OPPOSITION No B 3 059 622

Pets at Home Limited, Epsom Avenue Stanley Green Trading Estate, Handforth, Cheshire SK9 3RN, United Kingdom (opponent), represented by Harrison IP, Limited, 3 Ebor House, Millfield Lane, Nether Poppleton, York YO26 6QY, United Kingdom (professional representative)

a g a i n s t

Guangzhou Shanglin Trading Co. Ltd., Unit 69 2^nd Floor, 882-890 Building (Incubation Base of Little Giant Enterprise) Airport Road, 510410 Baiyun District, Guangzhou City, Guangdong Province, People’s Republic of China (applicant), represented by Nextmarq, 1 Rue Chabrier, 13100 Aix-en-Provence, France (professional representative).

On 24/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 059 622 is partially upheld, namely for the following contested goods and services:

Class 18: Tool bags of leather, empty; cases of leather or leatherboard; business card cases; key cases; credit card cases [wallets]; card cases [notecases]; bags; pocket wallets; handbags; travelling sets [leatherware].

Class 35: Import-export agencies; sales promotion for others; marketing; commercial administration of the licensing of the goods and services of others; commercial information and advice for consumers [consumer advice shop]; business management assistance; outdoor advertising; advertising; publicity; on-line advertising on a computer network.

2. European Union trade mark application No 17 880 801 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 880 801, ‘PetsHome’. The opposition is based on European Union trade mark registration No 11 073 806, ‘PETS AT HOME’. 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:

Class 11: Heating apparatus and instruments; lighting apparatus and instruments; filter and filtration apparatus and instruments; parts and fittings for the aforesaid goods.

Class 16: Ring press books; containers of cardboard for the transportation of animals and pets; printed instructional materials relating to animals and pets, including pet care; cardboard articles for pets; indexed books for the recordal of information relating to pets; parts and fittings for all the aforesaid goods.

Class 18: Articles made from leather and/or imitation leather; pet collars and leads; coats and clothing for animals; back packs and bags for animals; parts and fittings for all the aforesaid goods.

Class 20: Ornaments made of plastic, resin, wood or wax; animal bedding; hard beds and baskets; upholstered mats, cushions, mattresses and bedding, all for household pets; kennels, hutches and carriers for animals; nesting boxes; scratching posts and pads; pet doors and cat flaps (non-metal); pet runs; nesting boxes for household pets; parts and fittings for all the aforesaid goods.

Class 21: Grooming aids and toothbrushes; feeding troughs; bird feeders; combs; brushes; sponges; animal cages; bird cages; household utensils and containers; cleaning instruments and cloths; litter trays, litter scoops; flea combs; plastic containers for dispensing food and drink to pets; aquariums; aquariums hoods; fish tanks; ornaments made of glass, porcelain; parts and fittings for all the aforesaid goods.

Class 25: Clothing, footwear and headgear.

Class 28: Games, toys and playthings for animals; parts and fittings for the aforesaid goods.

Class 35: Retail, mail order, electronic and on-line retail services connected with the sale of pets, goods for pets, pet care food stuffs and pet care products, animal and pet accessories, shampoos, soaps, toiletries, dentifrices, skincare preparations and fragrances for use on animals, pharmaceutical and veterinary products and preparations for animals, disinfectants, animal washes and lotions and other grooming preparations, medicated shampoos, flea control products, flea collars, flea sprays, flea powders, fish medicines, preparation for destroying vermin, fungicides, insecticides, parasiticides, animal feed additives and supplements, heating apparatus and instruments, lighting apparatus and instruments, filter and filtration apparatus and instruments, fish tanks, aquariums, ring press books, containers of cardboard for the transportation of animals and pets, printed instructional materials relating to animals and pets, including pet care, articles made from leather and/or imitation leather, pet collars and leads, coats and clothing for animals, back packs and bags for animals, animal bedding, hard beds and baskets, upholstered mats, cushions, mattresses and bedding, all for household pets, kennels, hutches and carriers for animals, scratching posts and pads, pet doors and cat flaps (non-metal), pet runs, grooming aids and toothbrushes, food feeding troughs, combs, brushes, sponges, animal cages, bird cages, parts and fittings for all the aforesaid goods, household utensils and containers, cleaning instruments and cloths, litter trays, litter scoops, flea combs, games, toys and playthings for animals, livestock, small animals, wild birds, fish, foodstuffs and beverages for animals, pet treats, pet snacks, cereals and grains for animal consumption, edible chews for animals, fish meat for animal consumption, yeast for animals, nutritional supplements for animals (non-medicated), dry animal foods, dry animal foods sold in bulk, brawns and frozen foodstuffs, all being meat and poultry based, for animals, tinned dog food, puppy food, nutritionally complete dry dog food, rawhide chews, meat and chocolate based animal treats, in loose and packet form, loose biscuits for animals, nutritional foods for older/less active animals, tinned cat foods, nutritionally complete dry cat food in pellet form, animal litter, small animal bedding, small animal treats, bird seed, fish food in pellet or flake form, aquatic plants for decorating aquaria or ponds, rabbit food, additives for animal foodstuffs not for medical purposes, hay, straw; advisory and consultancy services relating to all the aforesaid.

