OPPOSITION No B 3 085 386

Radio Systems Corporation, 10427 PetSafe Way, 37932 Knoxville, United States of America (opponent), represented by Friederike Höfer, Dreiköniggasse 10, 89073 Ulm, Germany (professional representative)

a g a i n s t

Cars Parts Design Trading Co. Ltd., 21/F, NO 181, Tai Yau Building, 181 Johnston Road, Wanchai, Hong Kong (applicant), represented by Onofre Indalecio Sáez Menchón, Gran Vía, 69 -4° Of. 412, 28013 Madrid, Spain (professional representative).

On 30/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 085 386 is upheld for all the contested goods.

2. European Union trade mark application No 18 021 006 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 18 021 006 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 1 288 703 for the word mark ‘PetSafe’. The opponent invoked Article 8(1)(b), Article 8(4) and Article 8(5) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based. However, at this stage, the Opposition Division finds it appropriate to limit the assessment of the proof of use in relation to the earlier European Union trade mark registration No 1 288 703.

The date of filing of the contested application is 11/02/2019. The opponent was, therefore, required to prove that the trade mark on which the opposition is, inter alia, based was put to genuine use in the European Union from 11/02/2014 to 10/02/2019 inclusive.

The request was submitted in due time and is admissible given that the earlier European Union trade mark No 1 288 703 was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 6: Leads; restricting access to specific animals.

Class 16: Containers for use in the transportation of pet animals.

Class 18: Collars; harnesses, leads, all for animals.

Class 20: Restricting access to specific animals.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 21/02/2020, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 21/04/2020 to submit evidence of use of the earlier trade mark. Upon request of the opponent, this term has been extended until 03/08/2020. On 07/07/2020, within the time limit, the opponent submitted evidence of use. Furthermore, the Opposition Division will take into account also the documents previously filed by the opponent (on 21/12/2019) for the purpose of providing evidence of reputation of its earlier mark.

The evidence to be taken into account is, in particular, the following:

 Annexes CB1 and CB5a-10: several catalogues, brochures, leaflets published in English, Spanish, Italian, German, French etc., that have been allegedly made available and distributed in several countries in the EU during the period 2015 - 2018 including pictures showing a variety of products for animals, for sale bearing the mark ‘PetSafe®’. This trade mark appears in relation to transport boxes, barriers, pet sits, collars harness with leads attached to the pet, among other items for animals. Additional evidence submitted by the opponent shows that these products have been also offered as part of the opponent’s website www.petsafe.net (Annexes A1-9). They consist of several screenshots where the sign ‘PETSAFE’ appears in relation to, inter alia, the abovementioned products. On the top left side of the page in a figurative way , as well as a word mark near the photograph’s page. The price of the abovementioned items appears in Pounds and Euros.

 Annexes PL1 to PL4: examples of price lists published, available and allegedly distributed in EU countries and UK during the period 2015 – 2018. The prices are given in British pound sterling (£) and EURO (€) in relation to harnesses, leads and safety restraints, among others.

 46 invoices: issued to clients with addresses in different countries of Europe, such as Ireland, Belgium, France, Germany, the Netherlands and the United Kingdom during the period 2014-2019, in relation to vehicle harnesses, leads, restraints for animals, among other products. Some of the numbers used in the invoices to identify each item corresponds to the number of the product showed in the catalog, as for example: in invoice 13, carelift support harness, medium size is identified with No 32366, in invoice 34 the No 62367 identifies carelift support harness. Furthermore, all the invoices are summarised in tables where it is shown that harnesses appear in invoices 4, 7, 8, 9, 12, 14, 15, 17, 22, 31, 32, 34, 35, 27, 38, 42, 43 and 44. This is confirmed by the following pictures of catalogues showing the product of the invoice. In some of them, the number that appears in the correspondent invoice it is also included in relation to harnesses, collars with leads, among other products for animals:

Analysis of the Proof of Use:

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Place of Use:

The ‘catalogues, brochures, folders, leaflets, price lists and invoices’ show that the place of use is at least Ireland, UK, France, Germany and the Netherlands. This can be inferred from the language of the documents English, French, German and Dutch, the currency mentioned ‘Pounds and Euros’ and some addresses of clientes in ‘Ireland, France, Germany and the Netherlands’. Therefore, the evidence relates to the relevant territory, namely the European Union.

