OPPOSITION No B 2 597 162

Vafo Praha, s.r.o., K Brůdku 94, 25219 Chrášťany, Czech Republic (opponent), represented by Hák, Janeček & Švestka, U Průhonu 5, 170 00 Praha 7, Czech Republic (professional representative)

a g a i n s t

Genyen Grow and Protect, S.A., Edifício Inovisa, Tapada da Ajuda, 1349-017 Lisboa,

Portugal (applicant), represented by A.G. Da Cunha Ferreira, LDA., Avenida 5 de Outubro, 146-7º, 1050-061 Lisboa, Portugal (professional representative).

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

DECISION:

1. Opposition No B 2 597 162 is upheld for all the contested goods.

2. European Union trade mark application No 14 400 121 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 400 121. The opposition is based on European Union trade mark registration No 9 237 819. 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 31: Dry, semi-moist, wet complete and complementary pet food; pet treats.

The contested goods are the following:

Class 31: Foodstuffs and fodder for animals.

The contested foodstuffs and fodder for animals include, as a broader category, the opponent’s dry, semi-moist, wet complete and complementary pet 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.

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 and professionals, such as farmers (the contested fodder for animals). The degree of attention is average.

3. The signs

	PETFIELD
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

All the elements of the signs are meaningful for the English-speaking part of the public in the relevant territory. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.

The word ‘Sam’ in the earlier mark will be understood by the public as both a male and a female name, usually short for Samuel, Samson or Samantha. Considering this, the relevant public will perceive the element ‘Sam’s’ as ‘belonging to Sam’. Since this word has no connection with the characteristics of the relevant goods, it has an average degree of distinctiveness.

The verbal element ‘Field’ of the earlier mark means ‘an area of open land, especially one planted with crops or pasture, typically bounded by hedges or fences’ (information extracted from Oxford Dictionaries online at https://en.oxforddictionaries.com/definition/field). In its observations of 30/09/2016, the applicant argues that the word ‘Field’ is weak for the goods in question given that it refers to their organic origin, and also because there are many trade marks that include this word. In support of the latter argument, the applicant submits several extracts of the European Union trade mark registrations containing the word ‘field’. However, contrary to the first applicant’s argument, the Opposition Division cannot see any descriptive or allusive information in the meaning of the word ‘field’ given above in relation to the goods that it designates (i.e. dry, semi-moist, wet complete and complementary pet food; pet treats). It is even unlikely that the relevant consumer will associate this meaning with the organic origin of the goods because the word ‘field’ as such is not commonly used in the course of trade and there is too much of a mental leap. As regards the second applicant’s argument, the Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘field’.

Under these circumstances, the applicant’s claims must be set aside. As the element ‘Field’ is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive to an average degree.

When it comes to the stylisation and ornamental feature of the earlier mark, account must be taken of the fact that when signs consist of both verbal and figurative components (as does the earlier mark in the present case), 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 than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the graphic stylisation of the earlier mark has only a limited impact on the consumer’s perception.

The verbal element of the contested sign, ‘PETFIELD’, will be split into two separate words, ‘PET’ and ‘FIELD’, given that both have a certain meaning for the English-speaking part of the public, and consumers, when perceiving a word sign, will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

The verbal element ‘PET’ of the contested sign will be understood by the English-speaking public as ‘a domestic or tamed animal kept for companionship or pleasure’ (information extracted from Oxford Dictionaries online at https://en.oxforddictionaries.com/definition/pet). Bearing in mind that the relevant goods are foodstuffs and fodder for animals, this element is non-distinctive for these goods, as it only provides information that they are intended for domestic or tamed animals. Consequently, the relevant public will not pay as much attention to this element as to the other, distinctive, element of the sign that is ‘FIELD’. As a result, the impact of this element on likelihood of confusion is limited.

What has been stated above regarding the perception and distinctiveness of the word ‘Field’ of the earlier mark is fully applicable in the case of the element ‘FIELD’ of the contested sign.

In summary, the words ‘Sam’s’ and ‘Field’ in the earlier mark are equally distinctive, and the word ‘FIELD’ is the only distinctive element of the contested sign, with an average degree of distinctiveness.

In terms of dominance, neither of the signs has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

According to the opponent, the word ‘Field’ is the dominant element of the earlier mark due to its position and the size and thickness of its letters. In this regard, it should be pointed out that it is established practice that the dominant character of a component of a sign is mainly determined by its position, size and/or the use of colour, to the extent that they affect its visual impact. However, in the present case, the Opposition Division does not consider the element ‘Field’ as the dominant element of the earlier mark, since its position, size and colour are not as striking as to clearly overshadow the remaining part of the mark. Consequently, this argument of the opponent must be rejected.

Visually and aurally, the signs coincide in the letters/sounds ‘Field/FIELD’, present identically in the same position within both signs, and differ in their remaining letters/sounds, ‘Sam’s’ of the earlier mark and ‘PET’ of the contested sign. Though the earlier mark is differentiated by its stylisation this difference loses weight, as seen above.

In its observations of 30/09/2016, the applicant claims that the beginning of the signs, to which consumers pay highest attention, is different in the present case. Even though the applicant was correct in stating that there is an established legal practice according to which it is considered that consumers pay more attention to the beginning of a mark, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2013:40, § 52).

Considering all the above and the fact that the word ‘PET’ and the graphic elements of the earlier mark have only a limited impact on the consumer’s perception, for the reasons mentioned above, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the meanings of the signs and their individual elements given above.

The earlier mark will be perceived by the English-speaking part of the public as ‘an area of open land that belongs to Sam’ while the contested sign will be understood by this part of the public as ‘an area of open land for pet animals’. As the signs overlap in the distinctive concept conveyed by the word ‘Field/FIELD’ and they differ in the concept of the word ‘Sam’s’, which is of average distinctiveness, and in the concept of the word ‘PET’, which is devoid of distinctiveness, the signs are conceptually similar to an average degree.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 relevant goods from the perspective of the English-speaking part 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, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The present assessment of likelihood of confusion considers the perception of the English-speaking part of the public in the relevant territory. The relevant public consists of the public at large and professionals, the degree of attention is average and the earlier mark has a normal degree of inherent distinctiveness.

As concluded above, the contested goods are identical to the opponent’s goods.

The signs in conflict are similar to an average degree on all levels (visually, aurally and conceptually), as explained in detail above in section c) of this decision. The differences between the signs, as identified above, are not sufficient to counteract their similarities. This is, in particular, justified by the fact that the verbal element ‘Field/FIELD’, that the signs have in common, plays a distinctive role in both signs, while the differing elements, except for the distinctive word ‘Sam’s’, have only a limited impact on the likelihood of confusion.

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. Furthermore, it is common practice in the relevant market for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow a trade mark with a new, fashionable image.

In the present case, although the relevant public might detect certain visual, aural and conceptual differences between the conflicting signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, or a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). It is, therefore, conceivable that the relevant public will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking.

Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion (including likelihood of association) on the part of the English-speaking part of the public in the relevant territory, and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 237 819. 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 application.

It follows from the above that the contested sign must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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 applicant 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

Vít MAHELKA

Martin MITURA

Martin MITURA

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