AGRION | Decision 2688821
Date Published: Sep 22, 2017
OPPOSITION No B 2 688 821
Nanta S.A., Ronda de Poniente, 9, 28760 Tres Cantos (Madrid), Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)
a g a i n s t
Agrion Invest AD, 5 Dunav Blvd, 4003 Plovdiv, Bulgaria (holder), represented by Vassia Ivanova Germanova, Compl. Druzhba 2, bl. 273, vh.A, ap. 24, 1582 Sofia, Bulgaria (professional representative)
On 15/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 688 821 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods and services of international registration designating the European Union No 1 255 721 for the word mark ‘AGRION’, namely against all the goods in Class 31. The opposition is based on European Union trade mark registration No 1 120 278 and Spanish trade mark registration No 952 447 both for the word mark ‘ARION’. The opponent invoked Article 8(1)(b) EUTMR.
PRELIMINARY REMARK
On 20/03/2017, the holder filed a limitation request and Class 31 was limited as detailed further below. The opponent was duly informed and the opposition was maintained. Consequently, the opposition is directed against all the remaining goods in Class 31.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be rejected.
For international registrations designating the European Union, the ‘date of filing’ or, where applicable, the ‘date of priority’ of the contested mark within the meaning of Article 42(2) EUTMR, that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be the date of registration, the date of subsequent designation of the European Union or the date of priority of the contested international registration, as applicable. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The holder requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely European Union trade mark registration No 1 120 278 and Spanish trade mark registration No 952 447.
The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.
The relevant date for the contested international registration (priority date) is 18/02/2014. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union and Spain from 18/02/2009 to 17/02/2014 inclusive.
Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:
European Union trade mark registration No 1 120 278
Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; living animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals, malt.
Spanish trade mark registration No 952 447
Class 31: Compound feeds.
According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
On 03/11/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 03/01/2017 to submit evidence of use of the earlier trade marks. On 30/12/2016, within the time limit, the opponent submitted evidence of use.
The evidence submitted is the following:
- Invoices (attachments 3 and 10): numerous invoices from the time period between 2010 and 2015 from various Member States, namely Portugal, Spain, Poland, France, Denmark, Italy, Slovakia, Belgium and Estonia. The invoices contain references to different products with descriptions including the earlier mark, ARION, such as: ARION FR ADULT CAT, ARION PREM CAT ADULT, ARION PREM CAT STERIL, ARION FR CAT SENSITIVE, ARION PREM MAINT LARGE, ARION FR BRAV CROC, ARION FR MULTI-VITAL, ARION BR PUPPY LARGE, ARION BR PERFORMANCE, ARION BR WINNER, ARION PETIT and ARION JUNIOR.
- Brochures (attachment 2): a few extracts from a brochure in Spanish dated February and October 2011 respectively including pictures of different cat food and dog food products and their prices (expressly in euros in the extracts from February). The names of the different products shown correspond to many of the names described in the invoices and show use of the earlier mark, inter alia, as follows:
- Catalogues (attachments 5 and 6): extracts from undated product catalogues in different languages, namely Dutch, English, French, German and Danish. The product catalogues include pictures of different cat food and dog food products offered for sale under the earlier mark as shown in the examples included above and also provide information about the different products on offer. The product names shown in the catalogue extracts submitted also correspond to the product descriptions included in the invoices.
- Facebook (attachment 9): numerous screenshots from the Facebook page ARION PetFood Italia showing posts from April to July 2015. Some of the posts include pictures of different ARION branded cat and dog food products in line with the examples included above.
- Websites (attachments 1 and 8): extracts dated 14/12/2016 from the website www.arion-petfood.dk submitted in Danish together with, according to the opponent, a Spanish Google translation of the same. Undated screenshots from a website, which the opponent indicates is www.arionpetfood.com, in different languages, namely English, German, Dutch and French. The websites show use of the earlier mark as follows respectively:
- Declarations (attachments 4 and 11): a declaration signed on behalf of the opponent, Nanta S.A., with a statement of the amount of dog and cat food sold in kilos under the earlier mark, ARION, in Spain and Portugal during the years from 2010 to 2015 and indicating an average of 10.000 tonnes per year. A declaration signed by the Financial Manager of Fides Petfood NV stating that it has a licence to use the opponent’s earlier mark, ARION, and that Fides Petfood NV has sold dog and cat food under the ARION brand in the European Union during the years from 2010 to 2015 in the volumes of, on average, 10.000 tonnes per year. The opponent has also clarified in its observations that the volumes indicated in this declaration do not include Spain or Portugal.
- Articles (attachment 7): extracts in English from the opponent’s website www.arionpetfood.com with information about and pictures from ARION CUP, a canicross (cross-country sport running with dogs) event held in Germany in 2014, sponsored by ARION and a press announcement in German related to the same event.
- Miscellaneous (attachment 12): extracts in Spanish from different websites which the opponent indicates relate to the following:
- www.ifema.es, a report from the Exhibition Fair of Madrid (IFEMA) where ARION was the main sponsor in the Pets Fair called ‘100x100 mascotas’ in May 2015;
- www.perros365.com (a dog-owner focused website), an article related to the ‘100x100 mascotas’ event and an article concerning the presence of ARION as a sponsor of ‘Siegerschau’ in October 2014, an important dog competition in Segovia;
- www.protegamayorista.com (a breeder focused website), an article which shows ARION as a sponsor of the Autumn Canine International Exhibition in November 2014; and
- www.arion-petfood.es (the opponent’s Spanish website), an article that shows the presence of ARION in ‘FIMASCOTA 2015’, an important event during the Canine International Exhibition held in February 2015.
