OPPOSITION No B 2 355 645

Next Retail Limited, Desford Road, Enderby, Leicester, United Kingdom (opponent), represented by Marks & Clerk LLP, 90 Long Acre, London, United Kingdom (professional representative)

a g a i n s t

Huttulan Kukko Oy, Penninkulmantie 518, Koski TL, Finland (applicant), represented by Kolster OY AB, Salmisaarenaukio 1, Helsinki, Finland (professional representative).

On 23/04/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 355 645 is partially upheld, namely for the following contested goods:

Class 31: Foodstuffs and fodder for animals, living animals.

2. European Union trade mark application No 12 459 111  is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 459 111 for the word mark ‘NEXT DOOR’, namely against all the goods in Classes 29 and 31. The opposition is based on, inter alia, on United Kingdom registration No 2 473 855 for the word mark ‘NEXT’. 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.

The opposition is based on more than one earlier trade mark. For the reasons explained below, (please see the section Substantiation) the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s United Kingdom registration No 2 473 855.

1. The goods

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

Class 31: Fresh flowers; dried flowers; plants; seeds; horticultural products; agricultural, horticultural and forestry products a ...Show morend grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals; malt.

The contested goods are the following:

Class 29: Meat and poultry; processed meat products.

Class 31: Foodstuffs and fodder for animals, living animals.

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 29

All the contested meat and poultry; processed meat products consist of foodstuffs of animal origin for human consumption and are considered dissimilar to the opponent’s goods in Class 31, which include mainly land and sea products not having been subjected to any form of preparation for consumption, live animals and plants as well as foodstuffs for animals. lt is not common on the market that the producers of the opponent’s goods would produce foodstuffs of animal origin for human consumption and vice versa. These goods have a different purpose, they are sought out by different consumers, they normally originate from different producers and distributors and they are not in competition with or complementary to each other.

Contested goods in Class 31

The contested Foodstuffs for animals are identically mentioned in the opponent’s specification.

The contested fodder for animals is included in a broad category of the opponent’s foodstuffs for animals. Therefore, they are identical.

The contested living animals are similar to the opponent’s foodstuff for animals. Live animals are often sold in, for example, pet shops, where foodstuffs for animals are also sold. Therefore, they have the same distribution channels and target the same relevant public. Furthermore, they are complementary to each other.

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 and similar are directed at the public at large with a normal degree of attentiveness.

3. The signs

NEXT	NEXT DOOR
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom

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).

Both sings are word marks, the earlier mark ‘NEXT’ and the contested sign ‘NEXT DOOR’. In the case of word marks, it is the word as such that is protected and not its written form. Additionally, being word marks, both signs have no elements that could be considered more dominant (visually eye-catching) than other elements.

The common word ‘NEXT’, being the only element of the earlier mark will be immediately perceived at the beginning of the contested sign by the relevant public as referring to an adjective in the expression ‘the next place or person is the one that is nearest to you’ (consulted on 16/04/2018, Collins English Dictionary online version at https://www.collinsdictionary.com/dictionary/english/next). This term is neither descriptive nor lacking distinctiveness for any of the relevant goods in question and, therefore, it enjoys an average degree of distinctiveness.

The second term of the contested sign ‘DOOR’, will be perceived by the relevant public as a countable noun meaning a piece of wood, glass, or metal, which is moved to open and close the entrance to a building, room, cupboard, or vehicle (consulted on 16/04/2018, Collins English Dictionary online version athttps://www.collinsdictionary.com/dictionary/english/door). This word is neither descriptive nor lacking distinctiveness for any of the relevant goods in question and, therefore, is normally distinctive in relation to them.

The contested sign may also be associated with a set expression ‘next door’ in English, referring to ‘a room or building, which is next one to the right or left’ (consulted on 20/04/2018, Collins English Dictionary online version athttps://www.collinsdictionary.com/dictionary/english/door). The English-speaking public at issue is fully aware that the semantic content of this expression comes precisely from the two terms of which it is composed. In any case, the adjective ‘NEXT’, as mentioned above, is normally distinctive in relation to the relevant goods, as it conveys no descriptive or allusive information as to their nature or characteristics.

Visually and aurally, the signs coincide in the distinctive term ‘NEXT’, which is the only element of the earlier mark and the first element of the contested sign. They differ in the second word of the contested sign ‘DOOR’. In this regard it should be noticed that the consumers generally tend to focus on the first (initial) element 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. Consequently, it is of relevance that the coincidence in the signs is placed at the beginning of the contested sign.

