OPPOSITION No B 2 920 984

Degro GmbH & Co. KG, Donauwörther Strasse 3-5, 86641 Rain, Germany (opponent), represented by Squire Patton Boggs (US) LLP, Neue Mainzer Strasse 66-68, 60311 Frankfurt am Main, Germany (professional representative)

a g a i n s t

Shah Caviar Limited, 563-565 Battersea Park Road, SW11 3BL London, United Kingdom (applicant), represented by A2 Estudio Legal, C/ Alcalá 143, 3º Derecha, 28009 Madrid, Spain (professional representative).

On 24/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 920 984 is upheld for all the contested goods.

2. European Union trade mark application No 16 526 717 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 526 717 ‘CATVIAR’ (word mark). The opposition is based on international trade mark registration No 1 056 085 designating the European Union ‘Cativia’ (word mark). 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: Foodstuffs for animals; animal feed.

The contested goods are the following:

Class 31: Foodstuffs for animals; Meal for animals; Beverages for animals; Edible treats for animals.

Foodstuffs for animals are identically contained in both lists of goods.

The contested meal for animals; beverages for animals ; edible treats for animals; are included in the broad category of, or overlap with, the opponent’s foodstuffs for animals. Therefore, they are identical.

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. The degree of attention is average.

3. The signs

Cativia	CATVIAR
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘CAT’ is not meaningful in certain territories, for example in the non-English-speaking territories. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public, such as the Spanish- and Italian-speaking part of the public.

Both marks are word marks, ‘Cativia’ and ‘CATVIAR’ respectively. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case is irrelevant. Neither of the marks have a meaning for a significant part of the relevant public, and therefore, they are distinctive.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, both signs are seven-letter-marks and coincide in their first three letters, ‘CAT’ and in the letters ‘VIA’, in the same sequence. However, the marks differ in the letter ‘I’ in the middle of the earlier sign and in the last letter ‘R’ in the contested sign.

Therefore, the signs are visually highly similar.

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 ‘CAT’ in the beginning of both marks and the sound of the letters ‘VIA’ following in the contested sign and at the end of the earlier mark, therefore in the same sequence. The pronunciation differs in the sound of the letters ‘I’ in the middle of the earlier mark and the letter ‘R’ at the end of the contested sign. The signs have identical length.

Therefore, the signs are aurally similar to a degree above average.

Conceptually, neither of the signs has a meaning for the public under analysis in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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 goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

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.

In the present case, the goods are identical and directed at the public at large with an average degree of attention.

The signs are visually highly similar and aurally similar to a degree above average. The conceptual aspect does not influence the assessment of the similarity of the signs. The distinctiveness of the earlier mark is normal.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all the above, there is a likelihood of confusion on the part of the Spanish- and Italian-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 056 085 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Katarzyna ZANIECKA

Lena FRANKENBERG GLANTZ

Martin INGESSON

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.