OPPOSITION No B 2 517 020

Consum, S. Coop. Valenciana, Avenida Alginet, Nº 1, 46460 Valencia, Spain (opponent), represented by Julia Maldonado Jordán, Calle Linares, 7, 3º, 46018 Valencia, Spain (professional representative)

a g a i n s t

Prima Pet Premium Oy, Palmrothintie 2, 33950 Pirkkala, Findland (applicant).

On 28/01/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 517 020 is partially upheld, namely for the following contested goods:

Class 18: Girths of leather.

Class 31: Foodstuffs for animals; Bedding and litter for animals.

2. Community trade mark application No 13 665 203 is rejected for all 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 Community trade mark application No 13 665 203, namely against all the goods in Classes 18 and 31. The opposition is based on Spanish trade mark registrations No 1 902 351 and No 2 769 946. 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

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

1. Spanish trade mark registration No 2 769 946:

Class 18: Collars for animals; harnesses for animals.

2. Spanish trade mark registration No 1 902 351:

Class 31: Cat food.

The contested goods are the following:

Class 18: Walking sticks; Umbrellas and parasols; Imitation leather; Leather and imitation leather; Girths of leather; Leather, unworked or semi-worked.

Class 31: Foodstuffs and fodder for animals; Live animals, organisms for breeding; Agricultural and aquacultural crops, horticulture and forestry products; Bedding and litter for 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 18

The contested girths of leather are bands or straps that encircle the body of an animal to fasten something (as a saddle) on its back. They can form part of an animal harness, especially horse harness. Therefore, they are similar to a high degree to the opponent’s harnesses for animals. They coincide in their producers, distribution channels and the relevant public. They can be used in combination with each other.

The contested walking sticks are canes and other devices used as an aid in walking. The contested umbrellas and parasols are goods used for protection from the weather conditions. Their nature, purpose and method of use are different than those of the opponent’s collars for animals; harnesses for animals or cat food. They are not produced by the same manufacturers and are not aimed at the same public. They are neither complementary to nor in competition with each other. Therefore, they are dissimilar.

The contested imitation leather; leather and imitation leather; leather, unworked or semi-worked are dissimilar to the opponent’s collars for animals; harnesses for animals or cat food. The mere fact that some of the opponent’s goods may be made of leather is not sufficient in itself to show that these goods are similar to the contested raw materials, such as leather and imitation leather. Their nature, purpose and method of use are different. They are not produced by the same manufacturers and are not aimed at the same public.

Contested goods in Class 31

The contested foodstuffs for animals include, as a broader category, the opponent’s cat food. 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 bedding and litter for animals are similar to the opponent’s cat food. They can be part of the same product line, and, therefore, they can be produced by the same manufacturer and sold via the same distribution channels. They are also aimed at the same relevant public.

The contested fodder for animals is dissimilar to the opponent’s collars for animals; harnesses for animals or cat food. Even though the contested fodder for animals and the opponent’s cat food serve for feeding animals, fodder is an agricultural foodstuff used specifically to feed domesticated livestock, such as cattle, goats, sheep, horses, chickens and pigs, while cat food is aimed at feeding domestic cats. These goods are normally produced by different manufacturers and sold via different distribution channels. While cat food is available in pet stores and supermarkets, fodder is sold specialized shops and aimed at professional public consisting of farmers and other livestock owners. These goods are neither complementary to nor in competition with each other. With regards to the opponent’s collars for animals; harnesses for animals, the conflicting goods have different purpose, nature and method of use. They are produced by different manufacturers operating in a different industry.

The contested live animals, organisms for breeding; horticulture and forestry products; agricultural and aquacultural crops are dissimilar to the opponent’s goods. They have different nature, purpose and method of use. They are produced by different manufacturers, sold via different sales channels and aimed at different relevant public. In particular, the fact that the opponent’s cat food can contain, e.g. some agricultural crops is not enough to establish similarity between the goods, since the contested products normally do not serve as a food for cats.

2. The signs

PRIMUM CAT
Earlier trade marks	Contested sign

The relevant territory is Spain.

The earlier marks are word marks composed of the verbal elements ‘PRIMUM CAT’. The contested sign is a figurative mark consisting verbal elements ‘DELUXE’, written in black uppercase typeface and placed at the top of the mark, ‘prima’, written in black lowercase typeface and placed underneath, and ‘CAT’ written in black uppercase typeface, situated at the bottom of the sign. On the left side of the element ‘CAT’ there is a figurative element depicting a silhouette of a cat.

Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘PRIM-’ and the verbal element ‘CAT’, present identically in the marks. However, they differ in the verbal element ‘DELUXE’ of the contested sign, the letters ‘-UM’ present at the end of the element ‘PRIMUM’ of the earlier marks versus the letter ‘-A’ placed at the end of the element ‘PRIMA’ in the contested sign, as well as in the stylisation and the additional figurative element of the contested sign.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛PRIM-’ and ‘CAT’ present identically in the signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‛DELUXE’ of the contested sign, as well as in the sound of the letters ‘-UM’ present at the end of the element ‘PRIMUM’ of the earlier marks versus the letter ‘-A’ placed at the end of the element ‘PRIMA’ in the contested sign.

Conceptually, the element ‛DELUXE’ of the contested sign will be associated with something exclusive, excellent, very fine in quality or luxurious, since it is an adjective commonly used in trade and advertising. The element ‘prima’ of the contested sign will be understood as a ‘cousin’ (information extracted from Collins Spanish-English Dictionary on 20/01/2015 at http://www.collinsdictionary.com/dictionary/spanish-english/primo). The figurative element of the contested sign, depicting a silhouette of a cat, will be associated with the concept it represents, i.e. a cat. The verbal element ‘CAT’ will not be associated with any meaning by the public in the relevant territory.

The earlier marks lack any meaning in the relevant territory. Since the earlier signs will not be associated with any meaning, the conflicting signs are not conceptually similar.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

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 earlier marks have no elements that could be clearly considered more distinctive than other elements.

The element ‘DELUXE’ of the contested sign will be associated with something exclusive, excellent, very fine in quality or luxurious. It suggests that the relevant goods are exceptionally good, superior to other products. Therefore, it is considered that this element is weak for all the goods at issue. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the conflicting signs.

The figurative element of the contested sign will be associated with the concept it represents, i.e. a cat. Bearing in mind that the relevant goods are foodstuffs for animals and bedding and litter for animals it is considered that this element is weak for these goods. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the conflicting signs.

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 marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks 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 goods found to be identical or similar (to various degrees) are directed at the public at large. The degree of attention will be average.

6. Global assessment, other arguments and conclusion

The goods are partly identical, partly similar (to various degrees) and partly dissimilar. The signs were found to be similar to the extent that they coincide in the sequence of letters ‘PRIM-’ and the verbal element ‘CAT’, present identically in the marks.

The differences between the marks lie in the additional verbal element ‘DELUXE’ of the contested sign, the letters ‘-UM’ present at the end of the element ‘PRIMUM’ of the earlier marks versus the letter ‘-A’ placed at the end of the element ‘PRIMA’ in the contested sign, as well as in the stylisation and the additional figurative element of the contested sign.

However, as it was established in section c) of this decision, the element ‘DELUXE’ is weak for the relevant goods and, therefore, its impact is limited when assessing the likelihood of confusion between the marks at issue. Its existence in the contested sign cannot change the overall impression of similarity, conveyed by the conflicting marks.

With regard to the stylization and the additional figurative element of the contested sign, it must be reminded that when signs consist of both word and figurative components, the principle has been established that the word element of the sign usually has a stronger impact on the consumer than the figurative one. This is because the public tends not to analyse signs and will most readily refer to a sign by its verbal component. Therefore, the stylization and the additional figurative element of the contested sign are of minor importance, since consumers will focus their attention on the verbal elements of the sign.

Account should also be taken of the fact that average consumers only rarely have the chance to make a direct comparison between the different marks, but must place their trust in the imperfect picture or recollection of them that they have kept in their minds (see judgment of 22/06/1999, C‑342/97, ‘Lloyd Schuhfabrik’, paragraph 26). Moreover, in general, the established similarities between trade marks, rather than their differences, are retained in the average consumer's recollection.

Even if the marks were not directly confused with one another, for the purposes of Article 8(1)(b) CTMR there is a likelihood of association when the average consumer, although aware of the differences between the signs, nevertheless assumes that owing to their similarities they are derived from the same undertaking or indeed economically-linked undertakings.

In the present case, the relevant consumer may see the conflicting signs as being brand variations intended for different, e.g. luxurious line of products, originating from the same undertaking or, as the case may be, economically-linked undertakings. In other words, the relevant consumers may confuse the origin of the conflicting goods.

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

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to various degrees) to those of the earlier trade marks.

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) CTMR, the opposition based on this article and directed at these goods cannot be successful.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Francesca DINU

Eamonn KELLY

Gailė SAKALAITĖ

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.