OPPOSITION No B 2 425 265

Veto-Centre, Immeuble Permaphone 76, Avenue des Champs Elysées, Paris, France (opponent), represented by Cabinet Laurent & Charras, Le Contemporain 50, Chemin de la Bruyère, 69574 Dardilly Cedex, France (professional representative)

a g a i n s t

Canina Pharma GmbH, Kleinbahnstr. 12, 59069 Hamm, Germany (applicant), represented by Bischof & Partner Rechtsanwälte Partnerschaftsgesellschaft mbB, An den Speichern 6, 48157 Münster, Germany (professional representative).

On 24/03/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 425 265 is partially upheld, namely for the following contested goods:

Class 5: Pharmaceutical and veterinary preparations; additives to fodder for medical purposes; sanitary preparations for medical or veterinary use; dietetic preparations for medical or veterinary use; plasters, materials for dressings; disinfectants; preparations for destroying vermin; fungicides, herbicides; parasiticides; medicines for human or veterinary purposes; bacteriological preparations for medical and veterinary use; biological preparations for medical or veterinary purposes; chemical preparations for medical or veterinary purposes; dietetic preparations for medical or veterinary purposes; nutritional supplements.

Class 31: Agricultural products and grains (not included in other classes); seeds, natural plants; malt; animal foodstuffs, including foodstuff concentrates, foodstuff preserves and reward foodstuffs; bones for animal feed; beverages for pets; chewing bones for dogs; litter for animals; foodstuffs for fish; fresh meat and frozen meat for animal feeding.

2. European Union trade mark application No 13 004 916 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 004 916. The opposition is based on French trade mark registrations No 1 350 892 and No 33 209 422. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely French trade mark registrations No 1 350 892 and No 33 209 422.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the publication of the contested application.

The contested application was published on 31/07/2014. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in France from 31/07/2009 to 30/07/2014 inclusive. Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

French trade mark No 1 350 892

Class 5: Veterinary products.

French trade mark No 33 209 422

Class 5: Veterinary pharmaceuticals; hygienic products for veterinary medicine; insecticides for veterinary purposes.

Class 31: Foodstuffs for animals.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 13/05/2015, in accordance with Rule 22(2) EUTMIR, the Office gave the opponent until 18/07/2015 to submit evidence of use of the earlier trade marks. On 16/07/2015, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

• A catalogue of ‘BIOCANINA’ products (48 pages), dated January 2010. The catalogue is in French and was distributed to pharmacies selling these products. A partial translation into English is provided. The catalogue illustrates the use of the mark for several products for animals, such as pharmaceuticals, insecticides, hygienic preparations, medicines for destroying parasites, contraception, sedation, dermatological care, eye and ear drops, treatments for digestive disorders, tranquillisers, foodstuffs, minerals and vitamins, antibiotics, shampoos, edible pastes, powdered milk, etc. The products bear the mark ‘BIOCANINA’ and also additional brand lines, such as ‘TICK-PUSS’, ‘ASCATENE’, ‘FELIPIL’, ‘DERMATT’, ‘PHYTOCANINA’, etc., and are identified in colour groups, according to their specific function.

• Four affidavits, all signed on 26/10/2012 by Mrs Anne Chauder, Managing Director of the opponent, Veto-Centre (former company name of the opponent). The first affidavit refers to the numbers sold and the global turnover for the leading products under the marks ‘BIOCANINA’ and ‘BIOCANINA L’AMI DE VOS AMIS’ , for the French market, during the period 2006-2011. The total amounts of turnover are not added up, but it is evident that for each of the six years in question the total turnover exceeds EUR 3 million. The second affidavit refers to the marketing budget for the mark ‘BIOCANINA’, for the period 2006-2011. The third affidavit displays a table, according to which the market share of the company Veto-Centre and its ‘BIOCANINA’ products in France, in 2012, was 10.3% in terms of turnover and 15.1% in terms of units sold, which makes it the third company in terms of market share in the veterinary pharmaceutical field. The fourth affidavit refers to the units sold and the global turnover from the powdered milk and complementary products sold under the mark ‘BIOCANINA’, for the French market, during the period 2006-2011. The total turnover per year is approximately EUR 500 000.

