OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 417 833
Cooperatieve Vereniging Huisdierenspeciaalzaken U.A., Abcovenseweg 5, 5051 PT Goirle, The Netherlands (opponent), represented by Antonius den Herder, Vierhuysen 30, 1111 SC Diemen, The Netherlands (professional representative)
a g a i n s t
Maced Spółka z ograniczoną odpowiedzialnością, Bobolicka, 18, 76-010 Polanów, Poland (applicant).
2. The opponent bears the costs.
opponent filed an opposition against all the goods of Community trade
mark application No
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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 goods and services
The goods and services on which the opposition is based are the following:
Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.
Class 35: Advertising; management of commercial affairs; business administration; administrative services.
The contested goods are the following:
Class 31: Foodstuffs for animals.
Foodstuffs for animals are identically contained in both lists of goods.
Earlier trade mark
The relevant territory is the Benelux countries.
Visually, the signs contain a circular device with a dog head silhouette. However, there are differences between the figurative elements. The device in the earlier mark is a shaded silhouette in green against a white background framed by a circular green line with the verbal element ‘DISCUS’ above in its right side. The image shows the shape of a dog head with long ears without any details or features looking to the left. The device in the contested mark, by contrast, consists of a red circle with a dog head silhouette in white above the verbal element ‘MACED’ in red slightly stylised typeface. The dog head has a short ear depicted by a red line and is looking to the right. Therefore, despite both marks containing a device representing a dog head in a circle, the marks are not similar from a visual perspective.
Aurally, the earlier sign is pronounced as ‘DIS-CUS’ and the contested sign as ‘MA-CED’. As the signs do not aurally coincide in any element, it is concluded that the signs are not aurally similar.
Conceptually, the element ‘DISCUS’ in the earlier mark will be perceived as a disc-shaped object with a heavy middle thrown by athletes by the Dutch-speaking part of the relevant public. The same applies to the German-speaking part of the relevant public because of its resemblance to the German word ‘diskus’. For the rest of the public this element does not have any meaning. The element ‘MACED’ lacks any meaning. The devices in both signs will be associated with a dog head within a circle. Since the figurative elements in both signs will be associated with a similar meaning, the signs are conceptually similar.
Taking into account the abovementioned conceptual coincidences, the signs under comparison are similar to a certain extent.
Distinctive and dominant elements of the signs
In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.
The figurative elements in both marks represent a dog head. Bearing in mind that the relevant goods are foodstuffs for animals, it is considered that these elements are weak for these goods, since these devices represent the subjects to which these goods are intended. The public perceives the meaning of the elements and will not pay as much attention to these weak elements as to the other more distinctive elements of the mark. Consequently, the impact of these weak elements is limited when assessing the likelihood of confusion between the marks at issue.
The contested sign has no element which could be considered more dominant (visually eye‑catching) than other elements.
The figurative element of the earlier mark, by virtue of its central position and size, overshadows the verbal elements of the mark. The figurative element is the visually dominant element of the earlier mark.
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, despite the presence of a weak element in the mark as stated above in section c) of this decision.
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.
Global assessment, other arguments and conclusion
The goods are identical and the public will pay an average degree of attention when purchasing them. The signs have been found not similar from the visual and aural point of view. Nevertheless, there is a similarity from a conceptual perspective.
The Court of Justice has established the principle that it is not impossible that the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public.
However, in the present case, the Opposition Division is of the opinion that, the conceptual similarity is not enough to lead, in any case, to a likelihood of confusion. This is because the semantic coincidence is not strong enough and falls in figurative elements that have been considered weak in both marks. Moreover, for the sake of completeness, although both signs evoke a dog head, the devices depiction contains significant visual differences. The dog head in the earlier mark, as also described above in the visual part, is a green representation with the shape and outline of a dog head looking to the left side without any details or features, whereas the dog head in the contested mark is depicted in red with a white line to outline the dog’s ear and is looking to the right. The figure in the earlier mark has a long ear while the dog head in the contested sign has a short one. In addition, the device in the earlier mark is represented in green against a white background, while in the contested mark the dog head is represented in white against a red background.
Apart from the above-mentioned conceptual similarity the signs do not have any other feature in common. The signs also differ in the additional verbal elements in both signs, the element ‘DISCUS’ in the earlier mark and the element ‘MACED’ in the contested sign that contributes to differentiate both signs. It is true that the verbal element in the earlier mark is not a dominant element, but it includes other concept at least for a part of the relevant public that makes it not to be unnoticed by the public.
In addition, it should be noted that the absence of visual coincidences is all the more relevant as the goods at hand are most commonly purchased in supermarkets or establishments where goods are arranged on shelves and where consumers are guided more by the visual impact of the mark they are looking for. Consequently, the considerable visual differences of the devices and the verbal elements are particularly relevant for the assessment of the likelihood of confusion between the marks.
The principle above does not mean that, for goods that are normally purchased visually, the phonetic impression can be overlooked. Although some goods are sold to consumers ‘as seen’ on shelves in self-service areas, a phonetic identity or similarity between marks is at least as important as their visual similarity because an oral discussion of the characteristics of the goods and their mark is also likely to take place at the time of purchase. Furthermore, those goods could be advertised orally, on radio or by other consumers. In the case at hand, the marks are aurally completely different as well.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and (7)(d)(ii) CTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 CTMR and therefore did not incur representation costs.
The Opposition Division
According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.