OPPOSITION No B 3 077 177

Genia, 12 R J-F Champollion Parc D Act Pont Beranger, 44680 Saint-Hilaire-De-Chaleons, France (opponent), represented by Ipsilon, Le Centralis, 63, avenue du Général Leclerc, 92340 Bourg-la-Reine, France (professional representative)

a g a i n s t

Nutrifarm Sp. z o.o., Pustynia 84G, 39-200 Dębica, Poland (applicant), represented by Kondrat & Partners, Al. Niepodległości 223/1, 02-087 Warsaw, Poland (professional representative).

On 24/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 077 177 is upheld for all the contested goods.

2. European Union trade mark application No 17 983 919 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 17 983 919, for the figurative mark . The opposition is based on European Union trade mark registration No 13 707 526, for the figurative mark . 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: Veterinary preparations.

The contested goods are the following:

Class 5: Veterinary preparations and substances; pharmaceutical preparations for veterinary use; medicines for veterinary purposes; lotions for veterinary purposes; medical foodstuff additives for veterinary use; dietetic food adapted for veterinary use; dietetic substances adapted for veterinary use; nutritional supplements for veterinary use; dietary supplements for animals; vitamin and mineral supplements for pets; dietary pet supplements in the form of pet treats; fodder supplements for veterinary purposes; vitamins for animals; neutraceutical preparations for animals; medicated animal feed.

Class 31: Fodder; mixed animal feed; strengthening animal forage; fortified food substances for animals; beverages for pets; edible treats for animals; cereal based foodstuffs for animals; animal feed preparations; pet food; canned or preserved foods for animals; pet foods in the form of chews; edible chewing products for domestic animals; food preparations for dogs; food preparations for cats.

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

Veterinary preparations are identically contained in both lists of goods.

The contested veterinary substances; pharmaceutical preparations for veterinary use; medicines for veterinary purposes; lotions for veterinary purposes are included in the broad category of the opponent’s veterinary preparations. Therefore, they are identical.

The contested medical foodstuff additives for veterinary use; dietetic food adapted for veterinary use; dietetic substances adapted for veterinary use; nutritional supplements for veterinary use; dietary supplements for animals; vitamin and mineral supplements for pets; dietary pet supplements in the form of pet treats; fodder supplements for veterinary purposes; vitamins for animals; neutraceutical preparations for animals; medicated animal feed are similar to the opponent’s veterinary preparations. They coincide in their purpose, to improve animals’ health, they are sold through the same channels of distribution and target the same public.

Contested goods in Class 31

The contested fodder; mixed animal feed; strengthening animal forage; fortified food substances for animals; beverages for pets; edible treats for animals; cereal based foodstuffs for animals; animal feed preparations; pet food; canned or preserved foods for animals; pet foods in the form of chews; edible chewing products for domestic animals; food preparations for dogs; food preparations for cats are similar to a low degree to the opponent’s veterinary preparations. They coincide in their channels of distribution and target the same public.

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 to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

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, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect the state of health.

3. The signs

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 ‘Light’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier sign is figurative and is the verbal element ‘GENIA’ in a rather standard black script that is slightly blurred. This word is meaningless for the relevant public and has an average degree of distinctiveness.

The contested sign is figurative and consists of the verbal element ‘Geria’ in a purple, rather standard script, which has a fanciful letter ‘a’ (which the applicant claims to be the depiction of a dog and a cat but this is difficult to perceive due to its stylisation). This verbal element is the dominant element due to its size and position. On the line below and in a smaller size, there is the word ‘light’ written in standard white script with a fanciful dot on the letter ‘i’ (which is a depiction of the sun, according to the applicant). All these elements are on a black background. The word ‘Geria’ is meaningless as a whole, but it is possible that part of the relevant public may associate it to the word geriatric as ‘relating to old people, especially with regard to their healthcare’ (information extracted from Lexico Oxford Dictionary on 17/02/2020 at https://www.lexico.com/definition/geriatric). For the remaining part of the public, this word is meaningless. As it has no meaning in relation with the contested goods, it has an average degree of distinctiveness.

The word ‘light’ will be understood, inter alia, as ‘the natural agent that stimulates sight and makes things visible’ or ‘of little weight; not heavy’ (information extracted from Lexico Oxford Dictionary on 17/02/2020 at https://www.lexico.com/definition/light). It is a secondary element due to its position and size. As it has no meaning in relation with the contested goods, it has an average degree of distinctiveness. The figurative elements of the contested sign are of a decorative nature.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011-4, BEST TONE (FIG MARK) / BETSTONE, § 24; 13/12/2011, R 53/2011-5, JUMBO (FIG. MARK) / DEVICE OF AN ELEPHANT (FIG. MARK), § 59).

Visually, the signs coincide in the sequence of letters ‘GE*IA’, which are four out of the five letters of the earlier mark’s only element. However, they differ in the letter ‘N’ and slight stylisation of the earlier mark, and in the letter ‘R’, the word ‘LIGHT’ (which is secondary) and figurative elements of the contested sign, which are of a decorative nature. Therefore, the signs coincide in a significant number of letters of the earlier sign’s sole element and the contested sign’s dominant element.

Therefore, the signs are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘GE*IA‛ present identically in both signs. The pronunciation differs in the sound of the letter ‘N’ of the earlier mark, in the letter ‘R’ and word ‘LIGHT’ (which is secondary) of the contested sign. Therefore, the signs coincide in all the letters but one of the earlier sign’s sole element and the contested sign’s dominant element. Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the signs as a whole do not have any meaning for the public in the relevant territory, the word ‘light’ of the contested sign will be associated with the meaning explained above, and part of the public may also associate the verbal element ‘Geria’ to ‘geriatrics’. As explained above, 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.

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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods are partly identical and partly similar to varying degrees and the public’s degree of attention may vary from average to high.

The signs are visually similar to at least an average degree, aurally similar to a high degree and conceptually not similar. The earlier mark’s only element is included as a dominant element in the contested sign, except for one letter, and the additional verbal element of the contested sign is secondary. 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). Indeed, 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).

Bearing in mind that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component, in the present case, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public even in the cases of goods for which the public shows a higher level of attention, due to the important similarities of the signs. Therefore, the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 13 707 526. 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.

It follows that the contested trade mark must be rejected for all the for the goods found to be identical or similar to varying degrees to those of the earlier trade mark. The opposition is also successful insofar as the goods that are similar to a low degree are concerned due to the strong similarity of the signs.

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

Andrea VALISA

Aurelia PEREZ BARBER

Michele M. BENEDETTI-ALOISI

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.