OPPOSITION No B 3 043 679

Zucami Poultry Equipment, S.L.U., Polig. Morea Norte, C/C nº 2, 31191, Beriain, Navarra, Spain (opponent), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010, Madrid, Spain (professional representative)

a g a i n s t

Officine Facco & C. S.p.A., via Venezia, 30, 35010 Marsango di Campo San Martino (PD), Italy (applicant), represented by Luca Giove, Niccolò Tommaseo 69/d, 35131 Padova, Italy (professional representative).

On 22/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 043 679 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 666 421, namely against all the goods and services in Classes 6, 7, 9, 11, 19, 37 and 42. The opposition is based on European Union trade mark registrations No 3 084 332 and No 14 349 047 . The opponent invoked Article 8(1)(b) and Article 8(5) 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 and services

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

European Union trade mark registration No 3 084 332

Class 6: Common metals and their alloys; building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; metallic pipes and tubes; safes; goods of common metal not included in other classes; ores.

Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs.

Class 37: Construction and repair.

Class 39: Transport; packaging and storage of goods; distribution of goods.

European Union trade mark registration No 14 349 047

Class 6: Poultry cages of metal; transportable structures of metal.

Class 7: Incubators for eggs; incubators for eggs; modular egg conveyors; incubators for eggs; conveyor cages; animal feeders (machines).

Class 37: Installation, assembly and maintenance of bird cages of metal, non-metallic transportable buildings, egg incubators, incubators for birds, modular egg conveyors, poultry hatchers, conveyor cages and tubes for feeding animals (machines).

The contested goods and services are the following:

Class 6: Prefabricated battery cages of metal for rearing and fattening poultry; feed silos, cattle boxes of metal; cages of metal; poultry cages of metal; animals (metal cages for wild -).

Class 7: Mechanical egg gathering, egg sorting and egg transport apparatus; feeding installations for animals, in particular automatic feeding machines; mills for animal feed; mixing machines for animal feed; feed conveyor belts; incubators for eggs; incubators for eggs; mechanical conveyors for dung and liquid manure, in particular screw conveyors, conveyor belts, slides, distributors; mechanical apparatus for treatment of excrement and effluent, in particular crushing machines.

Class 9: Computers for control of installations and animals for distribution of foodstuffs; electronic scales for animal feed and for animals; data processing equipement and computers, in particular computers for controlling feeding installations; computer software for use in the field of examination or analysis of animals; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; sound transmitting apparatus; apparatus for the transmission of images; apparatus for the reproduction of images; sound reproduction apparatus; apparatus for recording images; sound recording apparatus; scientific apparatus and instruments.

Class 11: Climate control apparatus for animal stalls, in particular ventilators, heaters, coolers, heat exchangers, electronically controlled air mixers for ventilating battery cages and dung conveyor belts; Mechanical apparatus for treatment of excrement and effluent, in particular dryers, prefabricated wind tunnels of metal or plastic materials for drying excrement.

Class 19: Cages of non-metallic materials, other than for domestic use; breeding batteries (structures, not of metal); silos of prefabricated plastic materials.

Class 37: Building construction, In particular construction of cages for animals; installation, repair and maintenance of silos and systems for feeding poultry; installation and repair of air conditioning and heating installations; installation, maintenance and repair of machines; installation and repair of irrigation installations; building insulating.

Class 42: Technological planning services; construction drafting; design and development of computer hardware and software and websites; conducting technical project studies; material testing; industrial analysis services; quality control; surveying.

The contested goods in Class 9 apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; sound transmitting apparatus; apparatus for the transmission of images; apparatus for the reproduction of images; sound reproduction apparatus; apparatus for recording images; sound recording apparatus; scientific apparatus and instruments and the contested services in Class 42 have nothing in common with the opponent’s goods and services. They have a different nature, intended purpose and method of use. Their producers and providers, distribution channels and relevant publics are also different. Furthermore, these goods and services are neither complementary nor in competition. Consequently, they are dissimilar.

The remaining contested goods and services are identical or similar to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 and services assumed to be identical are specialised and are directed at business customers in the farming industry, with specific professional knowledge or expertise in this field.

The degree of attention will vary from average to high, considering the degree of specialisation, the frequency of purchase and the financial implications of the relevant goods and services purchased.

c) The signs

1) 2)
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The common element ‘POULTRY EQUIPMENT’ will be understood by the relevant public with a certain command of English as ‘the necessary items for the purpose of raising domesticated birds such as chickens, ducks, turkeys and geese for the purpose of farming meat or eggs for food’. Bearing in mind that the relevant goods are metal and non-metallic structures, machineries, apparatus and instruments commonly used in the poultry-farming industry and the relevant services are installation, maintenance, repair and technological services related to the aforesaid goods, this element is non-distinctive for these goods and services.

Professional customers in the poultry industry are likely to understand ‘POULTRY EQUIPMENT’ as they are probably familiar with English in connection with the goods and services in question. As the applicant demonstrates by providing web captures of several poultry producers and a list of trade mark registrations in non-English-speaking territories, ‘POULTRY EQUIPMENT’ is an expression commonly used by manufacturers in this specific niche market. For this part of the public, this element is also non-distinctive.

However, it can be that for part of the European professionals in the poultry-farming industry, such as the ones stated by the opponent from Bulgaria, Czechia, Latvia, or Poland, the element ‘POULTRY EQUIPMENT’ has no meaning and is distinctive.

