wonderfold | Decision 2724782

Date Published: Sep 24, 2017

OPPOSITION No B 2 724 782

Tiendanimal comercio electronico de artículos para mascotas S.L., C. Ciro Alegría, 13 y 15 Pol. Ind. Guadalhorce, 29004 Malaga, Spain (opponent), represented by Oficina Ponti, SLP, Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Cava Plastics A/S, Houvej 12, Hou, 9550  Mariager, Denmark (applicant), represented by Patrade A/S, Fredens Torv 3A, 8000  Aarhus C, Denmark (professional representative).

On 21/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 724 782 is partially upheld, namely for the following contested goods:

Class 20:        Furniture; baskets wickerwork, including and dog baskets; cat baskets, animal housing and beds; portable beds for pets.

Class 21:        Plastics trays for use as litter trays for cats; plastic containers for dispensing food to pets; plastic containers for dispensing drink to pets; plastic bowls.

Class 28:        Toys for animals.

2.        European Union trade mark application No 15 183 981 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 183 981 for the figurative mark . The opposition is based on European Union trade mark registration No 13 862 966 for the figurative 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.

1. The goods

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

Class 18:        Collars, clothes and covers for pets.

Class 21:        Combs, brushes, litter trays and cages for household pets; plastic containers for serving food and water to domestic animals.

Class 28:        Toys for domestic pets.

The contested goods are the following:

Class 20:        Furniture; baskets wickerwork, including and dog baskets; cat baskets, animal housing and beds; portable beds for pets; boxes for storage purposes [plastic]; boxes (packaging -) in made-up form [plastic].

Class 21:        Plastics trays for use as litter trays for cats; plastic containers for dispensing food to pets; plastic containers for dispensing drink to pets; plastic bowls.

Class 28:        Toys for animals.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods are not regarded as being similar or dissimilar to 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, 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 20

The contested baskets wickerwork, including dog baskets; cat baskets; animal housing and beds; portable beds for pets are similar to the earlier cages for household pets in Class 21 as they can coincide in producer, relevant public and distribution channels. Furthermore, they also may coincide in purpose. The same reasoning also applies to the contested furniture that include, as a broader category, amongst others the contested animal beds. Consequently, these goods are also considered similar to the opponent’s earlier cages for household pets in Class 21.

The contested boxes for storage purposes [plastic]; boxes (packaging -) in made-up form [plastic] are dissimilar to all the opponent’s goods in Classes 18, 21 and 28. Even the opponent’s closest goods, plastic containers for serving food and water to domestic animals in Class 21 serve different purposes, namely to store things on the one hand and the keeping of animals on the other hand. The goods also differ as regards their nature. They are normally made by different producers and sold via different distribution channels. The goods are neither in competition nor complementary (21/06/2017, R 1907/2016-4, SHAIK (fig.) / SHAIK DESIGNER SHAIK (fig.)).

Contested goods in Class 21

The contested plastics trays for use as litter trays for cats are included in the broader category of the opponent’s litter trays for household pets. Therefore, they are identical.

The contested plastic containers for dispensing food to pets; plastic containers for dispensing drink to pets overlap with the broader category of the opponent’s plastic containers for serving food and water to domestic animals. Therefore, they are identical.

The contested plastic bowls overlap with the opponent’s plastic containers for serving food and water to domestic animals. They are thus considered identical to the opponent’s goods.

Contested goods in Class 28

The contested toys for animals include, as a broader category the opponent’s toys for domestic pets. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

2. 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 or similar are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

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 common verbal element ‘wonder’ is not meaningful in certain territories, for example, in those countries where English generally is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-, Italian-, Lithuanian- and Polish- speaking part of the public.

The earlier mark is a figurative mark consisting of the string of letters ‘wondermals’, which is meaningless for the relevant public. Therefore, it is normally distinctive. The letters are depicted in an almost standard typeface, in lower case letters, in bold and dark grey font except for the first letter ‘w’ which is depicted in orange and has above four regular digital pads, in orange, thus creating the impression of a pet paw print in cartoon form. The stylisation of the letters in dark grey will be perceived as purely decorative, and therefore lacks distinctiveness. The graphic combination of the four orange pads above the letter ‘w’, will evoke the image of a pet or animal paw and thus be of very weak distinctiveness, if at all distinctive, bearing in mind that the relevant goods are all destined for pets.

The contested sign is a figurative mark, consisting of the string of letters ‘wonderfold’,

which is meaningless for the relevant public. Therefore, it is normally distinctive.  The letters are depicted in a practically standard black typeface, in lower case letters. Furthermore, the first six letters (i.e. the common element ‘wonder’) are depicted in bold. The stylisation of the letters is so basic that it will be perceived as purely decorative, and is thus devoid of distinctiveness.

None of the signs has an element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the string of six first letters ‘wonder’ – in bold in both signs – as well as in their penultimate letter ‘l’. They differ in the remaining letters (the  final string of letters ‘ma*s’ in the earlier mark and ‘fo*d’ in the contested sign), as well as in their graphic aspects (i.e. their stylisation, the pet paw print in the earlier mark as well as the alternation between bold and regular font in the contested sign).

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. In the present case, the beginning of both signs is identical and normally distinctive.

Therefore, the signs are similar to at least an average degree from a visual point of view.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the first six letters ‘wonder’, present identically in both signs, in addition to the sound of the penultimate letter ‘l’ they have in common. The pronunciation differs in the remaining letters ‘ma*s’ in the earlier mark and ‘fo*d’ in the contested sign. While it is true that the contested sign might be perceived as two words due to the fact that the first (common) element ‘wonder’ is in bold, this will not have a significant impact on the pronunciation since the differing letters are at the end. Furthermore, the signs coincide in length, rhythm and intonation.

Consequently, the signs are aurally similar to at least an average degree.

Conceptually, as seen above, only the graphic combination of the four pads above the letter ‘w’ will be associated with a meaning for the public; however it is at most of very weak distinctiveness (if at all distinctive). Consequently, and only to this extent, the signs are not conceptually similar to at most a very low degree; however, taking into account the weak distinctiveness - if any - of this element, this conceptual difference will not have a big impact on the assessment of the similarity of the signs.

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

4. 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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a very weak (if at all distinctive) graphic element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

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 covered are from the same or economically linked undertakings.

The goods are partly identical and partly similar. Due to the visual similarity to an average degree and the aural similarity to an at least average degree and the identical, normally distinctive, beginnings of both signs, a likelihood of confusion exists.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-, Italian-, Lithuanian- and Polish- part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 13 862 966. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Oana-Alina STURZA

Edith Elisabeth VAN DEN EEDE

Michele M. BENEDETTI-ALOISI

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.