OPPOSITION No B 2 666 850
Virbac Ltd., Woolpit Business Park, Windmill Avenue, Woolpit, Bury Saint Edmunds, IP30 9UP, United Kingdom (opponent), represented by Atipic, 31 Boulevard, Malesherbes, 75008 Paris, France (professional representative)
a g a I n s t
Greencoat Ltd., Unit 4/5 Wonastow Road Industrial Estate West, Monmouth, Wales, NP25 5JA, United Kingdom (applicant), represented by Nigel Brooks, Hill Hampton, East Meon, Petersfield GU32 1QN, United Kingdom (professional representative).
On 14/03/2017, the Opposition Division takes the following
1. Opposition No B 2 666 850 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods of European Union trade mark application No 14 821 722. The opposition is based on the UK trade mark registration No 2 589 184. 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 goods
The goods on which the opposition is based are the following:
Class 5: Veterinary Products.
The contested goods are the following:
Class 5: Nutritional and dietetic supplements for animal feedstuffs; topical preparations for animals; veterinary preparations; veterinary supplies; supplements and additives, all for foodstuffs for animals.
Class 31: Foodstuffs for animals.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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 5
The contested veterinary preparations; veterinary supplies are included in the broad category of the opponent’s veterinary products. Therefore, they are identical.
The contested topical preparations for animals are included in the broad category or overlap with the opponent’s veterinary products. Therefore, they are identical.
The contested nutritional and dietetic supplements for animal feedstuffs; supplements and additives, all for foodstuffs for animals are similar to the opponent’s veterinary products. They have a similar purpose, that is to improve animal health, and may coincide in distribution channels, relevant public and producers.
Contested goods in Class 31
The contested foodstuffs for animals are dissimilar to the opponent’s veterinary products in Class 5 since they have a different nature and purpose, they will normally be manufactured by different companies and will be found in different retail outlets. These goods are neither complementary nor are they in competition with each other and their method of use will normally differ.
- 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 and similar are directed at both the public at large and at a professional veterinary public with specific professional knowledge or expertise.
The degree of attention is considered to be high for both publics given that the goods will affect the health of the animals they are intended for.
- The signs
Earlier trade mark
The relevant territory is the UK.
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 protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (judgment of 22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters.
For word marks, the visual comparison is based on an analysis of the number and sequence of the letters/characters, the position of the coinciding letters/characters, the number of words and the structure of the signs (e.g. whether word elements are separated or hyphenated).
The contested sign is made up of two words. ‘Cani’ alludes to ‘Canine’ (relating to dogs) and will be perceived by the relevant consumer whose attention is high. Bearing in mind that the relevant goods are veterinary supplies, this element is weak. The word ‘Skin’ has a clear meaning in English and in relation to the goods at issue would also be weak for goods relating to skin or skin complaints.
The earlier mark is a single fanciful word ‘CANIXIN’ that has no meaning as a whole in English and so is distinctive. Although the mark also contains the string of letters ‘C-A-N-I’, the consumer has no reason to split the mark up here and so will not perceive it as an independent element within the mark. However the allusion to canine will not go unnoticed given the nature of the goods at issue.
Visually, the signs coincide in the weak element ‘CANI’. They differ in the second part of the signs; ‘Skin’ as against ‘XIN’ that end in the same two letters ‘IN’.
Although consumers read from left to right and therefore tend to focus on the beginning of a sign when confronted with a trade, in this case the difference in the structure of the marks is significant and will distract their attention from the coincidence at the start of the signs which, in any case, relates to a weak component. The earlier mark is made up of one word that the consumer will perceive as fanciful, albeit alluding to canine, and the contested sign is made up of two words, both of which are weak.
This difference in structure is an important visual differentiating factor. Despite the coinciding letters of the signs, consumers will pay less attention to this as the differences outweigh the similarities.
Therefore, the signs are visually similar to a below average degree.
Aurally, the signs coincide in the first two syllables ‘CA-NI’ which constitutes a weak element and in the pronunciation of the last two letters ‘IN’. They differ in the sound of the fifth letter of the earlier mark ‘X’ whose counterpart in the contested sign is ‘SK’ at the start of the second verbal element.
The difference in the structure of the signs affects the intonation and rhythm when pronounced: ‘CA-NIX-IN’ as against ‘Can-i-Skin’.
Therefore the signs are aurally similar to an average degree.
Conceptually, the signs coincide in the weak element ‘CANI’. They differ with respect to the clear meaning of the second verbal element of the contested mark ‘Skin’ whose counterpart in the earlier sign ‘XIN’ has no meaning.
Therefore the signs are conceptually similar to a low degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
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.
- Global assessment, other arguments and conclusion
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.
In the present case the goods are identical, similar and dissimilar. The signs are conceptually similar to low degree, visually similar to a below average degree and aurally similar to an average degree. The earlier mark enjoys a normal level of distinctive character and the level of attention of the relevant public is high.
The consumer will take the earlier mark as a word with no meaning as a whole and the allusion to canine will be a secondary consideration given that ‘CANI’ is integrated into the meaningless word ‘CANIXIN’ and not as apparent as in the case of the contested sign where ‘Cani’ is a separate verbal element. In addition the word ‘Skin’ of the contested mark will be immediately understood and its combination with the separate word ‘Cani’ will no doubt evoke the concept of dog skin.
As mentioned above the structure of the signs is markedly different and this, combined with the above-mentioned conceptual difference, overshadows the similarities between the signs which are either based on a weak element or are secondary within the overall impression given by the signs.
The differences between the marks are of such a nature that the signs can be distinguished effectively. Consumers will not think that the goods and services concerned originate from the same or from economically-linked undertakings.
Considering all the above, for the goods found to be similar and even for those goods found to be identical, there is no likelihood of confusion on the part of the public, in particular because the level of attention is high. Therefore, the opposition must be rejected.
The rest of the contested goods are dissimilar. As 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.
For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical and the goods are not all identical.
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
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.