OPPOSITION DIVISION

OPPOSITION No B 2 719 998

Z-Medica, LLC, 4 Fairfield Blvd., Wallingford Connecticut 06492, United States of

America (opponent), represented by Arnold & Siedsma, A.J. Ernststraat 595F, 1082

LD Amsterdam, The Netherlands (professional representative)

a g a i n s t

Zomedica Pharmaceuticals Inc., 3928 Varsity Drive, Ann Arbor Michigan 48108,

United States of America (applicant), represented by Lane IP Limited, 2

Class 5: Pharmaceutical preparations for animal use in the nature of

medications to treat or prevent diseases and infections, namely,

anti-parasitic drugs, anti-inflammatory medications, anesthetics,

pain medications, anti-infectives, antibiotics, and medications to

treat appetite disorders, allergies, anemia, behavioral disorders,

bone and joint diseases and disorders, cachexia, cancer,

cardiovascular disease, eye diseases and conditions, dental

diseases including tooth decay, gingivitis; Pharmaceutical

preparations for animal use in the nature of medications to treat or

prevent diseases and infections, namely, anti-parasitic drugs, anti-

animal use in the nature of medications to treat or prevent diseases

and infections, namely, anti-parasitic drugs, anti-inflammatory

medications, anesthetics, pain medications, anti-infectives,

antibiotics, and medications to treat musculoskeletal disorders,

obesity, pancreatitis, pain, respiratory and infectious diseases and

disorders, reproductive disorders, skin and tissue repair, urological,

urogenital and urinary disorders, and diseases associated with

aging in animals; Pharmaceutical preparations for animal skincare,

skin disorders, surgical incisions, wounds, bites, abscesses,

infections and post-surgery infections, and severe dermatological

Decision on Opposition No B 2 719 998 page: 2 of 12

suspensions, ophthalmic ointments for medical or veterinary use,

and eye drops; Dietary supplements for animals; Sanitary sterilizing

preparations; Diagnostic kits for veterinary use consisting of

reagents for use in disease testing; Protein arrays for diagnosing

cancer in animals; radiopharmaceutical imaging and detection

agents for diagnosing and monitoring cancer in animals;

Pharmaceutical and veterinary preparations for diagnosis of herpes

in cats, for treatment of canine parvo, feline aids, feline calici, feline

herpes, feline immunodeficiency diseases, and feline ocular

Class 44: Providing information and advice in the field of animal

pharmaceuticals; Pharmaceutical advice.

2. European Union trade mark application No 15 064 108 is rejected for all the

above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all of the goods and services of European

Union trade mark application No 15 064 108 for the figurative mark .

However, following a limitation of the extent of the opposition on 28/10/2016, at the

moment of taking this decision the opposition is directed against some of the goods

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.

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

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goods and services, the distinctiveness of the earlier mark, the distinctive and

dominant elements of the conflicting signs and the relevant public.

a) The goods and services

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

Class 5: Hemostatic agents used for treating wounds; wound dressings;

Class 10: Medical devices for use in the delivery of pharmaceutical preparations

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Class 41: Educational services, namely, providing classes, seminars and

Class 44: Providing information and advice in the field of animal

relationship of individual goods and services with broader categories, is exclusive

and restricts the scope of protection only to the specifically listed goods and services.

The applicant argues that, even though the comparison of goods and services is

done by reference to the specifications of the parties’ marks, this does not preclude

mark, and submits some extracts from the opponent’s website. Furthermore, to

the USPTO in respect of United States trade mark No 78 699 363 ‘Z-MEDICA’.

The Opposition Division notes that the comparison of the goods and services must

be based on the wording indicated in the respective lists of goods/services. Any

actual or intended use not stipulated in the list of goods/services is not relevant for

the comparison since this comparison is part of the assessment of likelihood of

confusion in relation to the goods/services on which the opposition is based and

directed against; it is not an assessment of actual confusion or infringement

(16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Therefore, the applicant’s

arguments must be dismissed.

