OPPOSITION No B 2 775 339

Société des Produits Nestlé S.A., 1800 Vevey, Switzerland (opponent), represented by Harte-Bavendamm Rechtsanwälte Partnerschaftsgesellschaft mbB, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Amigüitos pet and life S.A., c/ Fernández Caballero nº1, 30001 Murcia, Spain (applicant), represented by Lerroux & Fernández-Pacheco, Claudio Coello, 124 4º, 28006 Madrid, Spain (professional representative).

On 07/12/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 775 339 is partially upheld, namely for the following contested goods:

Class 5: Dietary, protein and vitamin supplements for animals, in particular for dogs; feeding stimulants for animals, including food coatings for giving medicines; trace elements (preparations of -) for animal use; protein supplements for animals, dietary, dietetic and protein supplements, antibiotics for animals; medicated supplements for foodstuffs for animals; medicated additives for animal foods; animal washes; antiparasitic collars for animals; attractants for pet animals; animal dips [preparations]; animal flea collars; animal sperm; animal semen for animal insemination; animal repellent formulations; medicines for veterinary purposes; absorbent diapers of cellulose for pets; powders for killing fleas on animals; pharmaceutical preparations for animal skincare; pharmaceutical preparations for animals, animal washes, disposable housebreaking pads for pets; skin treatment [medicated] for animals; foot rot vaccines; vitamins for animals; animal washes and lotions; parasiticides; antiparasitic preparations; antiparasitic collars for animals; bacterial and bacteriological preparations for veterinary use; enzyme preparations for veterinary purposes; amino acids for veterinary purposes, greases for veterinary purposes, medicines for veterinary purposes, cement for animal hooves, pharmaceuticals and veterinary preparations; hygiene products for medical purposes.

Class 31: Foodstuffs for animals, foodstuffs for dogs; foodstuffs containing liver, chicken, lamb, beef or veal, fish, or pork, for dogs; foodstuffs in the form of cubes, rings and sticks for dogs; canned foodstuffs for dogs; cheese flavoured foodstuffs for dogs; food for racing dogs; beverages for canines; dog treats [edible]; foodstuffs for dogs; dog biscuits; bones for dogs; digestible chewing bones for dogs; milk for use as foodstuffs for dogs; litter for dogs; foodstuffs for dogs; food preparations for dogs; edible chewing products for dogs, live animals; seeds, natural plants; agricultural, horticultural and forestry products and grains not included in other classes; mash for fattening domestic animals; strengthening animal forage; edible chews for animals; bird food; dog biscuits; proteins for foodstuffs for animals, aromatic sand for pets, beverages for pet animals, products for animal beds, treats for animals.

2. European Union trade mark application No 15 385 719 is rejected for all the above goods. It may proceed for the remaining goods.

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 shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 385 719 (figurative mark). The opposition is based on European Union trade mark registration No 12 460 275 ‘ONE’ (word mark). The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 28/04/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely

Class 31: Foodstuffs for animals

The opposition is directed against the following goods:

Class 5: Dietary, protein and vitamin supplements for animals, in particular for dogs; feeding stimulants for animals, including food coatings for giving medicines; trace elements (preparations of -) for human and animal use; protein supplements for animals, dietary, dietetic and protein supplements, antibiotics for animals; medicated supplements for foodstuffs for animals; medicated additives for animal foods; animal washes; antiparasitic collars for animals; attractants for pet animals; animal dips [preparations]; animal flea collars; animal sperm; animal semen for animal insemination; animal repellent formulations; medicines for veterinary purposes; absorbent diapers of cellulose for pets; powders for killing fleas on animals; pharmaceutical preparations for animal skincare; pharmaceutical preparations for animals, animal washes, disposable housebreaking pads for pets; skin treatment [medicated] for animals; foot rot vaccines; vitamins for animals; animal washes and lotions; parasiticides; antiparasitic preparations; antiparasitic collars for animals; bacterial and bacteriological preparations for veterinary use; enzyme preparations for veterinary purposes; amino acids for veterinary purposes, greases for veterinary purposes, medicines for veterinary purposes, cement for animal hooves, pharmaceuticals and veterinary preparations; hygiene products for medical purposes.

