OPPOSITION No B 3 028 019

Yogi Tea GmbH, Burchard-Hof, Burchardstr. 24, 20095, Hamburg, Germany (opponent), represented by Patentanwälte Geyer, Fehners & Partner Mbb, Perhamerstr. 31, 80687, München, Germany (professional representative)

a g a i n s t

Yoggies s.r.o., Třinecká 674, 27343 Buštěhrad, Czech Republic (applicant), represented by Martin Panuška, Vinohradská 938/37, 120 00 Prague 2, Czech Republic (professional representative).

On 20/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 028 019 is upheld for all the contested goods, namely

Class 5: Dietary supplements for animals; Vitamin and mineral supplements for pets; Medicated supplements for foodstuffs for animals; Nutritional supplements for veterinary use; Medicated additives for animal foods.

2. European Union trade mark application No 17 604 703 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 604 703 ‘YOGGIES’, namely against all the goods in Class 5. The opposition is based on, inter alia, European Union trade mark registration No 16 305 971 ‘YOGI’. 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 European Union trade mark registration No 16 305 971.

1. The goods

The goods on which the opposition is, inter alia, based are the following:

Class 5: Beverages for medical purposes, excluding those based on dairy products or having dairy products as main ingredient; tea and tea extracts for medical purposes; herbal teas for medical purposes; herbs for medical purposes; dietary supplements for humans and animals; dietary supplements for humans and animals based on herbs.

The contested goods are the following:

Class 5: Dietary supplements for animals; Vitamin and mineral supplements for pets; Medicated supplements for foodstuffs for animals; Nutritional supplements for veterinary use; Medicated additives for animal foods.

Dietary supplements for animals are identically contained in both lists of goods.

The contested vitamin and mineral supplements for pets; medicated supplements for foodstuffs for animals; nutritional supplements for veterinary use; medicated additives for animal foods are included in the broad category of, or overlap with, the opponent’s dietary supplements for animals. Therefore, they are identical contrary to the arguments of the applicant. The comparison of the goods must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

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 and at customers with specific professional knowledge or expertise.

The degree of attention is higher than average.

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36).

In particular, veterinary professionals have a high degree of attentiveness when prescribing medicines or supplements to animals. Non-professionals also have a higher degree of attention, regardless of whether the medicated supplements are sold without prescription, as these goods affect the state of health of animals.

3. The signs

YOGI	YOGGIES
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element YOGI is meaningful in certain territories, for example in those countries where English is understood and consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The marks are word marks. The word YOGI refers to a person who has spent many years practising the philosophy of yoga. The word YOGGIES is a common and widespread misspelling of a word YOGIS, which is a plural form of a YOGI. Despite the meaning(s) perceived, the terms have no connection with the goods and are distinctive therefore.

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.

Visually, the signs coincide in the letter sequence YOG_I_ _. They differ in the letters G and ES of the contested sign which are added to the shared letters in 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 YOGI, present identically in both signs, incorporating also the double G of the contested sign. The pronunciation differs in the sound of the letters ES, pronounced only as S (since the earlier sign ends with a sound I and the last three letters IES of the contested sign are pronounced as IS).

Therefore, the signs are highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to persons dealing with yoga, despite the misspelling, the signs are conceptually highly similar if not identical.

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.

5. Global assessment, other arguments and conclusion

The goods have been found identical. The visual, aural and conceptual aspects have been examined.

The earlier mark and the contested sign have been found to be similar to the extent that they have the letter sequence YOG_I in common. The difference lying in the letters G in the middle, and ES and end of the contested sign can be easily overlooked, and, in any event cannot outweigh the prevailing coinciding letters and meaning perceived by the public. As mentioned, the similarity is high on aural level and nearly identical on conceptual level and the beginnings of the signs coincide. The similarities between the signs are thus sufficient to cause at least part of the public to believe that the conflicting goods which are come from the same or economically linked undertakings.

Account is taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and the consumers may be easily confused because they will have to rely on the imperfect picture of the marks that they have kept in their mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Moreover, since 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), the higher degree of attention that the public displays in the present case is not likely to call this conclusion into question (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 16 305 971. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right, EUTM No 16 305 971, 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 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

Solveiga BIEZA

Erkki Münter

Ferenc GAZDA

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.