OPPOSITION Nо B 3 106 800

 

D.M.O. Pet Care S.R.L., Via Maseralino 23, 35020 Pernumia, Padova, Italy (opponent), represented by Jacobacci & Partners S.P.A., Piazza Mario Saggin, 2, 35131 Padova, Italy (professional representative) 

 

a g a i n s t

 

Shenzhen Pet Family Technology Co., Ltd., Room 28e, tower Chonglong Century Square,no.3001 Community Peace Road, Quiyuan Street, luohu District, Null Shenzhen City, Quangdong Province, People’s Republic of China (applicant), represented by Metida Law Firm Zaboliene and Partners, Business Center Vertas Gynéjų Str. 16, 01109 Vilnius, Lithuania (professional representative).

On 11/11/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 106 800 is upheld for all the contested goods.
2.	European Union trade mark application No 18 122 820 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 18 122 820  (figurative mark), in Class 21. The opposition is based on the Italian trade mark registration No 2 016 000 083 039, (figurative 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.

 

a) The goods

 

The goods on which the opposition is based are, inter alia, the following:

 

Class 21: Drinking troughs; indoor aquaria; rings for birds; bird baths; cages for household pets; mangers for animals; combs for animals; birdcages; toilet utensils; cat litter boxes; filters for use in cat litter boxes; brushes for pets; pet feeding dishes.

The contested goods are the following:

 

Class 21: Drinking troughs; feeding troughs; cages for household pets; litter boxes for pets; litter trays for pets.  

Contested goods in class 21

The contested drinking troughs; cages for household pets are identically contained in both lists of goods.

The contested feeding troughs are included in the broader category of the earlier mangers for animals. Therefore, they are identical.

The contested litter boxes for pets; litter trays for pets include the cat litters boxes from the earlier mark and given that the broad category cannot be dissected ex-officio they are identical.

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 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

Earlier trade mark	Contested sign

  

The relevant territory is Italy.

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 figurative trade mark is constituted of five letters, the circle surrounding the letters ‘UP’ allows the letters ‘PET’ to be separated from ‘UP’. However neither of the elements has a meaning for the relevant public and as such both are distinctive.

As concerns the contested sign, neither can a meaning be attributed meaning the term is also distinctive.

Visually and aurally, the signs coincide in all of the letters/sounds apart from their fourth letter ‘U’ versus ‘O’. The differences produced by the figurative nature of the signs are minor and will be perceived as embellishments.

Therefore, the signs are highly similar.

 

Conceptually, neither of the signs has a meaning for the public 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.

 

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

 

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 and services covered are from the same or economically linked undertakings. Indeed, 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). 

In the present case, the goods are identical and target the average consumer, whose degree of attention during the purchase of the goods concerned is average. The distinctive character of the earlier trade mark is considered as normal. The signs are found to be visually and aurally similar to a high degree, and the conceptual comparison does not influence the similarity of signs.

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).

In spite of the differences in the word elements, there is a likelihood of confusion because the visual coincidences are overwhelming. Indeed, the mere difference is located in the fourth letter, and this is sufficient to find a likelihood of confusion.

Considering all the above, there is a likelihood of confusion on the relevant territory.

Therefore, the opposition is well founded on the basis of the opponent’s national registration No 2 016 000 083 039 in Italy. It follows that the contested trade mark must be rejected for the contested goods in Class 21.

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

 

 

Ines GARCIA LLEDO

Vanessa PAGE HOLLAND

Claudia SCHLIE

 

 

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.