Class 31: Foodstuffs for animals, foodstuffs for dogs; foodstuffs containing liver, chicken, lamb, beef or veal, fish, or pork, for dogs; foodstuffs in the form of cubes, rings and sticks for dogs; canned foodstuffs for dogs; cheese flavoured foodstuffs for dogs; food for racing dogs; beverages for canines; dog treats [edible]; foodstuffs for dogs; dog biscuits; bones for dogs; digestible chewing bones for dogs; milk for use as foodstuffs for dogs; litter for dogs; foodstuffs for dogs; food preparations for dogs; edible chewing products for dogs, live animals; seeds, natural plants and flowers; agricultural, horticultural and forestry products and grains not included in other classes; mash for fattening domestic animals; strengthening animal forage; edible chews for animals; bird food; dog biscuits; proteins for foodstuffs for animals, aromatic sand for pets, beverages for pet animals, products for animal beds, treats for animals.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 31/03/2017 and 03/04/2017, within the relevant time limit (expiring on 11/04/2017), the opponent submitted evidence to support its claim of reputation. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• Enclosure 3: printout of an article from the “New York Times” of 16/01/2001 mentioning that ‘premium line of dog foods, Purina One, was one of the industry’s best performers’.

• Enclosure 4: picture of a timeline showing the development of ‘ONE’ dry cat food portfolio from 1998 to 2014.

• Enclosure 5: picture of a timeline showing the development of ‘ONE’ wet cat food range from 2006 to 2014.

• Enclosure 6: printouts from the opponent’s websites in France, Italy, Germany, United Kingdom and Portugal with pictures and information concerning ‘ONE’ pet food products.

• Enclosure 7: printouts from the opponent’s website www.purina.com with product range overview of ‘ONE’ pet foods for dogs and cats distributed throughout the EU.

• Enclosure 8: affidavit by Mr Calum Macrae, Marketing Group Director of Nestlé Operational Services Worldwide S.A., Business Division Purina PetCare Europe, Middle East, North Africa, dated 12/07/2016. It is mentioned that pet food under the trade mark ‘ONE’ was launched in the European Union in the late 1990s and in 2000 and that since then, numerous special types of ‘ONE’ food for cats and dogs were introduced on the market. ‘ONE’ products are being distributed in the majority of the countries of the EU. Based on the information provided by AC Nielsen and Information Resources, Inc. (independent market research companies), the yearly sales values for ‘ONE’ dry cat food in Europe in 2011-2015 were, according to the figures provided in the affidavit, very high which corresponds to a very considerable market share in France, Germany, Italy, United Kingdom and Portugal. In the market segment of dry cat food, the trade mark ‘ONE’ is the top brand in the European Union. In the segment of wet cat food and dry dog food, the sales values were lower but still quite high which corresponds to a certain market share in the countries such as France or Italy. In 2011-2015, the total yearly marketing expenses and media communication expenses for ‘ONE’ branded pet food in the EU were, according to the figures provided in the affidavit, quite high.

• Enclosure 9: overview of ‘ONE’ trade marks owned by the opponent and its predecessors worldwide.

• Enclosure 10: list of ‘ONE’ trade mark registrations and applications currently in force owned by the opponent and its predecessors in the EU and some Member States.

• Enclosure 11: affidavit of Mr Pierre Durant, Nestlé Purina Country Manager, dated 19/04/2016, evidencing the market share of ‘ONE’ pet food products in Portugal in 2014 and 2015, sourced from AC Nielsen.

• Enclosure 12: screenshots from the French websites www.amazon.fr, www.zooplus.fr and www.bitiba.fr showing that ‘ONE’ pet foods are being distributed online and through retail stores to consumers in France.

• Enclosure 13: screenshots from the Italian websites www.amazon.it, www.zooplus.it and www.bitiba.it showing that ‘ONE’ pet foods are being distributed online and through retail stores to consumers in Italy.

• Enclosure 14: screenshots from the German websites www.amazon.de, www.lidl.de, www.edeka24.de, www.fressnapf.de, www.zooplus.de, www.bitiba.de and www.zooroyal.de showing that ‘ONE’ pet foods are being distributed online and through retail stores to consumers in Germany.

