Anicol | Decision 2801028
Date Published: Oct 15, 2017
OPPOSITION DIVISION
OPPOSITION No B 2 801 028
Pharmalink International Limited, c/o Third Floor, 31 C-D, Wyndham Street,
Central,
Hong Kong Special Administrative Region of the People's Republic of China
(opponent), represented by Løje, Arnesen & Meedom Advokatpartnerselskab,
Øster Allé 42, 6, 2100 København Ø, Denmark (professional representative)
a g a i n s t
Anicol Oy, Varkkakuja 2, 20320 Turku, Finland (applicant), represented by
Merilampi Attorneys Ltd., Keskustori 5 C, 33100 Tampere, Finland (professional
representative)
On 12/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 801 028 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and/or EUTMIR shall be understood as references
to the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 759 376 for the word mark ‘Anicol’. The opposition is based on
international trade mark registration No 1 133 706 designating the European Union
and German trade mark registration No 302 012 034 916 both for the word mark
‘ANTINOL’. 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.
Decision on Opposition No B 2 801 028 page: 2 of 7
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 international trade mark registration No 1 133 706 designating the
European Union.
a) The goods
The goods on which the opposition is based are the following:
Class 5: Veterinary preparations, products and medicines included in this class, also
as dietetic products and of natural origin; dietetic and nutritional supplements for
animals.
Class 31: Foodstuff for animals.
The contested goods are the following:
Class 5: Dietary supplements for animals; Dietary supplements for pets; Probiotic
supplements; Probiotic bacterial formulations for veterinary use.
Contested goods in Class 5
Dietary supplements for animals are identically contained in both lists of goods
(including synonyms).
The contested dietary supplements for pets are included in the opponent’s broader
category of dietetic supplements for animals. Therefore, they are identical.
The contested probiotic supplements overlap with the opponent’s dietetic
supplements for animals. Therefore, they are identical.
The contested probiotic bacterial formulations for veterinary use are included in the
opponent’s broad category of veterinary preparations. 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 both the public at
large and at veterinary professionals with specific professional knowledge or
expertise. Since these goods target both the general public and specialists, the
likelihood of confusion will be assessed in relation to the general public, which is
generally more prone to confusion. The degree of attention of the general public in
relation to the goods concerned, which essentially consist of veterinary preparations
and dietary supplements for animals, will be higher than average since they concern
the health of animals, or even seek to protect it (13/05/2015, T-169/14, Kora
(Koragel), EU:T:2015:280, § 38).
Decision on Opposition No B 2 801 028 page: 3 of 7
c) The signs
ANTINOL
Anicol
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 earlier mark is the word mark ‘ANTINOL’ and the contested sign is the word
mark ‘Anicol’. In the case of word marks, it is the word as such that is protected and
not its written form. Therefore, it is irrelevant that the earlier mark is depicted in upper
case letters whereas the contested sign is depicted as a capitalised word.
The opponent claims that the earlier mark does not have any known, relevant
meaning. However, it should be noted that, although the earlier mark is composed of
one verbal element, the relevant consumers, when perceiving a verbal sign, will
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). In this respect, the element
‘ANTI’ of the earlier mark is a commonly understood prefix of Latin origin meaning
‘opposed to; against’ which will be understood by the relevant public throughout the
European Union (29/04/2013, R 571/2012-5, ANGIPAX / ANTISTAX, § 19 and
confirmed by decision of 10/02/2015, T-368/13, ANGIPAX, EU:T:2016:9, § 83). The
prefix ‘ANTI’ is a commonly used description in terms of the action of drugs and
widely used in medicine, such as in antibiotic and antihistamine (03/10/2016, R
1354/2015-5, ANTIMETIL / ANIMESYL, § 24). As a result, this element of the earlier
mark is weak in relation to the goods concerned. However, the element ‘NOL’ has no
particular meaning in relation to the relevant goods and is, therefore, distinctive.
Neither ‘ANI’ nor ‘COL’ of the contested sign has any concrete meaning in relation to
the goods concerned and the term ‘Anicol’ will therefore not be broken down into
different elements but will rather be perceived as one fanciful, distinctive word without
any meaning.
Visually, the signs coincide in the letters ‘AN*I*OL’. However, they differ in the
presence of the third letter ‘T’ of the earlier mark, which does not have a counterpart
in the contested sign. They also differ in the fifth letter ‘N’ of the earlier mark and the
fourth letter ‘C’ of the contested sign.
The opponent argues that the signs are dominated by the identical prefix ‘AN-’ and
the identical suffix ‘-OL’. However, as explained above, the earlier mark will be
perceived as consisting of the elements ‘ANTI’ and ‘NOL’ the former of which is only
weak for the reasons outlined above whereas the contested sign will be perceived as
the single element ‘Anicol’.
Therefore, the signs are visually similar to an average degree.
Decision on Opposition No B 2 801 028 page: 4 of 7
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territory, the earlier mark will be pronounced as ‘AN-TI-NOL’ whereas the
contested sign will be pronounced as ‘A-NI-COL’. As a result, none of the three
syllables of which the signs consist is identical and although the last syllable in both
signs share the same ending ‘OL’, the first letters of the last syllable, ‘N’ and ‘C’
respectively, produce a clearly different sound.
