OPPOSITION No B 2 984 857

Raisioaqua Oy, Raisionkaari 55, 21200 Raisio, Finland (opponent), represented by Heinonen & Co, Fabianinkatu 29 B, 00100 Helsinki, Finland (professional representative)

a g a i n s t

St. Hippolyt Holding GmbH, Talstr. 41, 69234 Dielheim, Germany (applicant), represented by Gail & Kollegen Rechtsanwälte, Bettinastraße 105/107, 63067 Offenbach am Main, Germany (professional representative).

On 03/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 984 857 is partially upheld, namely for the following contested goods:

Class 31: Foodstuffs and fodder for animals; agricultural crops; bedding and litter for animals; sowing seeds; unprocessed cereals; seeds for planting; crop seeds; seeds prepared for consumption by animals; edible seeds [unprocessed]; unprocessed seeds for agricultural use; raw and unprocessed grains.

2. European Union trade mark application No 17 165 002 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 165 002 for the figurative mark namely against all the goods in Class 31. The opposition is based on European Union trade mark registration No 16 171 449 for the 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 the following:

Class 31: Foodstuffs for animals; fishmeal containing fatty acids; meal for animals; grains for animal consumption; fish meal for animal consumption; fodder; pet food.

The contested goods are the following:

Class 31: Foodstuffs and fodder for animals; agricultural and aquacultural crops, horticulture and forestry products; bedding and litter for animals; sowing seeds; unprocessed cereals; fresh fruits and vegetables; garden herbs, fresh; seeds for planting; crop seeds; seeds prepared for consumption by animals; edible seeds [unprocessed]; unprocessed seeds for agricultural use; raw and unprocessed grains.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Despite the different wording, foodstuffs and fodder for animals are identically included in both lists of goods.

The contested agricultural crops are similar to a high degree to meal for animals as they usually coincide in relevant public and distribution channels. Furthermore, they are complementary.

The contested bedding and litter for animals are similar to the opponent’s fodder; they usually coincide in producer, relevant public and distribution channels.

The contested sowing seeds; unprocessed cereals; seeds for planting; crop seeds; seeds prepared for consumption by animals; edible seeds [unprocessed]; unprocessed seeds for agricultural use; raw and unprocessed grains are at least similar to foodstuffs for animals as they usually coincide in producer, relevant public and distribution channels.

However, the remaining contested goods: aquacultural crops, horticulture and forestry products; fresh fruits and vegetables; garden herbs, fresh are dissimilar to the opponent’s goods. The contested horticultural and forestry products are land products that have not been subjected to any form of preparation for consumption. The goods at issue do not have sufficient points of contact. In addition, the contested fresh fruits and vegetables (and garden herbs, fresh) are not processed, at most washed and packaged. Moreover, these goods are, in principle, intended for human consumption. As noted by the Board of Appeals, every plant, every animal or any kind of food cannot be regarded as ‘food and foodstuffs for animals’, just because animals may eat them as well (19/05/2011, R 1517/2010-2, Bionade / Biona, § 22). Processed foodstuffs for animals are prepared and packed by the corresponding specialised industries, taking into consideration the different nutritional needs of animals. Their channels of distribution are different. In a retail situation, foodstuffs for human consumption and foodstuffs for animal consumption are carefully kept apart. Foodstuffs for animals are also often sold in specialised shops that sell live animals as well. Only a few products, such as manufactured and/or processed foodstuffs for certain common pets, such as dogs, cats, guinea pigs or birds are sold in supermarkets, where the relevant consumer may find some of the goods of the earlier trade mark. Even if they were sold in the same outlets, such as supermarkets, they would be found in completely different sections. Therefore, food for animals is used in a different way from, is not complementary to and is not in competition with the contested goods (19/05/2011, R 1517/2010-2, Bionade / Biona, § 24).