• An affidavit dated 26/10/2012 and issued by Mr Daniel Tousnakhoff, in the capacity of statutory auditor of the company Veto-Centre (former company name of the opponent). The affidavit attests the global turnover of the company between 2006 and 2011. The amount of this global turnover during the six years in question varies between EUR 10 601 986 and EUR 12 617 711.

• Two affidavits, signed on 17/06/2015 by Anne Chauder, Managing Director of the opponent, Laboratoires Auvex (new company name of the opponent instead of Veto-Centre). The first affidavit refers to the marketing budget for the trade mark ‘BIOCANINA’, during the period 2011-2014, which represents more than EUR 470 000. The second affidavit displays a table, according to which the market share of the opponent under the trade mark ‘BIOCANINA’ in France, in 2014, was 10.32% in terms of turnover and 10.57% in terms of units sold, which makes it the fourth company in terms of market share in the veterinary pharmaceutical field.

• An affidavit, dated 22/06/2015 and issued by Francois Verdier, in the capacity of statutory auditor of the company Laboratoires Auvex. The affidavit refers to the total turnover of the opponent, during the period 2011-2014. The total turnover is around EUR 10 000 000 for each relevant year.

• Advertisements for ‘BIOCANINA’ products in specialist French publications from the pharmaceutical fields: Actualités Pharmaceutiques (dated May 2010), Le Quotidien du Pharmacien (dated 09/04/2009) and PharmaVET Officine (dated June 2010).

• Advertisements for the marks ‘BIOCANINA L’AMI DE VOS AMIS’ and ‘BIOCANINA’ in relation to veterinary pharmaceuticals, veterinary insecticides and animal foodstuffs in the following French magazines, all aimed at the general public: 30 Millions d’Amis (dated May 2010), Télé 7 Jours (dated May 2010), Mon Jardin & Ma Maison (dated June 2010), Atout Chiens (dated May 2010), Molosses News (dated October/November 2009), Pharmélia (dated summer 2014) and Pharmavie (September/October 2014).

• Extracts relating to a press campaign for ‘BIOCANINA’, which consist of five photos of cats or dogs (from the websites www.lareclame.fr and www.biocanina.com), dated 2013.

• Advertisements for the marks ‘BIOCANINA’ and ‘BIOCANINA L’AMI DE VOS AMIS’ in relation to veterinary products, in French magazines, namely ELLE (May 2014), Femme Actuelle (May 2014, September 2014), 30 Millions d’Amis (September 2014, February 2015), Prima Maison (July/August 2014), MarieClaire Idées (July/August 2014), Questions de Femmes (June 2014) and ANIMAUX BONHEUR (February-April 2015).

• Photographs of advertisements of ‘BIOCANINA’ products in the Paris metro (2011) and of a poster regarding a partnership with Warner Bros. for the promotion of a film and the brand ‘BIOCANINA’.

• Results of a Google image search, restricted to France, displaying several ‘BIOCANINA’ products.

• Extracts from the opponent’s website (www.biocanina.com) displaying the marks ‘BIOCANINA L’AMI DE VOS AMIS’ and ‘BIOCANINA’ in relation to veterinary products such as insecticides, hygienic preparations, medicines for deworming, destroying parasites, contraception, sedation, infectious diseases or dermatological care, foodstuffs for animals, minerals and vitamins, edible pastes and ear drops. They display information about competition organised by the ‘BIOCANINA’ club.

• Photographs of posters, display units, billboards, counter stands and promotional material bearing the marks ‘BIOCANINA L’AMI DE VOS AMIS’ and ‘BIOCANINA’. Most of these materials are not dated; nonetheless, one of the documents refers to a ‘national advertising campaign’ in pharmacies (from 14/05/2007 to 22/06/2007) and also to the advertising of the marks in the magazine 30 Millions d’Amis (in May and June 2007).

• Seven invoices dated within the relevant period (issued between 12/09/2006 and 30/06/2010), in French, issued by advertising agencies and magazines with headquarters in France to the opponent, Veto-Centre (the opponent’s former company name), concerning ‘BIOCANINA’ advertising campaigns.

