OPPOSITION No B 2 698 986
Pet King Brands, Inc., 710 Vandustrial Drive, Westmont Illinois 60559, United States of America (opponent), represented by Winter, Brandl, Fürniss, Hübner, Röss, Kaiser, Polte Partnerschaft Patent- Und Rechtsanwaltskanzlei, Alois-Steinecker-Str. 22, 85354 Freising, Germany (professional 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 30/06/2017, the Opposition Division takes the following
1. Opposition No B 2 698 986 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 15 039 993. The opposition is based on international trade mark registration No 871 232 designating the European Union. 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: Medicated ear drops for domestic animals.
The contested goods, after the applicant’s limitation of 21/10/2016, are the following:
Class 5: Veterinary preparations; veterinary preparations and animal health care products, including antibiotics for animals; nutritional supplements for veterinary use; dietetic substances for veterinary purposes; preparations for killing weeds and destroying vermin; vaccines for veterinary use; the aforesaid goods not including ear drops for animals.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘including’ (‘including antibiotics for animals’), 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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 preparations and animal health care products, including antibiotics for animals; the aforesaid goods not including ear drops for animals are similar to a high degree to the opponent’s medicated ear drops for domestic animals, since, albeit the limitation in the contested goods, they can coincide in producer, end user and distribution channels. Furthermore, they can have the same method of use and the same purpose.
The contested nutritional supplements for veterinary use; dietetic substances for veterinary purposes; vaccines for veterinary use; the aforesaid goods not including ear drops for animals are similar to the opponent’s medicated ear drops for domestic animals, since, albeit the limitation in the contested goods, they can coincide in producer, end users and distribution channels.
The contested preparations for destroying vermin; the aforesaid goods not including ear drops for animals are similar to the opponent’s medicated ear drops for domestic animals, as they have the same purpose that is preventing health problems in animals. They can coincide in distribution channels. Furthermore they are complementary.
The contested preparations for killing weeds; the aforesaid goods not including ear drops for animals are dissimilar to the opponent’s goods. The natures, purposes and methods of use of the contested goods are different from those of the opponent’s goods. They do not have the same distribution channels and they are not in competition. Furthermore, these goods are not usually provided by the same companies.
- 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 (to different degrees) are directed at the public at large as well as at business customers with specific professional knowledge or expertise.
It can be assumed that the specialised part of the relevant public will have a high degree of attentiveness with regard to all of the goods at issue since they are all related to the health of animals (13/05/2015, T-169/14, CHORAGON/ KORAGEL, EU:T:2015:280, § 37). Furthermore, products which affect the health of the consumers’ domestic animals, or even seek to protect their health, such as veterinary preparations, dietetic substances/nutritional supplements and preparations for destroying vermin will also receive a heightened level of attention from those same consumers. (13/05/2015, T-169/14, CHORAGON/ KORAGEL, EU:T:2015:280,, § 38-39)
Therefore, the degree of attention on the part of both professionals and public at large is high or relatively high for all of the goods at issue.
- The signs
Earlier trade mark
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).
When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.
The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).
In the present case, the signs as a whole have no meanings. However, the applicant argues that the element ‘MOX’ of the signs will be perceived as the common suffix referring to amoxicillin. It is indeed likely that the professional public will perceive such reference and this part of the signs is therefore weak for that public at least in relation to some of the goods such as veterinary preparations because it indicates their active ingredient.
However, the public at large will perceive the signs as a whole since the components of the signs do not suggest a specific meaning or resemble words known to them. For this part of the public the element ‘ZYMOX’ which forms the earlier mark has a normal degree of distinctiveness. This is also the case of the element ‘SUIMOX’ of the contested sign.
Consequently, in order to assess the case in the light which is more favourable to the opponent (while, as will be seen below, not harming the interests of the applicant), the Opposition Division will first examine the opposition in relation to the general public, for which the part ‘MOX’ of the signs is not weak.
