DECISION

of the Fourth Board of Appeal

of 6 July 2015

In Case R 2689/2014-4

Royal Canin SAS
650, avenue de la Petite Camargue F-30470 Aimargues France	CTM Proprietor / Appellant

represented by HOGAN LOVELLS, Avenida Maisonnave 22, E-03003 Alicante, Spain

v

Hill’s Pet Nutrition, Inc.
400 SW Eight Street Topeka Kansas 66603-3945 United States of America	Cancellation Applicant  / Respondent

represented by DE GAULLE FLEURANCE & ASSOCIES, 9, rue Boissy d’Anglas, F-75008 Paris, France

APPEAL relating to Cancellation Proceedings No 8 558 C (Community trade mark No 11 808 516)

The Fourth Board of Appeal

composed of D. Schennen (Chairman and Rapporteur), C. Bartos (Member) and E. Fink (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. On application dated 13.5.2013, Community trade mark No 11 808 516 for the figurative mark in colour (gold, white, burgundy, brown, grey, black, blue)

was registered on 4.10.2013 in the name of Royal Canin, SAS for the goods:

Class 5 – Veterinary preparations, food supplements for animals for veterinary purposes, animal food supplements, nappies of paper or cellulose for animals, animal washes.

Class 31 – Animal foodstuffs, strengthening animal forage, beverages for pets, edible chews for animals, live animals.

2. On 22.10.2013, Hill’s Pet Nutrition, Inc. (the respondent) requested that the CTM be declared invalid in its entirety on the basis of the absolute grounds for declara­tion of invalidity, namely the grounds laid down in Article 7(1)(a) and (b) CTMR in conjunction with Article 52(1)(a) CTMR.

3. The respondent indicated in its declaration of invalidity form that the contested mark was not distinctive because (1) the CTM proprietor did not use the features of the mark in a consistent manner on its pet food products, but in a myriad of colours and different configurations and (2) the elements of the contested mark were not distinctive (either alone or in combination) as they were used on pet food packagings by many competitors.

4. In the reasoned statement accompanying the declaration of invalidity, the res­pon­dent discussed case-law relevant for Article 7(1)(b) CTMR and in particular showed representations of 24 different variations of pet food packagings from the CTM proprietor in order to show that the features present in the contested mark (the colours and the representation of a given animal) varied but the only com­mon element was the word mark ‘ROYAL CANIN’. The respondent also listed 33 representations of pet food packagings from competitors. The respondent also insisted that the CTM proprietor had filed 4 other similar marks (2 of them subject of parallel proceedings R 2688/2014-4 and R 2690/2014-4 (cancellation cases No 8559 C and 8561 C) and explained as background of its cancellation request that it had received a cease and desist letter from the CTM proprietor re­garding use of the colours ‘gold’ and ‘silver’, hence tried to monopolise decora­tive and non-distinctive packaging features. On the other hand, no arguments were made concerning the application of Article 7(1)(a) CTMR.

5. The appellant refuted the respondent’s arguments and evidence. It highlighted the individual elements of the mark and in particular pointed out to the existence of grey strokes, ‘guide lines’, around the pencil-line depiction of the Persian cat. It also stated that the cancellation applicant’s references to case-law of the Court were largely based on the supposition that the contested mark was a colour mark, whereas it was in fact a figurative mark in colour.

6. By its decision of 27.8.2014, the Cancellation Division upheld the request for declaration of invalidity, declared the CTM invalid in its entirety and ordered the CTM proprietor to bear the costs of the proceedings. It reasoned as follows:

• With certainty the CTM was represented graphically, so the ground for dec­la­ration of invalidity under Article 7(1)(a) CTMR did not apply.

• The first argument of the cancellation applicant that the mark was not used as registered but in a variety of different configurations was irrelevant.

• Against the argument that the colour ‘gold’ was used by many other com­pet­itors it was observed that ‘gold’ was just one out of seven colours indicated in the mark, and the mark was not for a colour per se.

