OPPOSITION No B 2 472 226

Dibaq-Diproteg, S.A., c/ La Cruz, 3, 40260 Fuentepelayo (Segovia), Spain (opponent), represented by Padima, Agentes de la Propiedad Industrial, Calle Gerona, 17, 1º A-B, 03001 Alicante, Spain (professional representative)

a g a i n s t

Four Legged Trends Limited, 54 Warwick Square, London SW1V 2AJ, United Kingdom (applicant), represented by Mathys & Squire LLP, Barnett House, 53 Fountain Street, Manchester M2 2AN, United Kingdom (professional representative).

On 26/10/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 472 226 is partially upheld, namely for the following contested goods and services:

Class 31: Foodstuffs for animals; food and beverages for animals; pet foods; edible pet treats.

Class 35: Retail and wholesale services connected with the sale of pet foods, foodstuffs for animals, food and beverages for animals, pet foods, edible pet treats.

2. Community trade mark application No 12 877 321 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of Community trade mark application No 12 877 321, namely against all of the goods in Class 31 and some of the services in Classes 35 and 44. The opposition is based on Community trade mark registration No 10 116 366. The opponent invoked Article 8(1)(b) CTMR.

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

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 and services

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

Class 31: Agricultural, horticultural, forestry and grains, grains not included in other classes. Live animals. Fresh fruit and vegetables. Seeds, except corn, soya, and chrysanthemum, plants and living flowers. Food for animals and malt.

Class 35: Retailing, wholesaling and/or selling via global computer networks of food for animals. Export and import of food for animals.

Class 44: Veterinary services.

The contested goods and services are the following:

Class 31: Foodstuffs for animals; food and beverages for animals; pet foods; edible pet treats.

Class 35: Retail and wholesale services connected with the sale of pet foods, foodstuffs for animals, food and beverages for animals, pet foods, edible pet treats.

Class 44: Medical services; veterinary services; provision of medical and nutritional information.

Contested goods in Class 31

Food for animals is identically contained in both lists of goods.

Despite minor differences in the wordings, the contested foodstuffs for animals are identical to the opponent’s food for animals.

The contested beverages for animals; pet foods; edible pet treats are included in the opponent’s broad category of food for animals. The goods are identical.

Contested services in Class 35

Notwithstanding the differences in the wordings, the contested retail and wholesale services connected with the sale of pet foods, foodstuffs for animals, food and beverages for animals, pet foods, edible pet treats refer to the same commercial activity as the opponent’s retailing, wholesaling of food for animals. These services are identical.

Contested services in Class 44

Veterinary services are identically contained in both lists of services.

The contested medical services include, as a broader category, the opponent’s veterinary services. It is impossible for the Opposition Division to filter these services from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s services, they are considered identical to the opponent’s services.

The contested provision of medical and nutritional information overlap with the opponent’s veterinary services, insofar as medical and nutritional information can be provided in relation to veterinary treatment. Therefore, they are considered identical.

2. The signs

SMART-CAN	SMARTPUPPY
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 (judgment of 08/09/2008, C‑514/06 P ‘Armacell’, paragraph 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Visually, the signs are similar to the extent that they coincide in the five-letter sequence ‘SMART’. However, they differ in the letters ‘CAN’ and the hyphen which visually splits the earlier mark into two words, and the letter string ‘PUPPY’ of the contested sign.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciations of the signs coincide in the sound of the letters ‛SMART’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciations differ in the sound of the letters ‛CAN’ of the earlier mark and the sound of the letters ‘PUP(P)Y’ of the contested sign.

Conceptually, a part of the public in the relevant territory, for example the English-speaking consumers, will discern the word ‘SMART’ in both signs. It has various meanings in English, most commonly ‘intelligent’, ‘clever’ (especially when referring to technology) and ‘elegant’. Those meanings will be clear to the English-speaking consumers. For the remaining non-English-speaking public of the European Union, for example consumers in the Romance-language areas, this word does not have any clear and evident meaning.

For a part of the public, the words ‘CAN’ in the earlier mark and ‘PUPPY’ in the contested sign will convey some concept. For example, the English-speaking consumers will associate ‘CAN’ with, inter alia, ‘a container especially for liquids’ and ‘tin’. ‘PUPPY’ will be understood as, inter alia, ‘a young dog’. For another part of the relevant public, those elements will be meaningless.

As a whole, the two words in the contested sign will be perceived by a part of the relevant public as referring to a young dog that is intelligent, clever or elegant. Where the relevant public understands the meaning of both words of the earlier mark, ‘SMART’ and ‘CAN’, the combination of those concepts will not convey any semantic content that would go beyond the mere sum of its parts.

For the English-speaking part of the public which perceives the concept conveyed by the word ‘SMART’ in both signs, they are conceptually linked. On the other hand, for the same part of the public the meanings attributed to the words ‘CAN’ and ‘PUPPY’ create a point of conceptual difference between the signs.

For the rest of the public, neither of the signs has a clear meaning. Since to that extent a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for that part of the relevant public.

Taking into account the abovementioned visual, aural and, for a part of the public conceptual coincidences, the signs under comparison are similar to a certain degree.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The English-speaking part of the relevant public will attribute to the word ‘SMART’ the concept of ‘intelligent’, ‘clever’ and ‘elegant’. In that regard, it is noted that the relevant goods are foodstuffs for animals, and the relevant services concern retail and wholesale activities in connection with food for animals, and medical/veterinary services. The concept conveyed by the word could be seen as implying that the consumer is intelligent/aware in choosing the particular goods and services in question. Therefore, for that part of the relevant public, the distinctiveness of the element ‘SMART’ is below average.