• A large number of invoices, all dated between 2006 and 2014 (several invoices are submitted for each of the years in question), in French, issued to several different pharmacies in France. All invoices are issued in euros and refer to goods with the mark ‘BIOCANINA’, as well as to several brand lines of BIOCANINA products such as ‘TICK-PUSS’, ‘ASCATENE’, ‘FELIPIL’, ‘DERMATT’ and ‘PHYTOCANINA’, all mentioned in the catalogue of the opponent’s products, dated January 2010. Some of the invoices are issued by the companies Noreva Pharma and CSP, with the explicit statement on them that the invoice is ‘on behalf of/in the name of Veto-Centre’ and some invoices are issued by the company Laboratoires Auvex (which is a different legal entity from the opponent) with the explicit statement on them that the invoices are issued by Laboratoires Auvex acting for Laboratoires Veto-Centre.

• Copies of agreements signed between the opponent, Veto-Centre (the opponent’s former company name), and the companies Noreva Pharma and CSP, in French, accompanied by a partial English translation, whereby the company Veto-Centre transfers to the latter companies’ business operations such as taking orders, marketing, distribution and invoicing customers for its products.

The Opposition Division finds that the abovementioned evidence proves that the earlier trade marks have been genuinely used in the course of trade.

Some of the evidence of use filed by the opponent, namely some of the invoices submitted, originates not from the opponent itself but from other companies (Noreva Pharma, CSP and Laboratoires Auvex).

According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States.

In the present case, the opponent submitted copies of the agreements signed with the companies Noreva Pharma and CSP concerning, in particular, the invoicing operations for its products. Furthermore, the companies in question, namely Noreva Pharma and CSP, have mentioned explicitly on the invoices that the sale of the goods in question is made ‘on behalf of/in the name of Veto-Centre’ and the company Laboratoires Auvex has mentioned explicitly on the invoices that ‘the invoices are established by the Laboratoires Auvex acting for Laboratoires Veto-Centre’.

Therefore, taking into consideration the aforementioned information and evidence submitted by the opponent in this respect, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

The vast majority of the evidence of use is dated within the relevant period.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must also have been put to genuine use during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the proprietor at that time (see 27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

A certain amount of the evidence, such as some invoices and photos, refers to dates prior to the relevant period. However, it also supports the opponent’s claim to have used the marks ‘BIOCANINA L’AMI DE VOS AMIS’ and ‘BIOCANINA’ within the relevant period. This is because the use it refers to is not very far in time from the relevant period. Moreover, it provides the information that the opponent used the marks in question three years before the relevant period.

The invoices, advertisements, publications and catalogues show that the place of use is France. This can be inferred from the language of all these documents (French), the currency mentioned (euros) and the addresses of the customers purchasing the relevant goods (pharmacies in France) as well as the addresses of the companies providing advertising services to the opponent, also based in France.

The invoices, advertisements and catalogues relate to the full length of the period and prove the frequency of the use of the marks. Furthermore, they sufficiently support the information concerning the commercial volume provided in the affidavits submitted by the opponent.

Finally, the evidence shows that the marks have been used as registered for several products for animals, such as preparations for destroying fleas and ticks, hygienic articles, medicines for contraception, for sedation, for dermatological care and for digestive disorders, eye and ear drops, tranquillisers, foodstuffs, minerals and vitamins, antibiotics, shampoos, edible pastes and powdered milk. Therefore, as the opponent is not required to prove all the conceivable variations of the categories of goods for which the earlier marks are registered, and bearing in mind that the opponent has shown use of its marks for many diverse veterinary pharmaceuticals, hygienic products and insecticides for veterinary use and animal foodstuffs, which do not constitute coherent subcategories within the broad categories in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade marks for the entire categories in question.

However, it must be noted that, in the evidence submitted, the earlier marks appear mostly as and .

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier marks as far as their nature is concerned.

For the sake of clarity, however, it has to be kept in mind that strict conformity between the sign as used and the sign as registered is not necessary; in other words, the proprietor of a registered mark is allowed, as long as the distinctive character of the mark is not altered, to make variations in the sign, for the purpose of better adapting it to the marketing and promotion requirements of the goods or services concerned (see 23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65, § 50). In the present case, the French trade marks ‘BIOCANINA L’AMI DE VOS AMIS’ and ‘BIOCANINA’ were registered as word marks, but they were also used as the figurative signs shown above.

