OPPOSITION No B 3 058 728

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

Britexa, 24 rue Notre Dame BP 19, 29150 Chateaulin, France (applicant).

On 06/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 058 728 is upheld for all the contested goods, namely:

Class 31: Foodstuffs and fodder for animals; bedding and litter for animals.

2. European Union trade mark application No 17 879 012 is rejected for all the contested goods. It may proceed for the remaining non-contested goods.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 879 012 (figurative mark), namely against some of the goods in Class 31. The opposition is based on, inter alia, Czech trade mark registration No 235 004 ‘BRIT’ (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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Czech trade mark registration No 235 004 because the scope of protection of the relevant goods is broader.

a) The goods

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

Class 31: Food for domestic animals, ingredients for feeds, drinks for domestic animals, delicacies and rewards for chewing animals, litter for animals.

The contested goods are the following:

Class 31: Foodstuffs and fodder for animals; bedding and litter for animals.

The contested foodstuffs and fodder for animals include, as a broader category, the opponent’s food for domestic animals. Since the Office 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 is identically contained in both lists of goods (including synonyms).

b) 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 at professionals, for example farmers or breeders, with an average degree of attention.

c) The signs

BRIT
Earlier trade mark	Contested sign

The relevant territory is the Czech Republic.

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 element ‘BRIT’ of the earlier mark will be understood by the relevant public as ‘a Briton’ (a male person). This element is distinctive due to the absence of any link with the goods concerned.

The verbal element ‘BRITEXA’, underlined and placed partly above a globe in the upper part of the contested sign, has no meaning for the relevant public. However, it is likely that at least a part of the relevant public will identify the initial part ‘BRIT’ with the meaning mentioned above; relating to a British person. Although ‘BRITEXA’ consists of one verbal element, the relevant consumers, when perceiving a verbal sign, will break them down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

Whether a concept is identified in the initial part of the verbal element ‘BRITEXA’ or not, it has no relation to the goods at issue and is, therefore, distinctive.

The word elements ‘BRETON’, ‘INTERNATIONAL’ and ‘EXPORT’, placed under the line and globe, in the lower part of the contested sign, are negligible elements. Because of their size and position, they are not noticeable at first sight. If perceived at all they will have a weak degree of distinctiveness in relation to the goods at issue because of their widespread use in commercial activities, especially the words ‘INTERNATIONAL’ and ‘EXPORT’. It is reasonable to assume that the element ‘BRITEXA’ is the only verbal element that the public will use to refer to the trade mark, because of the tendency to abbreviate a mark that includes several elements in order to make it easier to pronounce and to remember (14/02/2019, T‑63/18, TORRO Grande Meat in Style (fig.) / TORO et al., EU:T:2019:89, § 52). Therefore, the Opposition Division will not take the other verbal elements into consideration in the following comparison.

The contested sign also contains some figurative elements, in particular, the stylisation of the verbal elements in red, standard upper-case typeface, which is not particularly memorable or distinctive, and the representation of a globe in red and grey, which is distinctive in relation to the goods concerned for the relevant public.

The elements ‘BRITEXA’ and the globe are the co-dominant elements of the contested sign because of their size and central position. However, when signs consist of both verbal and figurative components, 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 verbal element ‘BRITEXA’ will have a greater impact on the consumer than the figurative elements of the contested sign.

It should be noted that 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. Therefore, the coinciding initial letters ‘BRIT-’, in the contested sign, will attract the consumer’s attention more.

Visually, the signs coincide in the letters ‘BRIT’, which are placed at the initial part of the distinctive and dominant verbal element of the contested sign and constitute the entire earlier mark. However, they differ in the last letters ‘-EXA’ and the figurative element of the contested sign, which have no counterpart in the earlier mark. The signs also differ in the stylisation and colours of the contested sign, which have less impact on the public, as explained above.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘BRIT’, present identically in both signs. The pronunciation differs in the sound of the last letters ‘-EXA’ of the contested sign, which have no counterpart in the earlier mark.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public that associates both signs with the same meaning of ‘BRIT’ (a British person), and for who the figurative element of the contested sign evokes additional meanings, the signs are conceptually similar to an average degree.

For the part of the public that will not identify any meaning for ‘BRITEXA’, the signs are conceptually dissimilar.

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

d) 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 has 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 mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The goods are identical and target the public at large and professionals, whose degree of attention is average. The earlier mark has a normal degree of distinctiveness. The signs are visually, aurally and conceptually similar to an average degree due to the coincidence in the only element of the earlier mark and the initial part of the co-dominant verbal element of the contested sign. For another part of the public, the signs are conceptually dissimilar.

The coincidences cannot be offset by the contested sign’s standard typeface in red, or the additional figurative elements, which have less impact on the consumer, as mentioned above. This is especially pertinent given that the coinciding letters are placed at the beginning of the contested sign (i.e. those which first catch the attention of the consumer).

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). Therefore, the conceptual dissimilarity for part of the public is outweighed by the identity between the goods.

The Opposition Division considers that there is a likelihood of confusion for part of the public. Therefore, the opposition is well founded on the basis of the opponent’s Czech trade mark registration. It follows that the contested trade mark 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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier Czech trade mark registration No 235 004 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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, 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

Eva Inés PÉREZ SANTONJA

Cristina SENERIO LLOVET

Vít MAHELKA

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.