OPPOSITION No B 2 682 436

Virbac, S.A, 1ère Avenue - 2065M - L.I.D., 06516 Carros, France (opponent), represented by Atipic, 31 Boulevard Malesherbes, 75008 Paris, France (professional representative)

a g a i n s t

Tama Plastic Industry, Kibbutz Mishmar, 19236 Ha'Emek, Israel (applicant), represented by Taylor Wessing, Isartorplatz 8, 80331 München, Germany (professional representative).

On 08/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 682 436 is upheld for all the contested goods.

2. European Union trade mark application No 14 906 317 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 14 906 317 ‘FARM PACK‘. The opposition is based on, inter alia, international trade mark registration No 1 184 718 designating the European Union. 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 international trade mark registration No 1 184 718 designating the European Union.

1. The goods

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

Class 5: Veterinary products; veterinary preparations; sanitary products for veterinary use; dietetic products for animals; disinfectants; preparations for weed and pest control, herbicides, pesticides, fungicides.

Class 10: Backpacks for distributing veterinary products; backpacks for transporting and distributing veterinary products; pouches of plastic containing products for veterinary use.

Class 16: Bags; packaging of plastic.

Class 18: Backpacks.

The contested goods are the following:

Class 16: Packaging and wrapping materials; plastic materials for packaging and wrapping.

Class 22: Netting, net wrapping, ropes, twines, threads, strings, awnings, tarpaulins, all for packaging and wrapping, all made of non-metallic materials.

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.

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.

Contested goods in Class 16

The contested packaging and wrapping materials include, as broader categories, or overlap with, the opponent’s packaging of plastic in Class 16. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested plastic materials for packaging and wrapping and the opponent’s packaging of plastic in Class 16 designate in essence the same goods and are, therefore, identical.

Contested goods in Class 22

The contested netting, net wrapping, ropes, twines, threads, strings, awnings, tarpaulins, all for packaging and wrapping, all made of non-metallic materials are goods used for packaging and wrapping, the same as the opponent’s packaging of plastic in Class 16. Consequently, they have the same purpose of use. Furthermore, they target the same public and are in competition as they satisfy the same needs. Consequently, they are considered similar.

The applicant argues that the contested goods in Class 22 are dissimilar to the opponent’s goods. It claims that the opponent’s trade mark does not cover Class 22 which indicates that the goods are dissimilar. However, as already mentioned above,

according to Article 33(7) EUTMR, goods cannot be regarded as being dissimilar from each other on the ground that they appear in different classes under the Nice Classification. Hence, this argument of the opponent must be rejected.

Furthermore, the applicant asserts that the contested goods are used for wrapping other goods whereas the opponent’s trade mark enjoys protection basically for backpacks for distributing veterinary products which have a completely different purpose. In relation to this it must be noted that the task of the Opposition Division is to compare all the goods of both parties as they appear in the respective lists and not only the specific goods for which the marks are allegedly or actually used (except when proof of use comes into question which is however not the case here). Although the earlier trade mark covers backpacks for distributing veterinary products in Class 10, it also covers packaging of plastic in Class 16 which was found similar to the contested goods in Class 22 for the reasons mentioned above. The fact that these contested goods might be dissimilar to other opponent’s goods, such as backpacks for distributing veterinary products, is irrelevant for the outcome of the present decision.

The applicant also argues that the goods are not in competition because they serve completely different needs and are not interchangeable. This might be true when comparing the contested goods in Class 22 with the opponent’s backpacks for distributing veterinary products in Class 10. However, comparing the contested goods in Class 22 with the opponent’s packaging of plastic in Class 16, it results that they serve the same needs (namely packaging/wrapping) and are indeed interchangeable as the same goods or objects can be wrapped with the opponent’s or the applicant’s wrapping products.

For all the above reasons, the applicant’s arguments claiming the dissimilarity of the contested goods in Class 22 must be set aside.

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 are directed both at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is likely to be average.

3. The signs

	FARM PACK
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The earlier mark contains the words ‘FARM’ and ‘PACK’ depicted in blue and white, respectively, an image of a house or shelter on the left, an image of a walking person on the right and a thin green line at the bottom of the mark. The whole is encased in an orange rectangle.