Class 36: Insurance services; credit services; financial services; insurance brokerage services; underwriting services; charitable fund raising, charitable fund investment and charitable fund management services; financial consultancy services; financial management; information, advisory and consultancy services relating to all the aforesaid services.

The contested goods and services are the following:

Class 9: Cases for smartphones; covers for smartphones; covers for tablet computers; covers for personal digital assistants [PDAs]; sleeves for laptops; bags adapted for laptops; protective films adapted for smartphones; selfie sticks [hand-held monopods]; bags and cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories; protective covers and cases for cell phones, laptops and portable media players; carrying cases for cell phones; protective covers and cases for tablet computers.

Class 18: Tool bags of leather, empty; cases of leather or leatherboard; business card cases; key cases; credit card cases [wallets]; card cases [notecases]; bags; pocket wallets; handbags; travelling sets [leatherware].

Class 35: Import-export agencies; sales promotion for others; marketing; commercial administration of the licensing of the goods and services of others; commercial information and advice for consumers [consumer advice shop]; business management assistance; outdoor advertising; advertising; publicity; on-line advertising on a computer network.

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 9

The contested goods are accessories for phones, tablet computers, laptops or portable media players.

The opponent, despite, remarking that all the contested goods were similar, did so via a general sweeping statement but without adducing any reasoning or evidence to support the claim as concerns these goods. The conflicting goods are diverse in nature and reference is made to the list as previously reproduced. Moreover, goods and services show important differences since the former are tangible whilst the latter are not. None of these goods coincide in any truly relevant points of contact with those of the earlier right, their nature and purpose differs as do their producers, consumers and distribution channels. Furthermore they are neither complementary nor in competition with one another. Therefore, the contested goods in this Class are dissimilar to all the opponent’s goods and services.

Contested goods in Class 18

When comparing the abovementioned contested goods with the opponent’s vague term articles made from leather and/or imitation leather without further examples or an express limitation by the opponent clarifying the term, it cannot be assumed that they have the same purpose, that their methods of use coincide, that they share the same distribution channels or that they are in competition or complementary. However, their nature can be considered the same as they are leather goods and it is reasonable to assume that the goods may be produced by the same companies, given that the required knowhow and machinery (i.e. to cut leather) may also be the same. Therefore, these goods can only be found similar to a low degree.

Contested services in Class 35

The contested commercial information and advice for consumers [consumer advice shop] and the opponent’s advisory and consultancy services relating to all the aforesaid (heating apparatus and instruments) are identical as they overlap.

The contested import-export agencies relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements and considered to relate to business administration. The opponent’s mark covers ‘advisory and consultancy services relating to all the aforesaid’. These services may include services that could be provided by the same companies to the same customers via the same distribution channels as the opponent’s import-export agencies. Therefore, these services are similar.

The contested sales promotion for others; marketing; outdoor advertising; advertising; publicity; on-line advertising on a computer network are similar to a low degree to the opponent’s advisory and consultancy services relating to all the aforesaid (heating apparatus and instruments). Their purposes can coincide, as they are both intended to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop, and expand market share. Furthermore, they can originate from the same undertaking and target the same end users.

