OPPOSITION No B 2 632 134

Virbac, S.A, 1ère Avenue – 2065M – L.I.D., 06516 Carros, France (opponent), represented by Deprez Guignot & Associes, 21, rue Clément Marot, 75008 Paris, France (professional representative)

a g a i n s t

Vimar Gida Tarim Ve Hayvancilik Sanayi Ticaret Anonim Sirketi, Istanbul Anadolu Yakasi Organize Sanayi Bölgesi, Aydinli Mahallesi, 2. Sanayi Caddesi, No: 16, Tuzla –Istanbul, Turkey (applicant), represented by Silex IP, Poeta Joan Maragall 9, Esc. Izq., 3º Izq., 28020 Madrid, Spain (professional representative).

On 19/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 632 134 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services (in Classes 5, 31 and 35) of European Union trade mark application No 14 300 421 (figurative mark:
“”). The opposition is based on, inter alia, French trade mark registration No 1 318 195 (word mark: “VIRBAC”). The opponent invoked Article 8(1)(b) and 8(5) 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 1 318 195.

1. The goods and services

The goods in Class 5 on which the opposition is based are the following:

Class 5: Pharmaceutical, veterinary and sanitary products; dietetic products; disinfectants, preparations for destroying weeds and pests.

The contested goods and services in Classes 5, 31 and 35 are the following:

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; pharmaceuticals for human and animal health, chemical preparations for medical purposes; birth control pills, vaccines, serums, vitamins, diagnosis materials, radioactive materials for veterinary purposes, alcohol for veterinary purposes, animal sperm; gases for veterinary use, animal feed additive for use as a nutritional supplement for medical purposes; amino acids for veterinary purposes, bacterial and bacteriological preparations for veterinary purposes, blood substitute for veterinary use, chemical reagents for veterinary purposes, diagnostic preparations for veterinary use, enzymes for veterinary purposes, ferments for veterinary use, greases and petroleum jelly for veterinary purposes, stem cells for veterinary purposes, antioxidants for veterinary use; non-medical feed additives.

Class 31: Grains and agricultural, horticultural and forestry products; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals; malt; agricultural products, namely, unprocessed grains, wheat, barley, oats, corn, maize, rye; horticultural products, namely, fresh fruits and vegetables; fresh mushrooms, crop seeds, grass seeds, plant seeds, rye seeds, flower seeds, fruit seeds, vegetable seeds; live aquatic animals; eggs for hatching, fertilized eggs for hatching; live plants, namely, flowers, sod, grass, seedlings, saplings; dried plants, namely, dried flowers, dried flower wreaths, hay; animal feed; malt extracts for consumption by animals, namely, food for animals.

Class 35: Advertising; business management; business administration; office functions; the bringing together, for the benefit of others, of pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, dietetic food and substances adapted for medical or veterinary use, food for babies, dietary supplements for humans and animals, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of pharmaceuticals for human and animal health, chemical preparations for medical purposes, birth control pills, vaccines, serums, vitamins, diagnosis materials, radioactive materials for veterinary purposes, alcohol for veterinary purposes, animal sperm, gases for veterinary use, animal feed additive for use as a nutritional supplement for medical purposes, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of amino acids for veterinary purposes, bacterial and bacteriological preparations for veterinary purposes, blood substitute for veterinary use, chemical reagents for veterinary purposes, diagnostic preparations for veterinary use, enzymes for veterinary purposes, ferments for veterinary use, greases and petroleum jelly for veterinary purposes, stem cells for veterinary purposes, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of antioxidants for veterinary use, grains and agricultural, horticultural and forestry products, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt, agricultural products, namely, unprocessed grains, wheat, barley, oats, corn, maize, rye, horticultural products, namely, fresh fruits and vegetables, fresh mushrooms, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of crop seeds, grass seeds, plant seeds, rye seeds, flower seeds, fruit seeds, vegetable seeds, live aquatic animals, eggs for hatching, fertilized eggs for hatching, live plants, namely, flowers, sod, grass, seedlings, saplings, dried plants, namely, dried flowers, dried flower wreaths, hay enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of animal feed, malt extracts for consumption by animals, namely, food for animals, non-medical feed additives (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; all the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

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 and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will vary between average and high, because some of the goods and services will not be purchased on a daily basis and will be chosen carefully.

It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T 331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T 288/08, Zydus, EU:T:2012:124, § 36 and cited case-law). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

3. The signs

VIRBAC
Earlier trade mark	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 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 earlier word mark is protected in all different typefaces. The contested sign is a figurative mark. It consists of the word ‘VIMAR’, written in a special typeface and depicted in blue and green. The dot of the letter ‘i’ is depicted as a small letter ‘v’. The expression ‘ANIMAL HEALTH’ appears below the word ‘VIMAR’, in light grey letters.

The elements ‘animal health’ belong at least to the extended basic vocabulary of English and will, therefore, be associated with that meaning by a part of the public. Bearing in mind that the relevant goods and services include pharmaceuticals, food and bringing these goods together for the benefit of others, this element is non-distinctive for some of the relevant goods and services, such as pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use; the bringing together, for the benefit of others, of pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, dietetic food and substances adapted for medical or veterinary use. For the rest of the relevant public and for the remaining goods and services, it has a normal degree of distinctiveness.

The elements “Virbac” and “Vimar” of the signs have no meaning for the relevant public and are, therefore, distinctive.

The element ‘VIMAR” in the contested sign is the dominant element as it is the most eye-catching.

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).

