OPPOSITION Nо B 3 118 644

 

Pets Dolfos sp. z o.o. sp. k., ul. Gliniana 6, 97-300 Piotrków Trybunalski, Poland (opponent), represented by Kancelaria Patentowa W. Zajączkowski i A. Potempa s.c., ul. Kadłubka 11/19 m. 38, 93-263 Łódź, Poland (professional representative) 

 

a g a i n s t

 

Arthrocol Kft., Berlini Utca 47-49 3/a 201, 1045 Budapest, Hungary (applicant), represented by Béla Lénárt, Berlini Utca 47-49, 3/a 201, 1045 Budapest, Hungary (employee representative).

On 22/06/2021, the Opposition Division takes the following

 

 

DECISION:

1.	Opposition No B 3 118 644 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 187 220 is rejected in its entirety.

 

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

REASONS

 

On 08/05/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 187 220, ‘ARTHROCOL’ (word mark). The opposition is based on Polish trade mark registration No 288 644, ‘Arthrodol’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK ON SUBSTANTIATION

The applicant argues that the opponent failed to substantiate its earlier mark within the time limit set by the Office. It must be explained that, by submitting the notice of opposition (including online substantiation), all substantiation requirements were fulfilled by the opponent. Therefore, the applicant’s claim must be set aside.

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: Dietary supplements for animals.

The contested goods are the following:

Class 5: Dietary supplemental drinks; fodder supplements for veterinary purposes; dietary supplements for pets; food supplements for veterinary use; vitamins for animals; vitamin supplements for animals; nutritional supplements for livestock feed; vitamins for pets; complementary feed; medicated animal feed; neutraceutical preparations for animals; dietary supplements for human beings and animals; dietary supplement drink mixes; dietary and nutritional supplements; dietary supplements for humans; medicated supplements for foodstuffs for animals; neutraceutical preparations for humans; nutritional supplements; nutritional additives to foodstuffs for animals, for medical purposes; food supplements for non-medical purposes.

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.

The contested dietary supplemental drinks; fodder supplements for veterinary purposes; dietary supplements for pets; food supplements for veterinary use; vitamins for animals; vitamin supplements for animals; nutritional supplements for livestock feed; vitamins for pets; dietary supplements for animals; dietary supplement drink mixes; dietary and nutritional supplements; neutraceutical preparations for animals; medicated supplements for foodstuffs for animals; nutritional supplements; nutritional additives to foodstuffs for animals, for medical purposes; food supplements for non-medical purposes; medicated animal feed are identical to the opponent’s dietary supplements for animals because the opponent’s goods include, are included in, or overlap with, the contested goods, or because they are identically contained in both lists (including synonyms), for example complementary feed.

The contested neutraceutical preparations for humans; dietary supplements for humans; dietary supplements for human beings are similar to a high degree to the opponent’s dietary supplements for animals. They usually coincide in their purpose, producers and method of use.

 

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, all the goods found to be identical or similar to a high degree are directed at the public at large and, to some extent, at business customers with specific professional knowledge or expertise (e.g. medicated animal feed).

 

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 their state of health. The rule above shall be applied to the goods in the present case as they also have an impact on nutrition and, in a consequence, health of people and animals.

Given that the general public is more prone to confusion, the examination will proceed on this basis. It should be noted that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

 

c) The signs

 

Arthrodol	ARTHROCOL
Earlier trade mark	Contested sign

 

The relevant territory is  Poland.

 

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 signs are both word marks as can be seen above. The protection of a word mark concerns the word as such. Therefore, it is irrelevant whether it is written in upper- or lower-case letters unless the word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing (irregular capitalisation), which is not the case here.

The verbal element ‘arthro’, present in both signs, could be associated by professionals with the word ‘artro-‘, namely ‘the first segment of compound words that are medical terms, indicating their semantic relationship with the joint’ (extracted from ‘Słownik języka polskiego PWN’ at https://sjp.pwn.pl/szukaj/artro.html on 16/06/2021). However, as the focus is made on the general public in the present case, it is very likely that the vast majority of the public concerned will not recognise and dissect this element in the trade marks in question. Therefore, the verbal elements ‘Arthrodol’ and ‘ARTHROCOL’ will be seen as meaningless and, therefore, they will be distinctive.

The applicant puts forward that the element ‘COL’ at the end of the contested sign will be understood as collagen. However, the applicant did not submit any evidence in this regard. The relevant public is the Polish general public and there are no other indications whether this verbal element will be understood as such. Therefore, the applicant’s claim must be set aside.

Furthermore, the applicant claims that the element ‘dol’ in the earlier mark refers to the name of the opponent’s company, namely ‘Pets Dolfos’. This is irrelevant as this element (i.e. ‘dol’) is meaningless in Polish and will not be dissected by the relevant public. Apart from that it is a common practice that trade mark proprietors refer to their company names in trade marks they use on the market. Consequently, the applicant’s argument must be set aside as well.

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.

The applicant argues also that it operates on the Hungarian market, whereas the opponent is present on the Polish market. It should be explained that an European Union trade mark registration is an exclusive right that covers the whole territory of the European Union. Therefore, the applicant’s claim must be set aside.

 

Visually and aurally, the signs coincide in the first six and two last letters / the sound of the first six and two last letters, namely ‘Arthro*ol’/’ARTHRO*OL’. However, they differ in their seventh letters / the sound of their seventh letters, that is, ‘d’ of the earlier mark and ‘C’ of the contested sign.

 

Therefore, the signs are visually and aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the relevant public (i.e. the general public). Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. 

 

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, bearing the relevant public into account (i.e. the general public), the distinctiveness of the earlier mark must be seen as normal.

 

e) 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 a high degree and target the public at large (only this part of the public is examined here) and, to some extent, also professionals. The public’s degree of attention is relatively high. The earlier mark’s degree of distinctiveness is normal for the public concerned. The signs are visually and aurally similar to a high degree. The conceptual comparison remains neutral.

It should also be taken into account 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).

The signs coincide in the first six and the last two letters (out of nine), namely ‘Arthro*ol’/’ARTHRO*OL’. As explained above, beginnings (but also endings) are more memorable by the public. The differentiating letters, that is, ‘d’ of the earlier mark and ‘C’ of the contested sign, are placed in the middle and can even go unnoticed by the public. However, the signs differ in their seventh letters as explained above. Therefore, the Opposition Division is of the opinion that the differences cannot outweigh the similarities.

The applicant argues that ‘ARTHROCOL trade mark is only the name of the ARTHROCOL Limited Company and does not refer to the names of any of its products’ and ‘the leaflet indicates all the company’s products to this date and even though the name of the company, ARTHROCOL is on the products, only as the manufacturer, the name of the products differs accordingly’. In the opposition proceedings in principle the contested mark and the opposed mark as well their specifications must be compared (and also some other additional criteria). Therefore, it is irrelevant how the opposed sign is used. Consequently, the applicant’s claim must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Polish trade mark registration No 288 644. 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

 

 

Marzena MACIAK

Michal KRUK

Chantal VAN RIEL

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.