The contested business management assistance services are intended to help in the management of the business affairs or commercial functions of an industrial or commercial enterprise. These services also include any consultancy, and assistance activity that may be useful in the management of a business, such as how to allocate financial and human resources efficiently, improve productivity, increase market share, deal with competitors, develop new products, communicate with the public, carry out marketing, research consumer trends, launch new products etc. The purpose of the opponent’s advisory and consultancy services relating to all the aforesaid (heating apparatus and instruments) is to reinforce the business position in the market, and the purpose of business management assistance, is, as mentioned above, to help a business in acquiring, developing and expanding market share. There is no clear-cut difference between the services under comparison. A professional who offers advice regarding how to efficiently run a business may reasonably include advertising strategies in that advice, because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as a part of their services, and, therefore, the relevant public may believe that these two services have the same professional origin. Therefore, these services are similar to a low degree to the opponent’s services.

Finally, a similar reasoning applies to the contested commercial administration of the licensing of the goods and services of others. They must also be considered similar to a low degree.

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 services found to be identical or similar to varying degrees are directed at the public at large (Class 18) and also at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to higher than average, depending on the specialised nature of the services, the frequency of purchase and their price.

c) The signs

PETS AT HOME	PetsHome
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 expression ‘pets at home’ of the earlier mark will be understood by English speakers.

Although the contested sign is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, may break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Although the contested sign ‘PetsHome’ as such has no clear meaning for any part of the public, both ‘Pets’ and ‘Home’ are words with a clear meaning in English. Consequently, it is likely that the contested sign will be perceived by the English-speaking part of the public as consisting of two verbal elements. Although an apostrophe is missing (Pets’ Home) in order for the contested sign to be grammatically correct, it cannot be excluded that the public will be immediately able to interpret it in the sense of ‘the home of pets’.

Since the above elements are meaningful for English-speakers, the Opposition Division finds it appropriate to focus the comparison of the signs exclusively on the English-speaking part of the public, for which a higher resemblance between the signs exists due to their conceptual link.

Since neither ‘PETS’ nor ‘HOME’ designates characteristics of the goods or services, they are distinctive for the conflicting goods and services. The element ‘AT’, only present in the earlier mark, is an English preposition. It will be perceived as fulfilling the purpose of indicating the place where the pets are situated. This element is, therefore, of very limited distinctiveness.

Visually, the signs share the words ‘PETS’ and ‘HOME’. They differ in the additional ‘AT’, only present in the earlier mark. In this context, it should be borne in mind that the public pays particular attention to the initial component of a trade mark (30/11/2011, T‑477/10, SE© Sports Equipment, EU:T:2011:707, § 54; 17/03/2004, T‑183/02 & T‑184/02, Mundicor, EU:T:2004:79, § 81).

In addition, the fact that the contested sign is wholly included in the earlier mark, reinforces that visual similarity, without the different lengths of the signs being able to offset that impression (13/10/2011, T‑393/09, NaViKey, EU:T:2011:593, § 50).

The use in the signs of upper- or lower-case letters is irrelevant (31/01/2013, T‑66/11, Babilu, EU:T:2013:48, § 57).

Thus, although the signs have a structural difference, they are similar as the coinciding elements are in fact the entire contested sign and the beginning and ending of the earlier mark, while the difference is placed in the middle of the earlier mark, creating an average degree of similarity.

Likewise, a similar conclusion applies to the aural comparison of the signs. Indeed, their pronunciation coincides in the identical initial sounds given by the letters /pets/ and the ending /home/, while it differs in the sounds given by the letters /at/ in the middle part of the earlier mark that are not present in the contested sign. The similarity aurally is considered high.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the same concept — reinforced in the contested sign — the signs are 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, the Opposition Division will refrain from assessing the reputational evidence at this stage and proceed attributing only a normal degree of distinctiveness to that earlier right in relation to the goods in Class 18 and the services ‘advisory and consultancy services relating to all the aforesaid (heating apparatus and instruments) in Class 35 (see 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

A likelihood of confusion on the part of the public must be assessed globally, and that global assessment implies some interdependence between the factors taken into account and in particular similarity between the signs and between the goods or services covered.

Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the signs, and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). The more distinctive the earlier trade mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than trade marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

In the present case, the low degree of similarity between the goods and services, together with the high degree of similarity between the marks will have to be taken into account when assessing the likelihood of confusion between the marks.

