OPPOSITION No B 3 000 901

Central de Compras Dapac, S.L., Pol. Industrial Las Panaderas, Parcela 6, Santovenia de Pisuerga, 47155, Valladolid, Spain (opponent), represented by
Maria Irache Pereira Toña, C/Camino de Guadalíx, 1, 28750, San Agustín de Guadalíx (Madrid), Spain (professional representative)

a g a i n s t

Selma Riener, Schiedermayrstraße 3, 4560, Kirchdorf, Austria (applicant), represented by Samson & Partner Patentanwälte mbB, Widenmayerstr. 6, 80538, München, Germany (professional representative).

On 29/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 000 901 is upheld for all the contested goods.

2. European Union trade mark application No 17 146 821 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 146 821 for the word mark ‘Petisana’. The opposition is based on, inter alia, Spanish trade mark registration No 3 527 751 for the word mark ‘PET SANA’.

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 Spanish trade mark registration No 3 527 751 for the word mark ‘PET SANA’.

a) The goods

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

Class 5: Veterinary products, food and dietary substances for veterinary use, food supplements for animals, vitamin preparation for animals, nutritional supplements.

Class 31: Animal feed.

The contested goods are the following:

Class 5: Dietary supplements and dietetic preparations; Dietary supplements for animals.

Class 31: Foodstuffs and fodder for animals; Bedding and litter 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.

Contested goods in Class 5

The contested dietary supplements and dietetic preparations; dietary supplements for animals are identical to the opponent’s dietary substances for veterinary use in the same class, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods are included in the broader categories of the contested goods.

Contested goods in Class 31

The contested foodstuffs and fodder for animals are identical to (synonymous with) the opponent’s animal feed in the same class.

The contested bedding and litter for animals are similar to the opponent’s animal feed in the same class, since they have the same distribution channels and points of sale, target the same consumers and are produced by the same kind of undertakings.

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 or similar are directed at both the public at large and professionals.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the consequences they may have (e.g. on health), the frequency of purchase and their price, etc.

In the present case, the degree of attention paid by consumers when purchasing the goods is deemed to vary from average to higher than average. An average degree of attention will be paid in relation to, for instance, goods that are not particularly expensive (e.g. bedding for animals) and a higher degree of attention will be paid in relation to, for instance, goods that can have important consequences for the health of humans and/or animals (e.g. dietary supplements and dietetic preparations; dietary supplements for animals).

c) The signs

PET SANA	Petisana
Earlier trade mark	Contested sign

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).

The word ‘PET’ is the English word for a domesticated animal (of no specific gender). This concept is likely to be grasped only by the professional part of the public in the relevant territory, which may know the English word ‘pet’. In relation to the relevant goods, this word is at least allusive of their characteristics (i.e. pets being the end users) and therefore of lower than average distinctiveness. For the part of the public that perceives ‘PET’ as meaningless, it is of average distinctiveness.

The word ‘SANA’ in the earlier mark means ‘healthy’ in Spanish, in the singular feminine form. In relation to the relevant goods, this word is at least allusive of their characteristics, as it indicates their purpose (to keep the end users of the goods in good shape/health), and therefore it is of lower than average distinctiveness.

If both words, ‘PET’ and ‘SANA’, are understood, the mark has no element that is more distinctive than the other, whereas if only ‘SANA’ is understood ‘PET’ is the more distinctive element in the mark.

The applicant claims that the earlier mark is entirely descriptive. However, even if ‘PET’ and ‘SANA’ are both understood, and therefore perceived as of lower than average distinctiveness, this will apply to only each individual word. Because of the unusual nature of the combination of these words (from two different languages and ‘PET’ having no gender whereas ‘SANA’ is feminine) the words in the marks create an impression that is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which they are composed, with the result that the words referred to are more than the sum of their parts (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, §100).

The word ‘Petisana’, the contested sign, may be perceived as a meaningless invented word (as argued by the applicant), and therefore as of average distinctiveness, or as formed of the linked elements ‘Peti’ and ‘sana’. This will be the perception of those consumers who identify the ending ‘sana’ as an independent element with the meaning given above. Even in this case, the resulting first element, ‘Peti’, will be perceived as meaningless and therefore distinctive.

Therefore, the contested sign either has no element that is more distinctive than any other (if the entire word is perceived as meaningless), or ‘Peti’ is its more distinctive element (if ‘sana’ is understood).

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. Therefore, it is relevant for the assessment of similarity that the marks coincide in, inter alia, their beginnings, ‘PET’/‘Pet’.

Visually and aurally, the signs coincide in the sequence of letters ‘pet*sana’. These constitute the entire earlier mark and all but one letter of the contested sign.

They differ in that the earlier mark is formed of two words, whereas the contested sign is a single word. However, this has no aural impact.

They also differ in the middle letter, ‘i’, of the contested sign. However, the visual and aural impact of this differing letter is limited, since it is preceded and followed by a sequence of letters that are included in both signs.

The signs are visually and aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Regardless of the conceptual perception of the earlier mark, if the contested sign is perceived as meaningless, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

If only the concept of the Spanish word ‘SANA’ is perceived in both marks, the marks are conceptually identical. If the concept of the word ‘PET’ in the earlier mark is also perceived, the signs are conceptually similar to the extent that they coincide in ‘sana’ and differ in the element ‘PET’, which is distinctive 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.

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.

Considering what has been stated above in section c) of this decision, if only the concept of ‘SANA’ is understood in the mark, 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.

If the concepts of both ‘PET’ and ‘SANA’ are understood, the distinctiveness of the earlier mark must be seen as at least reaching the minimal degree necessary in relation to the relevant goods for consumers in the relevant territory. Its distinctiveness lies in the unusual combination of its components.

e) Global assessment, other arguments and conclusion

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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 identical and partly similar. They target both the public at large and professionals. The attention paid by consumers during the purchase of the goods is deemed to vary from average to higher than average.

The signs are visually and aurally highly similar and, depending on the various conceptual perceptions possible, conceptually not similar, similar or identical. The marks differ in one letter, in the middle of the contested mark, where it is preceded and followed by sequences of letters that are included in both marks. Therefore, the impact of the differing letter is limited. The signs also differ in that the earlier mark is formed of two words and the contested sign is a single word. However, as explained above, this does not have any impact on the aural perception of the signs.

In the present case, for all of the above reasons, the significant commonalities between the signs, together with the identity or similarity between the goods, are clearly enough to outweigh the signs’ dissimilarities, and may induce at least part of the public to believe that the conflicting goods come from the same undertaking or 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 Spanish trade mark registration No 3 527 751 for the word mark ‘PET SANA’. It follows that the contested sign must be rejected for all the contested goods.

As the earlier right mentioned in the previous paragraph leads to the success of the opposition and to the rejection of the contested sign for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Francesca CANGERI SERRANO

María del Carmen SUCH SANCHEZ

Marcel DOLIESLAGER

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.