OPPOSITION No B 2 675 794

Multifit Tiernahrungs GmbH, Westpreußenstr. 32-38, 47809 Krefeld, Germany (opponent), represented by Jonas Rechtsanwaltsgesellschaft mbH, Hohenstaufenring 62, 50674 Köln, Germany (professional representative)

a g a i n s t

Matina GmbH, Herzog-Wilhelm-Str. 12, 80331 München, Germany (holder), represented by Hans Theodor Keller, Heubergweg 8, 83064 Raubling, Germany (professional representative)

On 14/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 675 794 is partially upheld, namely for the following contested goods:

Class 28: Rattles for domestic pets; big and small balls for games; mobiles [toys]; plush toys; dolls; ring games for domestic pets, especially rings of jute as toys for dogs and cats; swings; playing balls; small playing balls; toys for domestic pets, especially for cats; dumb-bells of jute as toys for dogs or cats; toys for domestic pets with noise reflection in case of acceleration or compression or tension; teddy bears; swings; games and toys; play fishing tackle for domestic pets, especially for dogs and cats, on their free ends a moveable toy is fixed; plush or textile toys for domestic pets, especially in form of hearths; cat tunnels [toys] in form of pipe sections of textile materials, plush or plastic; gymnastic articles not included in other classes.

Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; live edible aquatic animals; foodstuffs for animals; bedding and litter for animals; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; malt; algarovilla for animal consumption; algae for animal consumption; aromatic sand for pets [litter]; raw barks, berries, fresh fruits, distillery waste for animal consumption, peanut meal for animals; peanut cake for animals; live fish; fish spawn; fishmeal for animal consumption; fresh fruits; pet food; fodder for animals; lime for animal forage; grains for animal consumption; meal for animals; animal foodstuffs; straw [forage]; mash for fattening livestock; barley; sanded paper for domestic animals [litter]; beverages for pets; grains [cereals]; unprocessed cereal seeds, by-products of the processing of cereals, for animal consumption; oats; hay; yeast for animal consumption; dog biscuits; locust beans; edible chews for animals; bran mash for animal consumption; strengthening animal forage; preparations for egg laying poultry; flaxseed for animal consumption; flaxseed meal for animal consumption; flax meal [fodder]; maize; animal fattening preparations; stall food for animals; rice meal for forage; rye; sesame; salt for cattle; wheat germ for animal consumption; cuttle bone for birds; products for animal litter; straw litter; bred stock; litter peat; bird food.

2.        International registration No 1 264 166 is refused protection in respect of the European Union for all of the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of international registration designating the European Union No 1 264 166 ‘WOLF OF WILDERNESS’, namely against some of the goods in Classes 21 and 28 and all the goods in Class 31. The opposition is based on European Union trade mark registration No 12 504 056 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

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

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

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

Class 5: Veterinary preparations and additives for foodstuffs for animals, in particular those caring for animals' teeth; Medical dog treats for tooth care; Disinfectants.

Class 28: Toys for domestic pets.

Class 31: Foodstuffs for animals; Foodstuffs for animals; Products for animal litter, in particular cat litter and litter for small animals; Hay, straw; Plants for indoor aquaria; Chew bones and chew sticks for domestic animals, in particular non-medical dog treats for tooth care.

After a limitation the contested goods are the following:

Class 21: Brushes; brush goods; articles for animals, namely, aquaria and vivariums; devices for pest and vermin control; bird baths; cages, food containers for pet animals; fly swatters; fish bowls; aquarium hoods; aerosol dispenser, not for medical purposes; indoor aquaria; basins, [receptacles]; sprinkling devices; nozzles for sprinkler hose; syringes for watering flowers and plants; holders for flowers and plants [flower arranging]; artificial nest eggs; insect traps; litter boxes [trays] for pets; mangers for animals; tankards; cages for household pets; horse brushes; currycombs; combs for animals; feeding troughs; perfume burners; dishes; dishwashing brushes; indoor terrariums [plant cultivation]; indoor terrariums [vivariums]; drinking troughs; birdcages; rings for birds; water apparatus for cleaning teeth and gums; mouse traps; rat traps; glasses [receptacles]; dispensers for plastic bags for disposing of pet waste; washtubs.

