OPPOSITION No B 3 052 217

Mars, Incorporated, 6885 Elm Street, McLean, Virginia 22101-3883, United States of America (opponent), represented by Hogan Lovells, Avenida Maisonnave 22,
03003 Alicante, Spain (professional representative)

a g a i n s t

The Petagrees, Dag Hammerskjölds Alle 40, 2100 København Ø, Denmark (applicant).

On 17/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 217 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 779 315 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 and services (in Classes 31 and 45) of European Union trade mark application No 17 779 315 (figurative mark:
‘ ’). The opposition is based on, inter alia, European Union trade mark registration No 395 434 (word mark: ‘PEDIGREE’). 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 395 434.

a) The goods and services

The goods and services in Classes 5, 31, 41 and 42 on which the opposition is based are the following:

Class 5: Veterinary preparations in particular for treatment of animals, birds or fish; vitamin and medical additives for foodstuffs for animals, birds or fish; disinfectants and preparations for combating parasites, in particular being powders, sprays or animal collars, medical shampoos and detergents for animals, birds or fish.

Class 31: Agricultural, horticultural and forestry products, grains and seeds; foodstuffs for animals, birds and fish, but not including foodstuffs for livestock, bovines, ovines, pigs, equines, poultry, birds and game birds; malt; cuttlefish bone, bones for dogs; litter for animals; fresh fruit and fresh vegetables, potatoes, alimentary preparations included in class 31 for use as additives to such foodstuffs.

Class 41: Services for animal training; teaching of petcare and training in the management and promotion of petshows and pet exhibitions; production of cinefilms, brochures and literature, all relating to animals, birds and to fish; teaching of diet and nutrition education and of dental care; training in computer and data processing techniques; sales training services for retailers; all included in Class 41.

Class 42: Charitable services relating to animals, birds and to fish; fostering and kennelling of animals; veterinary services; adoption agency and grooming salon services all relating to pets; hospitals for sick animals; research services relating to the nutrition of pet animals, birds and fish; research services relating to birds and to fish; consultancy or advisory services relating to care and housing of animals, birds and of fish.

The contested goods and services in Classes 31 and 45 are the following:

Class 31: Edible pet treats.

Class 45: Pet sitting.

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

The contested edible pet treats overlap with the opponent’s foodstuffs for animals, birds and fish, but not including foodstuffs for livestock, bovines, ovines, pigs, equines, poultry, birds and game birds. Therefore, they are identical.

Contested services

The contested pet sitting has the same distribution channels (such as retailing), supplier and (general) public as the opponent´s services for animal training in Class 41. Therefore, they are similar.

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 found to be identical or similar are directed at the public at large and at business customers (which are specialised for pet sitting, such as animal hotels) with specific professional knowledge or expertise. The public’s degree of attentiveness is average.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

c) The signs

PEDIGREE
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 element ‘PET’ of the contested sign might be understood by the English speaking public and so would be weak for the relevant goods and services. The element ‘PED’ of the earlier trade mark sounds very similar, if not identical, to the element ‘PET’ of the contested sign. Consequently, the best scenario would be to focus the comparison on the non-native English-speaking public or a part of this public, for example the German-speaking public.

The earlier word mark is protected in all typefaces. The contested sign is a figurative mark. It is a stylised depiction of a greenish/bluish cat, as the background, with a smaller white silhouette of a dog in front of it. Underneath the figurative element there are the words ‘The Petagrees’ in a slightly stylised block typeface, below which, in a much smaller typeface, that is hardly readable, is the phrase ‘your pet deserves the best’.

The earlier mark has no meaning for the relevant public and is, therefore, distinctive. The same applies for the word ‘Petagrees’ and the word combination 'your pet deserves the best' of the contested sign.

The figurative elements of the contested sign will be associated with animals, that is to say cats and dogs. Since the relevant goods and services are clearly animal related, these elements are non-distinctive for these goods and services.

The word ‘The’ belonging to the basic vocabulary of the English language in the contested sign is non-distinctive, only being an article.

The contested sign’s figurative elements and the word combination ‘The Petagrees’ are co-dominant elements as they are both eye-catching.

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).

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.

Visually, the signs differ in particular in the figurative elements of the contested sign, in the additional article ‘The’ and in the word combination ‘your pet deserves the best’. Since the figurative elements and the article ‘The’ are non-distinctive and the word combination ‘your pet deserves the best’ is negligible due to its very small size, they are not relevant to the assessment. The earlier mark ‘PEDIGREE’ and the remaining dominant element ‘Petagrees’ of the contested sign, although depicted a little differently, both have almost the same number of letters, namely eight in the earlier trade mark and nine in the contested sign. The first letters, ‘PE’, are identical. The endings ‘gree’ and ‘grees’ are also very similar. The differences in the middle of the signs, ‘DI’ and ‘ta’, especially as they are only positioned in the middle of the sign, cannot preclude the assessment of an average degree of visual similarity.

Aurally, the figurative elements will not be pronounced. With the exception of the word ‘Petagrees’ of the contested sign, the other elements are non-distinctive or negligible; they cannot influence the outcome in a relevant manner. With due consideration to the distinctive, non-distinctive and non-dominant elements, the relevant parts of the signs are ‘PE-DI-GREE’ in the earlier trade mark and ‘PE-TA-GREES’ in the contested sign.

The relevant parts of the signs consist of the same number of syllables, namely three. The first syllable ‘PE’ is identical. The last syllable only differs in the additional letter ‘S’ of the contested sign. In the second syllables, the number of letters, namely two, coincides, but the letter combinations ‘DI’ and ‘ta’ sound different. However, taking into account the other relevant coincidences, the signs have a similar sound, rhythm and pronunciation. Therefore, they are similar to an above average degree.

Conceptually, as the signs are meaningless or non-distinctive, they have no influence for the outcome of the conceptual comparison, which is, therefore, neutral.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 28; see also recital 7 of the EUTMR).

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

Taking into account the average degree of visual similarity, the above average degree of aural similarity, the neutral outcome of the conceptual comparison, the average degree of distinctiveness of the earlier trade mark and the identical/similar goods and services, there is, even taking into account a high degree of attention on the part of the public, a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR, and, therefore, the opposition is upheld.

Considering all the above, there is a likelihood of confusion on the part of the German-speaking part of the public. 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.

Considering all the above, there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The applicant has not filed any observations. Therefore, its arguments cannot be examined.

The opposition is well founded under Article 8(1)(b) EUTMR.

As the earlier European Union trade mark registration No 395 434 (word mark: ‘PEDIGREE’) leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T 342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(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

Claudia MARTINI

Peter QUAY

Gonzalo BILBAO TEJADA

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.