OPPOSITION DIVISION
OPPOSITION No B 2 772 583
Grindeks, akciju sabiedrība, Krustpils iela 53, Rīga, 1057, Latvia (opponent),
represented by Grindeks, akciju sabiedrība, Indra Jonane- Osa, Krustpils iela 53,
Riga, 1057, Latvia, (employee representative)
a g a i n s t
Virbac, S.A, 1ère Avenue – 2065M – L.I.D., 06516 Carros, France (applicant),
represented by Atipic, 31 Boulevard Malesherbes, 75008 Paris, France (professional
representative).
On 19/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 772 583 is upheld for all the contested goods.
2. European Union trade mark application No 15 460 017 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 320.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 460 017. The opposition is based on Latvian trade mark
registration No M 54 325 and European Union trade mark registration No 9 784 513.
The opponent invoked Article 8(1) (a) and (b).
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of
filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so
requests, the opponent must furnish proof that, during the five-year period preceding
the date of publication of the contested trade mark, the earlier trade mark has been
put to genuine use in the territories in which it is protected in connection with the
goods or services for which it is registered and which the opponent cites as
justification for its opposition, or that there are proper reasons for non-use. The
earlier mark is subject to the use obligation if, at that date, it has been registered for
at least five years.
Decision on Opposition No B 2 772 583 page: 2 of 7
The same provision states that, in the absence of such proof, the opposition will be
rejected.
In the present case, no explicit request of proof of use was made by the applicant.
However, the opponent filed evidence of use on its own motion attached to its letter
of 07/02/2017. This evidence was, furthermore, contested by the applicant in its reply
on 18/04/2017. The Opposition Division notes that when the opponent spontaneously
sends evidence of use before the applicant’s first opportunity to file arguments and,
in its first reply, the applicant challenges the evidence of use filed by the opponent
(12/06/2009, T-450/07, Pickwick Colour Group, EU:T:2009:202), this is seen as an
implicit request of proof of use and as an exception to the rule of that the applicant
must make a request of proof of use that is clear and unconditional.
Nevertheless, the date of filing of the contested trade mark is 23/05/2016. The
opponent’s European Union trade mark registration No 9 784 513 was registered on
26/07/2011. Therefore, it had not been registered for more than five years prior to the
filing date of the contested application and is, consequently, not under use obligation.
Therefore, the request for proof of use is inadmissible as regards the earlier EUTM.
The Opponent Division will in the following examine the opposition in relation to the
opponent’s earlier European Union trade mark registration, which is not subject to
proof of use.
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 European Union trade mark registration No 9 784 513.
a) The goods
The goods on which the opposition is based are the following:
Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for
medical purposes; dietetic substances adapted for medical use, food for babies;
plasters, materials for dressings; material for stopping teeth, dental wax;
desinfectants; preparations for destroying vermin; fungicides, herbicides.
Decision on Opposition No B 2 772 583 page: 3 of 7
On 15/11/2016 the applicant requested a limitation of the goods, which was accepted
by the Office.
Therefore, the contested goods are the following:
Class 5: Veterinary preparations, including antiparasitic preparations for
animals; sanitary preparations for veterinary purposes; dietetic substances for animal
nutrition; disinfectants for veterinary use, none of the aforesaid goods being for use
by humans and being solely for animals, except piglets.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The term ‘including’, used in the applicant’s list of goods, indicates that the specific
goods are only examples of items included in the category and that protection is not
restricted to them. In other words, it introduces a non-exhaustive list of examples
(09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
A pharmaceutical preparation (medicine) refers to any kind of medicine, that is, a
substance or combination of substances for treating or preventing disease in people
or animals.
The contested veterinary preparations, including antiparasitic preparations for
animals, none of the aforesaid goods being for use by humans and being solely for
animals, except piglets, are included in the broad category of veterinary preparations
of the opponent. They are identical.
The contested sanitary preparations for veterinary purposes, none of the aforesaid
goods being for use by humans and being solely for animals, except piglets are
included in the broad category of the opponent’s sanitary preparations for medical
purposes, since the latter refers to sanitary preparations for both people and animals.
Therefore, these goods are identical.
Dietetic substances adapted for medical use are substances prepared for special
dietary requirements, with the purpose of treating or preventing disease in people
and animals. Therefore, the contested dietetic substances for animal nutrition, none
of the aforesaid goods being for use by humans and being solely for animals, except
piglets are included in the broad category of the opponent’s dietetic substances
adapted for medical use. Therefore, they are identical.
The contested disinfectants for veterinary use, none of the aforesaid goods being for
use by humans and being solely for animals, except piglets are included in the broad
category of the opponent’s disinfectants. Therefore, they are identical.
b) 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.
It is apparent from the case-law that, insofar as pharmaceutical preparations,
whether or not issued on prescription, are concerned, the relevant public’s degree of
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attention is relatively high (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 the state of health of humans or animals.
c) The signs
SANERGY SPINAL SENERGY
Earlier trade mark Contested sign
The relevant territory is the European Union.
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 unitary character of the European Union trade mark means that an earlier
European Union trade mark can be relied on in opposition proceedings against any
application for registration of a European Union trade mark that would adversely
affect the protection of the first mark, even if only in relation to the perception of
consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,
EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
The verbal elements ‘SANERGY’ and ‘SENERGY’ will be perceived with no meaning
by the relevant public, whereas ‘SPINAL’ (the earlier mark) will be perceived as
meaningful in those countries where English is understood, as ‘relating to the spine’.
Consequently, the Opposition Division finds it appropriate to focus the comparison of
the signs on the English-speaking part of the public, since for this part of the public
the signs are more similar overall.