The relevant factors relating to the comparison of the goods or services include, inter

The contested pharmaceutical preparations for animal surgical incisions, wounds,

bites overlap with the opponent’s hemostatic agents used for treating wounds, insofar

as both categories include pharmaceuticals with hemostatic properties for treating

incisions or (bite) wounds in animals. Therefore, they are identical.

The contested pharmaceutical preparations for animal use in the nature of

medications to treat or prevent diseases and infections, namely, medications [for]

skin and tissue repair in animals; pharmaceutical preparations for animal skincare,

skin disorders, abscesses, infections and post-surgery infections, and severe

dressings; bandages for dressings. They are directed at the same public and are

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The contested sanitary sterilizing preparations are commonly manufactured by the

same undertakings that offer the opponent’s wound dressings; bandages for

dressings. Such goods are directed at the same public and are distributed through

the same channels. Therefore, they are similar.

The contested dietary supplements for animals are substances prepared for special

dietary requirements, with the purpose of treating or preventing disease. Bearing this

in mind, their purpose is similar, broadly speaking, to that of the opponent’s

medications; antibiotics; medications to treat appetite disorders, allergies, anemia,

cancer; vaccines; hormones; ophthalmic preparations), testing preparations,

use consisting of reagents for use in disease testing; radiopharmaceutical imaging

and detection agents for diagnosing and monitoring cancer in animals), all being for

very specific pharmaceutical products used to stop bleeding, available in various

forms, for example, as a loose, granular powder, impregnated onto a bandage, or

retained inside a porous bag. The opponent’s goods have a similar nature and

purpose with the remaining contested goods in this class, in that they are specific

chemical products the purpose of which is, broadly speaking, healing and/or curing.

They are aimed at the same public and distributed through the same channels,

ranging from pharmacies to wholesale medical supplies outlets. They originate from

the pharmaceutical industry. However, the differences in the therapeutic indications

and possibly also the different methods of use have to be taken into consideration.

In view of the above, the Opposition Division finds that there is at least a low degree

of similarity between the opponent’s hemostatic agents used for treating wounds and

diseases including tooth decay, gingivitis, and to treat halitosis and periodontal

disease, diabetes, epilepsy, fungal diseases, gastrointestinal diseases and disorders,

hormonal disorders, immune system disorders, inappetence, infectious diseases,

kidney diseases, metabolic conditions, as well as to treat musculoskeletal disorders,

obesity, pancreatitis, pain, respiratory and infectious diseases and disorders,

reproductive disorders, urological, urogenital and urinary disorders, and diseases

associated with aging in animals; pharmaceutical preparations and substances for

veterinary use, namely, vaccines; pharmaceutical preparations for animal use,

namely, hormones; antiviral agents for medical or veterinary use; ophthalmic

ophthalmic suspensions, ophthalmic ointments for medical or veterinary use, and

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testing; protein arrays for diagnosing cancer in animals; radiopharmaceutical imaging

and detection agents for diagnosing and monitoring cancer in animals;

pharmaceutical and veterinary preparations for diagnosis of herpes in cats, for

treatment of canine parvo, feline aids, feline calici, feline herpes, feline

immunodeficiency diseases, and feline ocular disease.

Contested goods in Class 10

The contested medical devices for use in the delivery of pharmaceutical preparations

Contested services in Class 41

The contested educational services, namely, providing classes, seminars and

workshops in the field of animal pharmaceuticals, animal healthcare, and veterinary

academies, colleges etc. The opponent argues that consumers are likely to believe

professionals and students about their products and pharmaceutical products in

general. The Opposition Division notes that such educational programs rather are

advertising activities rendered for raising the professional public’s awareness of a

drug on the market and are aimed at promoting its sales. These services do not

constitute educational services that are provided to others, for a tuition fee. The

contested services have nothing relevant in common with the opponent’s

pharmaceutical products, aside from the coincidence in the subject matter. The

contested services have no relevant commonalities with the opponent’s materials for

dressings or first aid kits either, even though such goods are used as instructional

material during first aid training courses. The natures and purposes of these goods

and services are fundamentally different. They do not coincide in the usual origin or

distribution channels. They are neither complementary nor in competition. Therefore,

opponent’s hemostatic agents used for treating wounds in Class 5. Pharmacy advice,

including the provision of information, relates to informing individuals about

medication. It may be performed by a doctor or nurse or by a pharmacist. These

goods and service coincide in the distribution channels and relevant public.