• The Cancellation Division went on to analyse the individual elements of the mark on the basis of their description given in the CTM proprietor’s obser­vations. It identified three elements, a kibble (a pellet made of pet food), a grey Persian kitten, and a silhouette of a cat showing the digestive system of the cat in blue, and found that each of them was non-distinctive.

• The Cancellation Division concluded that once these three elements were found non-distinctive, the addition of a label and of different colours was not sufficient to endow the mark with distinctive character. Comparing the case with one of the ‘label’ cases mentioned in the Examination Guidelines, it reasoned that once the kitten and kibble elements were found non-distinctive, all what is left was a banner of burgundy and gold, hence a non-distinctive label.

• For those reasons the CTM was registered in breach of Article 7(1)(b) CTMR.

7. On 22.10.2014, the CTM proprietor filed an appeal against the decision in its entirety followed by a statement of grounds on 22.12.2014. The CTM proprietor requested that the Board annul the contested decision and maintained that the mark has distinctive character within the meaning of Article 7(1)(b) CTMR.

8. The CTM proprietor in essence reiterated its first instance submission and added that the Cancellation Division had recognised that the mark was not for a colour per se but still applied the criteria related to those. It also added that the Cancel­lation Division seemingly described the various elements of the mark incorrectly. Moreover the CTM proprietor accused the Cancellation Division of having ignored some of its arguments and emphasized the need to protect CTMs against so-called look-alikes.

9. In reply to the statement of grounds of appeal, the respondent repeated its writ of 14.5.2014, expanded by further examples, and agreed that the Cancellation Divi­sion rightly interpreted and applied Article 7(1)(b) CTMR. In a nutshell, it main­tained that it is not the packaging get-up of the CTM proprietor’s products, as registered here, which is distinctive, but its combination with the word element ‘ROYAL CANIN’, the latter being decisive for the consumer’s choice of the product.

Reasons

10. Whilst it is true (as observed by the Cancellation Division on page 6 of the con­tested decision) that it is up to the cancellation applicant to demonstrate the exis­tence of a ground for declaration of invalidity and that the cancellation applicant has the burden of proof to the extent that this would require recourse to evidence, but that the Office is entitled to rely ex officio on facts generally known, the Cancellation Division paid lip service to those principles.

11. A proper examination would have had to start with the pleadings brought forward in the cancellation request.

12. To begin with, the ground for declaration of invalidity under Article 7(1)(a) CTMR (in conjunction with Article 52(1)(a) CTMR) was invoked in the can­cel­lation request, but the cancellation applicant failed to give a reasoned statement in respect of this ground for invalidity. The statements made under point 2.1 of the reasoned statement accompanying the cancellation request do not comprise such a reasoning regarding Article 7(1)(a) CTMR. This provision is merely quoted together with Article 7(1)(b) CTMR, and what follows are abstract statements and case-law quotations which concern only Article 7(1)(b) CTMR. Pursuant to Rule 37(b)(iv) CTMIR, the request for declaration of invalidity must contain a reasoned statement setting forth facts, evidence and arguments in support of the ground for invalidity. If different grounds for invalidity are invoked, this must be done for each ground separately. Otherwise the cancellation request remains ad­missible as a whole but the respective ground for invalidity is not substantiated and does not have to be examined. It is not for the Office to search for possible arguments which could speak in favour of declaring a mark invalid under such a provision.

13. This was recognised by the Cancellation Division on page 3, 3^rd paragraph, of its decision. The Cancellation Division should have then abstained from examining this ground. Of course the Cancellation Division stated the obvious when pointing out that a graphic representation of the mark is there and that has not been challenged by the respondent.

