROP’ and ‘CAT’. However, they differ in the letters ‘HY’ at the end of the first word of the earlier mark and ‘I’ at the end of the first word of the contested sign. They differ in all the other words contained in the contested sign, except for the repetition of ‘Trop’ at the beginning of ‘TropiDOG’, and the device element, which is weak as explained above. So although it attracts attention visually, the words in the sign, ‘TropiCat’ and ‘TropiDog’, have at least an equal visual impact. The other words are much smaller and have less impact on the consumer’s eye.

Furthermore, 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).

The signs also coincide in their beginnings. 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.

Therefore, taking into account the counterbalancing of the dominant device element in the contested sign with its weak character, since the signs coincide in their beginnings, they are similar to an average degree.

Aurally, the letters in the earlier mark ‘TROPHY CAT’ and the first word element of the contested sign ‘TropiCAT’ will be pronounced in an almost identical manner since the ‘H’ in the earlier mark will probably not be pronounced and the ‘Y/I’ sound is pronounced identically. The pronunciation differs in the remaining words in the contested sign, except for the repetition of ‘Tropi’ at the beginning of ‘TropiDOG’. Nevertheless, in view of the above considerations, the only other element which is likely to be pronounced is ‘TropiDOG’.

Therefore, the signs are similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning  conveyed by the device element of the contested sign and one of the words, where perceived, as explained above, the other sign has no meaning in that territory. 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.

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

The signs at issue are visually and aurally similar to an average degree. The goods have been found similar to varying degrees and the services dissimilar.

The earlier mark ‘TROPHY CAT’ is reproduced in almost exactly the same manner at the beginning of the contested sign. The final letter ‘Y’ will be pronounced in the same way as the letter ‘I’ at the end of ‘Tropi’. Furthermore, the Spanish-speaking consumer will probably not attempt to pronounce the letter ‘H’ in the earlier mark. The earlier mark is also inherently distinctive since contrary to the applicant’s assertions, Spanish-speaking consumers will not understand ‘CAT’. So the earlier mark coincides visually and aurally with the first words that will be read and pronounced in the contested sign.

It is true that the contested sign contains other elements, described in detail above. One of these, the device element, is also the visually dominant element in the sign due to its size. Nevertheless, since it consists of a rather simple depiction of a dog and cat and since the goods at issue are all related to dogs and cats, it is the view of the Opposition Division that this graphic element will not be seen as a badge of origin by the relevant consumer. Furthermore, consumers will naturally refer to a sign by its words.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to varying degrees to those 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 services cannot be successful.

The opponent has also based its opposition on the following earlier trade mark:

• Spanish trade mark registration No 2 503 049 for the word mark ‘TROPHY DOG’.

This trade mark was also subject to the request for proof of use and the opponent filed evidence in this regard. Nevertheless, even in the best case scenario that the opponent proved use for all of the goods, the outcome would not be different since the remaining dissimilar services are clearly dissimilar to the earlier Foodstuffs for animals, with the express exception of any other product included in this class in Class 31. Therefore, no likelihood of confusion exists with respect to those goods or the mark ‘TROPHY DOG’, and there is no purpose to be served by examining the evidence of use either.

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 shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Vít Mahelka

Lucinda CARNEY

Vanessa PAGE

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.