OPPOSITION No B 3 059 537

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

Estrin Kirill Vadimovich, Mira Prospekt, 81-101, 129085 Moscow, Russian Federation (applicant), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative).

On 26/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 059 537 is upheld for all the contested goods.

2. European Union trade mark application No 17 880 702 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 17 880 702 for the figurative mark . The opposition is based on the European Union trade mark registration No 2 460 275 for the word mark ‘ONE’. The opponent invoked Article 8(1)(b) and Article 8(5) 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.

a) The goods

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

Class 31: Foodstuffs for animals.

The contested goods are the following:

Class 31: Foodstuffs for animals.

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

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. The degree of attention is considered to be average.

c) 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).

The word ‘ONE’ contained in both signs is a basic English term designating the number ‘1’ that will be understood throughout the European Union. ‘ONE’ also means ‘they – i.e. feminine plural pronoun)’ in Croatian, Polish and Slovenian.

The earlier mark is a word mark, consisting of the sole term ‘ONE’. It is considered to be of weaker distinctiveness, as it may associated with the quantity of the goods (just one single portion) or it may be understood as a reference to the quality of the goods (number one, the best) (see e.g. 11/07/2013, R 2044/2012-1, one / the one et al., § 24). In any event, earlier registered trade marks are presumed to have at least a minimum degree of inherent distinctiveness (24/05/2012, C-196/11, F1-Live, EU:C:2012:314, § 40-41.

The contested sign is a figurative mark, consisting of the terms ‘ONE ONLY’ depicted in a slightly stylised, dark brown typeface, separated by the silhouette of a sitting cat.

The English words of the contested sign will be directly understood by the English-speaking consumers in the EU so that it has laudatory connotations in relation to the goods for this part of the public (the only one); hence it is of weaker distinctiveness for that part of the public. For the remaining part of the public in the EU, the element ‘ONLY’, however, does not have a clear meaning in relation to the relevant goods and this element is thus normally distinctive.

The figurative device of the cat in the contested sign is directly descriptive for the goods at issue (foodstuffs for animals) as it indicates their purpose (i.e. cat food); therefore it is devoid of distinctiveness. The minor stylisation of the letters in the contested sign will be perceived as being of a purely decorative nature; hence it lacks distinctiveness.

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.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Visually and aurally the signs coincide in (the sound of the letters) ‘ONE’ (of weaker distinctiveness, as seen above). This is the only element of the earlier trade mark and the first verbal element of the contested sign that is composed of a combination of solely weak and descriptive elements for the public under analysis. The marks differ in the additional verbal element ‘ONLY’ of the contested sign (of weaker distinctiveness) and in the non-distinctive figurative aspects of the contested sign (the cat device and the minimal stylisation of the letters).

Account must also be taken of the fact 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 signs are held visually and aurally similar to an average 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’ (albeit of weaker distinctiveness), the signs are conceptually similar to a low degree.

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 and reputation. 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower for the goods at issue.

e) 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).

The goods are identical. The signs are visually and aurally similar to an average degree, while conceptually they are similar to a low degree. The distinctiveness of the earlier mark is weaker and the degree of attention of the relevant consumer is average.

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).

The Court has emphasised on several occasions that a finding of a low distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a high degree of similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

As the goods are identical, due to the visual, aural and conceptual similarities between the signs and the fact that the earlier mark, albeit of weaker distinctiveness, is entirely included in the contested sign, of which – in addition – it forms the beginning with more impact (while the contested sign’s second verbal element is likewise of weaker distinctiveness) and maintains its independent position, a likelihood of confusion cannot be excluded, at least for the public under analysis.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking public taken under analysis. 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 earlier EUTM compared above. It follows 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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness. Also, as the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Francesca CANGERI

Edith Elisabeth VAN DEN EEDE

Keeva DOHERTY

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.