14. The cancellation request was based on two lines of reasoning only. These concern the application of Article 7(1)(b) CTMR, according to which a Community trade mark shall not be registered, or shall, in accordance with Article 52(1)(a) CTMR, declared invalid, if it is devoid of any distinctive character. Had the Cancellation Division limited itself to rebutting those arguments, it would have reached a short decision. Instead, the focus was shifted to the arguments of the defendant.

15. The first argument brought forward in the cancellation request is that the CTM proprietor did not use the features of the mark in a consistent manner on its pet food products, but in a myriad of colours and different configurations. This argu­ment has two limbs, one being that the CTM proprietor uses other variations of packagings (examples:)

and the other being that the CTM proprietor does not use the mark as registered but with the word elements ‘ROYAL CANIN’ (which according to the cancel­lation applicant would be the ‘real’ distinctive sign) plus a crown device plus the word ‘PERSIAN’ (which, however, would actually correspond to the race of the cat depicted), as follows:

16. Both facts, which were not denied by the CTM proprietor, are legally irrelevant. The CTM proprietor may use as many other marks as it pleases him. The CTM proprietor may also use without more different configurations of packagings for different products or product lines. The CTM proprietor is not even required to show use of the mark as registered (or of other marks) at all, unless in the frame­work of a request for revocation under Article 51(1)(a) CTMR. The CTM propri­etor is also free to use the mark as registered together with other marks, or to reg­ister parts of elements of a product packaging as a separate mark (see 8.12.2005, T‑29/04, ‘Cristal Castellblanch’, EU:T:2005:438, § 35, 36 – as regards Article 15 CTMR). A trade mark is always an element of abstraction. Even a word mark is not used on a packaging totally without other elements. That the can­cellation ap­plicant’s argument is devoid of any logic becomes apparent when the argument is reversed: Also a word mark ‘ROYAL CANIN’ would be faced with the same reproach that the actual use would be like in the left-hand column above.

17. The sole legal test under Article 7(1)(b) CTMR is whether the mark as applied for or registered is distinctive, in the form in which it is registered, and it is legally inadmissible to suppose its use together with other elements or alongside other marks. The manner how the mark is actually used on the market becomes rele­vant only under Article 51(1) CTMR (use requirement, or – clearly not relevant for the present case – cases where the manner of use would render a sign generic or misleading).

18. The second argument brought forward in the cancellation request is that the ele­ments of the contested mark were not distinctive (either alone or in combination) as they were used on pet food packagings by many competitors. To this end the can­cellation applicant listed 33 packagings from competitors (examples:)

19. In fact, each of those other packagings looks markedly different from the con­tested mark. In particular none of the other packagings have a white area in the middle with sharp edges in two and bevelled edges in the other two corners, and/ or a burgundy stripe in the lower part the right end of which points upwards (the parties called this ‘the label’).

20. The test under Article 7(1)(b) CTMR is not whether the mark is confusingly similar in terms of Article 8(1)(b) CTMR with another mark used by a competitor (assuming that each and every of the competitor’s packagings were ‘earlier’ than the contested mark and that each and every of them was registered as a trade mark or enjoyed protection as an unregistered trade mark). For the assessment of inherent distinctiveness under Article 7(1)(b) CTMR those other packagings are only relevant to the extent they would show that the contested mark would comprise elements which are so widely used on the market and so commonplace that they will no longer be considered as distinctive features by the average consumer of such goods. This is not the case.

21. Of course these other packagings contain some basic elements such as ‘colours’ or ‘representations of pets’ (cats or dogs, depending whether it is a cat or dog food product) but the colour combinations, or the actual representations of the animal, are each time different. The fact that ‘colours’ or ‘pets’ are used as ele­ments of the product packing is totally irrelevant because there is no abstract trade mark protection for the idea to use colours, or the idea to depict an animal.

22. Actually, the cancellation applicant only reasoned that the colour ‘gold’ was commonplace on those other packagings. Taken in isolation that might be true or not. However, the contested mark is not limited to the colour ‘gold’. It embodies at least three prominent colours, namely ‘white’ (for the field in the centre), ‘bur­gundy’ (the so-called label) and ‘gold’ (for the background-like upper and lower parts). That this combination of three colours, in this particular arrangement and configuration, has become commonplace, has not been shown and the other packagings rather show the opposite.

