OPPOSITION No B 2 585 076

Virbac, S.A., 1ère Avenue - 2065M - L.I.D., 06516 Carros, France (opponent), represented by Currell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Aflofarm Farmacja Polska Sp. z o.o., Partyzancka 133/151, 95-200 Pabianice, Poland (applicant), represented by Aflofarm Farmacja Polska Sp. z o.o., Łukasz Pawlikowski, Partyzancka 133/151, 95-200 Pabianice, Poland (employee representative).

On 26/09/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 585 076 is partially upheld, namely for the following contested goods:

Class 3: Essential oils and aromatic extracts; Cleaning and fragrancing preparations; Animal grooming preparations; Toiletries.

Class 5: Dental preparations and articles; Pest control preparations and articles; Hygienic preparations and articles; Medical and veterinary preparations and articles; Dietary supplements and dietetic preparations.

2. European Union trade mark application No 14 275 416 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 14 275 416. The opposition is based on, inter alia, French trade mark registration No 1 591 456. The opponent invoked Article 8(1)(a) and (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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s French trade mark registration No 1 591 456.

1. The goods

The goods on which the opposition is based are the following:

Class 5: Pharmaceutical, veterinary and sanitary preparations, dietetic preparations.

The contested goods are the following:

Class 3: Essential oils and aromatic extracts; Cleaning and fragrancing preparations; Animal grooming preparations; Tailors' and cobblers' wax; Toiletries.

Class 5: Dental preparations and articles; Pest control preparations and articles; Hygienic preparations and articles; Medical and veterinary preparations and articles; Dietary supplements and dietetic preparations.

Class 29: Birds eggs and egg products; Dairy products and dairy substitutes; Oils and fats; Processed fruits, fungi and vegetables (including nuts and pulses); Fish, seafood and molluscs.

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

The contested cleaning and fragrancing preparatιons, animal grooming preparations, toiletries are similar to the opponent’s sanitary preparations as they have the same purpose. They can coincide in producer, relevant consumer and distribution channels.

The contested essential oils and aromatic extracts are similar to a low degree to the opponent’s sanitary preparations as they have the same purpose. They can coincide in the relevant consumers and method of use.

The contested tailors' and cobblers' wax are specialised products used by tailors and cobblers for their work. They are dissimilar to all the opponent’s goods in Class 5. They have a different nature, purpose and method of use. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods, their distribution channels and sales outlets are normally different.

Contested goods in Class 5

The contested dental preparations and articles are similar to a low degree to the opponent’s pharmaceutical preparations as they can coincide in the relevant consumer and distribution channels.

The contested pest control preparations and articles are similar to the opponent’s pharmaceutical preparations as they have the same purpose. They can also coincide in distribution channels and they are complementary.

The contested hygienic preparations and articles are synonymous to the opponent’s sanitary preparations. Consequently, they are identical.

The contested medical preparations and articles overlap with the opponent’s pharmaceutical preparations. Therefore, they are identical.

The contested veterinary preparations and articles are evidently identical to the opponent’s veterinary preparations.

Dietetic preparations are identically contained in both lists of goods.

The contested dietary supplements are included in the broad category of the opponent’s dietetic preparations. Therefore, they are identical.

Contested goods in Class 29

The contested goods in this class are common foodstuffs. They are dissimilar to all the opponent’s goods in Class 5 which are all health-related products. They have a different nature and purpose of use and mostly also the method of use. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods, their distribution channels and sales outlets are normally different.

In particular, the contested goods in Class 29 are dissimilar to the opponent’s dietetic preparations because the former are common foodstuffs whereas the latter are substances prepared for special dietary requirements with the purpose of treating or preventing a disease.

2. The signs

PREVENTIC	preventic
Earlier trade mark	Contested sign

The signs are identical.

The fact that the earlier trade mark is depicted in upper case and the contested sign in lower case has no bearing on the comparison of the marks, because both are word marks. Protection is therefore granted/sought for the word itself, and not for the particular way in which the mark is written.

3. Global assessment, other arguments and conclusion

The goods are partially identical, partially similar, partially similar to a low degree and partially dissimilar. The marks are identical.

The degree of attention of the public (which is high according to the applicant) is not relevant for the outcome in the present case because the marks are identical and even a highly attentive consumer will not be able to tell them apart.

The signs were found to be identical and some of the contested goods, namely hygienic preparations and articles; medical and veterinary preparations and articles; dietary supplements and dietetic preparations in Class 5, are identical. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these goods.

Furthermore, the contested goods essential oils and aromatic extracts; cleaning and fragrancing preparations; animal grooming preparations; toiletries in Class 3 and dental preparations and articles; pest control preparations and articles in Class 5 were found to be either similar or similar to a low degree to the goods covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against these goods.

The rest of the contested goods are dissimilar. As the identity/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.

The applicant’s argument that the opponent effectively produces only veterinary products is irrelevant because the task of the Office is to compare the goods as they appear in the respective lists of goods.

Moreover, the argument of the applicant relating to its registration and use of the mark ‘preventic’ in Poland is irrelevant in the present proceedings because these factual circumstances have no impact on the assessment of likelihood of confusion or double identity in the territory of France (the relevant territory in the present case).

The opponent has also based its opposition on the earlier international registration No 465 828 ‘PREVENTIC’ designating Spain, Portugal and Germany. Since this mark is identical to the one which has been compared and covers the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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

Marzena MACIAK

Vít MAHELKA

Julie GOUTARD

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 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 of appeal must 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.