CANCELLATION No 28 085 C (INVALIDITY)

Pets Nature GmbH, Porschestr 9, 70736 Fellbach, Germany (applicant), represented by BRP Renaud Und Partner MBB, Königstr 28, 70173 Stuttgart, Germany (professional representative)

a g a i n s t

Lintbells Limited, West Barn, Fairclough Hall Farm, Halls Green, Weston, Hitchin, Hertfordshire SG4 7DP, United Kingdom (EUTM proprietor), represented by Boxall IPM, 9 King Street, Sandwich CT13 9BT, United Kingdom (professional representative).

On 19/05/2021, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is partially upheld.

2. European Union trade mark No 17 617 622 is declared invalid for some of the contested goods, namely:

Class 3: Animal care products other than for veterinary use; shampoos for animals, soaps for animals; cosmetics for animals; toiletries for care of skin and fur of animals; topical creams and lotions for animals; dentifrices for animals; deodorising preparations for use on animals; joint care supplements for animals; supplements for animals for skin and/or fur care.

Class 5: Pharmaceutical and veterinary preparations for animals; animal care products for veterinary use; animal nutrition products in Class 5; dietetic substances adapted for veterinary use for animals; complete foods for animals adapted for veterinary purposes; additives and/or supplements for animal feed; antibiotic food supplements; medicated foodstuffs for animals; vitamin and/or mineral preparations for animals; medicated skin and/or fur treatments for animals, washes, topical creams /or lotions for animals; plasters, materials for dressings for animals; materials for stopping teeth and dental wax for animals; sanitary preparations for medical purposes for animals; disinfectants; deodorising preparations for use on animals, deodorant preparations for absorbing animal odours; anti-parasitic collars and other items adapted for wear by animals; anti-parasitic products for animals; animal repellent and attractant formulations; insect repellents and insecticidal preparations; medicated products for oral use in animals; calming products for animals; products for animals to aid digestion; joint care products for animals; pheromones and aromatic compositions for veterinary and animal use; supplements for animals; digestive supplements for animals; calming supplements for animals; supplements for animals for skin and/or fur care; nutritional additives to foodstuffs for animals for medical purposes; bacteria for animal consumption for use in maintaining normal health; supplements and/or food additives for animals; supplements and/or food additives for animals for joint care; supplements and/or food additives for animals for skin and/or fur care; supplements and/or food additives for animals to aid digestion; supplements and/or food additives for animals for calming.

Class 31: Food and beverages for animals; animal nutrition products; foodstuffs for animals; animal feed; complete foods for animals; complete foods for animals for joint care; complete foods for animals for skin and/or fur care; complete foods for animals to aid digestion; complete foods for animals for calming; bones and other animal derivatives for consumption by animals; algae for animal consumption; animal litter; animal bedding and nesting material.

3. The European Union trade mark remains registered for all the remaining goods, namely:

Class 31: Live animals.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 17 617 622 for the word mark ‘CHEWIES’. The application is based on German trade mark registration No 30 541 373 for the word mark ‘Chewies’. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(a) and (b) EUTMR.

DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(1)(a) and 8(1)(b) EUTMR

A double identity exists when an earlier trade mark is identical to the contested trade mark, and the goods or services for which the latter is registered are identical to the goods or services for which the earlier trade mark is protected. The wording of Article 8(1)(a) EUTMR clearly requires identity between both the signs concerned and the goods/services in question. Whether there is double identity is a legal finding to be established from a direct comparison of the two conflicting signs and the goods/services in question.

A likelihood of confusion exists according to Article 8(1)(b) EUTMR 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 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.

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

Class 31: Food for pets.

The contested goods are the following:

Class 3: Animal care products other than for veterinary use; shampoos for animals, soaps for animals; cosmetics for animals; toiletries for care of skin and fur of animals; topical creams and lotions for animals; dentifrices for animals; deodorising preparations for use on animals; joint care supplements for animals; supplements for animals for skin and/or fur care.

