OPPOSITION Nо B 3 090 427

 

Pets Global International Limited, Vistra Corporate Services Centre Wickhams Cay II, VG1110 Road Town, Tortola, British Virgin Islands (opponent), represented by Noerr Alicante Ip, S.L., Avenida México 20, 03008 Alicante, Spain (professional representative) 

 

a g a i n s t

 

Barkyn Lda, Rua Alfredo Allen 455, 4200-135 Porto, Portugal (applicant), represented by Patentree, Edificio Net Rua de Salazares 842, 4149-002 Porto, Portugal (professional representative).

On 09/10/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 090 427 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 047 822 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 18 047 822  (figurative mark). The opposition is based on, inter alia,  European Union trade mark registration No 17 658 568 ‘ESSENCE’ (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 EUTM registration No 17 658 568.

 

a) The goods

 

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

 

Class 31: Pet food; dog food; edible dog treats; dog biscuits; canned foods for dogs; cat food; edible chews for animals; canned foodstuffs for cats; foodstuffs for animals.

 

The contested goods are the following:

 

Class 31: Foodstuffs and fodder for animals; Foodstuffs for dogs; Foodstuffs for dogs; Dog biscuits; Foodstuffs for dogs; Edible chews for dogs; Pet food; Pet food; Biscuits for animals; Beverages for pets; Pet food; Animal feed preparations; Beverages for pets; Edible pet treats; Edible treats for animals; Edible bones and sticks for pets; Pet foods in the form of chews; Pet treats in the nature of bully sticks; Synthetic animal feed; Foodstuffs for farm animals; Fortified food substances for animals; Edible chews for animals; Edible chews for animals; Edible chews for animals; Canned or preserved foods for animals; Animal foodstuffs in the form of pellets; Canned foodstuffs consisting of meat for young animals; Digestible chewing bones and bars for domestic animals; Foods containing chicken for feeding dogs; Foods flavoured with chicken for feeding dogs; Cheese flavoured foodstuffs for dogs.

Contested goods in Class 31

 

All the contested goods, namely Foodstuffs and fodder for animals; Foodstuffs for dogs [Alimentação para cães in Portuguese, the 1^st language of the application]; Foodstuffs for dogs [Alimentos para cães]; Dog biscuits; Foodstuffs for dogs [Produtos alimentares para cães]; Edible chews for dogs; Pet food [Alimentação para animais de estimação]; Pet food [Alimentos para animais de estimação]; Biscuits for animals; Beverages for pets; Pet food [Alimentos para animais domésticos]; Animal feed preparations; Beverages for pets; Edible pet treats; Edible treats for animals; Edible bones and sticks for pets; Pet foods in the form of chews; Pet treats in the nature of bully sticks; Synthetic animal feed; Foodstuffs for farm animals; Fortified food substances for animals; Edible chews for animals [Objetos comestíveis e mastigáveis para animais]; Edible chews for animals [Produtos de mascar comestíveis para animais]; Edible chews for animals [Alimentos comestíveis de mascar para animais]; Canned or preserved foods for animals; Animal foodstuffs in the form of pellets; Canned foodstuffs consisting of meat for young animals; Digestible chewing bones and bars for domestic animals; Foods containing chicken for feeding dogs; Foods flavoured with chicken for feeding dogs; Cheese flavoured foodstuffs for dogs are identical to the opponent’s foodstuffs for animals, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested 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 both at the public at large and at business customers (such as animal breeders and farmers with specific knowledge in the field of animal feed). The degree of attention is considered to be average even for the professional public, since as a rule, the goods at issue are not of a highly specialised nature or particularly costly, to require consumers to be more observant or attentive when choosing the goods.

c) The signs

 

ESSENCE
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 the single verbal element ‘ESSENCE’. The contested mark is figurative and consists of a device element made of three overlapping triangles, the relatively bigger verbal element ‘ESSENCE’ written in fairly standard uppercase letters and the much smaller words ‘The Hour of Joy’.

The verbal element ‘ESSENCE’ contained in both marks will be widely understood by the relevant examined public. For example, it will be understood by the English-, French- and Slovenian-speaking public as the ‘intrinsic nature of something’, ‘an extract used for scent or flavouring’ or ‘an extract or concentrate obtained from a particular plant or other matter and used for flavoring or scent’ (Oxford English Dictionary). It is also a synonym of ‘odour’ and ‘perfume’ (Merriam Webster Dictionary). This term will also be understood in other languages, as it is a common English word and/or because it also has fairly similar counterparts in many other relevant languages, for example, есенция/essence in Bulgarian, esencija in Croatian and Lithuanian, esence in Czech and Lithuanian, essens in Danish and Swedish, essents in Estonian, essentie in Dutch, Essenz in German, esszencia in Hungarian, essenza in Italian and Maltese, esencja in Polish, essência in Portuguese, esență in Romanian and esencia in Slovak and Spanish. As this word has no directly descriptive, non-distinctive or otherwise weak meaning in relation to the relevant goods, its inherent distinctiveness is normal.

