OPPOSITION No B 2 711 771
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
Laboratoire M2 Inc., 4005-A Rue De La Garlock, Sherbrooke Québec J1L 1W9, Canada (holder), represented by Mark & Law, 7 Rue Des Aulnes – Bâtiment B, 69410 Champagne Au Mont D’or, France (professional representative).
On 31/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 711 771 is partially upheld, namely for the following contested goods:
Class 5: Disinfectants for veterinary use; viricide antiseptics, bactericides, sporicides and fungicides; all-purpose disinfectants; all-purpose disinfectants for the hospital and pharmaceutical fields; germicide; all of the aforementioned to the exception of goods related to the treatment of diseases of the central nervous system.
2. European Union trade mark application No 15 227 499 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 227 499, namely against all the goods in Classes 3 and 5. The opposition is based on international trade mark registration No 871 232 designating 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.
In accordance with the limitation in the list of goods requested by the applicant on 08/07/2016 and accepted by the Office, the contested goods are the following:
Class 3: Detergents for household use; all-purpose cleaning preparations.
Class 5: Disinfectants for veterinary use and for use in the food, agricultural, livestock farming industries and in industrial, commercial and residential industries; viricide antiseptics, bactericides, sporicides and fungicides; all-purpose disinfectants; all-purpose disinfectants for the hospital and pharmaceutical fields; odor neutralizing preparations for general use on various surfaces; germicide; all of the aforementioned to the exception of goods related to the treatment of diseases of the central nervous system.
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 detergents for household use and all-purpose cleaning preparations are dissimilar to the opponent’s goods. These goods differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition and do not target the same consumers.
Contested goods in Class 5
The contested disinfectants for veterinary use, all-purpose disinfectants and all-purpose disinfectants for the hospital and pharmaceutical fields; all of the aforementioned to the exception of goods related to the treatment of diseases of the central nervous system have the same purpose, namely to cure or prevent diseases, as the opponent’s medicated ear drops for domestic animals. They commonly have the same distribution channels and originate from the same manufacturers that operate in the field of health-care supplies. Moreover, they target the same relevant public. Therefore, they are highly similar.
The contested disinfectants for use in the food, agricultural, livestock farming industries and in industrial, commercial and residential industries; all of the aforementioned to the exception of goods related to the treatment of diseases of the central nervous system are dissimilar to the opponent’s medicated ear drops for domestic animals as they differ in their purpose, method of use, distribution channels and producers. Moreover, these goods are neither complementary nor in competition with each other.
The contested viricide antiseptics are types of antiseptics that are used to destroy virus particles and are usually applied to living tissue to reduce the possibility of infection. The contested bactericides are the substances that kill bacteria, namely disinfectants, antiseptics and antibiotics. The contested sporicides are the substances that kill spores, as of bacteria. The contested fungicides generally refer to any active ingredient used to kill parasitic fungi, including animal fungal infections and therefore have, inter alia, a medical or therapeutic purpose. The contested germicides are the substances or other agents which destroys harmful microorganisms. These goods might have the same purpose, namely destroy the bacteria or infections, as the opponent’s medicated ear drops for domestic animals. They commonly have the same distribution channels and originate from the same manufacturers that operate in the field of health-care supplies. Moreover, they target the same relevant public. Therefore, even with the exception of goods related to the treatment of diseases of the central nervous system, they are highly similar.
The contested odor neutralizing preparations for general use on various surfaces; all of the aforementioned to the exception of goods related to the treatment of diseases of the central nervous system are dissimilar to the opponent’s goods as they differ in their purpose, distribution channels and points of sale. They are neither complementary nor in competition and do not target the same consumers.
- 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 highly similar are either directed at both the professional public and the public at large, or specifically at professionals with specific professional knowledge or expertise.
It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (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). This applies analogically to the veterinary preparations, where consumers tend to have a higher degree of attention, as these goods affect the state of health.
- The signs
| ZYMOX
|
THYMOX
|
|
Earlier trade mark |
Contested sign |
The relevant territory is 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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.
The marks are both word marks, consisting of the word ‘ZYMOX’ in the earlier mark and the word ‘THYMOX’ in the contested sign.
Conceptually, neither of the signs has a meaning for the relevant public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
Following the above, the signs are distinctive.
Visually, the signs coincide in the letters ‘**YMOX’, which are present in the same order in both marks and are creating their endings. However, they differ in the first letter ‘Z’ in the earlier mark and the letters ‘TH’ in the contested sign placed in the first and second position.
Therefore, they are visually similar to an average degree.
Aurally, the signs coincide in the sound of the letters ‘**YMOX’. Moreover, the pronunciation of the first letter of the earlier mark, ‘Z’, and the first two letters of the contested sign, ‘TH’, may produce relatively similar sounds.
Therefore, the signs are aurally similar to a high degree.
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 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 likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
In the present case, the contested goods are highly similar to the opponent’s goods and they target public at large and professional. The degree of attention in relation to the goods in question is high. The marks were found to be visually similar to an average degree and aurally similar to a high degree. The conceptual aspect of the marks does not influence the outcome.
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). Even consumers who pay a high 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).
Considering the above and the fact, that the main difference between the signs lie in the one letter in earlier mark and two letters in contested sign, and from the aural aspect, the signs are almost identical, it is highly conceivable that the relevant consumer will perceive that the goods in question marked with the signs in question come from the same undertaking or from economically linked undertakings.
Consequently, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s international trade mark registration. 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.
It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
COSTS
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 will 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
| Steve HAUSER |
Begoña URIARTE VALIENTE |
Pedro JURADO MONTEJANO |
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.