OPPOSITION No B 2 239 617

Das Futterhaus-Franchise GmbH & Co. KG, Ramskamp 87, 25337 Elmshorn, Germany (opponent), represented by Heissner & Struck Rechtsanwälte Partnerschaft mbB, Hudtwalckerstr. 11, 22299, Hamburg, Germany (professional representative)

a g a i n s t

V.I.P. Very Important Pet B.V., Kerkenbos 1020 C/D, 6546 BA Nijmegen, Netherlands (holder), represented by Arlette Molenaar, Hoofdweg 50, 1058 BD Amsterdam, Netherlands (professional representative).

On 29/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 239 617 is upheld for all the contested goods.

2.        International registration No 1 139 395 is entirely refused protection in respect of the European Union.

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

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 139 395. The opposition is based on German trade mark registration No 30 556 030, the German sign used in the course of trade  and the German designation of a business operation ‘V.I.Pets’. The opponent invoked Article 8(1)(b) and 8(4) EUTMR.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 30 556 030.

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.

For international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR, that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be six months after the first republication of the international registration, which corresponds to the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at the time of filing of the opposition). The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The holder requested that the opponent submit proof of use of German trade mark No 30 556 030 on which the opposition is based.

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 relevant date (first republication of the contested international registration plus six months) is 14/06/2013. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany, from 14/06/2008 to 13/06/2013 inclusive.

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

Class 31:        Foodstuffs for animals; bred stock, in particular strengthening feed; rearing feed; dog biscuits; litter for animals; additives to fodder, not for medical purposes; strengthening feed; cat litter.

Class 35:        Procurement services, for others; order placement, delivery services; retail services in relation to foodstuffs for animals; presentation of goods and services.

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 11/02/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 16/04/2016 to submit evidence of use of the earlier trade mark. On 11/04/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, inter alia, the following:

• An affidavit issued by the opponent’s general manager, Herwig Eggerstedt, confirming that the Opponent started to use the trade mark  in 2007 and the trade mark  in 2009 for online shop services. According to the affidavit, the mark was used in relation to accessories, foodstuff and care products for dogs. Furthermore, the trade mark has been used as a store name for a shop selling dog accessories and care products in Germany since 2005. The opponent also submitted turnovers for 2007-2012. The affidavit is filed in English and German.

• Seven screenshots of the online shop www.v-i-pets.de dating from 08/12/2007 to 27/06/2013, showing the sale of various products, mainly foodstuff for animals and dog accessories, and use of the word sign ‘V.I.Pets’ or ‘V.I.Pets Shop’ and the figurative mark .

• Twenty invoices and partial translations thereof, showing the use of the opponent’s trade mark in relation to retail of foodstuff for animals and dog accessories, addressed to clients in Germany. The invoices are dated between 09/09/2008 and 01/12/2012. In addition, a copy of a pay slip dated 20/02/2016. The payslip and invoices bear the trade marks  and .

• Pictures showing the entrance of the opponent’s store in Hamburg, Germany, from 2009 to 2010, showing the use of the opponent’s trade mark in relation to retail services.

• Copies of the postcards used to advertise the trade mark for online shopping at www.v-i-pets.de and the store in Hamburg. The opponent claims that the postcards were distributed between 2009 and 2012.

• A copy of a press article entitled ‘Wir sind nun viel näher am Endkunden’, published in the magazine Pet 6/2008, stating that the opponent owns a shop named V.I.Pets-Shop in Hamburg, Germany.

• A copy of a press article entitled ‘Der Hund trägt Leopardenprin’ published in the newspaper Beilage Hamburger Morgenpost in May 2007. It shows the use of the opponent’s trade mark in relation to dog food and dog accessories.

• A copy of a press article entitled ‘Luxus Hund: Das Geschäft mit producten für Tiere boomt’ published in the newspaper Hamburger Abendblatt on 15/09/2012. The article states that the opponent owns the boutique V.I.Pets in Hamburg, Germany, which belongs to the second largest trade chain for pet food and pet needs in Germany.

The holder argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). The Opposition Division considers that there is no need to request a translation, as, for most of the documents, the opponent has submitted at least a partial translation, and the other items that have not been translated and are considered relevant have a self-explanatory character.

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).

The invoices, press articles and pictures of the opponent’s stores show that the place of use is Germany. This can be inferred from the language of the documents (German), and some addresses in Germany. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, in particular the invoices, supported by the affidavit, press articles and photos of the opponent’s shop, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use. The information presented in the invoices demonstrates that the use was not merely token, but sufficient to establish commercial amounts of transactions related to the services at issue. The invoices leave no doubt that the sales transactions under the opponent’s trade mark were carried out regularly throughout the relevant period.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

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.

In the present case, the evidence, in particular the press articles, pictures and screenshots of the opponent’s web shop, shows that the earlier sign was used in such a way as to establish a clear link between the trade mark and the company responsible for marketing the services. Therefore the evidence demonstrates that the opponent’s mark was used to identify the commercial origin of the services in question, that is, used in a trade mark sense.

