OPPOSITION Nо B 3 125 121

 

Veyx-Pharma GmbH, Söhreweg 6, 34639 Schwarzenborn, Germany (opponent), represented by Maikowski & Ninnemann Patentanwälte Partnerschaft mbB, Kurfürstendamm 54-55, 10707 Berlin, Germany (professional representative)

 

a g a i n s t

 

Atar Naive S.r.l., Via Trento 24, 16018 Mignanego, Italy (applicant), represented by Giulio Gras, Salita San Bartolomeo Del Carmine 7, 16125 Genova, Italy (professional representative).

On 23/08/2021, the Opposition Division takes the following

 

 

DECISION:

1.	Opposition No B 3 125 121 is upheld for all the contested goods.

2.	European Union trade mark application No 18 213 600 is rejected in its entirety.

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

REASONS

 

On 26/06/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 213 600 ‘SANIMAN’ (word mark). The opposition is based on European Union trade mark registration No 7 313 604 ‘Sanditan’ (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 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; cosmetic preparations for animals; shampoos for pets; breath fresheners for animals.

Class 5: Veterinary products; dietetic substances adapted for medical use; animal feed additives for veterinary purposes; vitamins and vitamin preparations for animals; animal care products for veterinary use; lotions for veterinary purposes; animal washes; animal deodorants; sanitary preparations for medical use; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

The contested goods are the following:

Class 3: Essential oils and aromatic extracts; cleaning and fragrancing preparations; toiletries.

Class 5: Sanitary preparations and articles; pest control preparations and articles; hygienic preparations and articles; air deodorising and air purifying preparations; medicinal alcohol; alcohol for pharmaceutical purposes; liquid bandage sprays; microbicides; bacterial preparations for medical purposes; bacterial preparations for veterinary purposes; chemical preparations for medical purposes; chemical preparations for veterinary purposes; medicated toiletry preparations; biological preparations for medical purposes; sanitary preparations for veterinary use; impregnated medicated wipes; medicated shampoos; bacterial poisons.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 3

Essential oils; cleaning preparations are identically contained in both lists of goods (including synonyms).

The contested aromatic extracts are included in the opponent's broad category of essential oils. Therefore, they are identical.

The contested fragrancing preparations include, as a broader category, the opponent’s perfumery. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested toiletries are identical to the opponent’s dentifrices as the former, being a broader category, covers the latter. On the one hand toiletries are preparations used in personal hygiene, for beautification purposes and for preventing the body from smelling unpleasant, while on the other hand dentifrices are paste, powder or liquid preparations used for cleaning teeth, for personal hygiene purposes, for beautification purposes or to make the breath smell pleasant. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

Contested goods in Class 5

The contested sanitary preparations and articles; hygienic preparations and articles; medicinal alcohol; alcohol for pharmaceutical purposes; microbicides; medicated toiletry preparations; sanitary preparations for veterinary use; impregnated medicated wipes; medicated shampoos are identical to the opponent’s sanitary preparations for medical use, either because they are identically contained in both lists (including synonyms) or because the applicant’s goods in this class include, are included in, or overlap with, the opponent’s sanitary preparations for medical use.

The contested pest control preparations and articles; bacterial poisons are included in or overlap with the opponent's preparations for destroying vermin. Therefore, they are identical.

The contested liquid bandage sprays are included in or overlap with the opponent's plasters, materials for dressings. Therefore, they are identical.

The contested bacterial preparations for medical purposes; bacterial preparations for veterinary purposes; chemical preparations for medical purposes; chemical preparations for veterinary purposes; biological preparations for medical purposes are included in, or overlap with the opponent's veterinary products (that include any products used for treating, preventing or alleviating the symptoms of diseases or injuries for animals). Therefore, they are identical.

The contested air deodorising and air purifying preparations are similar to the opponent's sanitary preparations for medical use. Air deodorising preparations in Class 5, are used in, inter alia, hospitals and laboratories where air contamination has to be controlled due to a risk of expansion of microbes and viruses. These goods, apart from air purifying and smell neutralising function through chemically ‘wrapping up’ unpleasant odours, may also have disinfection functions. Since the broad category of sanitary preparations for medical use includes disinfectants, these goods are used to eliminate germs on all types of objects, including the rooms of hospitals or surfaces of laboratories, and can even be used to disinfect the air of certain places. To that extent, these goods share the same purpose, they can be produced by the same type of undertaking, sold via the same channels of distribution and target the same relevant public.