Therefore, the signs are also aurally similar to an average degree.
Conceptually, the public in the relevant territory will perceive the meaning of the
weak element ‘ANTI’ of the earlier mark as explained above. However, the other sign
has no meaning in that territory. Since one of the signs will not be associated with
any meaning, the signs are not conceptually 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.
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 weak element in the mark, as stated above in
section c) of this decision.
e) 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/services covered are from the same or
economically linked undertakings.
Account should also be 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).
In the present case, the goods have been found identical, the earlier mark has a
normal distinctiveness as a whole and the signs have been found visually and aurally
similar to an average degree. However, whereas the earlier mark will be instantly
Decision on Opposition No B 2 801 028 page: 5 of 7
associated with the concept of ‘ANTI’ by the entire relevant public as explained
above, the contested sign will be perceived as having no meaning. This conceptual
difference is immediately detectable at the beginnings of the signs and thus, will
enable the general public to easily distinguish between them. The mental process of
finding or breaking down the meaningful elements within a compound, abstract word
will help the consumer to remember and recall the sign later and help to reduce the
probability of an imperfect recollection (03/10/2016, R 1354/2015-5, ANTIMETIL /
ANIMESYL, § 25). Furthermore, as explained above in section b) of this decision,
even the general public will display a higher than average degree of attention when
purchasing the goods concerned. This higher degree of attention will tend, in practice
to make the differences between the signs less likely to be overlooked. In particular,
the beginning of the contested sign, ‘ANI’, will not be confused with the beginning of
the earlier mark, ‘ANTI’, which has a clear meaning in relation to the goods
concerned, and the respective endings ‘NOL’ and ‘COL’ also present clear
differences, both visually and aurally. Moreover, the differences between the signs
will be easy to grasp by consumers since the contested sign will be perceived as
consisting of two elements, the weaker element ‘ANTI’ and the more distinctive
element ‘NOL’, whereas the contested sign, ‘Anicol’, will be perceived as one
distinctive whole.
Considering all the above, notwithstanding the identity between the goods
concerned, the Opposition Division considers that there is no risk that the general
public, who will display a heightened level of attention, would confuse the signs in
view of their immediately perceptible conceptual difference and also taking into
account the visual and aural discrepancies between them, which will not go
unnoticed for the reasons outlined above. Consequently, despite the visual and aural
similarities between the signs on account of the coincidence in some of their letters,
the relevant consumers are not likely to believe that goods sold under the contested
sign ‘Anicol’ originated from the same, or an economically linked, undertaking to that
selling goods under the earlier mark ‘ANTINOL’.
This absence of a likelihood of confusion equally applies to the professional part of
the public since it will also display a higher than average degree of attention in
relation to the goods concerned and is generally less prone to confusion than the
general public, as explained above in section b) of this decision.
The opponent has also based its opposition on German trade mark registration
No 302 012 034 916 for the word mark ‘ANTINOL’ covering the same goods in
Classes 5 and 31 as those covered by the already examined earlier right. Bearing in
mind that the examined earlier right concerns the same mark, the same goods and
also encompasses the same territory, Germany, the outcome cannot be different and
no likelihood of confusion exists with respect to this earlier right invoked either.
The opponent argues that the signs are confusingly similar and refers in support of
this claim to five previous cases, namely decision of 22/09/2003, B 447 112 -
‘EXIMIN/ EXCIDIN', decision of 27/09/2005, B 654 220 - ‘VIVANZA/VIDAZA',
decision of 11/06/2013, B 1 684 979 - ‘AMITREX/AMOREX', decision of 25/09/2013,
B 1 850 760 - ‘REACAR/REPAVAR' and decision of 09/11/2015, R 3160/2014-4 -
‘BENITA/BEAVITA'. While the Office does have a duty to exercise its powers in
accordance with the general principles of European Union law, such as the principle
of equal treatment and the principle of sound administration, the way in which these
principles are applied must be consistent with respect to legality. It must also be
emphasised that each case must be examined on its own individual merits. The
outcome of any particular case will depend on specific criteria applicable to the facts
of that particular case, including, for example, the parties’ assertions, arguments and
Decision on Opposition No B 2 801 028 page: 6 of 7
submissions. However, even though previous decisions of the Office are not binding,
their reasoning and outcome should still be duly considered when deciding upon a
particular case. In this respect, the Opposition Division notes that in all cases referred
to by the opponent, the signs in dispute were found to have no concepts for the
relevant public, either in part or as a whole. Furthermore, in two of the cases
concerning goods in Class 5, the degree of attention of the relevant public was found
to vary from average to high, which is not the case in the present proceedings as set
out above. Moreover, the last decision referred to from the Boards of Appeal
concerned a likelihood of confusion between the signs in relation to goods in Classes
29 and 30, which also involved a relevant public with an average degree of attention.
As a result, the circumstances of the cases referred to by the opponent are different
from the circumstances relevant to the case at hand. Consequently, the previous
cases cited by the opponent are not relevant to the present proceedings and are thus
not of such a nature as to alter the outcome reached above.
As a result, there is no likelihood of confusion on the part of the public in the relevant
territory, including Germany. 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 (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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
Benjamin WINSNER Sam GYLLING Catherine MEDINA
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.
Decision on Opposition No B 2 801 028 page: 7 of 7
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.