The element ‘CAN’ in the earlier mark will be associated by the English-speaking part of the relevant public with, inter alia, ‘a container’ and ‘tin’. In the context of food for animals, the term describes the kind of packaging and is, therefore, non-distinctive for the goods in Class 31 for that part of the public. With regard to the services in Classes 35 and 44, the element will be seen as fanciful and distinctive.

The element ‘PUPPY’ in the contested sign will be associated by the English-speaking part of the relevant public with, inter alia, ‘a young dog’. In relation to animal foodstuffs, retail and wholesale services in connection with animal food, and medical/veterinary services the term identifies their kind and/or end users and is, for that part of the relevant public, non-distinctive for all of the goods and services covered by the contested sign.

On the other hand, in the perception of the rest of the relevant public, the elements ‘SMART, ‘CAN’ (in the earlier mark) and ‘PUPPY’ (in the contested sign) are meaningless and have a normal degree of distinctiveness for all of the goods and services at issue. To that extent, none of the marks under comparison have an element that could be clearly considered more distinctive than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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.

The earlier trade mark as a whole has no clear meaning for any of the goods and services in question from the perspective of the entire public in the relevant territory. For the non-English-speaking part of the public, both verbal elements of the earlier mark have an average degree of distinctiveness. For the English-speaking part of the public, the earlier mark comprises an element that has weak distinctiveness, ‘SMART’, juxtaposed with the element ‘CAN’ which is non-distinctive for goods in Class 31 and distinctive for services in Classes 35 and 44, as explained in section c) of this decision. However, the combination of the words ‘SMART’ and ‘CAN’ is unusual and does not form a semantic unit even where both meanings are understood by a part of the public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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 relevant goods in Class 31 are animal foodstuffs, treats for pets etc. In Class 35, some of the relevant services are retail activities in connection with animal foodstuffs. These goods and services are mainly directed at the public at large with experience or at least interest in animal care. The rest of the services in Class 35 are wholesale activities that are mainly intended for business customers with expertise in procurement of animal foodstuffs.

As animal foodstuffs are purchased frequently and do not imply particularly high involvement on the part of the public, it is considered that the degree of attention paid by the average consumer, be it the public at large or the business customer, varies from average (in relation to specialised animal foodstuffs in Class 31, and services in Class 35) to low (in relation to possibly cheap and plain animal foodstuffs in Class 31).

On the other hand, the relevant services in Class 44 are provided in the medical/veterinary field. They are directed both at the public at large and at professionals with specific veterinary knowledge and expertise in animal nutrition. It is considered that the consumers’ sophistication and attentiveness is enhanced in relation to medical/veterinary services because of higher involvement on the part of public for health-care related services, even when the patient is an animal.

6. Global assessment, other arguments and conclusion

The assessment of likelihood of confusion does not amount to taking into consideration only one component of a complex trade mark and comparing it with another mark, but such a comparison must, on the contrary, be made by examining the marks in question, each considered as a whole (judgment of 06/10/2005, C‑120/04, ‘Thomson Life’, paragraph 29; order of 28/04/2004, C‑3/03, ‘Matratzen’, paragraph 32).

The Court has set out the essential principle that 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 services and vice versa (judgment of 29/09/1998, C-39/97, ‘Canon’, paragraph 17). This principle of interdependence is crucial to the analysis of likelihood of confusion, particularly as, in the present case, the goods and services are identical, whereas the similarity between the signs is moderate.

The signs are similar on account of the shared five-letter/sound sequence, ‘SMART’.

The question is whether the non-common elements remove the overall impressions of the signs sufficiently far in the perception of the relevant public.

The first parts of the conflicting marks, ‘SMART’, are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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, the identical first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

Where the signs are not understood by the non-English-speaking part of the public in the pertinent territory, the consumers’ attention will fall on the visual and aural aspects, where the similarity residing in the identical beginnings will be immediately perceived. For the same part of the relevant public, the distinctiveness of the coinciding element is normal. These are relevant factors that have to be weighed up in the global assessment of likelihood of confusion.

Taking into consideration that the average consumer’s degree of attention will not be enhanced in relation to the goods and services in Classes 31 and 35 (and even could be low for some goods in Class 31), it is likely that the non-English-speaking part of the relevant public could be misled into attributing a common trade origin to those goods and services, particularly bearing in mind that they are identical.

On an overall assessment, the Opposition Division concludes that there is a likelihood of confusion on the part of the non-English-speaking part of the relevant public in relation to the goods and services in Classes 31 and 35. As stated above in section b) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is partially well founded on the basis of the opponent’s Community trade mark registration No 10 116 366. It follows that the contested trade mark must be partially rejected for the contested goods and services in Classes 31 and 35.

However, concerning the rest of the services (namely medical/veterinary services in Class 44) for which the average consumer will have enhanced attentiveness, the Opposition Division finds that the differences will be mentally registered to an extent that enables the public to safely distinguish between them.

That applies to both the non-English-speaking part of the relevant public for which the non-common elements are distinctive, and to the English-speaking part of the public. Specifically, consumers will take more time and care to familiarise themselves with the details of the medical/veterinary services provided under the signs at issue and will not disregard the visual and aural differences residing in the non-common elements, ‘CAN’ and ‘PUPPY’. The English-speaking consumers will perceive the common element, ‘SMART’, as not particularly distinctive in relation to these services. Moreover, there are conceptual differences resulting from the non-common elements, even considering that the word ‘PUPPY’ is non-distinctive.

The Opposition Division concludes that, for services in Class 44, the differences between the signs are sufficient to counteract the similarities despite the identity of the services. No likelihood of confusion exists on the part of the public for those services.

Therefore, the opposition is not successful insofar as the contested services in Class 44 are concerned.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, 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

Carmen SANCHEZ PALOMARES

Solveiga BIEZA

Alexandra APOSTOLAKIS

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.