OPPOSITION No B 3 046 874

Herbavita besloten vennootschap met beperkte aansprakelijkheid, Avelgemstraat, 17, 9690 Kluisbergen, Belgium (opponent), represented by BAP IP BVBA - Brantsandpatents, Charles de Kerchovelaan 17, 9000 Gent, Belgium professional representative)

a g a i n s t

Wuff & Co UG (haftungsbeschränkt), Feldstraße 38, 40479 Düsseldorf, Germany (applicant), represented by Paul & Albrecht Patentanwälte Partg mbB, Stresemannallee 4b, 41460 Neuss, Germany (professional representative).

On 10/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 046 874 is partially upheld, namely for the following contested goods:

Class 31: Foodstuffs (animal -); foodstuffs (animal-); edible treats for animals, edible chews for animals; foodstuffs for animals containing botanical extracts, animal foodstuffs derived from hay; animal foodstuffs derived from air-cured hay; canned foodstuffs consisting of meat for young animals; canned or preserved foods for animals; pet food, animal foodstuffs derived from vegetable matter; distillery waste for animal consumption, food for racing dogs; foodstuffs for puppies; lime for animal forage; grains for animal consumption; animal foodstuffs consisting of soya bean products; meal for animals; foodstuffs for animals on a milk basis; mixed animal feed; food preparations for cats; food preparations for dogs; animal foodstuffs in the form of pellets; animal foodstuffs for the weaning of animals; formula animal feed; milled food products for animals; animal foodstuffs in the form of pieces; straw being animal fodder; processed cereals for consumption by animals; biscuits made from cereals for animals, cereal cakes for animals; cereals products for consumption by animals; cereals preparations being food for animals; dried alfalfa for animals; beverages for pets; beverages for canines; beverages for cats; oats for consumption by animals; oat biscuits for consumption by animals; oat cakes for consumption by animals; oatmeal for consumption by animals; processed oats for consumption by animals; pet foods in the form of chews; yeast for animal fodder; yeast extracts for consumption by animals; yeast for animal consumption; yeast tablets for consumption by animals; foodstuffs for dogs; pulses [foodstuffs for animals]; canned foodstuffs for dogs; foods flavoured with chicken for feeding dogs; cheese flavoured foodstuffs for dogs; foods flavoured with liver for feeding dogs; foods flavoured with beef for feeding dogs; foods containing liver for feeding dogs; bones for dogs; dog biscuits; foodstuffs for cats; foodstuffs for cats based on or consisting of fish; canned foodstuffs for cats; cat foods flavoured with chicken; foods flavoured with liver for feeding cats; foods flavoured with beef for feeding cats; foods containing liver for feeding cats; edible chews for animals; biscuits for puppies; bran mash for animal consumption; strengthening animal forage; artificial strengthening forage; edible pet treats; dog treats [edible]; cat treats [edible]; edible treats for animals; flaxseed for animal consumption; flaxseed meal for animal consumption; flax meal [fodder]; maize for consumption by animals; maize cake for cattle; malt for animals; milk substitutes for use as foodstuffs for animals; milk for use as foodstuffs for dogs; milk for use as foodstuffs for animals; stall food for animals; livestock fattening preparations; biscuits made from malt for animals; foods containing chicken for feeding dogs; foods containing chicken for feeding cats; natural rice for use as animal fodder; cereals (residual products of -) for animal consumption; pet treats in the nature of bully sticks; savory biscuits for animals; rapeseed meal for animal consumption; rape cake for cattle, rice bran [animal feed]; rice meal for forage; foods containing beef for feeding dogs; foods containing beef for feeding cats, foods in the form of rings for feeding to dogs; foods in the form of rings for feeding to cats; residues from malt treatment for use as an animal feed; salt licks; meal for consumption by animals; oil cake; soy bean meal [animal feed]; soy sauce cakes (foodstuffs for animals); starch pulp [animal feed]; sweet biscuits for consumption by animals; cereal based foodstuffs for animals; oat-based food for animals; animal foodstuffs in the form of nuts; foodstuffs containing phosphate for feeding animals; milk-based foodstuffs for animals; animal feed preparations; biscuits for animals; spent grain; digestible chewing bones and bars for domestic animals; foodstuffs for dogs; litter for dogs; digestible chewing bones for dogs.

2. European Union trade mark application No 17 298 613 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 all the goods of European Union trade mark application No 17 298 613 for the word mark ‘Aniopus’. The opposition is based on European Union trade mark registration No 16 443 822 for the word mark ‘Aniplus’. 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 5: Veterinary preparations and substances; dietary supplements for animals; dietary supplements and dietetic preparations.

