DECISION

of the Fifth Board of Appeal

of 9 September 2016

In Case R 2286/2015-5

R2 Agro A/S
Mimersvej 1 8722 Hedensted Denmark	Applicant / Appellant

represented by Patrade A/S, Fredens Torv 3A, 8000 Aarhus C, Denmark

v

Nordic Drugs AB
PO Box 30035 200 61 Limhamn Sweden	Opponent / Respondent

represented by Setterwalls, Stortorget 23, 211 34 Malmö, Sweden

APPEAL relating to Opposition Proceedings No B 2 425 638 (European Union trade mark application No 13 023 304)

The Fifth Board of Appeal

composed of G. Humphreys (Chairperson), V. Melgar (Rapporteur) and A. Pohlmann (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 24 June 2014, R2 Agro A/S (‘the applicant’) sought to register the word as amended

NoxiFerm

for the following goods:

Class 5 - Dietary supplements for animals, veterinary preparations.

Class 31 - Foodstuffs for animals.

2. The application was published on 28 July 2014.

3. On 27 October 2014, Nordic Drugs AB (‘the opponent’) filed an opposition against the registration of the published trade mark application for as amended goods, namely:

Class 5 - Dietary supplements for animals, veterinary preparations.

4. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

5. The opposition was based on the earlier Swedish word mark No 257 504 ‘DOXYFERM’, filed on 22 June 1993 and registered on 22 April 1994, for the ‘medical and pharmaceutical preparations’ in Class 5.

6. On 22 May 2015 the applicant submitted its observations in reply, whereby it refuted the arguments put forward by the opponent (as far as Article 8(1)(b) EUTMR was concerned) and requested that the Opposition Division reject the opposition.

7. By decision of 14 September 2015 (‘the contested decision’), the Opposition Division upheld the opposition as amended the contested goods, namely: ‘dietary supplements for animals, veterinary preparations’ in Class 5, on the grounds that there was as amended likelihood of confusion. It gave, in particular, the following grounds for its decision:

• A ‘pharmaceutical preparation’ refers to any kind of medicine, i.e. a substance or combination of substances for treating or preventing disease in people or animals. Therefore, the contested ‘veterinary preparations’ are included in the broader category ‘pharmaceutical preparations’ for which the earlier mark is registered. They are identical.

• The contested ‘dietary supplements for animals’ are substances prepared for animals to meet particular dietary requirements, with the purpose of augmenting or supplementing the nutritional value of an animal’s normal diet. Bearing this in mind, their purpose may be similar to that of the opponent’s ‘pharmaceutical products’ (substances used to treat disease) insofar as they can be used to improve health; consequently, they may be complementary. These goods can have the same producers, relevant public and distribution channels. Therefore, these goods are considered similar

• The relevant territory is Sweden.

• Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘*ox*ferm’, that is they coincide in six out of eight letters. However, they differ in their first and fourth letters, ‘d’/‘n’ and ‘y’/‘i’ of the earlier mark and contested sign, respectively. As the signs are word marks, the fact that they are represented in upper or lower case letters is irrelevant.

• Aurally, the pronunciation of the signs coincides in the sounds of the letters ‘*ox*ferm’, present identically in both signs, and the pronunciation is very similar in the sounds of the letters ‘y’ and ‘i’ of the earlier mark and the contested sign, respectively; to that extent, the signs are aurally similar. The pronunciation differs in the sounds of the letters ‘d’ and ‘n’ of the earlier mark and the contested sign, respectively. The signs have the same numbers of syllables and the same intonations.

• Conceptually, the element ‘FERM’, present identically in both signs could be associated by a small part of the public with ‘fast, rapid, able’ or with a very unusual surname. In this regard, the signs are conceptually similar insofar as both of them could be perceived to refer to these same concepts.

• On the other hand, for the majority of the public, neither of the signs has a meaning, in which case the conceptual aspect does not influence the assessment of the similarity.

• The applicant argues that the element ‘ferm’ will be easily understood in connection with the opponent’s goods because it is an abbreviation of ‘fermentation’. The Opposition Division cannot agree with this assertion because this abbreviation is not commonly used in the market, and the applicant has not provided evidence to support its claim. Furthermore, this element is not present on its own but is the second part of the signs and, consequently, this claim is even more far-fetched. Therefore, this argument must be dismissed as unfounded.