Class 28: Practical jokes [novelties]; rattles for domestic pets; big and small balls for games; building games; landing nets for anglers; decoys for hunting; spinning tops [toys]; hunting game calls; mobiles [toys]; marbles for games; butterfly nets; plush toys; dolls; ring games for domestic pets, especially rings of jute as toys for dogs and cats; swings; swimming pools [play articles], playing balls; dice; small playing balls; toys for domestic pets, especially for cats; dumb-bells of jute as toys for dogs or cats; toys for domestic pets with noise reflection in case of acceleration or compression or tension; teddy bears; swings; games and toys; play fishing tackle for domestic pets, especially for dogs and cats, on their free ends a moveable toy is fixed; plush or textile toys for domestic pets, especially in form of hearths; cat tunnels [toys] in form of pipe sections of textile materials, plush or plastic; gymnastic articles not included in other classes.

Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; live edible aquatic animals; foodstuffs for animals; bedding and litter for animals; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; malt; algarovilla for animal consumption; algae for animal consumption; aromatic sand for pets [litter]; raw barks, berries, fresh fruits, distillery waste for animal consumption, fertilised eggs for hatching; peanut meal for animals; peanut cake for animals; live fish; fish spawn; fishmeal for animal consumption; fresh fruits; pet food; fodder for animals; lime for animal forage; grains for animal consumption; meal for animals; animal foodstuffs; straw [forage]; mash for fattening livestock; barley; sanded paper for domestic animals [litter]; beverages for pets; grains [cereals]; unprocessed cereal seeds, by-products of the processing of cereals, for animal consumption; oats; hay; yeast for animal consumption; dog biscuits; locust beans; edible chews for animals; seed germ for botanical purposes; bran mash for animal consumption; strengthening animal forage; preparations for egg laying poultry; flaxseed for animal consumption; flaxseed meal for animal consumption; flax meal [fodder]; maize; animal fattening preparations; stall food for animals; rice meal for forage; rye; sesame; salt for cattle; wheat germ for animal consumption; cuttle bone for birds; products for animal litter; straw litter; bred stock; litter peat; bird food.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods, and the term ‘especially’, used in the holder’s list of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the holder’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 21

The contested brushes; brush goods; horse brushes; dishwashing brushes are devices used to clean or polish surfaces, groom the hair, etc.

The contested currycombs; combs for animals are devices for grooming people or animals.

The contested artificial nest eggs are artificial objects placed in a nest to induce birds to lay eggs.

The contested rings for birds are usually fixed to the animal’s leg, with the name of the breeder and the year of birth together with other information engraved upon request by the breeder.

The contested articles for animals, namely, aquaria and vivariums; cages, fish bowls; indoor aquaria; basins, [receptacles]; cages for household pets; indoor terrariums [vivariums]; birdcages are cages or other kind of receptacles used to transport or contain different kinds of animals.

The contested aquarium hoods are parts of receptacles for water animals.

The contested food containers for pet animals; mangers for animals; feeding troughs; dishes; drinking troughs are articles or devices for storing or offering foodstuff or drink to animals and people.

The contested indoor terrariums [plant cultivation] are receptacles used to contain different kinds of plants.

The contested devices for pest and vermin control; fly swatters; insect traps; mouse traps; rat traps are devices to capture and eventually kill unwanted animals.

The contested bird baths; litter boxes [trays] for pets; washtubs; dispensers for plastic bags for disposing of pet waste are articles or devices used in for the hygiene of animals.

The contested holders for flowers and plants [flower arranging] are small articles which are used to fix flowers, plants or flower pots at walls or fences.

The contested perfume burners; aerosol dispenser, not for medical purposes are articles to refresh and clean the air.

The contested tankards; glasses [receptacles] are containers for liquids.

The contested sprinkling devices; nozzles for sprinkler hose; syringes for watering flowers and plants are devices for watering plants.

The contested water apparatus for cleaning teeth and gums are teeth cleaners which use jets of water, also known as water picks.

They have a different nature and purpose from the opponent’s goods in Classes 5, 28 and 31. Moreover, they are neither complementary nor in competition, and do not have the same distribution channels, end users or usual origin. The fact, that they might be used for animals is not sufficient to make them similar. Therefore, these goods are dissimilar.