The goods and services are partly identical, partly similar (to varying degrees) and partly dissimilar.

As explained in section b) above, the attention of consumers will vary from average to higher than average, depending on the characteristics of the goods and services being purchased.

As already mentioned, the signs are aurally and conceptually similar to a high degree, while visually only similar to an average degree. On the one hand, the coincidences are found in ‘PETS’ and ‘HOME’ (which constitute distinctive elements for the goods and services involved), with ‘PETS perceived in the initial position by consumers and ‘HOME’ at the end. The differences are placed in the middle, being therefore less noticeable.

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 average consumer of the goods and services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. Even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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.

Finally, the Opposition Division recalls that 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/services covered are from the same or economically linked undertakings (e.g. sub-brands created for a new line of products/services). It is, therefore, conceivable that in this case the target public may believe that the similar or identical goods and services come from the same or economically linked undertakings, even if a high degree of attention is paid due to the clear similarities between the signs as discussed above.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark. This conclusion furthermore stands for the contested goods and services which have been found to be similar to a low degree. This is because the similarity between the signs is significant enough to also lead to a likelihood of confusion in relation to the goods and services which only have a low degree of similarity.

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. In relation to them, the opposition will proceed on the basis of Article 8(5) EUTMR, invoked by the opponent.

Since the opposition is partially 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 and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

According to the opponent, the earlier mark is one of the UK’s most well-known brands.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 27/03/2018. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely

Class 3: Shampoos and soaps; conditioners; spritzer sprays filled with toiletries, skin care preparations or fragrances for use on animals; cleansing and freshening wipes; toiletries; dentifrices; skincare preparations; fragrances; medicated shampoos; all the aforesaid goods for use on animals.

Class 5: Pharmaceutical and veterinary products and preparations for animals; disinfectants; animal washes and lotions and other grooming preparations; flea control products; flea collars; flea sprays; flea powders; fish medicines; preparation for destroying vermin; fungicides; insecticides; parasiticides; animal feed additives and supplements; absorbent diapers and pads of paper for pets; nutritional supplements for animals (nonmedicated);additives for animal foodstuffs not for medical purposes.

Class 11: Heating apparatus and instruments; lighting apparatus and instruments; filter and filtration apparatus and instruments; parts and fittings for the aforesaid goods.

Class 16: Ring press books; containers of cardboard for the transportation of animals and pets; printed instructional materials relating to animals and pets, including pet care; cardboard articles for pets; indexed books for the recordal of information relating to pets; parts and fittings for all the aforesaid goods.

Class 18: Articles made from leather and/or imitation leather; pet collars and leads; coats and clothing for animals; back packs and bags for animals; parts and fittings for all the aforesaid goods.

Class 19: Aquarium gravel.

Class 20: Ornaments made of plastic, resin, wood or wax; animal bedding; hard beds and baskets; upholstered mats, cushions, mattresses and bedding, all for household pets; kennels, hutches and carriers for animals; nesting boxes; scratching posts and pads; pet doors and cat flaps (non-metal); pet runs; nesting boxes for household pets; parts and fittings for all the aforesaid goods.

Class 21: Grooming aids and toothbrushes; feeding troughs; bird feeders; combs; brushes; sponges; animal cages; bird cages; household utensils and containers; cleaning instruments and cloths; litter trays, litter scoops; flea combs; plastic containers for dispensing food and drink to pets; aquariums; aquariums hoods; fish tanks; ornaments made of glass, porcelain; parts and fittings for all the aforesaid goods.

Class 25: Clothing, footwear and headgear.

Class 28: Games, toys and playthings for animals; parts and fittings for the aforesaid goods.

Class 31: Livestock; small animals; wild birds; fish; foodstuffs and beverages for animals; pet treats; pet snacks; cereals and grains for animal consumption; animal foodstuffs containing hay; edible chews for animals; fish meat for animal consumption; yeast for animals; dry animal foods; dry animal foods sold in bulk; brawns and frozen foodstuffs, all being meat and poultry based, for animals; tinned dog food; puppy food; nutritionally complete dry dog food; rawhide chews; meat and chocolate based animal treats, in loose and packet form; loose biscuits for animals; nutritional foods for older/less active animals; tinned cat foods; nutritionally complete dry cat food in pellet form; animal litter; small animal bedding; small animal treats; bird seed; fish food in pellet or flake form; aquatic plants for decorating aquaria or ponds; rabbit food; hay; straw.