• Enclosure 15: screenshots from the UK websites www.amazon.co.uk, www.sainsburys.co.uk, www.petplanet.co.uk, www.mysupermarket.co.uk, www.pet-supermarket.co.uk and www.zooplus.co.uk, showing that ‘ONE’ pet foods are being distributed online and through retail stores to consumers in the United Kingdom.

• Enclosure 16: screenshots from the Portuguese websites www.jumbo.pt, www.zooplus.pt and www.continente.pt and several other websites showing that ‘ONE’ pet foods are being distributed online and through retail stores to consumers in Portugal.

• Enclosures 17-20: a number of television advertising spots for ‘ONE’ pet food aired on the main TV channels in France, Italy, Germany and Portugal in the years 2011-2016.

• Enclosures 21 and 22: collection of screenshots taken from various further TV spots and advertising clips published by the opponent’s companies on YouTube.

• Enclosures 23, 24.1-24.13: numerous examples of print advertising for ‘ONE’ pet food in magazines and newspapers in Italy and Germany published in 2003-2014.

• Enclosures 25-30: screenshots of the various Facebook sites of the opponent’s companies advertising ‘ONE’ pet foods in France, Italy, Germany, UK, Portugal and on the international level.

• Enclosure 31: photographs showing how ‘ONE’ products have been displayed and advertised at points of sale in Portugal.

• Enclosures 32.1-32.12: articles about ‘ONE’ pet foods published in magazines and on the internet in Germany in the years 2011-2015. There is information on the number of copies of the magazines and number of visits on the respective websites provided by an independent market research company ‘pure brands – public relations for brands’ headquartered in Hamburg, Germany. According to the figures provided, the number of copies and visits was very high.

• Enclosure 33: extracts from the website www.pure-brands.de with information about the aforesaid market research company.

• Enclosure 34: several printouts from the website accessible at youzz.net, dated in June 2016, containing information about several ‘ONE’ advertising campaigns in Portugal, including consumers’ feedback on ‘ONE’ products.

• Enclosure 35: extract from the Portuguese magazine ‘DISTRIBUICAO HOJE’ dated 2012 with information about the ‘Masters of Distribuição 2012’ award concerning a ‘ONE’ product, given to the opponent in the category of pet food in Portugal.

• Enclosure 36.1 and 36.2: extract from the Portuguese website of ‘DISTRIBUICAO HOJE’ dated 2014 with information about the ‘Masters of Distribuição 2014’ award concerning another ‘ONE’ product, given to the opponent in the category of pet food in Portugal, and a copy of the corresponding diploma.

• Enclosure 37: affidavit of Mr Pierre Durant, Nestlé Purina Country Business Manager, dated 05/04/2016, concerning the above-mentioned awards.

• Enclosure 38: several pages of the awareness study ‘Purina Brand 2014 Update’ concerning the brand awareness of the trade mark ‘ONE’ in several Member States of the EU, conducted by a British independent market research company MillwardBrown and covering the period from July 2014 to July 2015. According to the figures provided, the level of awareness of the trade mark ‘ONE’ was very high among the relevant consumers in France, Italy, Germany and the United Kingdom.

• Enclosure 39: extracts from the website www.millwardbrown.com with information about the aforesaid market research company.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. The sales figures, marketing expenditure and market share shown by the evidence and the various references in the press to its success all unequivocally show that the mark enjoys a high degree of recognition among the relevant public.

The applicant argues that the evidence does not prove reputation of the earlier mark ‘ONE’ because it refers only to ‘PURINA ONE’ and not to the trade mark ‘ONE’ alone. The Opposition Division agrees with the opponent who counter-argues that ‘PURINA’ is used only as an umbrella mark and that ‘ONE’ is always used as the clearly dominant mark.

The evidence shows for example the following use of the mark:

The documents show that ‘PURINA’ and ‘ONE’ are used alongside each other as two separate trade marks. ‘PURINA’ is always depicted in smaller characters compared to the trade mark ‘ONE’ which is depicted in larger characters that make the mark ‘ONE’ clearly dominant. Consumers thus primarily perceive the trade mark ‘ONE’. Consequently, the evidence is considered sufficient for proving reputation for the earlier mark ‘ONE’. The applicant’s claim must be set aside.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods on which the opposition is based and for which reputation has been claimed. The evidence exclusively relates to foodstuffs for pets, namely cats and dogs, whereas there is no reference to other types of foodstuffs for animals, such as foodstuffs for farm animals or foodstuffs for other animals kept at home, such as birds or aquarium fish.