The elements that differentiate these signs from the registered form of the marks (word marks) are the use of a slightly stylised typescript, in both marks, and the addition of two small animal paw prints and the opponent’s website address (www.biocanina.com), in the earlier mark ‘BIOCANINA L’AMI DE VOS AMIS’. The use of a stylised typescript is acceptable, as it does not affect the distinctiveness of the earlier marks. The additional device elements are rather common and banal in the commercial field in question (veterinary products) and, consequently, not of such a nature as to alter the distinctive character of the mark. Finally, the indication of the opponent’s website will be viewed by the consumers as merely descriptive information.

Consequently, the Opposition Division considers that the submitted evidence does show use of the signs as registered and complies with the requirements of Article 15(1) EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; and12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Therefore, the Opposition Division finds that the evidence of use, in its entirety, sufficiently indicates the place, time, extent and nature of use of the opponent’s trade marks for the goods for which they are registered and on which the opposition is based.

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 and for which genuine use has been proved are the following:

French trade mark No 1 350 892

Class 5: Veterinary products.

French trade mark No 33 209 422

Class 5: Veterinary pharmaceuticals; hygienic products for veterinary medicine; insecticides for veterinary purposes.

Class 31: Foodstuffs for animals.

The contested goods are the following:

Class 5: Pharmaceutical and veterinary preparations; additives to fodder for medical purposes; sanitary preparations for medical or veterinary use; dietetic preparations for medical or veterinary use; food for babies; plasters, materials for dressings; disinfectants; preparations for destroying vermin; fungicides, herbicides; parasiticides; medicines for human or veterinary purposes; bacteriological preparations for medical and veterinary use; biological preparations for medical or veterinary purposes; chemical preparations for medical or veterinary purposes; dietetic preparations for medical or veterinary purposes; air freshening preparations; nutritional supplements.

Class 29: Fresh meat and frozen meat for animal feeding.

Class 31: Agricultural, horticultural and forestry products and grains (not included in other classes); live animals; fresh fruits and vegetables; seeds, natural plants and flowers; malt; animal foodstuffs, including foodstuff concentrates, foodstuff preserves and reward foodstuffs; bones for animal feed; beverages for pets; chewing bones for dogs; litter for animals; foodstuffs for fish.

As a preliminary note, although the contested application sought registration for, inter alia, goods in Class 29, namely fresh meat and frozen meat for animal feeding, the correct classification of these goods is in Class 31. Therefore, the Opposition Division considers that these goods are classified in Class 31.

In addition, it is to be noted that according to Rule 2(4) EUTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (on the use of ‘in particular’ see a reference in 09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

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

The contested veterinary preparations and medicines for veterinary purposes are, despite a slightly different wording, identical to the opponent’s veterinary pharmaceuticals.

The contested pharmaceutical preparations include, as a broader category, the opponent’s veterinary pharmaceuticals. The fact that the latter are produced for administering to animals cannot change this finding, as they are pharmaceutical products. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical.

The contested sanitary preparations for veterinary use and the opponent’s veterinary pharmaceuticals and hygienic products for veterinary medicine overlap, since they cannot be clearly separated from each other. Therefore, they are considered to be identical.

The contested fungicides and parasiticides are substances used for killing, respectively, fungus and parasites, which can be for human and for veterinary use. Therefore, since the opponent’s veterinary pharmaceuticals include fungicides and parasiticides for veterinary use, these goods cannot be clearly separated from each other. Therefore, they are considered identical.

The contested bacteriological preparations for veterinary use, biological preparations for veterinary purposes and chemical preparations for veterinary purposes and the opponent’s veterinary pharmaceuticals overlap, since they cannot be clearly separated from each other. Therefore, they are considered identical.

The contested medicines for human purposes have a high degree of similarity to the opponent’s veterinary pharmaceuticals, as their natures and methods of use are highly similar, the only difference being that the opponent’s goods are administered to animals whereas the contested goods are administered to human beings. The distribution channels are also largely the same, namely pharmacies. These goods may also be manufactured by the same undertakings and target the same consumers.

