OPPOSITION No B 2 670 928
Dr. Werner Freyberg Chem. Fabrik Delitia Nachf. Verwaltungsgesellschaft mbH, Werner-Freyberg-Str. 11, 69514 Laudenbach, Germany (opponent), represented by Claudia Bettendorf, Bierstadterstraße 7, 65189 Wiesbaden, Germany (professional representative)
a g a i n s t
XeLyse, 1/3 ul.Smulikovskiego str.of 1, 00389 Warsaw, Poland (applicant).
On 14/03/2017, the Opposition Division takes the following
- Opposition No B 2 670 928 is partially upheld, namely for the following contested goods:
Class 3: Animal grooming preparations.
Class 5: Veterinary preparations and articles: Pest control preparations and articles.
2. European Union trade mark application No 14 844 971 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 844 971, namely against some of the goods in Classes 3, 5 and 10. The opposition is based on German trade mark registration No 1 061 475. 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.
- The goods
The goods on which the opposition is based are the following:
Class 5: Means for extermination of harmful animals and for defence against animals i.e. vole gas, vole bait, snail grait, anteater, and bait as well as means for defence against dogs, cats, rabbits; as well as disinfection agents, anti-moth agents and air cleaning means.
On 18/04/2016, the applicant made a limitation of the application, although this had no effect on the scope of the present opposition; therefore, the contested goods are the following:
Class 3: Animal grooming preparations; Essential oils and aromatic extracts.
Class 5: Hygienic preparations and articles, veterinary preparations and articles: Pest control preparations and articles.
Class 10: Veterinary apparatus and instruments.
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 animal grooming preparations have an aesthetic function, which is to impart a scent to animals’ bodies, whereas the opponent’s means for extermination of harmful animals and for the defence against animals have the purpose of avoiding or preventing infections, diseases or plagues. Despite their differences, these goods have the same distribution channels, relevant public and producers. Therefore, they are similar to a low degree.
The essential oils and aromatic extract are deemed dissimilar to the opponent’s means for extermination of harmful animals and for the defence against animals, as they have different natures and purposes and the relevant consumers would not expect them to originate from the same undertaking. They are not in competition with each other and they are not interchangeable.
Contested goods in Class 5
The contested pest control preparations and articles are included in the broad category of, or overlap with, the opponent’s means for extermination of harmful animals and defence against animals. Therefore, they are identical.
The contested veterinary preparations and articles may be used in the health care sector, veterinary clinics, consulting rooms, etc. They are used to prevent the risks to human or animal health posed by the species whose elimination is sought. As such, these goods and the opponent’s means for extermination of harmful animals and defence against animal have similar medical purpose of improving animal health and well-being. Furthermore, the goods in question may be sold through the same distribution channels (veterinary pharmacies). Therefore, the goods are similar.
The contested hygienic preparation and articles are different tools and implements for human or animal grooming. These goods are not sufficiently related to the opponent’s goods in Class 5, as the goods in question have different natures and intended purposes and different methods of use. Furthermore, they are not in competition with each other. The mere fact that the contested goods could be related to animal care is not sufficient for a finding of similarity. Therefore, they are dissimilar.
Contested goods in Class 10
The contested medical and veterinary apparatus and instruments are machines and apparatus for surgical/medical uses and, for that reason; they are not sufficiently related to the opponent’s goods in Class 5. The goods in question have different natures and intended purposes and different methods of use. Furthermore, they are neither in competition nor complementary. In addition, they do not have the same distribution channels or producers. Therefore, they are dissimilar.
- 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 at the public at large and at customers with specific knowledge or expertise in the health care field (e.g. veterinary preparations in Class 5 may target both average consumers and veterinary professionals).
The degree of attention varies from average to higher than average, depending on the exact nature and purpose of the goods and the health effects that they may have.
- The signs
Earlier trade mark
The relevant territory is Germany.
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 signs are both words marks. The earlier mark is composed of the verbal element ‘DELU’ and the contested sign is composed of the verbal element ‘DEFLU’. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in upper or lower case letters, or in a combination thereof. Neither of the signs has a meaning in the language of the relevant territory. As the elements of the signs are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive.
Visually and aurally, the signs coincide in the letters ‘DE*LU’ and differ only in the letter ‘F’ in the middle of the contested sign. The signs have the same vowels in the same order and positions (the second and last letters), which means that the signs have the same rhythm and intonation. Consequently, the signs are visually and aurally similar to a high degree.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
- 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
The contested goods are partly identical, partly similar to various degrees and partly dissimilar to the opponent’s goods.
The signs in dispute are visually and aurally similar to a high degree because of the letters that the signs have in common, ‘DE*LU’, which constitute the entire earlier mark and account for four out of the five letters of the contested sign. Neither of the signs has a meaning for the relevant public; therefore, there are no conceptual differences between the signs that could result in a difference in their overall impressions. The earlier mark has an average degree of distinctiveness, which affords it a normal scope of protection.
Even though the goods found identical and similar may target professionals with a higher degree of attention (veterinary surgeons), the differences between the signs are too insignificant to dispel and exclude the likelihood of confusion.
The difference in a single letter is not sufficient to overcome the fact that the four letters that make up the earlier mark are also present in the same order and positions in the contested sign, especially taking into account the fact that the average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (222/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, §26).
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore, the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 1 061 475.
It follows from the above that the contested trade mark application must be rejected for the goods found to be identical and similar. Furthermore, given the high degree of visual and aural similarity between the signs, this is also the case for those goods found similar to only a low degree.
The rest of the contested goods are dissimilar. As similarity of goods is necessary condition for the application of 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
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
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.