Class 31: Animal foodstuffs.

The contested goods are the following:

Class 18: Equestrian articles, namely saddles, fastenings for saddles, stirrup leathers, stirrup pads of nylon, stirrup pads, bridle-work, bridles, double bridles, reins, side reins, bits, chambons, gogues, horse blankets, whips, muzzles, halters, pack bags for saddles, jockey sticks, martingale, bridles for ponies, pony halters, gaiters, saddle pads, valances, pads for riding saddles, riding halters, riding cushions for ponies, riding saddles for ponies, saddle pads for ponies, fastenings for blankets for ponies, martingales for ponies; cavessons, lunging girths, lunge reins, curb straps, vaulting surcingles, lunge whips, neck extenders, travel boots, fastenings for blankets, accessories, namely buckle straps, clothing bibs, spur straps of leather, leather stable halters, leather leashes, saddle stands of leather and material similar to leather, bridle stands of leather and materials similar to leather, chin straps, hat boxes of leather, whips, harnesses, blankets and cushions; goods of leather and goods of imitations of leather for dogs, namely leashes, collars, harnesses, clothing; briefcases, pocket wallets, bags for campers, shopping bags, purses, suitcases, included in class 18, handbags and travelling bags, garment bags, stirrup leathers, stirrup leathers for ponies, bell boots; eye, ear and fly protectors, tether ropes; protective headgear for transport of horses, tail wraps, knee caps for horses; feed bags for animals; leads for animals; collars for animals; clothing for pets; animal harnesses; covers and wraps for animals; electronic pet collars; coats for dogs; dog leashes; collars for pets; collars for cats; dog shoes, dog bellybands; costumes for animals; dog parkas; coats for cats; rawhide chews for dogs.

Class 31: Foodstuffs (animal -); foodstuffs (animal-); edible treats for animals, edible chews for animals; foodstuffs for animals containing botanical extracts, animal foodstuffs derived from hay; animal foodstuffs derived from air-cured hay; canned foodstuffs consisting of meat for young animals; canned or preserved foods for animals; pet food, animal foodstuffs derived from vegetable matter; distillery waste for animal consumption, food for racing dogs; foodstuffs for puppies; lime for animal forage; grains for animal consumption; animal foodstuffs consisting of soya bean products; meal for animals; foodstuffs for animals on a milk basis; mixed animal feed; food preparations for cats; food preparations for dogs; animal foodstuffs in the form of pellets; animal foodstuffs for the weaning of animals; formula animal feed; milled food products for animals; animal foodstuffs in the form of pieces; straw being animal fodder; processed cereals for consumption by animals; biscuits made from cereals for animals, cereal cakes for animals; cereals products for consumption by animals; cereals preparations being food for animals; dried alfalfa for animals; beverages for pets; beverages for canines; beverages for cats; oats for consumption by animals; oat biscuits for consumption by animals; oat cakes for consumption by animals; oatmeal for consumption by animals; processed oats for consumption by animals; pet foods in the form of chews; yeast for animal fodder; yeast extracts for consumption by animals; yeast for animal consumption; yeast tablets for consumption by animals; foodstuffs for dogs; pulses [foodstuffs for animals]; canned foodstuffs for dogs; foods flavoured with chicken for feeding dogs; cheese flavoured foodstuffs for dogs; foods flavoured with liver for feeding dogs; foods flavoured with beef for feeding dogs; foods containing liver for feeding dogs; bones for dogs; dog biscuits; foodstuffs for cats; foodstuffs for cats based on or consisting of fish; canned foodstuffs for cats; cat foods flavoured with chicken; foods flavoured with liver for feeding cats; foods flavoured with beef for feeding cats; foods containing liver for feeding cats; edible chews for animals; biscuits for puppies; bran mash for animal consumption; strengthening animal forage; artificial strengthening forage; edible pet treats; dog treats [edible]; cat treats [edible]; edible treats for animals; flaxseed for animal consumption; flaxseed meal for animal consumption; flax meal [fodder]; maize for consumption by animals; maize cake for cattle; malt for animals; milk substitutes for use as foodstuffs for animals; milk for use as foodstuffs for dogs; milk for use as foodstuffs for animals; stall food for animals; livestock fattening preparations; biscuits made from malt for animals; foods containing chicken for feeding dogs; foods containing chicken for feeding cats; natural rice for use as animal fodder; cereals (residual products of -) for animal consumption; pet treats in the nature of bully sticks; savory biscuits for animals; rapeseed meal for animal consumption; rape cake for cattle, rice bran [animal feed]; rice meal for forage; foods containing beef for feeding dogs; foods containing beef for feeding cats, foods in the form of rings for feeding to dogs; foods in the form of rings for feeding to cats; residues from malt treatment for use as an animal feed; salt licks; meal for consumption by animals; oil cake; soy bean meal [animal feed]; soy sauce cakes (foodstuffs for animals); starch pulp [animal feed]; sweet biscuits for consumption by animals; cereal based foodstuffs for animals; oat-based food for animals; animal foodstuffs in the form of nuts; foodstuffs containing phosphate for feeding animals; milk-based foodstuffs for animals; animal feed preparations; biscuits for animals; spent grain; digestible chewing bones and bars for domestic animals; foodstuffs for dogs; litter for dogs; digestible chewing bones for dogs.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested goods in Class 18

