OPPOSITION No B 2 355 082

Tedec Meiji Farma, S.A., Carretera M-300, Km. 30,500, 28802 Alcala de Henares – Madrid, Spain (opponent), represented by Ryo Rodriguez Oca, S.L., Calle Juan Hurtado de Mendoza, 9 Apto. 507, 28036 Madrid, Spain (professional representative)

a g a i n s t

Pupil Foods Sp. z o.o., 3-go Maja 16, 63-460 Nowe Skalmierzyce, Poland (applicant), represented by Bartosz Olaf Baclawski,  ul. Marco Polo 1 m 66, 02-776 Warszawa, Poland (professional representative).

On 28/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 355 082 is upheld for all the contested goods, namely 

Class 5:        Veterinary products and preparations.

2.        European Union trade mark application No 12 250 569 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 12 250 569, namely against all the goods in Class 5. The opposition is based on Spanish trade mark registration No 1 816 915. 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.

1. The goods

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

Class 5:        Pharmaceutical and veterinary products.

The contested goods are the following:

Class 5:        Veterinary products and preparations.

Contested goods in Class 5

The contested veterinary products are identically contained in both lists of goods.

The contested veterinary preparations are included in the broad category of the opponent’s veterinary products. Therefore, they are identical.

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 identical are directed at both the public at large and veterinary professionals. Since these goods target both the general public and specialists, the likelihood of confusion will be assessed in relation to the general public, which is generally more prone to confusion. The degree of attention of the relevant consumer is likely to be at least above average, bearing in mind that they are goods that affect the state of health or at least the well-being of animals.

3. The signs

TELO	TEO
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).

The earlier sign is the wordmark ‘TELO’. The applicant argued that the word ‘telo’ is easily associated with ‘telecommunication’ or ‘telemarketing’. The applicant did not submit any proof that the word ‘telo’ would be associated with those terms. Furthermore,  according to the applicant, the word ‘telo’ is widely known in Spain as a family name, as for instance it is the surname of the (also in Spain) widely known singer – Michel Teló. It cannot be excluded that a part of the relevant public will understand the word ‘TELO’ as a surname. Even assuming that ‘TELO’, a prefix of Greek origin, is part of the medical vocabulary in English, the level of knowledge of English of the average Spanish medical professional is not sufficiently high to understand its meaning (see 23/09/2013, TELOMENS, R 1362/2012-5, § 21). Consequently, the general public will not perceive this meaning. However, the word ‘TELO’ has no meaning in relation to the relevant goods to the relevant general public in Spain and is, therefore, distinctive.

The contested sign is the wordmark ‘TEO’.  According to the applicant the word ‘teo’ is a prefix in many words of Latin origin, recognised in the Spanish language (‘theology’, ‘theocracy’). However, when the relevant consumer is confronted with word ‘TEO’ as such and in relation to the relevant goods, the sign will not be perceived as a prefix or as a surname by the relevant general public. Therefore, it is  distinctive.

Visually, the signs coincide in the letters ‘TE*O’, in other words they have an identical beginning ‘TE’ and an identical last letter ‘O’. They differ in the  third letter ‘L’ in the earlier mark which has no counterpart in the contested sign. Taking into account that the signs coincide in all the letters of the contested sign and three out of four of the earlier mark, placed in prominent positions in both signs, the signs are similar, at least, to an average degree.

Aurally, the pronunciation of the signs coincides in their identical beginnings ‘TE’ and in their identical last letters ‘O’.  Moreover, both sign will be pronounced in two syllables, TE/LO (earlier mark) and TE/O (contested sign). The pronunciation differs only insofar as the letter ‘L’ of the earlier sign has no counterpart in the contested mark. Therefore, the signs are aurally, at least, similar to an average degree.

Conceptually, although a part of the public in the relevant territory may perceive the meaning of the earlier mark, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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. 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 general public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods are identical to the opponent’s goods. The similarity between the signs results in particular from the fact that they have two identical initial letters and ending-letter.

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).

Bearing in mind that the signs have been found to be similar at least to an average degree and that the goods found to be identical, it is likely that the general public would perceive them as coming from the same or economically linked undertakings.

In its observations, the applicant argues that the conflicting signs were parts of many other trademarks assigned for marking products in class 05.

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

In the present case, the applicant solely made reference to the following sings:

• THEO, No-EUTM-010510551
• URO-TELO, No-M2704257 (Spain)
• TELOXIL, No-IR-703657
• TeloAid, No-IR-1242274.

However, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Considering all the above, especially bearing in mind the average degree of inherent distinctiveness of the earlier mark and that the goods were found to be identical, the Opposition Division finds that there is a likelihood of confusion on the relevant general public in relation to all the goods.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish national trade mark registration No 1 816 915.

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 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 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

Irina SOTIROVA

André Gerd Günther BOSSE

Plamen IVANOV

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.