The sign ‘V.I.Pets’ is registered as a word mark; however some of the evidence, namely the invoices, postcards and extracts from the opponent’s online shop website, show actual use in combination with other word elements such as ‘Shop’, ‘luxury goods & food for pets’ or ‘Fienes für vier Pfoten’ placed on a purely decorative oval background. The additional word element is presented in a much smaller size and has a non-distinctive character, as it describes the services and will be perceived as a non-distinctive promotional element. This use is therefore considered valid use of the registered trade mark.

The opposition is based on goods and services in Classes 31 and 35. However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services on which the opposition is based. According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services 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.

In the present case, the evidence clearly demonstrates that the trade mark was used in relation to retail services in relation to foodstuffs for animals; presentation of goods and services.

However, the evidence does not succeed in establishing that the trade mark was genuinely used for the rest of the goods on which the opposition is based. The proof of use mainly relates to the abovementioned services, whereas there is no or little reference to use of the opponent’s mark, in a trade mark sense, for the remaining goods and services. Specifically, the evidence is insufficient to show genuine use for the following goods and services:

Class 31:        Foodstuffs for animals; bred stock, in particular strengthening feed; rearing feed; dog biscuits; litter for animals; additives to fodder, not for medical purposes; strengthening feed; cat litter.

Class 35:        Procurement services, for others; order placement, delivery services.

Therefore, based on the results of the assessment of proof of use, the Opposition Division will only consider the following of the opponent’s services in its further examination of the opposition:

Class 35:         Retail services in relation to foodstuffs for animals; presentation of goods and services.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

1. The goods and services

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

Class 35:        Retail services in relation to foodstuffs for animals; presentation of goods and services.

The contested goods are the following:

Class 31:         Foodstuffs for animals; foodstuffs for cats and dogs.

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 31

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested foodstuffs for animals; foodstuffs for cats and dogs are similar to a low degree to the opponent’s retail services in relation to foodstuffs for animals.

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 and services found to be similar to a low degree are directed at the public at large. The degree of attention is average.

3. The signs

V.I. Pets
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 earlier sign consists of the upper case letters ‘V.I.’ and the English word ‘Pets’. Although the mark has no meaning in German, at least the part of the German-speaking public that can understand English will perceive the sequence of upper case letters as the widely known abbreviation for the English expression ‘very important person’. The word ‘Pets’ has a low degree of distinctiveness in relation to retail of foodstuff for pets, as it describes the type of the goods. However, the sign as a whole is an original play on words, as ‘VIP’ is known as an abbreviation for ‘very important person’ and replacing the word ‘person’ with ‘Pet’ gives rise to a surprising change in meaning. Therefore, the earlier sign as a whole has a normal degree of distinctiveness in relation to the goods and services in question.

The contested sign is a figurative mark consisting of the letters ‘V.I.P.’ in bold characters and below them the words ‘VERY IMPORTANT PET’ in a much smaller script. The verbal element has a purely decorative background of two overlapping grey squares. The most eye-catching element of the contested sign, the abbreviation ‘V.I.P.’, would normally be understood as in English (very important person); however, its meaning is clarified by the phrase underneath as ‘VERY IMPORTANT PET’. The sign as a whole has a normal degree of distinctiveness.

Visually, the signs coincide in their beginnings, namely in the initials ‘V.I.P.’, presented in upper case between dots in both marks, and the signs also have in common the word ‘Pet(s)’. The letters ‘V.I.P.’ are the most eye-catching element in the contested sign. The marks differ in the remaining verbal elements in the contested sign and in the purely decorative background in the contested sign. According to case-law, 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 rather than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R-233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R-53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). It follows that, in the present case, the consumer will identify and memorise the verbal element that they have in common, rather than the figurative element. Therefore, the signs are visually similar to an average degree.

Aurally, it is not possible to rule out that some part of the relevant public who is able to understand English may read the earlier mark, ‘V.I.Pets’ as ‘Very Important Pets’. Therefore, the pronunciation of the signs coincides for that part of public in the words ‘Very Important Pet*’.

Some part of the public who is able to understand English may pronounce the earlier sign as /VEE-AY-Pets/ and the contested sign as /VEE-AY-Pee/. Therefore, given that at least for part of the public the signs coincide in most of the words, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as meaning ‘very important pet’, the signs are conceptually identical.

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. As stated above in section c), the word ‘Pets’ has a low degree of distinctiveness in relation to the goods in question. However, the earlier trade mark as a whole is an original play on words and has no meaning for any of the services 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

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.

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 distinctiveness of the earlier mark is normal and the relevant public’s degree of attention is average. The signs under comparison are visually and aurally similar to an average degree. The signs are conceptually identical.

The contested goods are foodstuff for animals and the earlier mark is protected for retail services in relation to foodstuff for animals. Therefore, it is likely that the relevant consumer will perceive the goods bearing the contested mark as the opponent’s own brand products (products manufactured specially for the retailer and bearing the retailer’s name). This is because it is common for retailers to design  and packaging of the goods to build on the relationship between the products and the retailer’s custom base, and the relevant consumers are aware of that fact. For these reasons, it is likely that the relevant consumer will perceive the contested sign as a sub-brand, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all of the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 556 030. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right German trade mark registration No 30 556 030 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 and grounds invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 holder 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

Michaela SIMANDLOVA

Liina PUU

Loreto URRACA LUQUE

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.