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 the public at large (e.g. cleaning preparations in Class 3) and business customers with specific professional knowledge or expertise (e.g. bacterial poisons in Class 5).

The degree of attention will be average in relation to the goods concerned in Class 3 which are non-medicated, relatively cheap goods purchased on a regular basis, whereas it will be at least above average for the goods concerned in Class 5 as they are health-related goods (13/05/2015, T-169/14, Koragel / Choragon, EU:T:2015:280, § 37-40).

c) The signs

Sanditan	SANIMAN
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.

Both signs are composed of single verbal elements which considered as a whole, have no meaning for the relevant public. However, part of the relevant public might perceive the letters ‘SANI’ in the contested sign as alluding to ‘sanitary’ which means ‘conducive to or promoting health; free from dirt, germs, etc; hygienic’, and which has close equivalents in several languages of the European Union, for instance ‘санитарен’ [sanitaren] in Bulgarian, ‘sanitaire’ in French, ‘sanitär’ in German, ‘sanitar’ in Romanian, ‘sanitario’ in Spanish, (26/05/2016, R 1839/2015‑1, SANITREND (fig.) / SANIFAIR (fig.) et al., § 45; 13/12/2019, R 1501/2019-5, sanitos (fig.) / Sanytol (fig.) et al., § 48). Bearing in mind that some of the relevant goods are sanitary preparations, this element is weak for those goods.

For the other part of the public in the relevant territory, such as the Greek-speaking part of the relevant public, which will not discern any concepts in the signs, the signs are invented terms that will be perceived as a whole. Being meaningless for this part of the public, the signs are endowed with an average degree of inherent distinctiveness.

In the present case, in order to avoid multiple scenarios of the conceptual comparison of the signs depending on whether their verbal components are understood or not, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the relevant public, such as the Greek-speaking part of the relevant public, which will not discern any concepts in the signs and for which both terms are meaningless, and therefore, distinctive.

Since neither of the signs has a meaning for the public under analysis, a conceptual comparison is not possible, and the conceptual aspect does not influence the assessment of the similarity of the signs.

Both signs are word marks. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in title- or upper-case letters. This is true as long as the depiction does not deviate from the usual way of writing (i.e. the standard rules of capitalisation), which is the case here.

Visually and aurally, the signs coincide in the letters ‘SAN(*)I(*)AN’ and their sounds. Furthermore, the signs have the same number of syllables. They differ in the earlier mark’s additional letter ‘D’, placed in fourth position, and the letter ‘T’, placed in its sixth position. The signs further differ in the additional letter ‘M’ of the contested sign, placed in fifth position, and its sound.

It is important to note that the signs coincide in their initial letter sequence ‘SAN’. 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.

In summary, the differences (in the additional letters ‘D’ and ‘T’ of the earlier mark and letter ‘M’ in the contested sign) are not enough to counterbalance the commonalities between the signs, particularly taking into account that the signs share the same beginnings and endings, have a similar structure and the same number of syllables, and the fact that six out of seven letters of the contested sign are included in the earlier mark.

Therefore, the signs are visually and 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 has no meaning for any of the goods in question from the perspective of the public under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The contested goods are partly identical and partly similar to the opponent’s goods. The goods target the public at large, as well as business customers, whose degree of attention is considered at least above average for all the goods concerned in Class 5 and average in relation to the goods concerned in Class 3. The earlier mark has a normal degree of inherent distinctiveness.

Account should be 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).

The signs are visually and aurally similar to an average degree, whereas the conceptual comparison remains neutral. Being composed of eight letters (earlier mark) and seven letters (contested sign) and three syllables each, six out of seven letters of the contested sign are included in the earlier mark. Furthermore, the signs coincide in their first three letters/sounds – attracting the attention of consumers the most – and their last two letters/sounds and, moreover, they have a similar structure. The two differing letters in the middle of the earlier mark and one in the contested sign, are insufficient to allow consumers to safely distinguish between the signs when they encounter them in the market on identical or similar goods.

Considering all the above, there is a likelihood of confusion on the part of the relevant public, such as the Greek-speaking part of the relevant public, which will not discern any concepts in the signs and for which both terms are meaningless, and therefore, distinctive even for the goods in relation to which the degree of attention is above average or high. 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 7 313 604. 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

 

 

Catherine MEDINA

Agnieszka PRZYGODA

Boyana NAYDENOVA

 

 

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.