OPPOSITION No B 2 759 374

Lidervet, S.L., Plaza García Lorca, 15, 43006 Tarragona, Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

Benemilk Oy, Raisionkaari 55, 21200 Raisio, Finland (holder), represented by Heinonen & Co., Fabianinkatu 29 B, 00100 Helsinki, Finland (professional representative).

On 16/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 759 374 is upheld for all the contested goods, namely: 

Class 31:        Animal feed, except for pets, fish, other aquatic species and reptiles.

2.        International registration No 1 278 042 is refused protection in respect of the European Union for all of the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of international registration designating the European Union No 1 278 042 ‘PRIMAFEED’ (word), namely against all the goods in Class 31. The opposition is based on Spanish trade mark registration No 2 675 498 ‘PROMOFEED’ (word). 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

1. The goods

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

Class 31: Feed additives (other than for medical use).

The contested goods, after a limitation made by the holder, are the following:

Class 31: Animal feed, except for pets, fish, other aquatic species and reptiles.

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 31

‘Feed additives’ in general are products used in animal nutrition for purposes of improving the quality of feed and the quality of food from animal origin, or to improve the animals’ performance and health, e.g. providing enhanced digestibility of the feed materials (source: European Commission, available here https://ec.europa.eu/food/safety/animal-feed/feed-additives_en on 09/08/2017). Accordingly, feed additives (other than for medical use) of the earlier mark cover non-medicated supplementary animal nutrition products, aimed at improving the quality of animal food and/or contributing to the animal’s health and performance. Animal feed, except for pets, fish, other aquatic species and reptiles of the contested sign is a broad category, including all types of feed for animals, with the exception of feed for pets, fish, other aquatic species and reptiles. It follows that the goods of the earlier mark are in a complementary relationship with the holder’s goods, insofar as they form part of the nutritional diet of animals. As a result, the goods under comparison may target the same end consumers – farmers and breeders of animals, they may originate from the same manufacturers and may be sold via the same distribution channels – shops for animal-related products and farmer’s shops.

In view of the foregoing, the compared goods are considered similar.

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 similar are directed at professionals, such as animal breeders and farmers. These goods do not require an attention higher than the average, because they are every-day consumption goods for animals, which are not related or linked to a specific medical condition.

3. The signs

PROMOFEED	PRIMAFEED
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Even though trade marks are generally seen as a whole, consumers tend to split them into words that are known to them or suggest a concrete meaning. In the case at hand, it is possible that part of the consumers split the earlier sign into ‘PROMO’ and ‘FEED’, given that ‘promoción’ or the shorter version ‘promo’ will be understood as indicating a special offer of goods or services. Despite the relevant public being professionals, the meaning of the second element, which is the English word ‘FEED’, would not be grasped. Unlike in some other fields of industry where English terms related to the specific activity are commonly understood by professionals, agriculture is not a type of business where English and English words are commonly used. Another part of the public will not split ‘PROMOFEED’ and will perceive it as a single invented unit, which evokes no meaning or association at all. ‘PROMOFEED’ taken as a whole is an invented word and despite its first part which might be associated with a meaning by part of the public, has a normal degree of distinctiveness.

As for the contested sign ‘PRIMAFEED’, irrespective of whether the first part of the word ‘PRIMA’ is perceived with its meaning of a female cousin or not, which concept has no link to the goods at question, the word taken as a whole is an invented word which has a normal degree of distinctiveness in relation to the goods in question.

Visually, the signs are one-component word marks, composed of identical number of letters – nine, which coincide in six letters, positioned in the same sequence, namely ‘PR*M*FEED’. They differ in their third and fifth letters, which are the letter ‘O’ in both positions in the earlier sign and ‘I’ on the third place and ‘A’ in the fifth place in the contested one. It is considered that the identified differences in two letters do not outweigh the coincidences in the number and positioning of the remaining letters, which leads to a conclusion for an average degree of visual similarity.  

Aurally, the pronunciation of the signs coincides in the sound of ‘PR*M*FEED’ present identically in both signs. Taking into account that the signs have very similar structure, both being single word marks, consisting of the same number of sounds (nine) and syllables (four), they have (nearly) the same rhythm and intonation. The pronunciation differs in the third and fifth sounds of the signs, which is ‘O’ in the earlier sign and ‘I’ and ‘A’ in the contested one. Given the identity of six out of nine sounds, and the fact that the identical sounds are positioned in the same place, the signs are aurally similar to an average degree.

Conceptually, although the earlier mark and the contested sign taken as a whole has no meaning, as explained above it is possible that part of the public in the relevant territory links their first parts to specific concepts. Accordingly, for the part of the public which sees a meaning in the first part of the signs, they are conceptually not similar, while for the other part – a conceptual comparison is not possible to make.

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 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. As stated above in section c), the word ‘PROMOFEED’, which constitutes the earlier mark, may be split by part of the public and its first element ‘PROMO’ seen as invoking the concept of ‘a promotion, goods on offer’. However, the mark taken as a whole is an invented word without a meaning for the relevant public. Therefore, despite its weak first part, the mark taken as a whole will have a normal degree of distinctiveness.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

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).

It has been established that the goods in question are similar and that they are directed at professionals, who show an average degree of attention. The signs have been found to be visually and aurally similar to an average degree, and it has been concluded that conceptual comparison is not possible for part of the public and for another part – the signs are conceptually not similar. The earlier mark has a normal degree of distinctiveness for the goods at issue.

Upon taking into account all the above and the interdependence of the relevant factors, it is considered that the lack of conceptual similarity or the impossibility to compare the signs conceptually, may not outweigh the established aural and visual similarity of the signs and the similarity of the goods at issue. Accordingly, it is possible that when confronted with both signs for similar goods, the consumers believe that those branded with the contested mark come from the proprietor of the earlier mark. Hence it is considered that there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 675 498. It follows that the contested trade mark must be rejected for all the contested goods.

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

Since the holder 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Martin MITURA

Teodora TSENOVA-PETROVA

Vita VORONECKAITE

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.