• It follows that, as the element ‘ferm’ has no meaning for the relevant part of the public—it does not suggest a specific meaning or resemble a word known to the relevant public–the signs will be perceived as a whole and will not be broken down into separate elements (judgment of 13/02/2007, T-256/04, ‘RESPICUR’, paragraph 57).

• Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

• The marks under comparison have no elements which could be considered clearly more distinctive or dominant than other elements.

• Since the opponent did not submit any evidence to prove that its earlier mark enjoys enhanced distinctiveness, its claim in this respect must be dismissed and the assessment of the distinctiveness of the earlier mark must 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.

• The goods found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise, such as medical and veterinary professionals. Their degree of attention will vary from average to high depending on the exact nature, purpose and impact on the health of the end consumer of the goods.

• Likelihood of confusion implies some interdependence between the relevant factors, and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. In the present case, the goods are partly identical and partly similar.

• The signs are visually very similar and aurally almost identical due to the presence of the sequence of letters ‘*ox(y/i)ferm’. The most important differences lie in their first letters, ‘d’ and ‘n’ in the earlier mark and contested sign, respectively. However, as the average consumer of the category of goods only rarely has the chance to make a direct comparison between the different marks but must trust in their imperfect recollection of them (judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’, paragraph 26), this difference in one letter, although it is at the beginning of the signs, is not enough to counteract their similarities.

• In addition, the Opposition Division notes that likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (judgment of 11/11/1997, C-251/95, ‘Sabèl’, paragraph 16). In the present case, the consumer may easily conclude that the goods labelled and offered under the contested sign come from the same undertaking as the earlier sign, or from an economically linked one; for example, consumers may believe that the contested sign designates another line of goods from the opponent.

• Therefore, bearing in mind that the goods at issue are partly identical and partly similar, even if part of the public has an above average degree of attention, the differences between the signs are not sufficient to dispel the possibility of a likelihood of confusion.

• Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public.

• As the opposition is well founded on the basis of the opponent’s Swedish trade mark registration, the contested trade mark must be rejected for all the contested goods.

8. On 16 November 2015, the applicant filed an appeal against the contested decision, requesting that the decision be as amended set aside. The statement of grounds of the appeal was received on 14 January 2016.

9. In its observations in reply received on 24 March 2016, the Opponent requests that the appeal be dismissed.

Submissions and arguments of the parties

10. The arguments raised in the statement of grounds may be summarised as follows:

• The applicant states, that ‘FERM’ is a common term in relation to pharmaceuticals and therefore must be disregarded as non-distinctive. The applicant submitted a transcript from Pharmaceutical Manufacturing Encyclopaedia, third edition, as evidence.

• The term ‘FERM’ is used in 61 EUTMs registered in Class 5.

• Since the term ‘FERM’ is non-distinctive, therefore the terms to be compared are ‘NOXI’ and ‘DOXY’

• Phonetically, ‘D’ is clearly different from the sound of an ‘N’. Consequently, the trademarks differ phonetically.

• Visually, the marks are different, since ‘DOXY’ is registered in capital letters only. The marks share two letters out of 4, which according to the current EUIPO’s practice is not sufficient to state, that the marks are similar visually.

• Conceptually none of the dominant parts of the trademarks will have any meaning in relation to the goods for which they are applied.

• The applicant’s trade mark is only applied for ‘dietary supplements for animals’ and for ‘veterinary preparations’. It is highly unlikely, that the relevant part of the public will confuse these products that are clearly limited only to be used for animals, with medical and pharmaceutical preparations.

• The applicant’s goods are sold among other products used in the animal industry and usually in special stores or special parts of stores with products for animals or through veterinarians. The most common customer of the appellant’s products is very likely to be veterinarians as well.

• When the relevant part of the public is purchasing ‘medical and pharmaceutical preparations’ the level of attention is very high and the attention to the brand is extremely high.

• The risk of confusion for consumers buying ‘medical and pharmaceutical preparations’ and consumers buying ‘dietary supplements for animals, veterinary preparations’ is not very likely.

• Furthermore the products in question are not substitutable for each other in any way.

• In conclusion, the applicant has shown that there is a high degree of visual and a phonetic dissimilarity between the trademarks. Furthermore, the term ‘FERM’ lacks distinctiveness and must be disregarded when assessing the similarity between the trademarks. The degree of attention of the relevant part of the public is high due to the category of products and professional recipients of the goods.