2. The signs

ONE
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).

A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. In the contested sign, there are several verbal elements placed in the bottom right corner of the sign, namely ‘alpha spirit‘ and ‘wild and perfect‘, that are barely perceptible. As these are likely to be disregarded by the relevant public, they will not be taken into consideration.

Regarding the element ‘ONE’ in the earlier trade mark, its degree of distinctiveness per se might be questionable, as argued at length by the applicant and counter-argued by the opponent. However, it has been found above that the earlier trade mark ‘ONE’ enjoys reputation which means that in the circumstances of the present case, its degree of distinctiveness must be considered as at least average.

The word ‘ONE’ contained in both the earlier trade mark and the contested sign is a basic English expression designating the number ‘1’ that will be understood throughout the European Union. However, ‘ONE’ also means ‘they (fem.)’ in Polish, Slovene and Croatian.

The phrase ‘THE ONLY ONE’ of the contested sign means for example ‘unique, exclusive, unparalleled’ in English. For the English-speaking consumers in the EU who will understand the whole phrase, it will have a very low distinctiveness, if any, for all the contested goods due to its clear laudatory connotations.

For the remaining part of the public in the EU, the elements ‘THE’ and ‘ONLY’ have no clear meaning in relation to the relevant contested goods and these elements are, therefore, normally distinctive. Nevertheless, as mentioned above, the element ‘ONE’ is a basic English expression that will be understood throughout the EU. The word ‘ONE’ alone, in its English meaning, has strong descriptive connotations, be it with regard to the quantity of the goods (one item of the goods) or the quality of the goods (‘number 1’ – the best). Consequently, this element has, at most, a low degree of inherent distinctiveness.

The element ‘by’ of the contested sign is an English word that will be understood by the English-speaking consumers in the EU as ‘originating from’. As such, it is non-distinctive for this part of the public. For the remaining part of the public in the EU, it will be normally distinctive because it has no clear meaning in relation to the relevant contested goods.

The element ‘α’ in the contested sign will be perceived as the first letter of the Greek alphabet, ‘alpha’, throughout the European Union. It is normally distinctive because it has no clear meaning in relation to the relevant contested goods.

The black square background of the contested sign is a basic geometrical shape in a basic colour and has a purely decorative nature. Consequently, it is non-distinctive.

The elements ‘THE ONLY ONE’ in the contested sign are the dominant elements as they are the most eye-catching.

Visually, the signs coincide in ‘ONE’. This is the only element of the earlier trade mark and one of the dominant elements of the contested sign. However, the marks differ in all the remaining elements of the contested sign which have no counterpart in the contested sign, namely the elements ‘THE’, ‘ONLY’, ‘by’, ‘α’ and the black square background.

Therefore, the signs are visually similar at least to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛ONE’, present identically in both signs. The pronunciation differs in the sound of the letters ‘THE’, ‘ONLY’, ‘by’ and ‘α’ of the contested mark, which have no counterparts in the earlier sign. However, ‘by’ and ‘α’ are not likely to be pronounced due to their relatively small size.

Therefore, the signs are aurally similar at least to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning through the element ‘ONE’, the signs are conceptually similar at least to a low degree.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The marks are visually, aurally and conceptually similar on account of the coinciding element ‘ONE‘. The entire earlier trade mark is included in the contested sign where it forms a separate element and represents one of the dominant elements of the contested sign, together with the other words in the phrase ‘THE ONLY ONE‘. The degree of similarity between the marks is at least low.

The goods in dispute are, on the one hand, the opponent’s foodstuffs for pets, namely cats and dogs in Class 31. On the other hand, there are the contested goods in Classes 5 and 31 which are, in essence, pharmaceutical and dietary preparations for animals and other products having positive effect on the health and well-being of animals or other organisms (Class 5) and foods for animals, litter for animals and agricultural or forestry products (Class 31).

The earlier trade mark enjoys a solid reputation. Although the degree of inherent distinctiveness of the earlier trade mark might be questionable, the mark ‘ONE’ undoubtedly enjoys a high degree of distinctiveness as a result of its reputation.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs (which can be stronger or weaker depending on the specific contested goods).

