OPPOSITION No B 2 713 603

Spezial-Futtermittel M. Diekmann GmbH, Eschkamp 25, 33775 Versmold, Germany (opponent), represented by Loesenbeck · Specht · Dantz, Am Zwinger 2, 33602 Bielefeld, Germany (professional representative)

a g a i n s t

La Normandise, Rue De L Alliere, BP 60083, 14500 Vire, France (applicant), represented by Bastien Masson, 1 Rue Claude Bloch, CS 15093, 14078 Caen CEDEX 05, France (professional representative).

On 08/02/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 713 603 is upheld for all the contested goods.

2. European Union trade mark application No 15 119 514 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 15 119 514. The opposition is based on German trade mark registration No 1 094 693. 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.

1. The goods

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

Class 31: Foodstuffs for animals; Non-medicated additives for animal foodstuffs.

As regards the contested goods, according to Article 120(3) EUTMR, in cases of doubt, the text in the language of the Office in which the application for the EU trade mark was filed shall be authentic. In the present case, the contested application was filed in French and the list of goods in French is, therefore, the authentic version. The goods listed in French in the contested sign are the following:

Class 31: Aliments pour les animaux; Boissons pour animaux; Farines pour animaux; Nourriture pour animaux.

The Opposition Division notes that the French term ‘nourriture pour animaux’ means ‘food for animals’, not ‘supplementary feed for animals’ as indicated in the English version of the list of goods.

In view of this, the Opposition Division will consider that the contested goods are the following:

Class 31: Foodstuffs for animals; Beverages for pets; Meal for animals; Food for animals.

Contested goods in Class 31

Foodstuffs for animals are identically contained in both lists of goods.

The contested beverages for pets, meal for animals and food for animals are included in the broad category of the opponent’s foodstuffs for animals (foodstuffs being any nutritious substance that people or animals eat or drink in order to maintain life and growth, see definitions of ‘foodstuffs’ and ‘food’ in the Oxford English Dictionary extracted from www.oed.com on 08/02/2017). Therefore, they are identical.

2. 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.

3. The signs

Diana
Earlier trade mark	Contested sign

The relevant territory is Germany. Therefore, it is the impressions that the signs make on the public in that territory that are relevant for their comparison.

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 the word mark ‘Diana’. In the case of word marks, it is the word as such that is protected and not its written form.

The public in the relevant territory will perceive the word ‘Diana’ as a reference to a female given name, which has no particular meaning in relation to the goods at issue and is, therefore, distinctive.

The contested sign is a figurative mark containing the verbal element ‘DIANA’ in black upper case letters, with the verbal element ‘eco’ in smaller white lower case letters above the letters ‘IAN’ of ‘DIANA’ on a rectangular black background with rounded corners.

The above considerations regarding the perception and the distinctiveness of the word ‘DIANA’ in the earlier mark apply equally to this element of the contested sign.

The verbal element ‘eco’ of the contested sign is an abbreviation that commonly stands for ‘ecological’ in several English word combinations. The abbreviation ‘eco’ is also used in advertising jargon and is understood not only in English-speaking areas, but also by German consumers (09/04/2014, R 119/2014-5, eco cosmetics, § 23, 24 and the case-law cited therein).

Consequently, ‘eco’ is a customary English prefix that is also understood by the general consumer in Germany as an abbreviation for ‘ecological’. The word ‘ecological’ refers to a practice that causes minimal damage to the environment. Bearing in mind that the relevant goods essentially are foodstuffs for animals, this element is non-distinctive for these goods, as it will merely be perceived as a reference to foodstuffs produced in a sustainable and environment-friendly manner. The graphical element of the contested trade mark consists of a rectangle with rounded corners, which is a basic geometric shape and, therefore, also non-distinctive.

As a result, the verbal element ‘DIANA’ is the most distinctive element in the contested sign and is also the more dominant element (visually more eye-catching) because of its size and central position.

Visually, the signs are similar to the extent that they coincide in the verbal element ‘DIANA’. However, they differ in the additional verbal element ‘eco’ and the geometric shape in the contested sign. Nevertheless, for the reasons outlined above, these additional elements are non-distinctive and smaller than the coinciding element and will therefore have less impact on the visual impression produced by the sign.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘DIANA’, present identically in both signs. The pronunciation differs in the sound of the letters ‛eco’ at the beginning of the contested sign, which has no counterpart in the earlier mark. However, although this additional element is present at the beginning of the contested sign, where consumers normally pay more attention, it is non-distinctive. Consequently, consumers will pay more attention to the verbal element ‘DIANA’ in the contested sign.

Therefore, the signs are also aurally highly similar.

Conceptually, reference is made to the semantic content of the signs as outlined above. Since the difference between the signs is limited to the additional non-distinctive element ‘eco’, which merely qualifies the goods for which registration is sought as being ‘ecological’, the signs are conceptually highly similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 and for the reasons stated above in section c) of this decision, the earlier trade mark 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.

5. Global assessment, other arguments and conclusion

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).

It should also be taken into account 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).

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.

In the present case, the goods at issue are identical and the degree of attention of the relevant public is average. The earlier mark ‘Diana’, which has a normal degree of distinctiveness, is identically reproduced in the contested sign. Moreover, for the reasons outlined above, the coinciding element ‘DIANA’ is the more dominant and most distinctive element of the contested sign. Consequently, the signs are highly similar overall.

Considering this and taking into account the principles of interdependence and imperfect recollection as outlined above, there is a likelihood of confusion on the part of the public within the meaning of Article 8(1)(b) EUTMR.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 1 094 693. It follows that the opposition must be upheld for all the contested goods and the contested trade mark rejected in its entirety.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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

Rasa BARAKAUSKIENE

Sam GYLLING

Denitza STOYANOVA-VALCHANOVA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.