OPPOSITION Nо B 3 107 774

 

Bayer Animal Health GmbH, Kaiser-Wilhelm-Allee 20, 51373 Leverkusen, Germany (opponent), represented by Bomhard IP, S.L., C/Bilbao, 1, 5º, 03001 Alicante, Spain (professional representative) 

 

a g a i n s t

 

DeLaval Holding AB, Gustaf De Lavals Väg 15, 147 21 Tumba, Sweden (applicant), represented by Anna-Lena Wolfe, Ruben Rausings Gata, 221 86 Lund, Sweden (professional representative).

On 31/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 107 774 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 126 109 is rejected in its entirety.

 

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

 

REASONS

 

On 03/01/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 126 109 'DRYSHIELD' (word mark). The opposition is based on European Union trade mark registration No 17 654 419, 'DrySeal' (word 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.

 

 

a) 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: Plasters, materials for dressings; Cattle washes; Antibacterial sprays; All the aforesaid goods for application to dairy cows.

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

The opponent's veterinary preparations are medical preparations for animals which have the aim of improving the overall health of animals, and, certainly, may be intended for dairy cows. The contested plasters, materials for dressings are used to protect wounds; the contested cattle washes, inasmuch as they are classified in Class 5, are medicated or sanitasing preparations used in washing and the contested antibacterial sprays  are substances that kill germs and harmful bacteria and prevent the growth of disease-causing microorganisms. Since the purposes of the goods overlap or are closely related and since the goods are offered to the same relevant public through the same distribution channels, they are at least similar. Moreover, some of the contested goods, such as for example the opponent's goods and the contested antibacterial sprays; all the aforesaid goods for application to dairy cows, coincide in producers.

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 at least similar are directed at the public at large and at customers with specific professional knowledge or expertise in veterinary.

 

The degree of attention will be relatively high because the goods at issue affect the state of health of animals.

 

 

c) The signs

 

DrySeal	DRYSHIELD
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.

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, laudatory, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

In the present case, the verbal elements of both signs are meaningful in English. Since parties disagree about the distinctiveness of these verbal elements and their impact on comparison of the signs, the Opposition Division will first examine the opposition in relation to the part of the public for which the verbal elements of the marks have no meaning, such as Polish-, and Spanish-speaking part of the relevant public. For this part of the public, the elements of the marks, and the signs taken as a whole, are distinctive.

Consequently, conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Visual comparison shows that the signs share similar features as regards their length: the contested sign consists of nine letters and the earlier mark has seven letters, of which they share six letters. The four letters ‘DRYS’ appear in an identical position in both marks. Importantly, these common letters are at the beginning of both signs. 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. Furthermore, the letters ‘E’ and ‘L’ also appear in both marks, albeit in different positions. The signs differ in the letter ‘A’ of the earlier sign, and the letters 'HI' and 'D' of the contested sign.

 

Therefore, the signs are visually similar to a below average degree.

 

Aurally, the signs coincide in the pronunciation of the string of letters ‘DRYS*’ placed at the beginning of both signs, and in the sound of the letters ‘E’ and ‘L’, however placed in a different position within the signs. They differ in the sound of the letter ‘A’ of the earlier sign, and the letters 'HI' and 'D' of the contested sign (where the letter ‘H’ will not be pronounced by the Spanish-speaking part of the public).

Therefore, the signs are aurally similar to an average 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. 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.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include element 'DRY'. In support of its argument the applicant refers to a few trade mark registrations in the European Union, France and Benelux.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element 'DRY'. Under these circumstances, the applicant claims must be set aside.

 

e) Global assessment, other arguments and conclusion

 

The goods are at least similar. The signs under comparison are considered to be visually similar to a below average degree, aurally similar to an average degree and the conceptual aspect does not influence the assessment of the similarity of the signs. The degree of attention of the relevant public will be relatively high The earlier mark has a normal degree of distinctive character.

 

The signs are similar to the extent that they coincide in the string of letters ‘DRYS’ (and their sound). They also both contain letters ‘E’ and ‘L’, but placed in different position. And although there is a risk in relying too much on a mechanical quantitative evaluation, it is a fact that counting the total number of letters, identifying the amount of identical letters and comparing their order in the respective marks, can provide certain guidance. Taking into account that the earlier sign consists of seven letters, and the contested sign of nine letters, and that six letters of the earlier sign are contained within the contested sign, the differences in the remaining letters and their sounds are insufficient to make the marks distinguishable from one another, in particular as the words are meaningless and there is no concept attached to the signs that could help consumers to differentiate one sign from the other.

 

Even though there are certain visual and aural differences between the signs, account is also 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).

Considering all the above, there is a likelihood of confusion on the part of the Polish-, and Spanish-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 17 654 419. It follows that the contested trade mark must be rejected for all the contested goods.

 

 

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, 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

 

 

Katarzyna ZANIECKA

Anna BAKALARZ

Monika CISZEWSKA

 

 

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.