OPPOSITION No B 2 652 298

Virbac, S.A., 1ère Avenue – 2065M – L.I.D., 06516 Carros, France (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Floris Holding B.V., Kempenlandstraat 33-35, 5262 GK Vught, The Netherlands (applicant), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, The Netherlands (professional representative).

On 20/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 652 298 is partially upheld, namely for the following contested goods:

Class 5: Veterinary preparations; pharmaceutical preparations for veterinary use.

2. European Union trade mark application No 14 751 416 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 14 751 416. The opposition is based on Spanish trade mark registration No 2 366 621. 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 5: Vermifuge paste (wormers) for horses.

The contested goods are the following:

Class 5: Medicated supplements for foodstuffs for animals; food supplements for veterinary use; nutritional supplements for veterinary use; feed supplements for veterinary use; nutritional supplements for livestock feed; dietary and nutritional supplements; nutritional supplements; veterinary preparations; pharmaceutical preparations for veterinary use.

Class 31: Animal foodstuffs; foodstuffs (animal -); foodstuffs for animals; animal feeds.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 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 5

The contested veterinary preparations; pharmaceutical preparations for veterinary use are similar to the opponent’s vermifuge paste (wormers) for horses, because both sets of goods are intended for the medical treatment of animal disorders, namely in horses in the case of the opponent’s goods. The goods therefore serve the same purpose. They can have the same distribution channels, and they are complementary.

The contested food supplements for veterinary use; medicated supplements for foodstuffs for animals; nutritional supplements for veterinary use; feed supplements for veterinary use; nutritional supplements for livestock feed; dietary and nutritional supplements; nutritional supplements are dissimilar to the opponent’s vermifuge paste (wormers) for horses. These contested goods are substances prepared for special dietary requirements, with the purpose of treating or preventing disease. The opponent’s goods are vermin-destroying preparations aimed at destroying intestinal worms in horses. Therefore, the only relevant commonality is that the goods under comparison can all be consumed by horses. However, this is not sufficient to consider them similar, as feed and nutritional supplements in Class 5 have quite different purposes from vermin-destroying preparations for horses in Class 5. Furthermore, they are not manufactured by the same undertakings. The sales outlets of the goods under comparison are also different, as the applicant’s goods can be found either in pet shops or in the pet sections of supermarkets, while the opponent’s goods are sold only in pharmacies or specialised outlets. In conclusion, the Office finds these goods to be dissimilar.

Contested goods in Class 31

The contested animal foodstuffs; foodstuffs (animal -); foodstuffs for animals; animal feeds are dissimilar to the opponent’s vermifuge paste (wormers) for horses. The contested goods are foodstuffs for animals, which serve the purpose of general nutrition, whereas the opponent’s goods are a vermin-destroying preparation that causes the expulsion or death of intestinal worms, such as tapeworms, with the purpose of improving horses’ medical condition. Therefore, these goods have different natures and purposes. Moreover, they do not usually have the same producers (the pharmaceutical/chemical industry in the case of the opponent’s goods versus producers of animal feed in the case of the contested goods), and they are neither complementary nor in competition.

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 relevant goods are directed mainly at specialists, such as veterinarians, horse riders, horse breeders and owners of stables, since horses are not usually kept as pets by average consumers. Since the goods at issue include specialised veterinary preparations, the degree of attention will vary from average to high.

3. The signs

The relevant territory is Spain.

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).

Since both signs are word marks, the use of upper or lower case does not affect the visual comparison because in word marks the word as such is protected in any standard presentation.

Although the marks as a whole do not have any meaning, their beginning, ‘EQUI’, is the plural or genitive form of the Latin word ‘EQUUS’, meaning ‘horse’, the Spanish equivalent being ‘EQUINO’. Therefore, the relevant specialist public may easily associate ‘EQUI’, contained in both signs, with equestrian affairs or horses in relation to the veterinary goods in Class 5. Therefore, the first parts of both signs are weak in relation to the goods in question.

The marks under comparison have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in six out of seven letters, ‘EQUI*EL’, differing in only their fifth letters, namely ‘M’ in the earlier mark versus ‘S’ in the contested sign. They have the same length, number of letters and structure, the coinciding letters are in the same order and both signs consist of only one word.

Therefore, the signs are considered visually highly similar.

Aurally, the pronunciation of the signs coincides in six out of seven letters, namely ‛EQUI*EL’, present identically in both signs. The only aural difference arises from one consonant: the sound corresponding to the fifth letters, ‛M’ in the earlier sign and ‘S’ in the contested mark.

Therefore, the signs are considered aurally highly similar.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the letters ‘EQUI’, identically initiating both signs, will be associated with or allude to equestrian affairs in relation to the veterinary goods for animals and horses in Class 5, as explained above in paragraph c).

Taking into account, however, that this conceptual coincidence is confined to a weak component of the signs, the signs are considered conceptually similar to a low degree.

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

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).

The goods are partly similar, partly dissimilar. The degree of attention of the relevant public varies from average to high, taking into consideration the specialised veterinary goods.

The disputed signs coincide in six out of seven letters in the same sequence, are the same length and have the same number of letters. All of these contribute to the high degree of visual and aural similarity.

Moreover, 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 relevant Spanish-speaking public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish national trade mark registration No 2 366 621.

Therefore, the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) 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 shall 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

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.