OPPOSITION No B 2 533 464

Sorgal Sociedade de Óleos e Raçoes, S.A., Estrada 109, Lugar da Pardala, 3880-728 São João Ovar, Portugal (opponent), represented by J. Pereira Da Cruz, S.A.,

Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

Elmubas Iberica, S.L., C/ Gerratxiki, 6, Azpeitia, 20730 Guipúzcoa, Spain (applicant), represented by J. Isern Patentes y Marcas, Paseo de la Castellana 115 - 1º Dcha. 28046 Madrid, Spain (professional representative).

On 22/04/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 533 464 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 the European Union trade mark (EUTM) application No 13 770 508 ‘RICODOG’, namely goods in Class 31. The opposition is based on EUTM registration No 6 460 711 ‘MECODOG’ and on Portuguese trade mark registration No 417 122 ‘MECODOG’, both registered for goods in Class 31. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s EUTM registration No 6 460 711.

1. The goods

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

Class 31: Dog food.

The contested goods are the following:

Class 31: Foodstuff for animals.

The contested foodstuffs for animals include, as a broader category, the opponent’s dog food. 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 are directed at the public at large. The degree of attention is likely to be average.

3. The signs

MECODOG	RICODOG
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The earlier mark is a word mark composed of the seven-letter word ‘MECODOG’.

The contested sign is also a word mark, composed of the seven-letter word ‘RICODOG’.

In the case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether word marks are depicted in lower or upper case letters or a combination thereof.

Neither of the marks under comparison have any element which could be considered clearly more dominant (visually eye catching) than other elements, as they both consist of a single word.

The first element of the earlier mark, ‘MECO’, has no meaning.

The element ‘RICO’ of the contested sign will be perceived by the part of the relevant public with knowledge of Spanish as ‘delicious, tasty’ (information extracted from Wordreference Dictionary on 13/04/2016 at http://www.wordreference.com/es/en/translation.asp?spen=rico ). In addition, this word will also be perceived by the part of the relevant public with knowledge of Portuguese or Spanish as ‘wealthy’ (information extracted from Wordreference Dictionary on 13/04/2016 at http://www.wordreference.com/pten/rico and http://www.wordreference.com/es/en/translation.asp?spen=rico, respectively). Bearing in mind that the products in question are foodstuffs for animals, the part of the relevant public with knowledge of Spanish will automatically link the word ‘rico’ with the concept of ‘delicious’ or ‘tasty’ and, therefore, this word is non-distinctive for these goods, since this part of the public will understand its meaning and will not pay as much attention to it. Consequently, the impact of this non-distinctive element is limited when assessing the likelihood of confusion between the marks at issue for this part of the public. For the remaining part of the public, this element will have a normal degree of distinctiveness.

Therefore, the part of the public that will understand only the element ‘RICO’ in the contested sign will not pay as much attention to this non-distinctive element and will focus more on the element ‘DOG’ of the contested sign.

The element ‘DOG’ coinciding at the end of both the earlier and the contested trade marks, is an English word that will be understood by the part of the relevant public, with a knowledge of the English language as ‘a common four-legged animal kept as a pet and bred in many varieties’ (information extracted from Wordreference Dictionary on 14/04/2016 at http://www.wordreference.com/definition/dog) and identifies the intended consumer of the goods at issue, namely dogs. That part of the public that understands the meaning of this element will not pay as much attention to it. Consequently, its impact is limited when assessing the likelihood of confusion between the marks at issue for this part of the public. For the remaining part of the public, this element will have a normal degree of distinctiveness.

Visually, the signs are similar to the extent that they coincide in five out of their seven letters, namely ‘C-O-D-O-G’, also in the same positions. However, they differ in their first two letters, namely ‘M-E’ in the earlier mark and ‘R-I’ in the contested sign.

Taking into account the overall impression created by the signs, for the part of the public that does not understand the meanings of the words indicated above, they are visually similar to an average degree, despite the coincidence in five of their seven letters in the same positions, due to the fact that the differing letters are placed at the beginning.

However, the signs at issue are similar to a low degree for the part of the public that understands the meaning of the word ‘DOG’.