Therefore, the Opposition Division will first examine the opposition in relation to the part of the public for which ‘POULTRY EQUIPMENT’ has no meaning and has a normal degree of distinctiveness.

For the purposes of this comparison and bearing in mind that similarities between signs are higher where the coincidences reside in distinctive elements, the Opposition Division will assess the signs from this perspective as this is the most advantageous scenario for the opponent, namely that all the verbal elements in the signs are distinctive for all the relevant goods and services.

The earlier mark 1) is a figurative sign containing the word ‘ZUCAMI’ in large silver upper-case letters with a slight blurred appearance and, underneath it, the expression ‘POULTRY EQUIPMENT’ is written in small standard white upper-case letters. Above the word ‘ZUCAMI’ there is an abstract figurative element in dark green and silver that can be interpreted as a large letter ‘Z’. All verbal elements are set against a dark green rectangle.

The earlier mark 2) is a figurative sign consisting of the word ‘zucami’ in standard green lower-case letters, underneath it, the expression ‘POULTRY EQUIPMENT’ is written in standard black upper-case letters, and underneath that, the expression ‘The green ones’ in green sentence case letters. Above the word ‘zucami’, there is a large silver letter ‘Z’ set against a green square.

The contested sign is a figurative sign consisting of a graphic element in the shape of a hen, fused with a shape of a gear wheel and another ellipsoidal shape in the form of an egg. The sign is red, black and white. The expression ‘POULTRY EQUIPMENT’ is written in standard white upper-case letters on two lines set inside a red circle within the chicken form of the design. The figurative elements in the contested sign are weak in relation to the relevant goods and services.

As stated above, the verbal elements in the signs have no meaning for part of the relevant public and are, therefore, distinctive.

The abstract big letter ‘Z’ and the word ‘ZUCAMI’ in the earlier mark 1) are the co-dominant elements as they are the most eye-catching. In the earlier mark 2) the dominant element is the word ‘zucami’ due to its size and central position.

The figurative element of the contested sign overshadows the verbal elements of the mark by virtue of its size. Therefore, the figurative element is the visually dominant element of the contested sign.

Visually, the signs coincide in the distinctive expression ‘POULTRY EQUIPMENT’ albeit it is not dominant in any of the signs. The marks differ in all the remaining elements. The earlier marks contain additional distinctive verbal elements which have no counterparts in the earlier marks and the stylisation of the lettering in each sign is different. The figurative elements, their layout and colours are also completely different.

Therefore, taking into account the conclusions regarding the distinctiveness and the dominance of the elements in the marks under comparison, the signs are visually only similar to a very low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier marks, although made up of different word elements, will be referred to as ‘ZUCAMI’ (the single letter ‘Z’ being associated with the initial of ‘Zucami’ will most likely not be pronounced) as case-law has confirmed that consumers naturally tend to shorten long marks in order to reduce them to elements that are easiest to refer to and remember (07/02/2013, T‑50/12, Metro Kids Company, EU:T:2013:68, § 42; 30/11/2011, T‑477/10, SE© Sports Equipment, EU:T:2011:707, § 55; 16/09/2009, T‑400/06, zerorh+, EU:T:2009:331, § 58; 18/09/2012, T‑460/11, Bürger, EU:T:2012:432, § 48). The contested sign will be pronounced ‘POULTRY EQUIPMENT’. The pronunciation differs in the sound of the additional letters ‘ZUCAMI’ (and ‘The green ones’) of the earlier marks, which have no counterparts in the contested sign and are distinctive.

Therefore, the signs are aurally dissimilar.

Conceptually, none of the words in the signs has a meaning for the relevant public, but the contested sign depicts a hen, a gear wheel and an egg, while the figurative elements in the earlier marks convey no meaning. Since the earlier marks will not be associated with any meaning, the signs are not conceptually 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 marks

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 claimed that the earlier European Union trade mark registration No 14 349 047 enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of this earlier mark will rest on its distinctiveness per se. In the present case, both earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

e) 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).

The goods and services, assumed to be identical, target the specialised public in the farming industry whose degree of attention will vary from average to high. The earlier marks have a normal degree of distinctiveness.

The signs under comparison are visually only similar to a very low degree and aurally and conceptually, not similar.

Although the signs share the only verbal element in the contested sign ‘POULTRY EQUIPMENT’, there is no likelihood of confusion as the additional differentiating verbal and figurative elements, and the concept conveyed by the contested sign are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks, regardless of the level of attention displayed. The marks’ contrasting structure, colour and appearance influence the overall impression of each sign.

Therefore, the marks, despite displaying some similarities, will be safely distinguished by all of the relevant public given that the differences are more important and eye-catching. The public will neither associate the marks nor the commercial origin of the goods and services concerned.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for which the common verbal element ‘POULTRY EQUIPMENT’ is non-distinctive. This is because, as a result of the non-distinctive character of that element, that part of the public will perceive the signs as being even less similar.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2)(f) EUTMDR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier European Union trade mark registration No 14 349 047.

On 27/04/2018 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 02/09/2018.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

COSTS

According to Article 109(1) EUTMR, 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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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.

The Opposition Division

Claudia ATTINÀ

Loreto URRACA LUQUE

Biruté SATAITE-GONZALEZ

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.