Class 35: Retail, mail order, electronic and on-line retail services connected with the sale of pets, goods for pets, pet care food stuffs and pet care products, animal and pet accessories, shampoos, soaps, toiletries, dentifrices, skincare preparations and fragrances for use on animals, pharmaceutical and veterinary products and preparations for animals, disinfectants, animal washes and lotions and other grooming preparations, medicated shampoos, flea control products, flea collars, flea sprays, flea powders, fish medicines, preparation for destroying vermin, fungicides, insecticides, parasiticides, animal feed additives and supplements, heating apparatus and instruments, lighting apparatus and instruments, filter and filtration apparatus and instruments, fish tanks, aquariums, ring press books, containers of cardboard for the transportation of animals and pets, printed instructional materials relating to animals and pets, including pet care, articles made from leather and/or imitation leather, pet collars and leads, coats and clothing for animals, back packs and bags for animals, animal bedding, hard beds and baskets, upholstered mats, cushions, mattresses and bedding, all for household pets, kennels, hutches and carriers for animals, scratching posts and pads, pet doors and cat flaps (non-metal), pet runs, grooming aids and toothbrushes, food feeding troughs, combs, brushes, sponges, animal cages, bird cages, parts and fittings for all the aforesaid goods, household utensils and containers, cleaning instruments and cloths, litter trays, litter scoops, flea combs, games, toys and playthings for animals, livestock, small animals, wild birds, fish, foodstuffs and beverages for animals, pet treats, pet snacks, cereals and grains for animal consumption, edible chews for animals, fish meat for animal consumption, yeast for animals, nutritional supplements for animals (non-medicated), dry animal foods, dry animal foods sold in bulk, brawns and frozen foodstuffs, all being meat and poultry based, for animals, tinned dog food, puppy food, nutritionally complete dry dog food, rawhide chews, meat and chocolate based animal treats, in loose and packet form, loose biscuits for animals, nutritional foods for older/less active animals, tinned cat foods, nutritionally complete dry cat food in pellet form, animal litter, small animal bedding, small animal treats, bird seed, fish food in pellet or flake form, aquatic plants for decorating aquaria or ponds, rabbit food, additives for animal foodstuffs not for medical purposes, hay, straw; advisory and consultancy services relating to all the aforesaid.

Class 36: Insurance services; credit services; financial services; insurance brokerage services; underwriting services; charitable fund raising, charitable fund investment and charitable fund management services; financial consultancy services; financial management; information, advisory and consultancy services relating to all the aforesaid services.

Class 44: Veterinary services; pet and animal care services; grooming salon services for pets and animals; advisory and consultancy services relating to all the aforesaid and animal care and welfare; adoption agency services relating to pets.

Class 45: Microchip security services for pets.

The remaining contested goods are:

Class 9: Cases for smartphones; covers for smartphones; covers for tablet computers; covers for personal digital assistants [PDAs]; sleeves for laptops; bags adapted for laptops; protective films adapted for smartphones; selfie sticks [hand-held monopods]; bags and cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories; protective covers and cases for cell phones, laptops and portable media players; carrying cases for cell phones; protective covers and cases for tablet computers.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

The opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

On 28/02/2019 the opponent submitted the following evidence.

o Witness statement from the Legal Director of the opponent’s company, signed on February 2019. In support of its statements, references are made to the evidence mentioned below. It states that the estimated market capitalisation is GBP 736.5 million. The quantities shown in the annual reports from the years 2014 to 2018 are also very high. There is confirmation of its high presence in social media such as Instagram or Twitter. Finally, the affidavit affirms that PETS AT HOME is ‘ubiquitously well-known in the UK, being among the most well-known consumer-facing brands in the country’.

o Document from Bloomberg dated on February 2019 stating the opponent’s capitalisation along with some other financial numbers.

o Printout from investors.petsathome.com mentioning some facts about the history of the company of the years 1991 to 2017. This includes the prizes such as ‘The Sunday Times Best Company to Work for 2013’.