The contested sanitary preparations for medical use are considered highly similar to the opponent’s veterinary pharmaceuticals and hygienic products for veterinary medicine. These goods have the same purpose, of enhancing health or treating health conditions. Furthermore, they can coincide in producer, end user and distribution channels.

The contested dietetic preparations for veterinary use and dietetic preparations for veterinary purposes are similar to the opponent’s veterinary pharmaceuticals. Dietetic preparations for veterinary use/purposes are preparations prepared for special dietary veterinary requirements with the purpose of treating or preventing a disease. Bearing this in mind, their purpose is similar to that of veterinary pharmaceuticals (preparations used in the treatment of diseases) insofar as they are used to improve the medical condition of animals. These goods generally have the same distribution channels and coincide in their relevant public.

The applicant’s preparations for destroying vermin consist of chemical compounds intended to get rid of diseases, pests or nuisances related to various animal species. The opponent’s veterinary pharmaceuticals are aimed at healing or preventing health problems in animals. The goods at issue have the same purpose, which is to cure certain health problems, as well as the same manufacturers and distribution channels. Therefore, they are similar.

The contested disinfectants are similar to the opponent’s veterinary pharmaceuticals. These goods can be produced by the same kinds of undertakings, target the same end users and have the same distribution channels and points of sale. Furthermore, they may have the same overall purpose, as they are intended to kill unwanted life forms (e.g. microorganisms).

The contested plasters and materials for dressings are similar to the opponent’s veterinary pharmaceuticals. These goods coincide in their purpose, of treating health problems in animals. Furthermore, they have the same distribution channels and end consumers.

The contested additives to fodder for medical purposes, dietetic preparations for medical use, dietetic preparations for medical purposes, bacteriological preparations for medical use, biological preparations for medical purposes, chemical preparations for medical purposes and nutritional supplements have relevant aspects in common with the opponent’s veterinary pharmaceuticals. Veterinary preparations are substances used in the treatment of diseases or prevention of diseases, whereas the contested goods are substances prepared for special dietary requirements or other specific preparations adapted for medicinal use. Therefore, the goods in question coincide in their purpose, insofar as they are all chemical compounds used to treat or prevent diseases. In addition, the goods under comparison target the same public and originate from the same undertakings. Furthermore, these products are often used in combination and have the same distribution channels. Therefore, these products are considered similar.

The contested herbicides are chemical substances used to destroy or inhibit the growth of plants. These goods have a similar purpose to the opponent’s insecticides for veterinary purposes, in that they seek to destroy harmful or unwanted pests and organisms. They are also likely to be produced by the same businesses specialising in the relevant field (production of pesticides). Furthermore, they will be distributed through the same distribution channels and they target the same public. Therefore, these goods are considered similar.

The Opposition Division finds that the opponent’s goods and the remaining contested goods in Class 5, namely food for babies and air freshening preparations, have nothing relevant in common. The latter goods and the opponent’s goods in Classes 5 and 31 have different specialised natures and different intended purposes. They are usually not sold through the same distribution channels or in the same sections of department stores. Furthermore, these goods are not manufactured by the same undertakings and are neither complementary nor in competition. Consequently, they are dissimilar.

Contested goods in Class 31

The contested animal foodstuffs are identically protected by the opponent’s mark, although in slightly different wording (foodstuff for animals, including foodstuff concentrates, foodstuff preserves and reward foodstuffs).

The contested fresh meat and frozen meat for animal feeding, bones for animal feed, chewing bones for dogs, foodstuffs for fish are all included in the broad category of the opponent’s foodstuffs for animals. Therefore, these goods are considered identical.

The contested beverages for pets are similar to the opponent’s foodstuffs for animals. This is because these goods can be made by the same manufacturers, have similar purposes and natures, are sold to the same customers and appear side by side in the same distribution channels or outlets.

The contested malt consists of grains to which the malting process has been applied and can be used as, or found in, the opponent’s foodstuffs for animals. For example, malted barley is used as an animal feed because of its high protein content. Consequently, it has the same nature and purpose as the opponent’s foodstuffs for animals. Furthermore, these goods target the same consumers and often coincide in distribution channels. Therefore, these goods are considered similar.