Taking into account that the only and distinctive element of the earlier mark is fully included at the beginning of the contested sign, but also the mentioned differentiating element ‘DOOR’ in the contested sign, it is considered that the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As regards the contested sign as a whole, as explained above, it may be perceived as referring to a room or building, which is next one to the right or left. Despite the conceptual difference produced by the term ‘DOOR’, the public will be still aware of the semantic content of the initial word ‘NEXT’, which is inherently distinctive in relation to the goods at issue, when perceiving the contested sign as a whole. Furthermore, the term ‘NEXT’ constitutes the only element of the earlier mark. Therefore, this coincidence generates an average degree of conceptual similarity between the marks.

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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

In the present case the conflicting goods are partially identical and similar and partially dissimilar.

The earlier mark has a normal degree of distinctiveness.

The earlier mark and the contested sign are visually, aurally and conceptually similar to an average degree on account of the common and normally distinctive element ‘NEXT’. Furthermore, this element constitutes the first element of the contested sign.

This conclusion is valid even in relation to the public which will associate the contested sign with a set expression ‘NEXT DOOR’. Indeed, English-speaking consumers will not fail to comprehend that the reference in question derives precisely from the sum of the parts constituting the expression at issue, namely ‘NEXT’ and ‘DOOR’.

Consequently, the signs display some visual, aural and conceptual differences which are limited to the second verbal element of the earlier mark, ‘DOOR’. As a result, this single difference is not sufficient to safely exclude a likelihood of confusion between the marks in question, in relation to the identical and similar goods.

Additionally, 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 view of the foregoing and taking into account all the relevant circumstances of the case, the Opposition Division concludes that the signs are sufficiently similar to induce a likelihood of confusion on the part of the relevant public in relation to the identical and similar goods.

In addition, in the present case it is highly conceivable that the relevant consumer will perceive the mark applied for as a sub-brand of the earlier mark configured in a different way according to the type of goods which it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Therefore, in the present, the relevant consumers could be led to believe that the opponent has launched a new version of the earlier ‘NEXT’ mark, which would be perceived as the ‘house’ brand, accompanied by another term (‘DOOR’) which designates the particular brand-line or new version.

Considering all the above, there is a likelihood of confusion, including a likelihood of association on the part of the relevant public. Therefore, the opposition is partially well founded on the basis of the opponent’s United Kingdom registration No 2 473 855. It follows that the contested trade mark must be rejected for all the contested goods found to be identical and similar to those of the earlier 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.

SUBSTANTIATION of the earlier UK Registration No 2 588 579, German registration No 302 011 040 443 and Irish registration No 246 641, all registered for the word mark ‘NEXT’ and for the goods in Classes 29 and 30.

According to Article 76(1) EUTMR (in the version in force at the time of commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR (in the version in force at the time of commencement of the adversarial part).

In the present case, the evidence filed by the opponent consists of registration certificates which show that the above-mentioned earlier rights expired before the expiration of the substantiation period, namely on 26/09/2017.

The earlier UK Registration No 2 588 579 expired on 07/06/2017 (filed on 07/06/2007), the German registration No 302 011 040 443 expired on 30/06/2017 and the Irish registration No 246 641 was filed (registered) on 07/06/2007 and, therefore, expired on 07/06/2017.

In this regard, on 20/05/2014 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit has been extended and expired, as mentioned above, on 26/09/2017.

The opponent did not submit any renewal certificates concerning the above-mentioned earlier registrations.

According to Rule 19(2)(a)(ii) EUTMIR (in the version in force at the time of commencement of the adversarial part) If the opponent has submitted a registration certificate but the registration is due to expire before the expiry of the time limit for substantiation, it must file a renewal certificate or equivalent document in order to prove that the term of protection of the trade mark extends beyond this time limit or any extension given to substantiate its opposition. Such information must be accessible from a source recognised by the Office if the opponent relied on it. What counts is the date on which the registration would expire, and not the possibility to renew the mark within the six-month grace period under the Paris Convention.

The above analysed earlier United Kingdom registration No 2 473 855 expired on 30/11/2017 (filed on 30/11/2007), namely after the expiration of the substantiation period.

When an earlier right on which the opposition is based reaches the end of protection after expiry of the time limit set by the Office to substantiate the opposition, the opposition is not automatically rejected in the absence of further communications or proof from the opponent. Rather a communication is issued to the opponent in which it is invited to submit evidence of renewal which is communicated to the applicant (judgment of 05/05/2015, T-715/13, Castello (fig.) / Castelló y Juan S.A. (fig.) et al., EU:T:2015:256, § 68 et seq.).

Due to these reasons, the Office asked the opponent to provide evidence of the renewal of this right. The opponent provided it and it was duly forwarded to the applicant.

Therefore, in the present case, the evidence consisting only of the registration certificates is not sufficient to substantiate the above mentioned opponent’s earlier marks since the opponent did not furnish the necessary renewal certificates of the above mentioned registrations before the expiry of the substantiation period.

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these earlier marks.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) 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 for only some 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

Gueorgui IVANOV

Monika CISZEWSKA

Liliya YORDANOVA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.