• On these grounds the contested decision must be revised and the trade mark should be allowed for registration also for the goods in Class 5, namely ‘dietary supplements for animals, veterinary preparations’.

11. The arguments raised in reply to the appeal may be summarised as follows:

• Descriptive terms are those that merely consist of information about the characteristics of the goods and services. However the mere fact that the word ‘FERM’ occurs as part of certain bacteria strains in the Encyclopaedia, or that is commonly used for trade marks registered in Class 5, does not make it descriptive.

• Considering that the applicant has not furnished any proof that the relevant public has been exposed to widespread use of, or become used to trade marks consisting of ‘FERM’ and as a result perceive it as a descriptive term, the Board of Appeal should disregard the applicant’s argument in this respect and consider ‘FERM’ to have at least an average level of distinctiveness. In accordance with the contested decision, ‘FERM’ has no meaning to the relevant public.

• Irrespective of the nature of the term ‘FERM’, ‘DOXYFERM’ should be considered as a whole, as a distinctive sign with no meaning.

• Since the validity of the earlier mark should not be questioned and since the mark should not be dissected, the word element ‘FERM’ in its entirety should not be disregarded when evaluating the similarity between ‘DOXYFERM’ and ‘NOXIFERM’.

• The goods in question can be bought without prescription and could be sold in regular stores where the relevant public should be defined as the general public. In addition, even if the relevant public were considered to be made up of professionals this would not necessarily mean that the degree of attention is high.

• Even if the Board of Appeal found that the level of attention of the relevant public is particularly high with respect to the relevant goods, it would remain the case that the degree of attention of the relevant public cannot be solely relied upon to prevent confusion (judgment of 21/11/2013, T-443/12, ANCOTEL, EU:T:2013:605 § 53-56).

• Instead, all the other factors have to be taken into account. In this case the high similarity of the marks and the partial identity of the goods leads to the conclusion that there is a likelihood of confusion on the part of the public.

Reasons

12. The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.

Likelihood of confusion - Article 8(1)(b) EUTMR

13. Article 8(1)(b) EUTMR provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

14. The risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion.

15. The likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case (09/07/2003, T‑162/01, Giorgio Beverly Hills, EU:T:2003:199, § 30‑33).

16. Relevant public

17. As the earlier mark is a Swedish registration, the relevant territory is Sweden.

18. The relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods covered by the earlier mark and those covered by the mark applied for (see judgment of 01/07/2008, T-328/05, Quartz, EU:T:2008:238, § 23).

19. In the case at hand, as correctly stated by the Opposition Division, the goods are aimed, in part, at medical professionals and at the general public as end users.

20. The degree of attention will also vary from average to high depending on the exact nature, purpose and impact on health of the end consumer of the goods.

21. According to settled case-law, ‘medical and pharmaceutical preparations’, including ‘veterinary preparations’, whether or not issued on prescription, can be regarded as receiving a heightened degree of attentiveness, also by end consumers, as these goods affect their state of health (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 28; 15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26 and the jurisprudence cited there and 02/12/2014, T-75/13, Momarid, EU:T:2014:1017, § 41). The relevant public, both professionals and the public at large, are likely to display only an average degree of attention in relation to the rest of the contested ‘dietary supplements for animals’ in Class 5.

22. Comparison of the goods and services

23. In assessing the similarity of the goods and services, all the relevant factors relating to those goods should be taken into account, including, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account, such as the distribution channels of the goods concerned (11/07/2007, T-443/05, Pirañam, EU:T:2007:219, § 37), the usual origin and the relevant public of the goods or services.

24. The applicant’s argument that the relevant consumers will not confuse the contested goods with those of the earlier right, since the former are only for use for animals cannot be endorsed.

25. The contested decision rightly defined that the ‘medical and pharmaceutical preparations’ refers to any kind of medicine. According to the case-law, medicines have all the same nature (pharmaceutical products), purpose (treatment of human/animal health problems), consumers (medical professionals and patients) and distribution channels (typically pharmacies).