However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

4. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims the following:

• unfair advantage of the distinctive character or the repute of the earlier trade mark: the marketing of the contested goods will be facilitated by the association with the earlier reputed trade mark ‘ONE‘. The consumer would pay more attention to the contested sign than he/she normally would if the contested sign did not contain the element ‘ONE‘. Thus, the applicant would gain instantaneous recognition of its trade mark that he would not normally have.

• detriment to the distinctive character of the earlier trade mark: the distinctive character of the earlier trade mark is in danger of losing its uniqueness through the use of the contested sign. The consumers would need a higher level of attention to establish whether they are confronted with the original reputed mark or with another mark from a different producer. The identifying effect of the earlier reputed mark would be diminished.

• detriment to the repute of the earlier trade mark: the opponent’s goods are reputed for their high quality. This would be detrimentally affected if the applicant markets goods that would be of a lower quality.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36.)

The earlier trade mark enjoys reputation for foodstuffs for pets, namely cats and dogs in Class 31. Most of the contested goods in Classes 5 and 31 are clearly linked to the opponent’s reputed products because they are (actually or potentially) relating to animals (e.g. pets such as cats and dogs), for example as pharmaceutical and dietary preparations for pets, foodstuffs for pets or litter for animals. These contested goods are:

Class 5: Dietary, protein and vitamin supplements for animals, in particular for dogs; feeding stimulants for animals, including food coatings for giving medicines; trace elements (preparations of -) for … animal use; protein supplements for animals, dietary, dietetic and protein supplements, antibiotics for animals; medicated supplements for foodstuffs for animals; medicated additives for animal foods; animal washes; antiparasitic collars for animals; attractants for pet animals; animal dips [preparations]; animal flea collars; animal sperm; animal semen for animal insemination; animal repellent formulations; medicines for veterinary purposes; absorbent diapers of cellulose for pets; powders for killing fleas on animals; pharmaceutical preparations for animal skincare; pharmaceutical preparations for animals, animal washes, disposable housebreaking pads for pets; skin treatment [medicated] for animals; foot rot vaccines; vitamins for animals; animal washes and lotions; parasiticides; antiparasitic preparations; antiparasitic collars for animals; bacterial and bacteriological preparations for veterinary use; enzyme preparations for veterinary purposes; amino acids for veterinary purposes, greases for veterinary purposes, medicines for veterinary purposes, cement for animal hooves, pharmaceuticals and veterinary preparations; hygiene products for medical purposes.

Class 31: Foodstuffs for animals, foodstuffs for dogs; foodstuffs containing liver, chicken, lamb, beef or veal, fish, or pork, for dogs; foodstuffs in the form of cubes, rings and sticks for dogs; canned foodstuffs for dogs; cheese flavoured foodstuffs for dogs; food for racing dogs; beverages for canines; dog treats [edible]; foodstuffs for dogs; dog biscuits; bones for dogs; digestible chewing bones for dogs; milk for use as foodstuffs for dogs; litter for dogs; foodstuffs for dogs; food preparations for dogs; edible chewing products for dogs, live animals; seeds, natural plants; agricultural, horticultural and forestry products and grains not included in other classes; mash for fattening domestic animals; strengthening animal forage; edible chews for animals; bird food; dog biscuits; proteins for foodstuffs for animals, aromatic sand for pets, beverages for pet animals, products for animal beds, treats for animals.

For these particular goods which are so closely linked to the opponent’s reputed goods, the Opposition Division concurs with the opponent that the marketing of the contested trade mark would be made easier for the applicant through the association with the earlier reputed trade mark. The applicant would thus free-ride on the reputation of the earlier mark and would exploit it unfairly.

On the basis of the above, the Opposition Division concludes that in relation to the above-mentioned contested goods, the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

However, unfair advantage is unlikely for the remaining contested goods, namely:

Class 5: Trace elements (preparations of -) for human … use.

Class 31: Flowers.