Aurally, irrespective of the different pronunciation rules and different languages in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /C-O-D-O-G/ present identically in both signs. The pronunciation differs in the sound of the signs’ first syllables, /ME/ in the earlier mark and /RI/ in the contested sign. The fact that the signs start with different letters renders them similar to an average degree. However, the signs are similar to a low degree for the part of the public that understands the meaning of the word ‘DOG’, for which the impact of this element will be limited.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the word ‘RICO’ of the contested sign will be dissected from the rest of the sign and understood by the relevant public with knowledge of Spanish as ‘delicious, tasty’, as already explained. Therefore, for the Spanish-speaking part of the public, the signs are not conceptually similar.

Likewise, it is likely that the part of the public with knowledge of English will dissect the element ‘DOG’ of the signs from the rest of the elements and understand it as a ‘common four-legged animal kept as a pet and bred in many varieties’.

The coincidence in a non-distinctive element has a limited impact in the assessment of the similarity of the signs due to the fact that it identifies the relevant end consumer of the goods at issue. To this extent, the signs are conceptually similar to a low degree for part of the public.

The part of the public that does not understand the words ‘DOG’ or ‘RICO’ will perceive the marks at issue as single words lacking any meaning. For this part of the public, neither of the signs will be associated with any meaning and therefore, since a conceptual comparison is not possible, the conceptual aspect does not influence 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.

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.

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 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 non-distinctive element in the mark, for part of the public, as stated above in section c) of this decision.

4. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

According to the case-law of the Court of Justice, in determining the existence of a likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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).

The goods are identical and the consumer’s degree of attention is average.

For the part of the relevant public for which the marks do not have any meaning or that understands only the word ‘RICO’, they are visually and aurally similar to an average degree insofar as they coincide in the letters ‘CODOG’. A conceptual comparison is not possible for the part of the public that will not perceive any meaning in the marks at issue and, for the part of the public that understands the word ‘RICO’, the signs are not conceptually similar.

For the part of the public that understands the meaning of the coinciding word ‘DOG’, the marks are similar to a low degree.

However, as stated above, it is important to bear in mind that this word, which the marks have in common, is non-distinctive for the goods at issue, as it merely designates to a part of the relevant public the intended end consumer of the goods. Therefore, neither the coinciding letters nor this word would have an effect on the way in which the signs are perceived, contrary to the opponent’s argument stating that the coincidence in the ending ‘CODOG’ will surely lead consumers to confusion and that they will perceive the contested trademark as a new line of products commercialized by it.

Furthermore, the remaining elements of the marks, namely the letters ‘RI’ of the contested mark and ‘ME’ of the earlier mark, placed at the beginning of each, are not similar from a visual, phonetic or conceptual point of view and therefore create different overall impressions.

This is justified by the fact that 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 word signs or in signs containing a verbal element, the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (15/12/2009, T 412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009, T 109/07, Spa Therapy, EU:T:2009:81, § 30).

In the light of the above and notwithstanding the identity between the goods, there cannot be any likelihood of confusion on the part of the target public, since the visual, aural and conceptual similarities between the signs at issue, with the coinciding element being non-distinctive, are not sufficient to give rise to a likelihood of confusion.

The similarities between the signs concern elements that, for a part of the relevant public, are non-distinctive and, furthermore, will not be the first elements to catch the consumer’s attention, due to the signs’ differing beginnings. Therefore, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public.

For the part of the public that will not understand either of the words ‘DOG’ or ‘RICO’, the marks at issue will both be perceived as one word and, since the signs as a whole do not have any meaning for the public in the relevant territory, and given the aural differences in their beginnings, the marks will also produce different overall impressions.

Considering all the above, the Opposition Division finds that the divergences between the marks are sufficient to outweigh their similarities and that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade mark:

• Portuguese trade mark registration No 417 122 for the word mark ‘MECODOG’ for goods in Class 31.

Since this mark is identical to the earlier mark which has been compared with the contested mark and covers the same goods, the outcome cannot be different. Therefore, no likelihood of confusion exists with respect to this trade mark.

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 applicant in the course of these proceedings.

According to Rule 94(3) and (7)(d)(ii) 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

Ewelina SLIWINSKA

Patricia López Fernández de CorresPatricia López Fernández de Corres

Frédérique SULPICE

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 shall be filed in writing at the Office within two months of the date of notification of this decision. It shall 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 shall 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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.