OPPOSITION No B 2 334 491

Dr. Assmann Veterinärspezialitäten GmbH, Kehler Str. 7, 76437 Rastatt, Germany (opponent), represented by Lichti Patentanwälte Partnerschaft mbB, Bergwaldstr. 1, 76227 Karlsruhe, Germany, (professional representative)

a g a i n s t

Laboratorios Serra Pamies, S.A., Ctra. Castellvell, 24, 43206 Reus (Tarragona), Spain (applicant), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative).

On 21/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 334 491 is upheld for all the contested goods, namely:

Class 5: Veterinary preparations; Dietetic food and substances adapted for veterinary use; Dietary supplements for animals.

2. European Union trade mark application No 12 341 707 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 12 341 707, namely against some of the goods in Class 5. The opposition is based on, inter alia, German trade mark registration No 30 564 190. The opponent invoked Article 8(1)(b) EUTMR.

On 14/04/2015 the Opposition Division rendered a decision which resulted in the rejection of the opposition on the grounds that there was no likelihood of confusion because the signs were not similar enough to conclude a likelihood of confusion.

The decision was appealed and the Board of Appeal decided in case R 960/2015-1 on 28/04/2016. The Board’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered that the contested mark reproduces essential features of the earlier marks from visual and phonetic points of view. The contested sign is similar to the earlier marks inasmuch as they all have the suffix ‘-VET’ in common, which will be perceived as meaningful by the majority of the relevant public. The Board concluded that the marks are overall similar.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based: German trade mark No 30 564 190 and International registration designating the European Union No 514 901.

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 publication of the contested application.

The contested application was published on 02/01/2014.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, as regards the earlier International registration, and, as regards the earlier German trade mark, Germany from 02/01/2009 to 01/01/2014 inclusive. Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

German trade mark registration No 30 564 190

Class 5: Veterinary preparations.

International registration designating the European Union No 514 901

Class 5: Veterinary medicines, excluding anesthetics and soporifics.

According to Rule 22(3) EUTMIR, the evidence of use shall 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 17/07/2014, according to Rule 22(2) EUTMIR, the Office gave the opponent until 17/09/2014 to submit evidence of use of the earlier trade marks. On 17/09/2014, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

• Affidavit of Sylvia Weimer-Hartmann, the Managing director of Biokanol Parma GmbH, issued on 02/09/2014, that uses the mark at issue in Europe with the consent of the owner of the mark. According to this document the turnover figures for homeopathic remedies for animals marketed under the mark at issue in Germany exceeded in 2010 EUR 400.000, in 2011 EUR 400.000, in 2012 EUR 450.000 and in 2013 EUR 570.000.

• Photographs of sample packages bearing the mark at issue for veterinary preparations.

• Product information in German and in English showing the mark at issue in relation to veterinary drugs.

• Invoices issued to German customers within the relevant period of time.

• Pricelists for 2011-2013 showing the mark at issue.

• Copies of Delta lists for 2011, which contain German veterinary drugs.

• Promotional material in German.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, in particular, invoices, packaging, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation. Furthermore, since the evidence submitted has to be examined in its entirety, the Opposition Division finds that, taken as a whole, the material submitted provides the relevant factors in order to indicate genuine use of the opponent’s trade marks. Thus, the applicant’s comments in this regard are dismissed.

As regards the applicant’s argument that not all the items of evidence indicate genuine use in terms of, in particular, time of use of the goods for which the earlier marks are registered. The Office notes that the applicant’s argument is based on an individual assessment of each item of evidence submitted. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The documents submitted, in particular invoices show that the place of use is Germany. This can be inferred from the language of the documents and some addresses on the invoices. Therefore, the evidence relates to the relevant territory. Further, some of the evidence is dated within the relevant period. Although the Opposition Division notes that not all of the evidence submitted is dated within the relevant period, it must be noted that this evidence cannot automatically be disregarded. It must be evaluated on the basis of its contents and in conjunction with the rest of the evidence.

The documents filed, in particular invoices in conjunction with pricelists, packages samples and leaflets concerning the information of the products, provide the Opposition Division with sufficient information concerning the commercial volume, the territory and the extent of use.

As can be seen from the evidence provided, the evidence of use submitted proves that the sign at issue has been used as registered.

