OPPOSITION No B 2 740 820

Affinity Petcare, S.A., Plaça Europa 54-56, 08902 L´Hospitalet de Llobregat (Barcelona), Spain (opponent), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Yuri Gleba, Mühlweg 37, 06120 Halle (Saale), Germany (applicant), represented by SNP Schlawien Partnerschaft mbB, Kaiser-Joseph-Str. 260, 79098 Freiburg, Germany (professional representative).

On 28/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 740 820 is partially upheld, namely for the following contested goods:

Class 5:        Nutritional supplements; Dietary supplemental drinks; Medicated food supplements; Dietary supplements and dietetic preparations.

2.        European Union trade mark application No 15 349 905 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 15 349 905 ‘NOMAD’. The opposition is based on European Union trade mark registration No 13 606 199 ‘NOMAD’. The opponent invoked Article 8(1)(b)EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

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

Class 31:        Foodstuffs for animals; Preparations for use as additives for animal foods; Beverages for pets; Foodstuffs and fodder for animals; Proteins for pet food; Strengthening animal forage; Bedding and litter for animals; Malt.

The contested goods are the following:

Class 1:        Chemical additives for food.

Class 5:        Nutritional supplements; Dietary supplemental drinks; Medicated food supplements; Dietary supplements and dietetic preparations; Preparations for use as additives to food for human consumption [medicated].

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 1

The contested chemical additives for food are substances added to food to preserve flavour or enhance its taste, appearance, or other qualities. Although these substances could be used in the production of some of the opponent’s goods (e.g. preparations for use as additives for animal foods; beverages for pets; foodstuffs and fodder for animals; strengthening animal forage), they do not have the same nature or purpose as the contested goods. Chemical substances are used to give certain characteristics to a given product. On the other hand, the purpose of the opponent’s goods in Class 31 is to quench the thirst, feed and provide nutritional substances to animals.

The mere fact that one product is used for the manufacture of another is not sufficient in itself to show that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct (13/04/2011, T-98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51). According to case law, raw materials that are subject to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of their nature, aim and intended purpose (03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53).

Considering the large range of applications that the contested chemical additives for food could have, they cannot be considered to have the same public and distribution channels as the opponent’s goods either. Raw chemical material is in general intended for use in industry rather than for direct purchase by the final consumer. Consequently, they target different public and are manufactured by different producers. Finally these goods are neither in competition with each other nor complementary. Therefore the contested goods in Class 1 are considered dissimilar to the goods of the earlier mark.

Contested goods in Class 5

The contested medicated food supplements are preparations and articles for use in the treatment or prevention of diseases including animals and the contested nutritional supplements; dietary supplemental drinks; dietary supplements and dietetic preparations are broader categories that include dietary supplements and dietetic preparations for animals. There is some similarity between the contested goods that serve in general medical and dietary purposes and the opponent’s goods, which serve primarily nutritional purposes. Most of the contested goods can be used in combination, meaning that Class 5 goods can be combined (either by the manufacturer or by the purchaser of goods in Classes 5 and 31) with Class 31 goods. There is no significant difference in the way in which some of the goods under comparison (e.g. medicated food supplements and foodstuffs for animals) are used in order to achieve their purpose. Furthermore, their method of use (e.g. the oral administration) can be the same. The goods at issue target professionals for example in the field of animal farming or individual animal owners. In the case of the professionals, the purchasers, and the field in which those purchasers are active, are the same for both the contested and the opponent’s goods. In the case of individual animal owners, the end users are also the same. Furthermore, these goods are likely to be offered through the same specialised distribution channels such as whole sale distributors or pet shops. Even though they are usually of different natures, they can all be for animals and are often manufactured by the same companies. Therefore, the contested goods are similar at least to a low degree to the opponent’s foodstuffs for animals; preparations for use as additives for animal foods; foodstuffs and fodder for animals; proteins for pet food; strengthening animal forage.

With regard to the remaining goods in Class 5 (preparations for use as additives to food for human consumption [medicated]), they are goods that are added to foods and products consumed by humans. They are to be consumed alongside and in addition to a normal diet in order to supplement and enhance the effectiveness of a medical treatment. The opponent’s goods in Class 31 are goods that are specifically intended to feed animals as the main staple food source in their diet.

The goods differ in their intended purpose, with the earlier goods being the main, essential dietary foodstuff for animals, and the contested goods being added and consumed supplementary to a normal diet by humans. Furthermore, the goods are produced by different commercial undertakings, aimed at different customers and sold through different channels of trade. The goods are not complementary or in competition because a human wishing to supplement its diet would not consume an animal foodstuff, and in reverse a human wishing to feed an animal would not use a human food supplement. The goods are therefore considered to be dissimilar.

2. The signs

NOMAD	NOMAD
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The signs are identical and a part of the contested goods were found to be similar to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion even when the goods are similar to a low degree within the meaning of Article 8(1)(b) EUTMR and the opposition must be upheld for these goods. The rest of the contested goods are dissimilar. As the 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 will 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

Loreto URRACA LUQUE

Arkadiusz GORNY

Judit NÉMETH

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.