26. Therefore, the contested ‘veterinary preparations’ are included in the broader category ‘medical and pharmaceutical preparations’ for which the earlier mark is registered. Since, according to the case-law, there is identity between the goods when the contested goods are included in a broader category covered by the earlier mark, the Opposition Division correctly concluded that the goods in question are identical, (06/03/2015, T-257/14, BLACK JACK TM, EU:T:2015:141, § 26 and the case-law cited).

27. Since the identity between ‘medical and pharmaceutical preparations’ and ‘veterinary preparations’ is confirmed, the Board considers it unnecessary to further examine whether those goods are substitutable as the applicant contests, because the factor relating to whether goods are substitutable confirms only the similarity and not the identity between the goods/services.

28. It is true, that the ‘dietary supplements for animals’ are sold in special stores or special parts of stores with products for animals or through veterinarians. The purpose of those goods, as the Opposition Division correctly found, is to augment or supplement the nutritional value of an animal’s diet. Bearing this in mind, their purpose may be similar to that of the opponent’s ‘medical and pharmaceutical preparations’ (substances used to treat disease), insofar as they can be used to improve health; consequently, they may be complementary. These goods can have the same producers, relevant public and distribution channels. Therefore, they are considered similar.

Comparison of the marks

29. The conflicting marks have to be compared visually, phonetically and conceptually. Such a comparison must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 28; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).

30. As the earlier trade mark is a Swedish mark, the relevant public for assessing a likelihood of confusion between the marks consists, in principle, of consumers from Sweden.

Comparison of the marks

31. The signs to be compared are:

    DOXYFERM	NoxiFerm
    Earlier mark	Contested sign

32. The applicant argues that since ‘FERM’ is a common term in relation to pharmaceuticals, meaning ‘strain’, consequently this element must be disregarded as non-distinctive and the comparison should be made on the account of the remaining parts of the signs under comparison, namely ‘DOXY’ and ‘NOXI’.

33. The Board must reject this argument as unfounded.

34. In particular, the extract from the Pharmaceutical Manufacturing Encyclopaedia (annex 1), shows only that different strains of bacteria are identified by letters and numbers, such as ‘FERM-P-8778’; ‘ATCC-9036’.

35. In the Boards view, this evidence is not sufficient to prove that the letters ‘FERM’, will be understood as descriptive for the goods in conflict. It is true, that bacteria can cause severe diseases in humans and animals, and are treated with antibiotics which must be carefully aligned with the particular strain of bacteria. On the other hand, certain bacteria strains can be used for medical purposes as well.

36. ‘FERM’ however, constitutes only a part of the coding for known bacteria strains, what along with its Latin name, additional letters and numbers, all together forms the full indication of bacteria, for example: ‘Alcaligenes faecalis FERM-P 8030’.

37. It follows that the element ‘FERM’ has no meaning for the rest of the relevant part of the public, including the health professionals, because it does not suggest any specific meaning or resemble any word known to the relevant public.

38. Consequently, the signs will be perceived as a whole and will not be broken down into separate elements (judgment of 13/02/2007, T-256/04, ‘RESPICUR’, § 57).

39. Therefore visually, the signs are similar to the extent that they coincide in the sequence of letters ‘*OX*FERM’, that is they coincide in six out of eight letters. However, they differ in their first and fourth letters, ‘D’/‘N’ and ‘Y’/‘I’ of the earlier mark and the contested sign, respectively. The applicant’s argument that visually the signs are not similar, since ‘DOXYFERM’ is registered in capital letters cannot be upheld. As it is a word mark the term as such is protected. Thus the use of small or capital letters or a specific font is, in principle, not taken into account when determining the scope of protection of a word mark (20/04/2005, T‑211/03, Faber, EU:T:2005:135, § 33; 22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43 ; 25/06/2013, T‑505/11, dialdi, EU:T:2013:332, § 65).

40. Aurally, the Opposition Division correctly stated that pronunciation of the signs coincides in the sounds of the letters ‘*OX*FERM’, present identically in both signs, and the pronunciation is very similar in the sounds of the letters ‘Y’ and ‘I’ of the earlier mark and the contested sign, respectively; to that extent, the signs are aurally similar. The pronunciation differs in the sounds of the letters ‘D’ and ‘N’ of the earlier mark and the contested sign, respectively. The signs have the same numbers of syllables and the same intonations.