Contested goods in Class 28

The contested toys for domestic pets, especially for cats are identical to the opponent’s toys for domestic pets.

The contested rattles for domestic pets; ring games for domestic pets, especially rings of jute as toys for dogs and cats; dumb-bells of jute as toys for dogs or cats; toys for domestic pets with noise reflection in case of acceleration or compression or tension; play fishing tackle for domestic pets, especially for dogs and cats, on their free ends a moveable toy is fixed; plush or textile toys for domestic pets, especially in form of hearths; cat tunnels [toys] in form of pipe sections of textile materials, plush or plastic fall under the general term of the opponent’s toys for domestic pets. These goods are identical.

The contested big and small balls for games; plush toys; dolls; playing balls; small playing balls; teddy bears; swings (duplicated); games; gymnastic articles not included in other classes; mobiles [toys] overlap with the opponent’s toys for domestic pets as they can be used as toys for animals. These goods are identical.

The contested toys include, as a broader category, the opponent’s toys for domestic pets. 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 contested building games; spinning tops [toys]; marbles for games; dice are quite specific games or playthings which will not be used normally as toys for animals.

The contested landing nets for anglers; butterfly nets are nets which are used to capture animals, but not used by them as toys.

The contested decoys for hunting are imitations of animals which are used to capture animals, but not used as toys.

The contested hunting game calls are devices, such as whistles, intended to imitate the cry of a bird or animal.

The contested practical jokes [novelties] are small gifts, cheap, unusual objects whole objects whose value is chiefly decorative, comical or the like, given to a guest at a party.

The contested swimming pools [play articles] are artificial pools for swimming in.

These goods have a different nature and purpose from the opponent’s goods in Classes 5, 28 and 31. Moreover, they are neither complementary nor in competition, and do not have the same distribution channels, end users or usual origin. Therefore, these goods are dissimilar.

Contested goods in Class 31

Foodstuffs for animals; litter for animals; animal foodstuffs; straw [forage]; hay; products for animal litter are identically contained in both lists of goods (including synonyms).

The contested agricultural, horticultural and forestry products and grains not included in other classes; live edible aquatic animals; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; malt; algarovilla for animal consumption; algae for animal consumption; raw barks, berries, fresh fruits, distillery waste for animal consumption; peanut meal for animals; peanut cake for animals; live fish; fish spawn; fishmeal for animal consumption; fresh fruits; pet food; fodder for animals; lime for animal forage; grains for animal consumption; meal for animals; mash for fattening livestock; barley; beverages for pets; grains [cereals]; unprocessed cereal seeds, by-products of the processing of cereals, for animal consumption; oats; yeast for animal consumption; dog biscuits; locust beans; edible chews for animals; bran mash for animal consumption; strengthening animal forage; preparations for egg laying poultry; flaxseed for animal consumption; flaxseed meal for animal consumption; flax meal [fodder]; maize; animal fattening preparations; stall food for animals; rice meal for forage; rye; sesame; salt for cattle; wheat germ for animal consumption; cuttle bone for birds; bred stock; bird food are included in the broad category of, or overlap with, the opponent’s foodstuffs for animals. Therefore, they are identical.

The contested bedding for animals; aromatic sand for pets [litter]; sanded paper for domestic animals [litter]; straw litter; litter peat are included in the broad category of, or overlap with, the opponent’s products for animal litter, in particular cat litter and litter for small animals. Therefore, they are identical.

The contested fertilised eggs for hatching are eggs used for breeding.

The contested seed germ for botanical purposes is germ which is not used for animals.

These goods have a different nature and purpose from the opponent’s goods in Classes 5, 28 and 31. Moreover, they are neither complementary nor in competition, and do not have the same distribution channels, end users or usual origin. Therefore, these goods are dissimilar.

2. Relevant public — degree of attention

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

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

The holder considers the level of attention to be above average. The Opposition Division does not agree. A part of the goods (e.g. hay, animal food) are cheap products and several of them (e.g. animal food) are bought on a regular basis. The level of attention is low for these. For some other goods (such as live animals) the level varies from low to average.