The contested litter for animals is a material strewn in an animal’s enclosure for it to sleep on and to absorb faeces and urine. Some types of litter, such as straw or hay, can also be eaten by the animals, so it can coincide with the opponent’s goods in purpose, method of use, distribution channels and relevant public. Therefore, these goods are considered similar.

The contested agricultural products and grains (not included in other classes), seeds and natural plants are products that have not been subjected to any form of preparation for consumption and, as such, are likely to be used as, or found in, the opponent’s foodstuffs for animals. Consequently, they can be used for the same purpose. For instance, foodstuff for animals can be made out of grain, seeds, etc., which are purchased at the same retail outlets, such as markets and agricultural food suppliers. Therefore, these goods are likely to coincide in distribution channels and end users. Consequently, these goods are deemed similar to the foodstuffs for animals protected by the earlier right in Class 31.

Although some of the opponent’s foodstuffs for animals may include the applicant’s fresh fruits and vegetables (such as carrots or apples), there is a fundamental difference between these goods: the former consist of special food for animals whereas the applicant’s goods are generally intended for human consumption. Furthermore, these goods are not complementary and they are not interchangeable either. They will not be found in the same shops or distributed through the same channels. Therefore, the applicant’s fresh fruits and vegetables have nothing relevant in common with any of the opponent’s goods and they are considered dissimilar.

The applicant’s horticultural products (not included in other classes) include flowers, fruits, berries, vegetables, trees, shrubs and turf, and its forestry products (not included in other classes) result from the art and science of managing forests, tree plantations and related natural resources. These goods have a similar nature to the opponent’s foodstuffs for animals, insofar as they may all be plant based. However, they have nothing further in common from which to conclude that they are similar; they target different consumers, via different distribution channels (the applicant’s goods are usually sold in specialised shops, such as a florist’s or a garden centre, whereas the opponent’s goods are found in animal shops), and they are not interchangeable or in competition. Therefore, they are considered dissimilar to all the goods of the earlier marks.

The contested live animals are animals mostly purchased by farmers for commercial reasons. As such, they have nothing relevant in common with any of the opponent’s goods and are considered dissimilar.

The applicant’s flowers are the blooms or blossoms of plants and are usually cultivated for sale as decorative items. They are usually sold in specialised florists’ shops. Therefore, they are not interchangeable or in competition with any of the opponent’s goods in Classes 5 and 31. Furthermore, they do not have similar natures or purposes, they target different consumers and they normally originate from different undertakings. Consequently, they are considered dissimilar.

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 various degrees) are directed at the public at large as well as at professionals with specific professional knowledge or expertise (for example from the veterinary and agricultural fields). The degree of attention will vary from average to high, given the goods’ medical, veterinary or at least health-related purposes.

3. The signs

BIOCANINA French trade mark No 1 350 892 BIOCANINA L’AMI DE VOS AMIS French trade mark No 33 209 422	CANINA KOI-EXPERT
Earlier trade marks	Contested sign

The relevant territory is France.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier marks are word marks: ‘BIOCANINA’ (earlier trade mark (1)) and ‘BIOCANINA L’AMI DE VOS AMIS’ (earlier trade mark (2)).

The contested sign is a word sign: ‘CANINA KOI-EXPERT’.

The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). The marks as a whole do not have any meaning. However, the relevant public will mentally dissect the verbal element ‘BIOCANINA’ of the earlier marks into ‘BIO’ and ‘CANINA’, as both of these words are known to the public.

The element ‘BIO’ of the earlier marks means ‘biological, natural’ in French. Bearing in mind that the relevant goods are veterinary products and foodstuffs for animals, it is considered that this element is non-distinctive for all these goods, as it is directly descriptive of their quality and characteristics. Furthermore, the elements ‘L’AMI DE VOS AMIS’ of earlier mark (2) will be understood as the expression ‘the friend of your friends’ in English. Therefore, this expression is considered weak for all the relevant goods, as it consists of a promotional statement concerning the value and quality of these goods.