The phrase ‘The Hour of Joy’ in the contested will be understood with its English meaning by the English-speaking part of the public, whereas for another part of the public, it will not be associated with any particular meaning. Albeit not describing any relevant characteristics of the goods, the phrase ‘The Hour of Joy’, has a merely laudatory and promotional character, for at least the part of the public that understands its meaning, and will be perceived as less distinctive than ‘ESSENCE’. As for the remaining part of the public for which ‘The Hour of Joy’ is meaningless, its distinctiveness would be normal. Nevertheless, whether understood or not, this part of the sign will be perceived as a phrase with a secondary impact, due to its laudatory and promotional character (for at least part of the public), combined with its peripheral positioning and very small size, as mentioned below.

The device element included in the contested sign, its distinctiveness is rather low because it consists of an overlap between three simple geometrical shapes and has a purely decorative nature. In addition, as regards the contested sign account must be taken of the fact 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 font of the letters of the contested sign does not have any particularly fanciful or striking features and will hardly be attributed any distinctiveness.

 

Bearing in mind its central positioning and size in the contested sign, the verbal element ‘ESSENCE’ is the dominant element therein, as it is the most eye-catching and clearly overshadows the much smaller phrase ‘The Hour of Joy’ and the device element.

Visually, the signs coincide in the inherently distinctive element ‘ESSENCE’, which constitutes the only element of the earlier mark and is entirely contained in the contested sign, as the dominant element therein. The signs differ in the additional device element of the contested sign, which, however, has a limited impact as it is purely decorative and of a rather low distinctiveness. The signs also differ in the phrase ‘The Hour of Joy’ but, as mentioned above, this element is less distinctive than ‘ESSENCE’ for at least part of the consumers, and it is not dominant. Therefore, its impact as a difference is reduced due to its secondary positioning and distinctiveness considerations (as regards part of the public).

Therefore, bearing in mind the aforementioned, it is considered that the signs are visually similar to a higher than average degree.

 

Aurally, the pronunciation of the signs coincides in the sound of the inherently distinctive element ‘ESSENCE’. The pronunciation differs in the sound of the phrase ‘The Hour of Joy’. However, bearing in mind its secondary positioning and the tendency of consumers shortening signs to economise on time, it is quite likely that at least a significant part of the public would not pronounce it (18/09/2012, T‑460/11, BÜRGER, EU:T:2012:432, § 48 and the case-law cited). Therefore, it is considered that the signs are aurally identical for a significant part of the public.

The concepts of the signs have been defined above. As mentioned, the verbal element ‘ESSENCE’ in the signs will be associated with the same concept. The signs differ in the additional concepts of ‘The Hour of Joy’, for at least part of the relevant public. In view of this, it is considered that the signs are conceptually similar to at least an average 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.

 

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 in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

 

e) Global assessment, other arguments and conclusion

 

In the present case, the contested goods are identical to the opponent’s goods. The relevant goods are directed both at the public at large and at professional consumers and the degree of attention is average. The earlier mark has a normal degree of inherent distinctiveness.

The signs are visually similar to a higher than average degree. They are aurally identical for a significant part of the public and conceptually similar to at least an average degree. The similarities between the signs are on account of the normally distinctive element ‘ESSENCE’, which constitutes the only element of the earlier mark, reproduced in its entirety as the dominant element of the contested sign. The differing elements of the contested sign (the device element and the phrase ‘The Hour of Joy’) appear in secondary positions and, as explained above, will be paid much less attention by consumers, especially those consumers who will additionally perceive ‘The Hour of Joy’ as a laudatory and less distinctive slogan.

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, in the present case, the Opposition Division considers that it is highly conceivable that the relevant consumer will perceive the contested mark 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). This is likely to be the case, as the similarity of the signs is sufficient for the consumers, to consider that the respective identical goods have the same or economically-linked origin.

In view of the foregoing and taking into account all the relevant circumstances of the case, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public.

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration No 17 658 568. It follows that the contested trade mark must be rejected for all the contested goods.

 

As the earlier right No 17 658 568 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

 

 

Jakub MROZOWSKI

Liliya YORDANOVA

Monika CISZEWSKA

 

 

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.