3. The signs

	WOLF OF WILDERNESS
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested trade mark.

The word ‘WILDERNESS’ is not understood in some territories where English is not spoken. Consequently, the Opposition Division finds it appropriate to focus on the non-English-speaking public, for example the Spanish-speaking public.

The contested sign is a word mark composed of the three separate words ‘WOLF’, ‘OF’ and ‘WILDERNESS’. As a word mark it has no dominant (more eye-catching) element. For the Spanish-speaking public these words are meaningless and, therefore, have an average degree of distinctiveness. The holder’s argument, that the word ‘WILDERNESS’ is weak for the English-speaking public is not relevant. In any case, the Opposition Division notes, that even if it would be considered to be descriptive, the other elements would not be more distinctive.

The holder argues that only the word ‘WOLF’ of the contested sign would be pronounced The Opposition Division cannot agree, the words ‘WOLF OF WILDERNESS’ are depicted in the same size and form a unit.

The earlier sign is a figurative mark in black, white, dark grey and light grey. It is composed of a photographic representation of a dog head on its left side in a dark background, with the words ‘ReaL NaTure’ below in small size letters and, further below the words ‘Pure quality for dogs’ in hardly legible letters. To the right of the figurative element is the word ‘WILDERNESS’ in bigger size letters and in a square grey background. The dark background and the grey background are of a purely decorative nature and are, therefore, non-distinctive. The figurative representation of the dog is weak for those goods, which are directed at these pets, such as for example animal foodstuffs. The word ‘REAL’ in Spanish refers to ‘royal’ and will be perceived as laudatory, therefore, with a lower degree of distinctiveness. The remaining verbal elements are meaningless in Spanish and have an average degree of distinctiveness. The verbal element ‘WILDERNESS’ is the most dominant (eye-catching) element due to its length and big typeface and, therefore, it is most probable that only this verbal element will be pronounced.

Visually and aurally, the signs coincide in the independent word ‘WIL-DER-NESS’, which is the longest word of the contested sign and the dominant (verbal) element of the earlier sign. Graphically, the signs differ in the figurative elements of the earlier mark, which is weak. They also differ visually and aurally in the other verbal elements of the earlier mark which are depicted in smaller typeface and are partially hardly legible. Furthermore, they differ in the two short words ‘WOLF’ and ‘OF’ of the contested sign. Overall, the signs are visually and aurally similar to an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the device of a dog’s head, included in the earlier mark, will be associated with canines and the word ‘REAL’ in Spanish is allusive to something ‘royal’, of high quality. The contested sign has no meaning for the Spanish-speaking public. 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, despite the presence of the allusive word ‘REAL’ and the device of a dog which is weak as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods of the opposing signs are partly identical and partly dissimilar. The distinctiveness of the earlier mark is normal. The level of attention of the relevant public varies from low to average.

The signs coincide in the verbal element ‘WILDERNESS’, which is the longest word of the contested mark and the most eye-catching (verbal) element of the earlier sign. For the Spanish-speaking public this common term has an average degree of distinctiveness. The differentiating elements are weak (the figurative element in the earlier mark), laudatory (the word ‘REAL’ in the earlier mark), or small in size so that the public will not focus their attention on them (‘ReaL NaTure’ and ‘Pure quality for dogs’ in the earlier mark) or rather short (‘WOLF’ and ‘OF’ in the contested sign). Therefore, the similarities outweigh the differences.

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).

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 the marks may be offset by a greater degree of similarity between the goods and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the European Union trade mark No 12 504 056. 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 international registration designating the European Union.

The holder refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the holder – R 1711/2008-1 FIREFOX/FOX RACING, THE WILD WOLF COMPANY/RED WOLF (fig.), B 1 131 657 FOX RACING/FIREFOX, B 438 038 DOGGY (fig.)/DOGGIES FUN – are not relevant to the present proceedings as they refer to other trade marks. None of them contains the word ‘WILDERNESS’ which is the common element of the present proceedings.

It follows from the above 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) 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

Octavio MONGE GONZALVO

Julia SCHRADER

Denitza STOYANOVA-VALCHANOVA

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.