The element ‘KOI’ of the contested sign means a kind of carp. Therefore, bearing in mind that the relevant goods consist of pharmaceutical and veterinary preparations, agricultural products, foodstuffs for animals, etc., it is considered that this element is weak for some of these goods, for example medicines for veterinary purposes; bacteriological preparations for veterinary use in Class 5 and animal foodstuffs in Class 31, since they can be applied to or destined for carps or carps can be an ingredient of such foodstuffs. The element ‘KOI’ has an average degree of distinctiveness for the remaining goods, which are not related to carps, for which, therefore, it does not carry a descriptive meaning. Moreover, the element ‘EXPERT’ of the contested sign will be understood as ‘a person who has acquired an excellent knowledge by long practice, or great skill’. Therefore, as it immediately enables the relevant public to grasp a message that might be interpreted as an advertisement for the relevant goods produced by and/or for specialists, this element is considered non-distinctive for all the relevant goods, as it is directly descriptive of their value and quality.

Furthermore, the element ‘CANINA’, which is the first element of the contested sign and is also contained in the earlier marks, will be associated with the idea of ‘canine; of or relating to dogs’, due to its proximity to the French adjective canin, canine. Therefore, bearing in mind that the relevant goods consist of pharmaceutical and veterinary preparations, agricultural products, foodstuffs for animals, etc., it is considered that this element also enjoys a limited degree of distinctive character in relation to the relevant goods, since all of them can be applied to or destined for dogs.

Nonetheless, the French-speaking public is likely to perceive the element ‘CANINA’ as a foreign variation of the aforementioned French adjective. Therefore, despite its inherent weakness, in the earlier marks this element is still more distinctive than the remaining elements contained therein. In the contested sign, the element ‘CANINA’ is also more distinctive than the remaining elements contained therein. Although the element ‘KOI’ of the contested sign has a normal degree of distinctiveness for some of the contested goods, it will not neutralise the importance of the first element, ‘CANINA’, within the sign.

The marks in question have no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘CANINA’, which forms the beginning of the contested sign and is also contained in the earlier marks after the non-distinctive element ‘BIO’. The element ‘CANINA’ enjoys a limited degree of distinctiveness, but it is more distinctive than the remaining elements in the marks for all the goods of the earlier marks and some of the goods of the contested sign. However, they differ in the non-distinctive sequence of letters ‘BIO’, which forms the first three letters of the earlier marks, and in the additional weak word elements of earlier mark (2), ‘L’AMI DE VOS AMIS’, which have no counterparts in the contested sign. Furthermore, they differ in the contested sign’s non-distinctive element ‘EXPERT’ and its element ‘KOI’, which is weak for some of the goods and of normal distinctiveness for the remaining goods.

In the present case, the element ‘CANINA’ of the earlier marks is distinguishable in the earlier marks and plays an independent role within it, since it is considered more distinctive for the opponent’s goods than the additional non-distinctive (‘BIO’) and weak (‘L’AMI DE VOS AMIS’) elements. Consequently, consumers will more readily focus on the element ‘CANINA’ of the earlier marks.

In the contested sign, consumers will also more readily focus on the element ‘CANINA’, as it is at the beginning of the contested sign and as the additional elements are non-distinctive (‘EXPERT’) and weak (‘KOI’) for the majority of the goods. It is true that, for some of the contested goods, the additional element ‘KOI’ is of normal distinctiveness; however, it is just a short element placed in the middle of the sign, where the public will not pay much attention.

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

Aurally, the pronunciation of the signs coincides in the syllables ‛CA-NI-NA’, present identically in all the signs. The pronunciation differs in the sound of the initial letters ‘BIO’ of the earlier marks and in the sound of the additional words ‘L’AMI DE VOS AMIS’ of earlier mark (2), which have no counterpart in the contested sign. Furthermore, the pronunciation differs in the additional words ‛KOI’ and ‛EXPERT’ of the contested sign. As seen above, the verbal elements ‛BIO’ of the earlier marks and ‛EXPERT’ of the contested sign are considered non-distinctive. The verbal element ‛L’AMI DE VOS AMIS’ of the earlier mark (2) is considered weak and the element ‛KOI’ is also considered weak for some of the goods. The element ‛CANINA’ has a limited degree of distinctiveness, but is more distinctive than the remaining elements in the marks for all the goods of the earlier marks and some of the goods of the contested sign. Because the words ‛L’AMI DE VOS AMIS’ of earlier mark (2) will be perceived as a promotional slogan by the French-speaking public and the word ‘EXPERT’ as describing the quality and value of the goods and, furthermore, because these elements are placed at the end of the marks, it is likely that these words will not be pronounced.