41. Conceptually, since elements ‘DOXY’ and NOXI’ have no meaning, in the light of the above assessment (paragraphs 32-37), the Board notes that none of the marks taken as a whole will have any meaning in relation to the goods for which they are applied. Therefore, conceptually the marks in question are not similar.

42. Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

Overall assessment of the likelihood of confusion

43. A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19).

44. The Board does not find any error in the Opposition Division’s evaluation of the global assessment of the likelihood of confusion.

45. The marks under comparison have no elements which could be considered clearly more distinctive or dominant than other elements. The distinctiveness of the earlier mark must be seen as normal.

46. The comparison of the marks ‘NoxiFerm’ and ‘DOXYFERM’ made in the contested decision has shown that they share important aural and visual similarities, notably their similar lengths, the common sequences ‘*OX*FERM’, and the letters ‘I’ and ‘Y’ which are in the same position and will be pronounced identically.

47. The most important differences lie in their first letters, ‘D’ and ‘N’ in the earlier mark and in the contested sign, respectively. It is true that consumers normally pay more attention to the beginning of a sign. However, this rule does not apply in all cases and has to be balanced with the general principle, according to which the overall impression caused by the signs has to be taken into account when examining their similarities (05/02/2016, T‑135/14, kicktipp / KICKERS et al., EU:T:2016:69, § 142; 21/01/2016, T-802/14, Lenah.C / LEMA, EU:T:2016:25, § 29; 23/04/2008, T‑35/07, Celia, EU:T:2008:125, § 37; 09/09/2008, T‑363/06, Magic seat, EU:T:2008:319, § 38; 23/09/2011, T‑501/08, See more, EU:T:2011:527, § 38).

48. In addition, it should be borne in mind that the fact that the relevant public will be more attentive to the identity of the producer or provider of the goods or service of which it wishes to avail does not mean, however, that it will examine the mark before it in in great detail or that it will undertake an in depth comparison to another mark. Even for a public with a high level of attentiveness, the fact remains that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (16/07/2014, T‑324/13, Femivia, EU:T:2014:672, § 48; 03/06/2015, T‑544/12, PENSA PHARMA, EU:T:2015:355, § 152).

49. The relevant public’s attentiveness in relation to the goods involved is average and high. However, given the similarity found between the marks and the identity and similarity between the goods concerned, the fact that the relevant public’s level of attention is above average is insufficient to exclude any likelihood of confusion, including the possibility that that public might believe that the goods at issue come from the same undertaking or, as the case may be, from economically linked undertakings.

50. Finally, the applicant makes reference to 61 EUTMs including the term ‘FERM’ registered inter alia for goods in Class 5. In that respect it should be noted, first, that those listed marks differ substantially to the ones in the present case, since the element ‘FERM’ appears at the beginning, or in the middle, or is included in a figurative element of the marks, whereas in only very few of those marks does it appears at the end of the signs. Some of the listed rights have expired, or have been withdrawn. Second, it should be notied that the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court which stated that it is settled case-law that the legality of decisions is to be assessed purely by reference to the EUTMR, and not the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr fur Ihr Geld).

51. Thus, in light of the foregoing, the Board confirms that there is a likelihood of confusion on the part of the public in the European Union.

52. Therefore, the appeal is dismissed.

Costs

53. Since the applicant is the losing party within the meaning of Article 85(1) EUTMR, it must bear the costs incurred by the opponent in the appeal proceedings and, as correctly decided by the Opposition Division, the same applies with regard to the costs incurred during the opposition proceedings.

Fixing of costs

54. In accordance with Article 85(6) EUTMR and Rule 94(6) and (7)(d)(i) and (vi) CTMIR, the Board fixes the amount of representation costs to be paid by the applicant to the opponent with respect to the appeal proceedings at EUR 550 whilst for the opposition proceedings it is fixed at EUR 300. The applicant also has to reimburse the opposition fee of EUR 350 paid by the opponent. The total amount is EUR 1 200.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the applicant to bear the costs of the appeal;

3. Fixes the amount of representation costs to be paid by the applicant to the opponent with respect to the appeal proceedings at EUR 550 whilst for the opposition proceedings it is fixed at EUR 300. The applicant also has to reimburse the opposition fee of EUR 350 paid by the opponent. The total amount is EUR 1 200.

Signed G. Humphreys

Signed V. Melgar

Signed A. Pohlmann

Registrar: Signed H.Dijkema