OPPOSITION Nо B 3 107 738

 

Nobby Pet Shop Gmbh, Raiffeisenring 33, 46395 Bocholt, Germany (opponent), represented by Patentanwälte Dr. Stark & Partner Mbb, Moerser Str. 140, 47803 Krefeld, Germany (professional representative) 

 

a g a i n s t

 

La Normandise, Rue De L AlliÈre BP 60083, 14500 Vire, France (applicant), represented by Bastien Masson, 1 Rue Claude Bloch CS 15093, 14078 Caen Cedex 05, France (professional representative).

On 16/12/2020, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 107 738 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 of European Union trade mark application No 18 120 514 (figurative mark). The opposition is based on German trade mark registration No 302 018 106 022 ‘Nobby’ (word mark). The opponent invoked  Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

 

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

 

 

a) The goods

 

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

 

Class 31: Agricultural, horticultural and forestry products as well as fresh garden herbs and grains; animal feedstuffs for pets, especially cat and dog food; chewing and nibbling items for animals, especially chew bones; supplementary feedstuffs; pastries for animals; animal snacks, litter for animals. 

The contested goods are the following:

 

Class 31: Foodstuffs for animals; supplementary feed for animals; beverages for pets; meal for animals.

The term ‘especially’, used in the opponent’s list of  goods indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

The contested supplementary feed for animals is included in the broad category of the opponent’s supplementary feedstuffs. Therefore, they are identical.

The contested foodstuffs for animals; beverages for pets; meal for animals are included in, or overlap with, the opponent’s animal feedstuffs for pets, especially cat and dog food. Therefore, they are identical.

 

b) Relevant public — degree of attention

 

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

  

In the present case, the goods found to be identical are directed at the public at large. 

 

The degree of attention is considered to be average.

c) The signs and distinctiveness of the earlier mark

 

Nobby
Earlier trade mark	Contested sign

 

 

The relevant territory is Germany.

 

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 earlier mark’s verbal element will be understood by at least part of the relevant public as a short version of the male given name Norbert. Another part may perceive it as meaningless.

In any event, since the earlier trade mark has no meaning for any of the goods in question from the perspective of the public in the relevant territory – and given the lack of a claim for enhanced distinctiveness on the side of the opponent – its distinctiveness must be seen as normal.

However, the contested sign´s verbal element will be understood by the relevant public either as a given male name (short version of Robert or Bob), or it will be associated with the famous British police officer Sir Robert (Bobby) Peel (information extracted from Duden online on 11/12/2020 at https://www.duden.de/rechtschreibung/Bobby). Independently of these possible perceptions, this verbal element is also distinctive for the goods in question.

The oval surrounding this verbal element of the contested mark is, however, of decorative nature that cannot be attributed any trade mark significance and it is therefore non-distinctive. The font of the verbal element is rather standard and of secondary importance.

The contested mark does not have dominant elements.

 

Visually, the signs coincide in the sequence of letters ‘obby’. They differ in their first letters ‘N’ versus ‘b’, and in the figurative aspects and stylization of the contested sign in particular the font of its verbal element and the oval shape. Therefore, the signs are visually similar to an above average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛obby’, present identically in both signs. The pronunciation differs in the sound of the first letters ‘N’ v. ‘b’. Therefore, the signs are aurally similar to a high degree.

  

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the public that will not attribute any meaning to the earlier mark, the signs are not similar conceptually. For the rest of the public, they will be conceptually dissimilar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Global assessment, other arguments and conclusion

 

The goods are identical. They target the public at large, with an average degree of attention.

As explained in section c) of this decision, the signs are visually similar to an above average degree and aurally they are highly similar. However, depending on the perception of the earlier mark, conceptually they are either not similar, or dissimilar.

The earlier mark is normally distinctive.

It has been established by the case law that the conceptual differences between the signs can in certain circumstances counteract the visual and aural similarities between the signs concerned. For there to be such a counteraction, at least one of the signs at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately (14/10/2003, T-292/01, BASS, EU:T:2003:264, § 54 and 22/06/2004, T-185/02, PICARO, EU:T:2004:189, § 56).

It cannot be denied that the verbal elements of the signs differ only in their first letters and in the script of the contested sign, which is of secondary importance. However, any phonetic and visual similarity between the two signs is offset by the conceptual differences created by their verbal elements, where at least the one in the contested sign will carry concrete and specific meaning for the relevant public. The relevant German consumer, when confronted with the signs, would, for the reasons explained above, immediately link the applicant’s 'bobby' with one of the concepts explained above. On the other hand, at least part of the relevant public will link the opponent’s sign with another fully unrelated given male name. All these particularities would safely distance the signs and prevent any likelihood of confusion between them, despite the coincidence in the letters ‘*obby’.

 

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition 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.

 

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, 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

 

 

Francesca DRAGOSTIN

Meglena BENOVA

Sandra IBAÑEZ

 

 

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.