Visually, the signs differ in the figurative elements of the contested sign, including their colours (see above). The elements ‘animal health’ are non-distinctive for a part of the public and, therefore, do not have a significant influence on the visual comparison. Even for the part of the public for which they are distinctive, they are less dominant (see above). The distinctive elements of the signs, ‘VIRBAC’ and ‘VIMAR’, are depicted differently, as the earlier mark is a word mark, whereas the element ‘VIMAR’ of the contested sign is depicted in a special typeface and in colour.’ They have different lengths, namely six letters in the earlier mark and five letters in the contested sign. Although the letters ‘VI*A’ are in the same order (the first two letters and the penultimate letter in each mark), their second parts are quite different, namely ‘RBAC’ in the earlier mark and ‘MAR’ in the contested sign. Therefore, the signs are visually similar at most to a low degree.

Aurally, the figurative elements of the contested sign will not be pronounced. The following syllables have to be compared:

Earlier trade mark = ‘VIR-BAC”;

Contested sign      = ‘VI-MAR-a-ni-mal-health”.

The number of syllables is clearly different: the earlier mark has two syllables, whereas the contested sign has six and sounds, therefore, much longer. Although ‘animal health’ is non-distinctive for a part of the public, it has to be taken into account to a certain degree. For the remaining part of the public, for which it is distinctive, the word combination leads to relevant aural differences. In its first syllable, the earlier mark has the additional letter ‘R’ at the end, which makes the sign sound longer, resulting in an aural difference from the earlier mark. The signs’ second syllables, ‘MAR’ and ‘BAC’, are composed of different letters, although the letter in the middle of these syllables, ‘A’, is the same. However, the other letters at the beginnings and ends of these syllables sound so different that they result in the signs having different structures, sounds, rhythms and intonations. Therefore, the signs are aurally similar only to a lower than average degree.

Conceptually, neither of the signs has a meaning as a whole. Although the word elements ‘animal health’ of the contested sign will evoke a concept for a part of the public, they are not sufficient to affect the outcome of the comparison, as this expression is non-distinctive and cannot indicate the commercial origin of any of the goods or services. Furthermore, it is less dominant in the sign and will not be taken into account by all consumers. For the rest of the public, this expression is meaningless and has no effect on the conceptual comparison, which is also the case for the other words in the signs, which have no meaning either. For part of the public and some of the goods and services, ‘animal health’ is distinctive, and in this case the signs are conceptually not 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’). The examination will proceed on the assumption that the earlier mark has enhanced distinctiveness.

5. Global assessment, other arguments and conclusion

The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 28; see also recital 7 of the EUTMR).

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

The contested goods and services have been assumed to be identical to the opponent’s goods. The signs are visually similar to a low degree, aurally similar only to a lower than average degree and conceptually not similar for some of the goods and services.

Taking into account the relevant visual, aural and (for some of the goods and services) conceptual differences between the signs, which have no conceptual similarities, their different structures and the at least average degree of attention of the relevant consumers, there is, even for goods and services assumed to be identical and even on the assumption that the earlier mark has enhanced distinctiveness, no likelihood of confusion. This will be even more the case when the public has a higher than average degree of attention.

The opponent refers to previous decisions of the Office to support its arguments. However, 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, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T 281/02, Mehr für Ihr Geld, EU:T:2004:198). Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings, because the signs and/or the goods and services are different and, therefore, not comparable.

Contrary to the opponent’s arguments, the differences between the signs are sufficient to prevent a likelihood of confusion. The public will not think that the signs come from the same undertaking or economically linked undertakings.

The opponent has also based its opposition on the following earlier trade marks:

• International registration No 793 769 (figurative mark: “) with designating Spain, Portugal, Austria, the United Kingdom, Italy, Benelux, Greece and Germany for goods and services in Classes 5, 38, 42 and 44. The opponent invoked Article 8(1)(b) EUTMR.
• International registration No 420 254 (figurative mark: “) with designating Austria, Lithuania, Romania, Bulgaria, Slovakia, Denmark, Hungary, Benelux, Finland, Germany, Slovenia and Sweden for goods in Class 5. The opponent invoked Article 8(1)(b) EUTMR.
• French trade mark registration No 3 121 529 (figurative mark:
  “ ”) for goods and services in Classes 5, 38, 42 and 44. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

Since these marks have additional differences from the contested sign owing to their figurative elements (and the colours used), the outcome cannot be more in favour of the opponent, even assuming that the marks have enhanced distinctiveness. Therefore, no likelihood of confusion exists as regards these earlier trade marks, even taking into account that the conceptual outcome might be different because the relevant public might understand the word combination ‘animal health’.

Therefore, the opposition must be rejected as not well founded under Article 8(1)(b) EUTMR.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

Likewise, even assuming that the earlier marks enjoy an enhanced distinctiveness due to extensive use, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of extensive use.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

•        The signs must be either identical or similar.

•        The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

•        Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T 345/08, & T 357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

•        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

•        it is detrimental to the repute of the earlier mark;

•        it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T 60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, apart from claiming a reputation and arguing that the signs are similar, the opponent did not submit any facts, arguments or evidence that could support the conclusion that use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C 375/97, Chevy, EU:C:1999:408, § 30).

As mentioned above, the opponent should have submitted evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

This is confirmed by Rule 19(2)(c) EUTMIR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

In the present case, the opponent merely claims that use of the contested trade mark would take unfair advantage of, and/or be detrimental to, the distinctive character or repute of the earlier trade mark. However, there seems to be no good reason to assume that use of the contested trade mark will result in any such events occurring. Although potential detriment or unfair advantage cannot be completely excluded, this is insufficient, as seen above.

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office restricts its examination to the facts, evidence and arguments submitted by the parties and the relief sought.

Given that the opponent could not establish that the contested sign would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier trade mark, the opposition is considered not well founded under Article 8(5) EUTMR.

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COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Alexandra APOSTOLAKIS

Peter QUAY

Denitza STOYANOVA-VALCHANOVA

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.