Taking into account the evidence in its entirety, the evidence submitted by the opponent gives sufficient indications concerning the place (several different EU Member States, including Spain), time (although some of the evidence, from in particular 2015, is outside the relevant time period, much of the evidence also relates to the years between 2010 and 2014 and therefore covers most of the years from the relevant time period), extent (declarations and invoices of sales of dog and cat food) and nature of use (as shown in invoices, brochures, catalogues and other documents submitted). Therefore, the Opposition Division considers the evidence sufficient to prove genuine use of the earlier marks during the relevant period in the relevant territories.
However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods they cover but only for dog and cat food as mentioned above.
According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
In addition, according to case-law, when applying the abovementioned provision the following should be considered:
…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.
Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.
(14/07/2005, T-126/03, Aladin, EU:T:2005:288).
Dog and cat food can be considered to form an objective subcategory of foodstuffs for animals and compound feeds, namely foodstuffs/compound feeds for dogs and cats. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade marks only for the following goods:
European Union trade mark registration No 1 120 278
Class 31: Foodstuffs for dogs and cats.
Spanish trade mark registration No 952 447
Class 31: Compound feeds for dogs and cats.
Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.
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 goods
The goods on which the opposition is based and for which use has been proven are the following:
European Union trade mark registration No 1 120 278
Class 31: Foodstuffs for dogs and cats.
Spanish trade mark registration No 952 447
Class 31: Compound feeds for dogs and cats.
Following the limitation mentioned above in the preliminary remark, the contested goods are the following:
Class 31: Forage for farm animals, namely alfalfa, peas, fresh; wheat, namely durum wheat and soft wheat; cereals, namely maize, triticale; grains for farm animal consumption; oilseeds, and especially sunflower and rapeseed; lentils, fresh; chickpeas, fresh; cereal seeds, unprocessed, and namely seeds wheat and forage wheat, as all goods listed above are not for pets.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘especially’, used in the holder’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 (see the judgment of 09/04/2003, T 224/01, Nu Tride, EU:T:2003:107).
However, the term ‘namely’, used in the holder’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested goods in Class 31
The opponent’s goods cover animal foodstuffs/compound feeds for dogs and cats which consist of processed food specifically intended for consumption by dogs and cats.
The contested forage for farm animals, namely alfalfa, peas, fresh; wheat, namely durum wheat and soft wheat; cereals, namely maize, triticale; grains for farm animal consumption; oilseeds, and especially sunflower and rapeseed; lentils, fresh; chickpeas, fresh; cereal seeds, unprocessed, and namely seeds wheat and forage wheat, as all goods listed above are not for pets essentially consist of wheat, specific cereals, oilseeds and cereal seeds which are all unprocessed as well as specific forage for farm animals consisting of fresh peas and alfalfa, grains for farm animal consumption and fresh lentils and chickpeas being the seeds of plants from the legume family. In addition, all goods are specified as not being for pets and do thus not include any products aimed at pets, such as seeds for birds or rodents.
The opponent argues that the contested goods are closely related since it very often happens that there are animals in a farm that play the role of or are considered as pets and since the food could often be eaten by both pets and farm animals. However, it should be noted that goods and services in the sense of trade mark law must be seen from a commercial point of view, since their objective is to have a share of the relevant market (15/02/2007, R 1176/2005-1, ‘watch device’, § 11). Therefore, every plant, animal or kind of food cannot be regarded as ‘foodstuffs for animals’ just because animals may eat them as well (13/06/2008, R 629/2007-1, ‘BARCA/LA BARCA’, § 32). In view of this, even if dogs are generally happy to eat almost anything and may therefore eat some of the contested goods as well, they are not for this reason closely related to the market of foodstuffs for dogs and cats from a commercial perspective. Moreover, even if some of the contested goods could be used as ingredients for dog food or cat food, this is not sufficient for a finding of similarity between them. As outlined above, the contested goods broadly consist of unprocessed cereals and seeds and fresh peas and other seeds from different plants whereas the opponent’s goods consist of processed food for dogs and cats, which is thus not unprocessed or fresh, but typically sold as dry or wet food. Therefore, the nature of the contested goods is clearly different from that of the opponent’s goods. Moreover, the contested goods, which consist specifically of unprocessed cereals, grains and seeds not for pets and fresh forage for farm animals, do not share the same distribution channels or sales outlets as the opponent’s foodstuffs for dogs and cats and these specific unprocessed goods and fresh farm animal forage are not normally produced by the same undertakings, which is also something that the relevant public will be aware of. Therefore, consumers will not expect the contested goods to originate from the same companies as those of the opponent’s goods. Furthermore, these goods are not complementary to each other or in competition with each other.
In view of all the above, the Opposition Division considers that the contested forage for farm animals, namely alfalfa, peas, fresh; wheat, namely durum wheat and soft wheat; cereals, namely maize, triticale; grains for farm animal consumption; oilseeds, and especially sunflower and rapeseed; lentils, fresh; chickpeas, fresh; cereal seeds, unprocessed, and namely seeds wheat and forage wheat, as all goods listed above are not for pets are dissimilar to the opponent’s foodstuffs for dogs and cats and compound feeds for dogs and cats.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
The opponent argues that the earlier marks have a high degree of inherent distinctive character as ‘ARION’ has no connection whatsoever with the goods for which the marks are registered. However, even if ‘ARION’ has no particular meaning in relation to the goods concerned, this does not automatically lead to a finding that it is highly distinctive for such goods but rather that its distinctiveness is normal. In any event, even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness, the finding reached above would still be valid given that the dissimilarity of goods cannot be overcome by a high distinctive character of an earlier trade mark. Therefore, the argument of the opponent in this respect does not alter the outcome reached above.
COSTS
According to Article 85(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 holder in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Adriana VAN ROODEN | Sam GYLLING | Catherine MEDINA |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.