These particular goods have nothing to do with animals and are quite far removed from the opponent’s foodstuffs for pets, namely cats and dogs. The contested trace elements (preparations of -) for human … use are dietary supplements exclusively for human use which are normally sold in pharmacies. The contested flowers are natural flowers either in the form of cut flowers or flowers in a pot. They are bought at florists and are used for decorating interiors or exteriors or as a present (bouquet). It is highly unlikely that the applicant could draw any potential benefit from the opponent’s foodstuffs for pets, namely cats and dogs for the marketing of these particular goods. On the basis of the above, the Opposition Division concludes that for these particular goods, there are no indications suggesting that the use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark.

The assessment of the opposition will now continue with the examination whether there is any detriment to the repute or distinctiveness in relation to these remaining contested goods.

Detriment to the distinctive character (dilution)

Detriment to the distinctive character of the earlier mark (also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’) is caused when that mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to ‘dispersion’ of the identity of the earlier mark (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 29).

According to the Court of Justice of the European Union, ‘… the existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect’ (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 35).

If the distinctive character of an earlier trade mark is one of the circumstances generally relevant for the applicability of Article 8(5) EUTMR, it is particularly relevant in cases where precisely the distinctive character of the earlier trade mark is allegedly being put at risk.

‘Erosion’ of the earlier trade mark’s distinctive character (sometimes called ‘dilution by blurring’) is more likely where the elements of the trade marks giving rise to similarity between signs enjoy a considerable degree of inherent distinctive character. As mentioned by the Court of Justice, ‘the more “unique” the earlier mark appears, the greater the likelihood that the use of a later identical or similar mark will be detrimental to its distinctive character’ (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 74).

By contrast, likelihood of dilution is less likely when such elements have only a limited degree of inherent distinctive character. ‘… [T]he risk of dilution appears, in principle, to be lower if the earlier mark consists of a term which, because of a meaning inherent in it, is very common and frequently used, irrespective of the earlier mark consisting of the term at issue. In such a case, reuse of the term in question by the [contested] trade mark … is less likely to result in a dilution of the earlier mark’ (22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 38).

The circumstances in the present case do not suggest that use of the contested trade mark will result in dilution of the earlier trade mark. This is because the similarities between the signs relate to the verbal element ‘ONE’ which is a known and commonly used expression from the point of view of the consumers, either as an English word designating the number ‘1’ (a basic English expression that is understood throughout the EU) or as the pronoun ‘they (fem.)’ in certain EU languages. Moreover, the element ‘ONE’ in its English meaning has strong descriptive connotations, be it with regard to the quantity of the goods (one item of the goods) or the quality of the goods (‘number 1’ – the best). Consequently, this element has, at most, a low degree of inherent distinctiveness.

Under these circumstances, the Opposition Division finds that the mere use of a similar sign, such as the contested trade mark, for trace elements (preparations of -) for human … use in Class 5 and flowers in Class 31 will not weaken the distinctive character of the earlier trade mark.

On the basis of the above, the Opposition Division concludes that the use of the contested trade mark will not be detrimental to the distinctive character of the earlier trade mark.

Detriment to repute (tarnishing)

Detriment to repute occurs where the goods or services covered by the contested trade mark appeal to the public’s senses in such a way that the earlier mark’s power of attraction is diminished. There is a risk of such detriment occurring, inter alia, where the contested goods or services have a characteristic or a quality that may have a negative influence on the image of an earlier mark with a reputation on account of it being identical or similar to the contested trade mark (18/06/2009, C‑487/07, L’Oréal, EU:C:2009:378, § 40, and 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 39).

According to the Court of Justice of the European Union, ‘… the existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect’ (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 35).

The opponent argues that the applicant’s goods could be of inferior quality. Such an argument is not valid as a means of demonstrating detriment. There is no room in the present proceedings for an appraisal and comparison of the quality of goods of each party under the signs in question.

Firstly, such an exercise, apart from being highly subjective, is not feasible where the goods are not identical or where the contested trade mark has not yet been put to use.

Secondly, and more importantly, it would be erroneous to assess Article 8(5) EUTMR on the basis of the quality of the goods and services offered under the subsequent trade mark. Otherwise, the applicant could claim as a valid defence that its goods and services are of equal, or even superior, quality to the opponent’s, where it is clear from the wording of Article 8(5) EUTMR that it is mere use of the contested trade mark that must be detrimental to the repute of the earlier trade mark.