The contested sign is the word mark ‘FARM PACK’.

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘PACK’ is not meaningful in certain territories, for example in those countries where English, French or Spanish is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the EU public speaking Slavic, Baltic and Finno-Ugric languages (such as the public speaking Czech, Slovak, Lithuanian or Estonian), for which the word referred to is perceived as a meaningless term.

The word ‘FARM’ included in both marks does not exist as such in the relevant languages. However, it will be perceived as an allusion to a ‘farm’ or to something ‘pharmaceutical’ (due to the existence of similar equivalent words, for example ‘farma‘ or ‘farmaceutický‘). Since the relevant goods of both parties can be used for packaging or wrapping of pharmaceutical or farm products, this element is considered to be weak for the relevant public because it alludes to the kind of the goods or their purpose of use.

The element ‘PACK’ included in both marks has no meaning for the relevant public and is, therefore, distinctive.

The stylised image of a house/shelter and the image of a walking person in the earlier mark have no clear meaning in relation to the relevant goods and are, therefore, distinctive.

The green line at the bottom of the earlier mark and the orange background of the mark are relatively simple geometrical elements depicted in common colours which play only a decorative role. Consequently, they are weak.

The earlier mark has no element that could be considered clearly more dominant than other elements.

Contrary to the applicant’s opinion, it is not considered that the figurative elements of the marks are the dominant elements overshadowing the verbal elements ‘FARM PACK’. This is because the elements ‘FARM PACK’ are written in relatively large and clearly legible characters which occupy a space which is comparable to the other elements of the mark.

Furthermore, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Consequently, the significance of the coinciding elements ‘FARM PACK’ is heightened on account of the fact that they are the only verbal elements of the marks.

Visually, the signs coincide in the elements ‘FARM’ and ‘PACK’ which are depicted in a standard script in the contested sign and in fairly common upper-case letters in the earlier mark. These coinciding words are the only elements of the contested sign and the only verbal elements of the earlier mark. The words are clearly visible and legible in the earlier mark. On the other hand, the marks differ in all the figurative elements of the earlier trade mark (described in detail above) which have no counterpart in the contested sign.

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

For the above reasons, it is not considered that the additional figurative elements of the earlier mark change the overall visual impression of the mark, as claimed by the applicant. The coinciding words ‘FARM PACK’ are not overshadowed by the additional figurative elements of the mark.

Aurally, the pronunciation of the signs totally coincides in the sound of the letters ‘FARM PACK’. Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be associated with the same allusive meaning of ‘FARM’. The earlier mark contains, in addition, the concepts of a house/shelter and a walking person. Consequently, the signs are conceptually similar to a low degree.

On the whole, the overall impressions created by the marks are considered to be similar. 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 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 argues that its company is well-known worldwide and that some of the opponent’s goods, including ‘FARM PACK’, have obtained awards. These arguments could be interpreted as a claim of enhanced distinctiveness of the earlier trade mark. However, for reasons of procedural economy, this claim and the evidence filed by the opponent to prove this claim (a link to a website) do not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The marks are visually similar to an average degree, conceptually similar to a low degree and aurally, the marks are identical. The goods are partly identical and partly similar.

The relevant public consists of both the public at large and professionals. Their level of attention will be average. The degree of inherent distinctiveness of the earlier mark is average.

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). In the present case, the public is likely to perceive the contested sign as a variant of the earlier trade mark, based on the same core verbal element ‘FARM PACK’.

The applicant refers to previous judgments of the General Court (‘Paloma’ and ‘Sulayr’) confirming that there cannot be likelihood of confusion where the relevant goods/services are dissimilar. However, these judgments are irrelevant for the present proceedings because the goods in this case are partly identical and partly similar. Therefore, due to the different scenarios involved in the case referred to and this one, the same reasoning cannot be expected to be followed and/or the same outcome reached.

Considering all the above, there is a likelihood of confusion on the part of the EU public speaking Slavic, Baltic and Finno-Ugric languages (such as the public speaking Czech, Slovak, Lithuanian or Estonian). 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 international trade mark registration No 1 184 718 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the above earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Saida CRABBE

Vít MAHELKA

María del Carmen SUCH SÁNCHEZ

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.