23. Rather, a comparison of the contested mark with the images shown in para­graphs 15 and 18 above only betters the case of the CTM proprietor. The con­tested mark can readily be distinguished from each and every of the other 33 packagings. Even among each other (if that was ever relevant) they show a com­mon pattern or structure which would further help distinguishing it from the other packagings.

24. What the cancellation applicant in reality showed is that the contested mark cor­responds to the packaging of pet food. This is the reason why the trade mark was filed and why it can be registered. There is no per se ban for trade marks showing the design or configuration of packagings.

25. The Cancellation Division then went on analysing the individual features of the contested mark as well as their combination effect, although relevant arguments in that respect had been brought forward only in response to the CTM proprietor’s observations.

26. It is common ground that distinctive character within the meaning of Arti­cle 7(1)(b) CTMR means that the mark applied for must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking, and thus distinguishing the goods or services from those of other undertakings (7.10.2004, C-136/02 P, ‘Torches’, EU:C:2004:592, § 29; 29.4.2004, C-456/01 P & C-457/01 P, ‘Tabs’, EU:C:2004:258, § 34; 8.4.2003, C-53/01, C-54/01 & C-55/01, ‘Linde’, EU:C:2003:206, § 40).

27. In view of the extent of the protection afforded to a Community trade mark, the public interest underlying Article 7(1)(b) CTMR is manifestly indissociable from the essential function of a trade mark (16.9.2004, C-329/02 P, ‘SAT.2’, EU:C:2004:532, § 27). In assessing the distinctiveness of a complex mark (in the sense of a mark embodying several elements or features), the distinctiveness of each of those elements, taken separately, may be assessed in part, but must, in any event, depend on an appraisal of the whole which they comprise; the mere fact that each of those elements, considered separately, is devoid of distinctive character does not mean that their combination cannot present a distinctive char­acter (‘SAT.2’, § 28; 12.2.2004, C-265/00, ‘Biomild’, EU:C:2004:87, § 40, 41).

28. In other words, a mark possesses distinctive character within the meaning of Article 7(1)(b) CTMR

• when it contains an element which on its own is distinctive (notwithstanding whether other non-distinctive elements are added),

• or when it presents a combination of elements which as a whole is distinctive (notwithstanding whether each and every of those individual elements would be non-distinctive on their own).

29. Already when looking only at the colour configuration, the contested mark em­bodies three different colours in a particular arrangement. To this, several further elements are added. Those further elements may hint at the nature and purpose of the goods (to be a healthy food for cats, or maybe to be a product designed specifically for Persian cats as depicted), but those further elements only serve to reinforce the distinctive character of the contested mark.

30. Already the fact that the contested mark shows its graphic configuration in those three colours renders it distinctive. And since it is a figurative mark and not a trade mark involving colours (or a colour combination) per se, the fact that each of the colours used is either commonplace (gold) or as a single colour devoid of distinctiveness (burgundy) or not even a colour (white) is not the correct yardstick for the assessment.

31. The discussion about what was called a label was mistaken. The term ‘label’ means that a word mark would be placed on it. In the actual use the word placed on it is on its own non-distinctive: ‘PERSIAN’, describing a cat race. This does not assist the cancellation applicant. What is relevant is rather that the overall impression of the contested mark is not the one of a ‘label’ but rather of a complex configuration.