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 or similar to varying degrees are directed at the public at large (who cultivate and seek fresh, raw unprocessed land products for use in gardening and for feeding domestic animals that they may keep) and professionals, such as those involved in the agricultural industry. The degree of attention is average.

c) The signs

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 shared word in both signs ‘vital’ means in English, ‘necessary or very important’ or ‘essential to maintain life’ (extracted from Collins dictionary on 02/04/2019 at https://www.collinsdictionary.com/dictionary/english/vital). This word also exists in Danish, French, Portuguese, Romanian and Spanish, and in Italian the word is ‘vitale’. This element is likely to be weak and/or non-distinctive for this part of the public, in relation to the relevant goods. This is because the sense of the word is understood as referring to life and vitality. For English-speakers, that meaning is reinforced by the additional words ‘like nature’ in the contested sign. They relate to the fact that the nature is life-giving/necessary or that ‘like nature’ means that the food can or will taste like found in nature. Therefore, its distinctiveness will be limited.

The English or French term ‘nature’ in the contested sign, will be recognised and understood throughout the European Union, either because the public understands these languages or because the term will be associated with the same concept by the rest (i.e. the non-English and/or non-French-speaking part) of the relevant public due to the similarities of this word to its equivalents in various languages, such as ‘natur’ in Danish, German and Swedish, ‘natura’ in Italian and Polish, ‘natură’ in Romanian or ‘natuur’ in Dutch. However, the combination of words ‘like nature’ does not have a clear meaning for the part of the consumers without a good command of English.

The Opposition Division will assess the signs from the perspective of the public that understand the meaning of the words ‘Vital’ and ‘like nature’, such as the English-speaking consumers, as this is the best case scenario for likelihood of confusion to arise.

The stylisations of the words in the signs under comparison are rather decorative and play a secondary role in the comparison.

The figurative element of the earlier mark depicting a circle is distinctive. Nevertheless, 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).

Due to its smaller size and position, the verbal elements ‘like nature’ play a secondary role in the contested sign. The earlier mark has no elements that could be considered more dominant.

Visually, the signs coincide in the element ‘VITAL’ that constitutes the verbal element of the earlier mark and the most dominant element of the contested sign. The signs differ in the additional ‘like nature’ only present in the contested sign, their stylisation, and the figurative device of the earlier mark, which is less important within the mark as explained above.

It has already been mentioned that the coinciding element of the signs has reduced distinctiveness with respect to the relevant goods. Nevertheless, the fact that an element has a lower degree of distinctiveness does not mean that it may not serve as an identifier of a commercial origin. Moreover, in the case in question, the differing elements in the contested sign do not have a high degree of distinctiveness. At the same time, the coinciding element ‘Vital’ is the dominant, i.e. visually the most eye-catching, element in contested sign, and the element with more impact in the earlier mark.

In the light of the above considerations, on account of their common element ‘Vital’, the signs are considered similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘vital’, present identically in them. The pronunciation differs in the sound of ‛like nature’ in the contested mark, which is of limited distinctiveness, and has no counterparts in the earlier sign.

It is noted that the coinciding element in the signs is at the beginning of their verbal elements and the principal that consumers tend to pay more attention to the beginning of the signs is fully applicable here. In addition, the only word element in the earlier mark is entirely contained in the contested one, therefore, the signs are considered aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will bring associations with ‘essential for life’, they are conceptually similar. It has been noted that this meaning is weak and/or non-distinctive with respect to the relevant goods, however on account of the fact that the remaining meaningful elements are not more distinctive, the degree of similarity is determined to be average.

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 low for all the goods in question.

e) Global assessment, other arguments and conclusion

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).

It has been established that the goods at issue are identical, similar to different degrees and dissimilar. The relevant public is both the public at large and professional with an average degree of attention. The earlier mark is of a low degree of distinctiveness with respect to the relevant goods and the signs are similar to an average degree in all three aspects of the comparison.

In light of the above and taking into account that the remaining elements of the signs do not have a stronger impact on the perception of the signs than the coinciding ones, it is concluded that there is a likelihood of confusion on the part of the public regarding the goods found to be identical or similar to different degrees. This is irrespective of the fact that the distinctiveness of the coinciding element in the signs and of the earlier mark is low with respect to the relevant goods.

In this respect, it is settled case-law that the finding of a weaker distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion. The distinctive character of the earlier mark is one of the factors to be taken into account when assessing the likelihood of confusion and as stated above, there is interdependence between the relevant factors, which is relevant for the final outcome. Thus, even in a case involving an earlier mark of a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T‑112/03, FLEXI AIR, EU:T:2005:102, § 61).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to different degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martin EBERL

Gonzalo BILBAO TEJADA

Peter QUAY

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.