Time of Use:

Most of the evidence is dated within the relevant period. Therefore, the evidence of use sufficiently indicates the time of use.

Extent of use:

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

According to case-law, under certain circumstances, even circumstantial evidence such as catalogues featuring the trade mark, while not providing direct information on turnover, can also be sufficient for proving the extent of use in an overall assessment (15/07/2015, T‑398/13 TVR ITALIA (fig.) / TVR et al., EU:T:2015:503, § 57-58; 08/07/2010, T‑30/09, Peerstorm, EU:T:2010:298, § 42 et seq.).

As a whole, the documents filed by the opponent, namely screenshots of the opponent’s website, catalogues including pictures of the products and related information, price lists, as well as the 46 invoices provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use.

Furthermore, the evidence demonstrates that the goods have been sold to various clients based in different locations within the European Union, during the relevant period. Although the amount of invoices concerning the goods is not large, the use of the mark does not need to be quantitatively significant for it to be deemed genuine. Therefore, it is clear from the evidence submitted that the opponent provided harnesses and leads for animals under the mark ‘PetSafe’ in the relevant market.

The screenshots, catalogues with pictures, price lists and invoices can be considered sufficiently representative evidence of the trade mark being used publicly and outwardly with a view to creating commercial markets. In view of the Opposition Division the documents submitted prove that the use of the mark has been more than mere token use.

Taking into account the evidence in its entirety, it proves that the mark has been used regularly. Consequently, the extent of the use has also been documented and it has been proved that the EUTM proprietor has made serious attempts to maintain or create a commercial position in the relevant market. Therefore, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

Nature of use:

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The documents submitted prove that, in effect, the earlier mark can be linked with, at least, some of the goods for which it is registered and, hence, it complies with its primary function.

The Opposition Division observes from the submitted material that the opponent’s earlier mark was used both as registered ‘PetSafe’ and also with some variations in a figurative way . In fact, this does not mean that the distinctive character of the earlier mark has been altered, as the figurative variations are secondary. This is because the figurative elements are decorative and commonly used in labels and the words ‘SAFE PETS’ and ‘HAPPY OWNERS’ are depicted in a considerable small size and have descriptive and laudatory connotation. The most distinctive element of the mark is the verbal element ‘PetSafe’, taking into account that as such doesn’t exist and furthermore, occupies a central position and dominant position in the earlier mark.

On the other hand, in some documents other trade marks are used together with the earlier mark, such as SOLVIT, EASY WALK, DRINKWELL etc. followed by the registered trade mark symbol ‘®’ on top right hand side - as an informative indication that the sign is purportedly registered and is not part of the trade mark as such - being both present in the evidence filed. The Court has confirmed that the condition of genuine use of a registered trade mark may be satisfied both where it has been used as part of another composite mark or where it is used in conjunction with another mark, even if the combination of marks is itself registered as a trade mark (18/04/2013, C‑12/12, Répresentation de semis de Poissons (fig.), EU:C:2013:253, § 36). Therefore, the earlier mark can be used together with another mark without altering its distinctive character.

Therefore, in view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory at least for the following goods:

Class 18: Harnesses; leads.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 European Union trade mark registration No 1 288 703 PetSafe.

a) The goods

The goods on which the opposition is based and for which the use have been proven are at least the following:

Class 18: Harnesses; leads.

The contested goods are the following:

Class 12: Dog guards for use in vehicles; safety restraints for use in vehicles.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

The contested dog guards for use in vehicles are a partition between the car seats and the boot of the car, the contested safety restrains for use in vehicles are items used in the car for security purposes of passengers which includes animals, travelling in the car. Therefore, these goods and the opponent’s goods in Class 18 are similar to a low degree, since they have the same purpose, to keep the dog/person safe and under control, they can be found in the same specialised shops and, furthermore, can be addressed to the same consumers.

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 similar to a low degree are directed at the public at large. The goods at issue are specialised goods therefore the degree of attention may vary from average to high (as e.g. regarding safety restrain for use in vehicles in Class 12 have an impact on the safety of passengers).

c) The signs

PetSafe
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 earlier mark is a word mark consisting of one word ‘PetSafe’ written in lower case characters, with the exception of the letters ‘P’ and ‘S’, that are in capitals. Where a word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing (irregular capitalisation), this must be taken into account as the use of irregular capitalisation would be noticed by the relevant public and may justify breaking down a single word into components, as in the present case ‘Pet’ and ‘Safe’.