Furthermore, the evidence shows that the mark has been used as registered for veterinary preparations.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C 40/01, Minimax, EU:C:2003:145, and 12/03/2003, T 174/01, Silk Cocoon, EU:T:2003:68).

The Office evaluated the evidence submitted by the opponent in an overall assessment. All the circumstances of the case were taken into account and all the materials submitted were assessed in conjunction with each other. In consequence, although some pieces of evidence submitted are not sufficient by themselves to prove the use of the earlier trade marks, they contribute to proving use in combination with other documentation and information provided.

Therefore, taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the opposing German trade mark for veterinary preparations.

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 German trade mark registration No 30 564 190.

1. The goods

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

Class 5: Veterinary preparations.

The contested goods are the following:

Class 5: Veterinary preparations; Dietetic food and substances adapted for veterinary use; Dietary supplements for animals.

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.

The contested veterinary preparations are identically contained in the specification of the earlier mark.

The contested dietetic food and substances adapted for veterinary use; dietary supplements for animals are dietetic additives or food supplements adapted for medical use for animals. Furthermore, they include substances prepared for special dietary requirements with the purpose of treating or preventing diseases. Their purpose is similar to that of the opponent’s veterinary preparations. This is because the opponent’s goods are preparations to combat diseases, among other things, in order to improve animal’s health. The end user coincides and the goods at issue may have the same producers (veterinary pharmaceutical laboratories) as well as distribution channels. For the above reasons, these goods are similar.

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 professionals, in particular veterinarians, and at average consumers. The degree of attention may vary from average to high.

3. The signs

WERAVET	SERRAVET
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 marks at issue are both word marks; the earlier sign consists of the word ‘WERAVET’ and the contested sign of the word ‘SERRAVET’.

The element that the marks have in common, ‘VET’, will be perceived by part of the public as an abbreviation for ‘veterinarian: a doctor who takes care of animals’. Bearing in mind that the relevant goods are related to the veterinary sector, it is considered that this element is weak for all the relevant goods. The part of the relevant public who understands the meaning of that element will not pay as much attention to this weak element as to the other more distinctive elements of the marks. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue for part of the relevant public.

For the remaining consumers, who are not able to recognise and understand the element ‘VET’ as allusive to the goods at issue, this element has a normal degree of distinctiveness and, therefore, the marks under comparison have no elements which could be considered clearly more distinctive than other elements.

Visually, the signs are similar to the extent that they coincide in the letters ‘E-R-*-A-V-E-T’. On the other hand, they differ in their first letters, ‘W’, of the earlier mark and ‘S’ of the contested sign and in the additional consonant ‘R’ of the contested sign.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters /E-R-A-V-E-T/, present identically in both signs, and to that extent the signs are aurally highly similar. The pronunciation differs in the sound of the letter ‛W’ of the earlier mark and in the sound of the consonants ‘S’ and ‘R’ of the contested sign. The signs have the same vowel sequence /E-A-E/. Also, the rhythm and intonation of the marks are the same.

Therefore, the signs are similar to a high degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘VET’ included in both signs, will be associated by part of the relevant public with ‘veterinarian’ meaning a doctor who takes care of animals. This coinciding element is weak for the goods at issue and for this part of the relevant public. To the extent that ‘VET’ will be associated with the same meaning by part of the public, the signs are conceptually similar.

For part of the public for which the marks will not be associated with any meaning, 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.

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 weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C-342/97, Lloyd Schuhfabrik Meyer, EU:C:1999:323, § 19).

In the present case, the goods are partly identical and partly similar. The signs are similar as the contested mark reproduces six out of the seven letters of the earlier mark in the same sequence, i.e. ‘E-R-*-A-V-E-T’. The conflicting marks differ only in their first letters, namely ‘W’ in the earlier mark and ‘S’ in the contested mark, and in the additional consonant ‘R’ of the contested sign. From the aural point of view, the signs are similar to a high degree because the pronunciation of six letters will be the same. In addition, the signs have the same vowel sequence as well as their rhythm and intonation are the same, which will add to establish high aural similarity between the signs.

As a consequence, and notwithstanding the weakness of the part ‘VET’ for part of the relevant public, it is reasonable to assume that the consumers would believe that the marks in question come from the same undertaking or, as the case may be, from economically-linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 564 190. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier German trade mark registration No 30 564 190 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Volker MENSING

Marzena MACIAK

Julie GOUTARD

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.