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

Conceptually, as already specified above, although the signs as a whole do not have any meaning for the public in the relevant territory, the element in common, ‛CANINA’, included in all the signs, will be associated with the idea of ‘canine; of or relating to dogs’, due to its proximity to the French adjective canin, canine. The prefix ‘BIO’ of the earlier marks will be understood by the French public as referring to or characterising something ‘biological, natural’. The word elements ‛L’AMI DE VOS AMIS’ of earlier mark (2) will be understood as meaning ‘the friend of your friends’. The element ‘KOI’ of the contested sign means a kind of carp. The element ‘EXPERT’ of the contested sign will be understood as ‘who has acquired an excellent knowledge by long practice, or great skill’.

While the elements ‛BIO’, ‛L’AMI DE VOS AMIS’ and ‛EXPERT’ of the marks may constitute to some extent a point of conceptual difference between the signs, the impact on the conceptual comparison is limited, since these elements are non-distinctive or less distinctive than the element they have in common, ‘CANINA’. The same is true of the element ‛KOI’ for some of the contested goods, for which this element is considered weak. Although the element ‛KOI’ has a normal degree of distinctiveness for the remaining contested goods, it will not neutralise the meaning of the element in common, ‛CANINA’.

To the extent of the element ‛CANINA’, which they have in common, the signs are conceptually 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.

4. Distinctiveness of the earlier marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as lower than average for all the goods in question, as they will bring to the mind of the public the idea of ‘biological products applied to or destined for dogs’.

5. Global assessment, other arguments and conclusion

The goods are partly identical, partly similar (to various degrees) and partly dissimilar.

The marks are aurally, visually and conceptually similar to an average degree. The signs have the verbal element ‛CANINA’ in common, which forms the first verbal element of the contested sign and is contained in the first (or sole) word element of the earlier marks.

There are also differences between the marks; however, these are not enough to safely exclude a likelihood of confusion on the part of the public. As has already been mentioned above in section c) of this decision, the relevant consumers will promptly grasp the meaning of the additional word elements of the marks and will not pay particular attention to them, as they are non-distinctive (‛BIO’ and ‛EXPERT’) and weak (‛L’AMI DE VOS AMIS’) in relation to the goods in question. The same is true of the element ‛KOI’ for some of the contested goods, for which this element is considered weak. Moreover, although the element ‛KOI’ has a normal degree of distinctiveness for the remaining contested goods, it cannot offset the presence of the element ‛CANINA’, which is strikingly longer than the element ‛KOI’ and also placed at the beginning of the contested sign.

Therefore, even though the coinciding element, ‛CANINA’, is not particularly strong in relation to the relevant goods, it still constitutes the first element of the contested sign and it is fully incorporated in the earlier marks.

Moreover, it cannot be overlooked that the identical element ‛CANINA’ also establishes a clear conceptual link between the signs, as referred to above in section c) of this decision, thus contributing to the finding that the marks under comparison convey similar overall impressions.

Furthermore, 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).

Bearing in mind the foregoing, it is considered that the differences between the signs are insufficient to counterbalance the similarities and, consequently, the public in the relevant territories is likely to think that the goods in question, if they bear the marks at issue, come from the same undertaking or, as the case may be, economically linked undertakings.

Considering all the above, although the distinctiveness of the earlier marks is lower than average, the fact that all the factors mentioned above make the overall impressions of the signs similar leads the Opposition Division to find that there is a likelihood of confusion on the part of the French-speaking public and, therefore, the opposition is partly well-founded on the basis of the opponent’s French trade mark registrations.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to various degrees) to those of the earlier trade marks.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Mariya KOLEVA

Simona MACKOVÁ

Julia SCHRADER

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal shall be filed in writing at the Office within two months of the date of notification of this decision. It shall be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal shall be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.