In the present case, this is especially true in relation to the word ‘Pet’ – despite the fact that in the contested sign is followed by the letter ‘S’ – that although, it is an English word, taking into account that the goods at stake are commercialised in a particular market sector, it is reasonable to assume that the targeted public, such as owners or breeders of animals, will identify this word as referring to animals kept for pleasure of companionship. Furthermore, it must be note that consumers when perceiving a verbal sign, will break it 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). On the other hand, it cannot be dismissed that a significant part of the relevant public may understand not only the verbal element Pet/s as referred above, but also the verbal element ‘Safe’ - like an adjective that means ‘offering security from danger; giving protection’- as they are widely understood throughout the EU as are words often used in advertising.

The contested sign is composed by the words ‘PETS’ and ‘SAFE’ depicted in grey and quite standard typeface preceded by a figurative element, the image of a dog in yellow and a cat in white looking to the right that as already mentioned reinforces the meaning and understanding of ‘PETS’.

Taking into account the goods at issue, these words either depicted in one or two words refer to some of the characteristics of the goods. Therefore, the distinctiveness of each element of the signs is less than normal. However, this is immaterial for the comparison in the present case, since the degree of distinctiveness of the signs' verbal elements is irrelevant, as they are the same in both signs, with the exception of the letter ‘S’ of ‘PETS’ in the contested sign and because the only differentiating elements between the signs, merely reside in the abovementioned letter and typeface and the image of a dog and a cat of the contested sign, which are barely noticeable and/or barely distinctive, if at all.

Furthermore, as regards the typography and the figurative element of the contested sign, it is taken into account that 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).

The contested sign has no elements that could be considered clearly more dominant (visually eye-catching) than other elements. 

It follows that the signs are visually highly similar and aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, are identical, as the difference in the sound of the additional letter ‘S’ at the end of ‘Pet’ in the contested sign will be merged with the sound of the letter ‘S’ of ‘Safe’ without making any difference. Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs - as they coincide in the same concept, the signs are identical.

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. Considering what has been stated in section c) of this decision, and in line with the ‘F1-Live’ judgment (24/05/2012, C‑196/11 P, F1-Live, EU:C:2012:314), cited above, the distinctiveness of earlier marks 1, 2, 3 and 4 as a whole must be seen as lower than average.

e) Global assessment, other arguments and conclusion

In the present case, the goods are similar to a low degree and are directed at the public at large, whose the degree of attention may vary from average to high. The earlier mark has a minimum degree of inherent distinctiveness. In this regard it has to be recalled that, although the earlier mark has a lower than average degree of distinctiveness for the relevant goods, this cannot prevent the opposition against the contested goods that are similar to low degree to the opponent’s goods from succeeding. While the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442), this is only one of a number of elements entering into that assessment, and it is established case-law that, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T-112/03, Flexi Air, EU:T:2005:102).

The signs are visually highly similar, aurally identical and conceptually also identical, due to the fact that the earlier mark is reproduced in its entirety in the contested sign. The differences based on low distinctive elements that will cause less impact on consumers, as the figurative element and the letter ‘S’ of the contested sign will not help consumers to differentiate them.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

 

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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

 

As explained above, the only differing elements between the signs are clearly of a limited impact within the overall impression of the signs. The near identity of the verbal elements of the signs justifies the conclusion that there is a likelihood of confusion on the part of the public.

In view of the foregoing and taking into account the relevant circumstances of the case, including the interdependence and imperfect recollection principles cited above, the Opposition Division concludes that the degree of similarity between the signs is such that there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration No 1 288 703. It follows that the contested sign must be rejected for all the contested goods.

Taking into account that 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.

 

Since 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 grounds of the opposition, namely Article 8(4) and (5) EUTMR or to analyse the proof of use of the earlier European Union trade mark examined above for the remaining goods covered by this mark.

 

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

Rosario GURRIERI

María Clara IBÁÑEZ FIORILLO

Valeria ANCHINI

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.