The contested goods in Class 18 have a totally different nature, purpose and method of use to the opponent´s goods in Classes 5 and 31, being specialised equestrian goods, saddlery or baggage in general or apparel for animals or goods used to control, harness or identify animals which are made from leather or imitation leather. They are not in competition. Also, these goods are usually not produced by the same kind of undertakings. Although animals are the end users of many of these goods, this is not enough to establish similarity between foodstuffs or nutrients for said animals. Overall, they are dissimilar. Consumers will not see them as originating from the same source, contrary to the statements of the opponent. It should be noted, in this regard, that the decision cited in support of similarity mainly pertains to goods in identical classes and is not comparable.

Contested goods in Class 31

All of the contested goods in Class 31 can be ingested or chewed by animals and are identical to the opponent’s animal foodstuffs in Class 31, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods, except for litter for dogs which is similar to the opponent´s animal foodstuffs as they usually coincide in producer, relevant public and distribution channels.

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 are comestibles and litter for pets and are directed at the public at large.

The degree of attention is no more than average for such mass consumption goods, despite contentions to the contrary, the affection and/or discernment of owners in respect of their animals being immaterial to their selection of such regular purchases.

c) The signs

aniplus	aniopus
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The signs have elements which may be seen as meaningful in certain territories, for example in those countries where English is understood. This is not in issue between the parties. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as Ireland, the United Kingdom and Malta.

The signs each consist of a word which does not exist as such in the relevant territory. It is however settled case-law that although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57)

In the context of the goods, the Opposition Division agrees with the applicant that the element ‘ani’ of both signs will be seen by the relevant public as a reference to the first three letters of the word ‘animal’, and agrees with the opponent that it does not materially affect distinctiveness in respect of the goods as it is not (or has not been shown to be) a known or usual abbreviation of the word by itself or in conjunction with a further reference. The remaining ensuing elements are likely to be perceived as meaningful by at least a significant part of the relevant public.The remaining letter string ‘plus’ of the earlier mark will be understood by the relevant public as denoting an ‘advantage or benefit’, or an additional quantity as suggested by the applicant. Although the mark is distinctive as a whole, this element is weak as it has a laudatory connotation. The remaining letter string ‘opus’ of the contested sign will be associated with a work of art (‘you can refer to an artistic work such as a piece of music or writing or a painting as an opus’, all definitions extracted from www. collinsdictionary.com on 04/05/2019). Bearing in mind that the relevant goods are, broadly speaking, edible treats for animals or pet litter, it is distinctive. It is eulogistic, though not in a way that relates to these products. Rather, it serves to elevate the goods in a grandiose and amusing way for the relevant public.

Visually and aurally, the signs coincide in their distinctive first three letters ‘ani’ and in the ‘_p_us’ of their remaining letters. They differ only in the ‘o’ of the contested mark and the ‘l’ of the opponent´s mark which have no counterpart.

Therefore, the signs are highly similar, particularly as consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Accordingly the difference caused by the additional letters/sounds in the middle of the marks could easily be overlooked by consumers.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although neither of the signs has a meaning as a whole, they share a letter string which will be perceived as a reference to the end user together with elements which, albeit different, share a promotional or eulogistic quality and which, etymologically, derive from Latin. Therefore, 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.

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 direct 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.

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 covered are from the same or economically linked undertakings.

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).

The goods are identical, similar and dissimilar. The signs are highly similar and the earlier mark has a normal level of distinctiveness. The level of attention of the relevant public is no more than average. Therefore, there is a clear likelihood of confusion for part of the relevant public in respect of the goods found to be identical or similar.

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).

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 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

Riccardo RAPONI

Keeva DOHERTY

Edith Elisabeth VAN DEN EEDE

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.