Bearing this in mind, the words ‘SANERGY’ and ‘SENERGY’ are of normal
distinctiveness. However, ‘SPINAL’ in the earlier mark will be perceived by the public
taken into consideration as descriptive and non-distinctive for goods such as
veterinary preparations (since it merely indicates that the goods are medicines for
treating the spine). The word ‘SPINAL’ may not be descriptive for goods such as
disinfectants and sanitary preparations. Nevertheless, since spinal or the spine refers
to a large part of the body, ‘SPINAL’ will at most be perceived as an element of
weakened distinctiveness for the goods at issue, which are all related to the medical
field.
Visually and aurally, the contested sign, ‘SENERGY’ and the initial element of the
earlier mark, ‘SANERGY’, coincide in the string of letters ‘S-*-N-E-R-G-Y’ and differ
only in that their second letters (‘A’ and ‘E’) will be read and pronounced differently. It
is true that the additional word ‘SPINAL’ also will be read and pronounced in the
earlier mark. However, ‘SPINAL’ is either non-distinctive or an element of weakened
distinctiveness for the goods at issue. Therefore, it will have less impact on the
Decision on Opposition No B 2 772 583 page: 5 of 7
comparison of the signs (if any at all). In addition, ‘SPINAL’ is the second element of
the earlier mark and will be given less notice by the consumers, since they read from
left to right and will, generally, pay more attention to the initial element of a sign (i.e.
the element placed on the left). Therefore, the signs are visually and aurally similar to
an average degree.
Conceptually, as mentioned above, neither ‘SANERGY’ nor ‘SENERGY’ convey any
concept. However, ‘SPINAL’ in the earlier mark will be perceived as a non-distinctive
and/or weak element for the goods, since it may refer to that the goods are intended
for treating medical issues relating to the spine. Therefore, since one of the signs will
not be associated with any meaning, the signs are conceptually not similar for the
English-speaking part of the public.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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, despite the presence of a non-distinctive and/or weak element in the sign, as
mentioned above in section c) of this decision.
e) Global assessment, other arguments and conclusion
According to settled case-law, the risk that the public might believe that the goods or
services in question come from the same undertaking or, as the case may be, from
economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998,
C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the
public must be appreciated globally, taking into account all factors relevant to the
circumstances of the case (see Canon, § 16).
In addition, the global assessment of the risk of confusion entails certain
interdependence between the factors taken into account and, in particular, between
the similarity of the trademarks and the similarity of the goods or services covered.
Accordingly, a low degree of similarity between those goods or services may be
offset by a high degree of similarity between the marks, and vice versa (23/10/2002,
T-6/01, Matratzen, EU:T:2002:261, § 25).
In the present case, the goods are identical. The signs are visually and aurally similar
to an average degree and conceptually not similar. It is true that the relevant public’s
degree of attention is considered to be relatively high. However, even consumers
who pay a higher degree of attention need to rely on their imperfect recollection of
trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54). Moreover, in this
case the goods are identical while the signs’ most distinctive elements (‘SANERGY
Decision on Opposition No B 2 772 583 page: 6 of 7
and ‘SENERGY’) only differ in one letter. In addition, the differing word ‘SPINAL’ of
the earlier mark is placed at the second position and will be perceived as either non-
distinctive or weak by the English-speaking part of the public. Therefore, the
Opposition Division finds that the signs’ differences cannot outweigh their similarities
and makes in this regard reference to the principle of interdependence (as explained
above).
The applicant argues that the suffix ‘NERGY’ is ‘widely used’ and is commonly used
for goods in Class 5: ‘there are some 200 EU Trade Marks in the register- and is
therefore weakly distinctive’. Moreover, the applicant considers that the initial element
‘SAN’ of the earlier mark is ‘without any doubt’ referring to ‘the Latin word SANAE
(health)’.
The Opposition Division notes that the applicant has not provided any evidence that
can support its claims, for example, evidence demonstrating that there are
approximately 200 EU trade marks used in the market including the suffix ‘NERGY’,
and, that this suffix will be perceived as weak by the relevant public. It is not excluded
that ‘SAN’ may be perceived as associating to ‘sanae’ and health by some
consumers, for instance, by a part of the professional part of the public.
Nevertheless, and as stated above in section c) of this decision, neither the word
‘SANERGY’ in the earlier mark nor ‘SENERGY’ (the contested sign) has a known or
existing meaning in English as a whole. There is no reason to assume that the term
‘SANERGY’ as a whole would be dissected into two parts by the majority of the
consumers, since the ending ‘ERGY’ is meaningless for the English-speaking
consumers. Therefore, the applicant’s arguments must be set aside.
Finally, the applicant makes reference to an exhibit that shows one draft of a contract
and one of a letter of consent, attached to its letter of 18/04/2017. When assessing
likelihood of confusion, the Office’s policy is that coexistence agreements may be
taken into account like other relevant factors, but they are not in any way binding for
the Office. In the present case, the Opposition Division cannot take these documents
into account since they are not signed by the parties.
Considering all the above, there is a likelihood of confusion on the part of the
English-speaking part of the public. As stated above in section c) of this decision, a
likelihood of confusion for only part of the relevant public of the European Union is
sufficient to reject the contested application.
As the earlier European Union trade mark registration No 9 784 513 leads to the
success of the opposition and to the rejection of the contested trade mark for all the
goods against which the opposition was directed, there is no need to examine the
other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo
Media, S.L., EU:T:2004:268).
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 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Decision on Opposition No B 2 772 583 page: 7 of 7
Since the applicant 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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. In
the present case, the opponent did not appoint a professional representative within
the meaning of Article 120 EUTMR and therefore did not incur representation costs.
The Opposition Division
Boyana NAYDENOVA Christian RUUD Begoña URIARTE
VALIENTE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.