Therefore, in assessing whether use of the contested trade mark is likely to damage the reputation of the earlier trade mark, the Opposition Division can only consider the goods as indicated in the list for each trade mark. The harmful effects of use of the contested sign for the goods and services applied for must derive from the nature and usual characteristics of the relevant goods in general.

In the present case, there is nothing in the nature and characteristics of the applicant’s trace elements (preparations of -) for human … use in Class 5 and flowers in Class 31 that could potentially harm the reputation of the opponent’s mark used for foodstuffs for pets, namely cats and dogs. The contested goods will not provoke any harmful associations vis-à-vis the opponent’s reputed goods in the mind of the consumers.

The opponent’s argument must, therefore, be set aside.

On the basis of the above, the Opposition Division concludes that there are no indications suggesting that the use of the contested trade mark would be detrimental to the repute of the earlier trade mark.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR insofar as it is directed against the following goods:

Class 5: Dietary, protein and vitamin supplements for animals, in particular for dogs; feeding stimulants for animals, including food coatings for giving medicines; trace elements (preparations of -) for … animal use; protein supplements for animals, dietary, dietetic and protein supplements, antibiotics for animals; medicated supplements for foodstuffs for animals; medicated additives for animal foods; animal washes; antiparasitic collars for animals; attractants for pet animals; animal dips [preparations]; animal flea collars; animal sperm; animal semen for animal insemination; animal repellent formulations; medicines for veterinary purposes; absorbent diapers of cellulose for pets; powders for killing fleas on animals; pharmaceutical preparations for animal skincare; pharmaceutical preparations for animals, animal washes, disposable housebreaking pads for pets; skin treatment [medicated] for animals; foot rot vaccines; vitamins for animals; animal washes and lotions; parasiticides; antiparasitic preparations; antiparasitic collars for animals; bacterial and bacteriological preparations for veterinary use; enzyme preparations for veterinary purposes; amino acids for veterinary purposes, greases for veterinary purposes, medicines for veterinary purposes, cement for animal hooves, pharmaceuticals and veterinary preparations; hygiene products for medical purposes.

Class 31: Foodstuffs for animals, foodstuffs for dogs; foodstuffs containing liver, chicken, lamb, beef or veal, fish, or pork, for dogs; foodstuffs in the form of cubes, rings and sticks for dogs; canned foodstuffs for dogs; cheese flavoured foodstuffs for dogs; food for racing dogs; beverages for canines; dog treats [edible]; foodstuffs for dogs; dog biscuits; bones for dogs; digestible chewing bones for dogs; milk for use as foodstuffs for dogs; litter for dogs; foodstuffs for dogs; food preparations for dogs; edible chewing products for dogs, live animals; seeds, natural plants; agricultural, horticultural and forestry products and grains not included in other classes; mash for fattening domestic animals; strengthening animal forage; edible chews for animals; bird food; dog biscuits; proteins for foodstuffs for animals, aromatic sand for pets, beverages for pet animals, products for animal beds, treats for animals.

The opposition under Article 8(5) EUTMR is not successful insofar as the remaining goods are concerned, namely trace elements (preparations of -) for human … use in Class 5 and flowers in Class 31.

The assessment of the opposition will now continue with the examination whether there is likelihood of confusion between the marks for the remaining contested goods.

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: Foodstuffs for animals.

The remaining contested goods are the following:

Class 5: Trace elements (preparations of -) for human … use.

Class 31: Flowers.

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.

As already mentioned above, the contested trace elements (preparations of -) for human … use are dietary supplements exclusively for human use which are normally sold in pharmacies. The contested flowers are natural flowers either in the form of cut flowers or flowers in a pot. They are bought at florists and are used for decorating interiors or exteriors or as a present (bouquet). On the other hand, the opponent’s foodstuffs for animals are used for feeding animals and are bought for example in supermarkets or pet shops. The contested and the opponent’s goods are clearly dissimilar. They have a different nature, purpose and method of use. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods, their distribution channels and sales outlets are normally different.

2. Conclusion

According to Article 8(1)(b) EUTMR, the identity/similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition under Article 8(1)(b) EUTMR must be rejected for trace elements (preparations of -) for human … use in Class 5 and flowers in Class 31.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

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

Inés GARCÍA LLEDÓ

Vít MAHELKA

Saida CRABBE

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.