Class 5: Pharmaceutical and veterinary preparations for animals; animal care products for veterinary use; animal nutrition products in Class 5; dietetic substances adapted for veterinary use for animals; complete foods for animals adapted for veterinary purposes; additives and/or supplements for animal feed; antibiotic food supplements; medicated foodstuffs for animals; vitamin and/or mineral preparations for animals; medicated skin and/or fur treatments for animals, washes, topical creams /or lotions for animals; plasters, materials for dressings for animals; materials for stopping teeth and dental wax for animals; sanitary preparations for medical purposes for animals; disinfectants; deodorising preparations for use on animals, deodorant preparations for absorbing animal odours; anti-parasitic collars and other items adapted for wear by animals; anti-parasitic products for animals; animal repellent and attractant formulations; insect repellents and insecticidal preparations; medicated products for oral use in animals; calming products for animals; products for animals to aid digestion; joint care products for animals; pheromones and aromatic compositions for veterinary and animal use; supplements for animals; digestive supplements for animals; calming supplements for animals; supplements for animals for skin and/or fur care; nutritional additives to foodstuffs for animals for medical purposes; bacteria for animal consumption for use in maintaining normal health; supplements and/or food additives for animals; supplements and/or food additives for animals for joint care; supplements and/or food additives for animals for skin and/or fur care; supplements and/or food additives for animals to aid digestion; supplements and/or food additives for animals for calming.

Class 31: Food and beverages for animals; animal nutrition products; foodstuffs for animals; animal feed; complete foods for animals; complete foods for animals for joint care; complete foods for animals for skin and/or fur care; complete foods for animals to aid digestion; complete foods for animals for calming; bones and other animal derivatives for consumption by animals; algae for animal consumption; animal litter; animal bedding and nesting material; live animals.

Contested goods in Class 3

The contested animal care products other than for veterinary use; shampoos for animals, soaps for animals; cosmetics for animals; toiletries for care of skin and fur of animals; topical creams and lotions for animals; dentifrices for animals; deodorising preparations for use on animals include products for animals for hygiene, beauty care, dental care and deodorising. They are similar to a low degree to the applicant’s food for pets. These goods may be produced and offered by the same companies, since they belong to the same market segment related to pets. Producers of pet goods may offer a wide range of products for keeping animals, including both foodstuffs and hygiene and beauty care products. In supermarkets, all animal-related products are displayed in one department of the store and directed at pet owners at the same time and place, since the range of animal supplies is smaller than that for humans. Every owner of a dog or cat, who buys animal care products, at some point also needs to buy food for the same animal, and will usually use the same big supermarket or specialised store for this. Therefore, the consumers can reasonably expect the products to come from the same undertakings or economically linked undertakings. However, even though these products belong to the broader category of pet-related products, their nature is not the same; products for the purpose of feeding a pet are not the same as products for the purpose of pet hygiene and beauty care. Therefore, the similarity, based on the same producers, distribution channels and relevant public, is low (11/05/2018, R 1016/2017‑1, TropiCat TropiDog International Breeders Club (fig.) / TROPHY CAT et al).

The contested joint care supplements for animals; supplements for animals for skin and/or fur care are similar at least to a low degree to the applicant’s food for pets. The contested supplements for animals also serve a nutritional purpose and are frequently integrated into animal food. This means that they are similar in purpose and method of use. Furthermore, the goods at issue target the same public and are offered through the same specialised distribution channels, for example veterinary practices and specialised pet shops.

Contested goods in Class 5

The contested pharmaceutical and veterinary preparations for animals; animal care products for veterinary use; medicated products for oral use in animals; calming products for animals; medicated skin and/or fur treatments for animals; plasters, materials for dressings for animals; pheromones and aromatic compositions for veterinary and animal use; topical creams /or lotions for animals; joint care products for animals; sanitary preparations for medical purposes for animals; materials for stopping teeth and dental wax for animals cover a wide range of dental, medical and veterinary/pharmaceutical preparations for treating or preventing diseases in animals. A certain degree of similarity can be found between these contested goods and the applicant’s food for pets. Although these goods have a different nature and purpose and distinct manufacturers (the veterinarian and pharmaceutical business remains highly specialised and, as a general rule, is distinct from the business of manufacturing food for animal), these goods have the same relevant public and they coincide in their distribution channels. Consequently, they are similar to a low degree (14/11/2016, R 2197/2015‑5, NoxiGuard / NEXGUARD, § 19, 20).