Therefore, they are similar to a low degree.

However, the same findings do not apply to the remaining contested services,

namely providing information and advice in the field of animal healthcare, and

veterinary medicine, since they are quite distinct from the provision of pharmaceutical

when medical advice is required, consumers would visit a doctor. The contested

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different by natures and purposes, they do not originate from the same providers and

do not move through the same distribution channels. The mere fact that they can

coincide in the relevant public is not sufficient in itself for a finding of similarity.

Therefore, the contested providing information and advice in the field of animal

healthcare, and veterinary medicine are dissimilar to all of the opponent’s goods.

Remark on the comparison of goods and services

The parties refer to previous decisions of the Office to support their respective

Even though previous decisions of the Office are not binding, their reasoning and

outcome should still be duly considered when deciding upon a particular case. In the

present proceedings, as the specifications of the goods and services in question in

the previous cases are factually different. Therefore, the reasoning used in the

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.

In the present case, the goods and services found to be identical or similar are

directed at the public at large and at health-care professionals.

The relevant goods and services range from plain, inexpensive medical articles (for

example materials for dressings, disposable syringes) to pharmaceutical

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). 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 their

state of health, or that of their pets or livestock.

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c) The signs

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

the relevant public of the European Union is sufficient to reject the contested

application.

The element ‘Come full circle.’ of the contested sign is meaningful in certain

territories, for example, in those countries where English is understood. The

Opposition Division finds it appropriate to focus the comparison of the signs on the

English-speaking part of the public in the European Union.

The earlier mark comprises two elements, the letter ‘Z’ and the word ‘MEDICA’,

separated by a hyphen. However, none of them is more dominant than the other.

As regards the contested sign, it is co-dominated by the large and centrally

positioned figurative element (‘the clamshell device’ as referred to by the parties) and

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The applicant argues that the element ‘MEDICA’ will be well-known to consumers at

all levels to be a generic reference to the therapeutic properties of the goods and

services. The Opposition Division notes that whilst it cannot be denied that the word

‘MEDICA’ is derived from the same root as the words ‘medicine’, ‘medical’ etc., and

that in the context of the goods and services a part of the public may even recognise

a reference to the Latin expression ‘materia medica’ which refers to ‘the branch of

medical science concerned with the study of drugs used in the treatment of disease’

(www.collinsdictionary.com), the fact remains that the word ‘MEDICA’ as such is not

Since it can be reasonably assumed that the relevant public will perceive them as

fanciful, these elements enjoy an average degree of distinctiveness.

Although ‘the clamshell device’ of the contested sign is arbitrary and distinctive for

the goods and services at issue, its impact in the overall impression of the contested

of both verbal and figurative components, in principle, the verbal component of the

This is because the public does not tend to analyse signs and will more easily refer to

the signs in question by their verbal element than by describing their figurative

elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the letters ‘Z*MEDICA’. This sequence represents the

entirety of the graphemes constituting the earlier mark, and an overwhelming part of

the contested sign’s element ‘ZOMEDICA’, which does not feature any perceptible

stylisation. The earlier mark differs in that it consists of two elements separated by a

hyphen, and the contested sign differs in the additional letter ‘O’, the figurative

element and the tagline ‘Come full circle.’.

The shared letter sequence is not confined to the component that has limited

the contested sign’s figurative element and the low weight of the element ‘Come full

circle.’, the signs are similar to an average degree.

Aurally, the pronunciations of the signs coincide in the sound of the element

‛MEDICA’ and their first phonemes, namely the consonant /z/, notwithstanding the

fact that the beginning of the earlier mark may sound like /zed/, /zee/ etc., whereas

the contested sign begins with the sounds corresponding to the letters ‘ZO’.

The applicant argues that the public will immediately perceive that the earlier mark

word, juxtaposed with the relatively long expression ‘Come full circle.’. First, the