o Annual reports of the years 2014, 2015, 2016, 2017 and 2018. This contains financial highlights, strategic and other professional facts. The mark is included in all this evidence.

o Printouts from the opponent’s official Facebook page and Twitter account.

o Some press articles in English, from the years 2012, 2014, 2015, 2016, in which the trade mark ‘PETS AT HOME’ can be seen. Two of them, from The Guardian, are entitled ‘Pets at home profits soar as vet services and grooming demand rise’ and ‘Poundland and Pets at Home set flotation share prices’. The rest are published at www.fool.co.uk, www.bbc.com (‘Halfords names former head of Pets At Home as new boss’), www.essentialretail.com (‘Interview: Pets at Home leads as pet care market growth continues’), www.telegraph.co.uk (‘Pets at Home bullish on outlook as it collars sales growth’ ,’Pets At Home set to become biggest vet in Britain’, ‘Pets At Home staff due for sale windfall’ www.thedrum.com (‘Pets at Home launches 2m marketing campaign’), www.petbusinessworld.co.uk.

Having examined the material listed above, the Opposition Division concludes that a certain degree of reputation, acquired through the use of the earlier mark on the UK market (and, as such, the market of the European Union), cannot be denied.

The witness statement provides extensive and detailed overview of the activities and history of PETS AT HOME. It states that the opponent is among the most well-known consumer-facing brands in the UK.

The information in this document is supported by the exhibits accompanying it. In particular, the press releases published online and in printed media in the United Kingdom give a variety of direct and indirect information on the opponent’s investments and its promotional, communication and marketing strategies and the perception of its trade mark among consumers.

The abovementioned evidence indicates that the earlier mark, ‘Pets at Home’, has been intensively used in the UK for a substantial period of time (since 2012 to 2019) in relation to retail, mail order, electronic and on-line retail services connected with the sale of pets supplies and veterinary services in Class 44. Furthermore, the sales figures and the marketing efforts suggest that the trade mark has a consolidated position in the market. These efforts are reflected in the public awareness of the mark as corroborated by the independent press articles (for example, in an article of August 2016,The Telegraph mentions that Pets at Home is the country’s largest pet shop chain). As is apparent from both the opponent’s website extracts and the content of the articles published in the media indeed, ‘PETS AT HOME’ was established in the UK and has gained a leading position in retailing services for the pet stuff market.

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys a certain degree of recognition among the relevant public, which leads to the conclusion that it enjoys some degree of reputation in the United Kingdom, therefore in the relevant European Union territory in relation to retail, mail order, electronic and on-line retail services connected with the sale of pets supplies in Class 35 and veterinary services in Class 44. Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

As far as the remaining opponent’s goods and services are concerned, the Opposition Division notes that it does not provide sufficient information on the extent of the public recognition of the earlier mark in relation to the rest of goods and services. The remaining opponent’s goods and services are not mentioned at all in the material filed by the opponent.

b) The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

c) The ‘link’ between the signs

As seen above, earlier mark, EUTM No 11 073 806, enjoys a certain degree of reputation and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 51‑52.)

In the present case, there is no overlap between the relevant sections of the public for the trade marks in dispute, as the goods and services are different in all respects. The contested goods in Class 9 are aimed at consumers with an interest in electronic and computing devices, whilst the earlier mark only enjoys recognition for retail services in Class 35 related to pets, or veterinary services in Class 44. Indeed, consumers seeking to purchase the abovementioned contested goods in Class 9 are unlikely to call to mind the opponent’s brand, which is reputed for services in other fields.

Since the goods and services in conflict are of very different natures and have different purposes. They have completely divergent distribution channels, are offered by different companies or suppliers and target consumers with different needs. It is clear that production of these categories of goods and services is carried out by very distinct commercial undertakings and their distribution is through distinct channels and outlets. Furthermore, the manufacture of goods covered by Class 9 cannot be seen as a natural expansion of the commercial activity of retailing of pet stuff and the opponent did not make any reasonable statements in that regard.

Therefore, taking into account and weighing up all the relevant factors of the present case, in particular, that the parties operate in completely different market sectors and the above established degree of recognition of the earlier mark the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Tu Nhi VAN

Gonzalo BILBAO TEJADA

Aliki SPANDAGOU

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.