The contested animal nutrition products in Class 5; dietetic substances adapted for veterinary use for animals; complete foods for animals adapted for veterinary purposes; additives and/or supplements for animal feed; antibiotic food supplements; medicated foodstuffs for animals; vitamin and/or mineral preparations for animals; products for animals to aid digestion; supplements for animals; digestive supplements for animals; calming supplements for animals; supplements for animals for skin and/or fur care; nutritional additives to foodstuffs for animals for medical purposes; bacteria for animal consumption for use in maintaining normal health; supplements and/or food additives for animals; supplements and/or food additives for animals for joint care; supplements and/or food additives for animals for skin and/or fur care; supplements and/or food additives for animals to aid digestion; supplements and/or food additives for animals for calming are dietary supplements and dietetic preparations for animals. Even though these goods are different in nature from the applicant’s food for pets, there is a degree of similarity between them. The contested goods primarily serve dietary purposes, and the applicant’s goods primarily serve nutritional purposes. There is no significant difference in the way these goods are used to achieve their purpose. Furthermore, their method of use (i.e. oral administration) can be the same. In many instances, animal food includes additives, dietary supplements, proteins and/or vitamins. The goods at issue target the same public and are offered through the same specialised distribution channels, such as veterinary practices and specialised pet shops. Therefore, they are similar at least to a low degree.

The contested washes for animals; disinfectants; deodorising preparations for use on animals, deodorant preparations for absorbing animal odours; anti-parasitic collars and other items adapted for wear by animals; anti-parasitic products for animals; animal repellent and attractant formulations; insect repellents and insecticidal preparations include products for animals for hygiene, deodorising, elimination of parasites and repellents. They are similar to a low degree to the applicant’s food for pets. These goods are distributed by the same companies since they belong to the same market segment related to pets. In supermarkets all animal-related products are displayed in one department of the store and directed at pet owners all in one place, since the range of animal supplies is smaller than that for humans. Nevertheless, even though these products belong to the broader category of pet-related products, their nature is not the same; products for the purpose of feeding a pet are not the same as products for the purpose of pet hygiene. Therefore, the similarity, based on the same distribution channels and relevant public, is low.

Contested goods in Class 31

The contested food and beverages for animals; animal nutrition products; foodstuffs for animals; animal feed; complete foods for animals; complete foods for animals for joint care; complete foods for animals for skin and/or fur care; complete foods for animals to aid digestion; complete foods for animals for calming; bones and other animal derivatives for consumption by animals; algae for animal consumption include, as broader categories, or overlap with, the applicant’s food for pets. Since the Cancellation Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the applicant’s goods.

The contested animal litter; animal bedding and nesting material are products used for an animal’s comfort and hygiene. Although these goods do not have the same nature or purpose as the applicant’s food for pets, they are usually sold to the same consumers through the same distribution channels. In addition, litter (and bedding) could be part of a product line, thus the producer of the contested goods could be the same as that of the applicant’s goods. Therefore, these goods are similar.

The contested live animals are not similar to the applicant’s food for pets. While consumers may find both pets and their food in the same shops, this is not sufficient to find a similarity between these goods. They do not have the same natures, purposes, methods of use or producers. The relevant public would not expect pet food producers to breed animals or animal breeders to produce foods for pets. They would not think that responsibility for the production of these two kinds of goods lay with the same undertaking.

2. The signs

Chewies	CHEWIES
Earlier trade mark	Contested trade mark

Given that both marks are word marks, differences in the use of upper- or lower-case characters are immaterial.

The signs are identical.

3. Global assessment, other arguments and conclusion

The signs are identical and some of the contested goods, as established above in section a) of this decision, are identical. Therefore, the cancellation application must be upheld pursuant to Article 8(1)(a) EUTMR in conjunction with Article 60(1)(a) EUTMR for these goods.

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).

Some of the contested goods, as established above in section a) of this decision, are similar to varying degrees to those covered by the earlier trade mark. Given the identity of the signs and the interdependence principle mentioned above, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR even for the goods similar to low degree. Therefore, the cancellation application is upheld also insofar as it is directed against these goods.

The rest of the contested goods are dissimilar. As identity/similarity of goods is a necessary condition for the application of Article 8(1)(a) and (b) EUTMR in conjunction with Article 60(1)(a) EUTMR, the cancellation application based on Article 8(1)(a) and (b) EUTMR cannot be successful for these goods.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part 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 Cancellation Division

Julie, Marie-Charlotte HAMEL

Frédérique SULPICE

Jessica LEWIS

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 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.