Conceptually, as previously established, the public considered will not perceive any meaning in the signs. Therefore, neither of the signs has a meaning for the general 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.
Visually, the signs coincide in the sequence of letters ‘MOX’ at the end of both signs. However, they differ in the first part, namely ‘ZY’ of the earlier mark versus ‘SUI’ of the contested mark. It is important to remark the fact that the signs do not coincide in any letter at the beginning, since consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. The opponent’s argument that the three letters in common, namely ‘MOX’, will be particularly noticeable for the German, French and English-speaking public because the letter ‘X’ is not frequent in those languages must be set aside, since this letter is clearly part of the respective alphabets and its use is not particularly unusual, and at any rate not more unusual than the differing letters ‘ZY` at the beginning of the earlier mark.
Therefore, the signs are visually similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllable ‘MOX’, present identically at the end of both signs. In some languages, for instance in German, as the opponent alleges, the letters ‘Y’ and ‘I’ are pronounced the same and there is some commonality in the pronunciation of ‘Z’ and ‘S’ but the difference in the (more impacting) first syllables is nevertheless clearly audible in particular because of the additional sound of the letter ‘U’ in the contested sign.
Therefore, the signs are aurally highly similar.
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 claimed that the earlier trade mark enjoys enhanced distinctiveness, but did not file any evidence in order to prove such a claim.
It has to be clarified that the opponent’s evoked the strong distinctive character of the earlier mark but it did not explicitly claimed that the mark is particularly distinctive by virtue of intensive use or reputation and did not file any evidence in support of such claim.
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 at large in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks 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, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).
The contested goods are partly similar (to different degrees) and partly dissimilar to those of the earlier mark and they are directed, inter alia, at the public at large whose degree of attention is relatively high.
For this part of the public, the conceptual aspect is neutral as neither of the signs has a meaning and, from the visual point of view, the signs are similar but only to a low degree whereas from an aurally point of view they are similar to high degree. The distinctiveness of the earlier mark must be seen as normal.
The specific features of the conditions for the marketing of the goods at issue do not justify giving more importance in the present case to the aural comparison than to the visual comparison. As regards veterinary preparations available only on medical prescription, it should be observed that, since the trade mark of those preparations is written on a prescription by the prescribing doctor, the consumer is necessarily confronted with a visual representation of that mark before ordering them, in some circumstances orally, from a pharmacist.
Indeed the Court has established that it must be assumed that the goods at issue will generally be the subject, before their purchase, of a visual inspection on the part of the consumer when the professional from whom he ordered that product presents it to them. (13/05/2015, T-169/14, CHORAGON/ KORAGEL, EU:T:2015:280, § 79- 81).
In any event, account should be taken of the relatively high level of attention of consumers with regard to the goods in Class 5, independently of whether or not they are issued with a medical prescription, which weighs against a likelihood of confusion. Indeed, bearing in mind that the signs are visually similar to only a low degree and that the visual impression is not less important than the aural impression for such goods, the overall conclusion must be that there is no risk that the public will be led to believe that goods bearing the word mark SUIMOX come from undertakings which hold the earlier word marks ZYMOX or from an undertaking economically linked to them.
The opponent refers to previous judgements of the General Court to support its arguments (17/10/2006, T-483/04, GALZIN/ CALSYN; 21/09/2010, T-546/08, iGAY/ YGAY; 23/03/2012, T-157/10, ALIXIR/ELIXEER; 15/03/2012, T-288/08, ZYDUS/ZIMBUS). However, the Office is not bound by the previous judgements 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 (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198). Moreover, the cases mentioned are not sufficiently comparable with the present case to weigh significantly in favour of an identical outcome. In those cases, either the signs were found to be more similar visually/aurally or the goods disputed were not in Class 5 and the degree of attention of the public was not high.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘MOX’ is weak. This is because, as a result of the non-distinctive/weak character of that coinciding component, that part of the public, which also displays a high or relatively high degree of attention in relation to the goods at issue, will perceive the signs as being even less similar.
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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.