32. Further with regard to the discussion of the presence of a ‘label’, it must be emphasized that the reasoning in previous cases for rejecting simple labels was twofold: that they are simple geometric shapes (which the present mark is not, when looked at as a whole) and that their function is only a background for a word element (which is equally inapplicable to the contested mark as a whole, because the contested mark as a whole is more than a background for a word). The second reasoning indeed implies some link to the way the mark would be used, but in the following sense: For the purposes of assessing the distinctive char­acter of a mark it is appropriate to take into account the most probable use made of the mark, without being obliged to assess other possible uses of the mark (26.4.2012, C-307/11 P, ‘Winkel’, EU:C:2012:254, § 55). This only means that when a label-like figurative mark is filed it is proper to assume that the consumer will perceive it in the form of a label. However this in itself does not mean that that sign would be non-distinctive. Moreover, unlike in the ‘Winkel’ case (which concerned an angular device, which could theoretically be a purely figurative ‘thing’, or could be applied as such on the side of a sports shoe), it is clear in the present case that the contested mark will be used as a packaging for the registered goods. A mark cannot be refused solely on the grounds that typically a word mark would also be placed on it (20.10.2011, C-344/10 P, ‘Botella esmerilada II’, EU:C:2011:680, § 50).

33. It is equally of no assistance for the cancellation applicant to refer to the ‘Glass pattern’ (or ‘Glaverbel’) case. It is standing case-law that the criteria for assessing the distinctive character of a mark consisting of the graphic representation of the appearance of a product or even of a part of a product, such as in terms of surface structure, patterns, or colouring, correspond to those for trade marks showing the shape of a product (9.10.2002, T-36/01, ‘Glass pattern’, EU:T:2002:245, § 23: and many more: 11.7.2013, T-208/12, ‘Rote Schnürsenkelenden’, EU:T:2013:376, § 38; 15.6.2010, T-547/08, ‘Strumpf’, EU:T:2010:235, § 26). In the ‘Glass pattern’ case the application was for a pattern or structure of a glass surface for goods made of glass. In the ‘Strumpf’ case the mark showed a col­oured stocking and the claimed goods were stockings. In the present case the goods are pet food but the contested mark does not show the representation of a pet food. Nor does it show the shape of a packaging. It actually shows a rect­an­gu­lar object easily identifiable as pet food but only as one out of many elements.

34. The remainder of the case-law discussed by the parties, or in the contested deci­sion, warrants no discussion. The Board knows the case-law of the Court and its own decisions. It suffices to say that so far no trade mark comparable to the con­tested mark has been found non-distinctive.

35. Some of the goods for which the contested mark is registered are not even of such a kind that the contested mark could represent their packaging, such as ‘live ani­mals’ (Class 31) or ‘nappies of paper for animals’ (Class 5). This point was not discussed by the parties. The Board finds that for those goods a fortiori the can­cellation applicant’s arguments, including those to the perception of labels or packaging designs, are not applicable so that a fortiori for these goods no reasons to deny distinctiveness can be found.

36. To conclude, the contested mark was not registered in breach of Article 7(1)(b) CTMR and shall remain on the Register of Community Trade Marks. The appeal filed by the CTM proprietor is successful.

Costs

37. As the losing party the respondent (cancellation applicant) has to bear the costs incurred by the CTM proprietor in the cancellation and appeal proceedings as well as his own costs and fees, pursuant to Article 85(1) CTMR.

Fixing of costs

38. Pursuant to Article 85(6) CTMR, and Rule 94(6), (7)(d)(iv), (v) CTMIR, the costs to be fixed in favour of the appellant consist of EUR 800 for the appeal fee, EUR 550 for the representation costs in the appeal proceedings and EUR 450 for the representation costs in the cancellation proceedings, in total EUR 1,800.

Order

On those grounds,

THE BOARD

hereby:

1. Annuls the contested decision;

2. Rejects the request for declaration of invalidity;

3. Orders the respondent to bear the costs of the cancellation and appeal proceedings;

4. Fixes the amount of costs to be reimbursed by the respondent to the appellant for the cancellation and appeal proceedings at EUR 1,800.

Signed D. Schennen

Signed C. Bartos

Signed E. Fink

Registrar: Signed H.Dijkema