BIMAGINE | Decision 2720855
Date Published: Sep 25, 2017
OPPOSITION No B 2 720 855
Urano Vet, S.L., Parque Empresarial Mas Blau I C/ Garrotxa, 10-12, 08820 El Prat de Llobregat (Barcelona), Spain (opponent), represented by Onofre Indalecio Sáez Menchón, Gran Via, 69 -5° Of. 510, 28013 Madrid, Spain (professional representative)
a g a i n s t
Cross Vetpharm Group Limited, Broomhill Road, Tallaght, Dublin 24, Ireland (applicant), represented by Anne Ryan & Co., 2 Crofton Terrace, Dun Laoghaire Dublin A96 V6P7, Ireland (professional representative).
On 19/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 720 855 is upheld for all the contested goods.
2. European Union trade mark application No 15 195 977 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 195 977. The opposition is based on European Union trade mark registration No 14 777 551. 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: Hygienic preparations and articles; Dental preparations and articles; Medical and veterinary preparations and articles; Pest control preparations and articles; Dietary supplements and dietetic preparations.
The contested goods are the following:
Class 5: Antimicrobial, antiseptic, disinfectant, hygiene and sanitary preparations and substances for use on or in connection with animals.
The contested hygiene preparations and substances for use on or in connection with animals are included in the broad category of the opponent´s hygienic preparations and articles as they are not limited to human use. Therefore, they are identical.
The contested sanitary preparations and substances for use on or in connection with animals overlap with the opponent´s hygienic preparations and articles. Therefore, they are identical.
The contested antimicrobial, antiseptic, disinfectant preparations and substances for use on or in connection with animals overlap with the opponent´s medical and veterinary preparations and articles, insofar as these categories include antimicrobial, antiseptic or disinfectant preparations and substances for veterinary use. Therefore, they are identical.
- 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 the public at large (e.g. pet owners) and at professionals in the fields of, for instance, veterinary medicine and livestock breeding.
The degree of attention varies from average to high, as these goods affect the state of animals’ health.
Given that the general public is more prone to confusion, the examination will proceed on this basis.
- The signs
IMAGINE | BIMAGINE |
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 common letter string “I-M-A-G-I-N-E” makes up a word which is meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English language-speaking part of the public.
The earlier mark is made up of the word “imagine”, which will be understood by the relevant public as an invitation to form a mental image, or use the imagination. As it is not descriptive, allusive or otherwise weak for the relevant goods, which are tangible and practical in their nature and application, it is distinctive.
The word “imagine” is entirely contained in the contested sign which contains an additional letter “B”. As this invented word is fanciful for the relevant goods, it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
Neither sign has a dominant element.
Visually, the signs coincide in the letter string “I-M-A-G-I-N-E”. They differ in the additional letter “B” of the contested sign. Even though this additional letter is at the beginning of the sign, it represents a difference of only one letter. The seven-letter string, common to both signs, renders the signs highly visually similar.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛“I-M-A-G-I-N-E”, present identically in both signs, and only differs in the consonant “B”. A sizeable proportion of the relevant public may pronounce the first two letters of the contested mark with an unstressed “i” sound, whereas another part of the public would enunciate the first syllable, “BI”, with a diphthong. In this case, the signs would share two out of three identical syllables. Therefore, the marks are aurally similar from an average to high degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The public in the relevant territory will perceive the meaning of the earlier mark, which is fully contained in the contested sign. To this extent, the signs are conceptually identical. The proportion of the population who may pronounce the beginning of the contested sign with a stressed “i” sound are likely to perceive the first two letters of the contested mark “bi” as carrying an additional meaning, referring to the concept of “both”. Even allowing for this possibility, the overriding concept “imagine”, which is common to both marks, renders the signs conceptually 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 mark as a whole has no meaning which is pertinent to the goods in question from the perspective of the public in the relevant language area. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
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).
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
As has been concluded above, the contested goods are identical to goods covered by the earlier trade mark. For the English-speaking part of the public, the signs are visually and conceptually highly similar, and similar to an average to high degree on an aural level. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness.
The striking visual and conceptual similarities between the signs can lead to a situation where the relevant public, when encountering the trade marks for identical goods, may think that the goods bearing the contested sign are offered under the main brand, being the earlier mark. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates.
The applicant argues that the letters “BIM” of the contested mark, will be recognised as a prefix associating the mark with the applicant company and its house brand BIMEDA. In its view, the professional consumer, when confronted with the contested mark, will have no difficulty perceiving the contested mark as a badge of the applicant´s origin. The applicant claims that its products under trade marks beginning with the prefix “BIM” have been used since 1998, in Nigeria, and since 2000 in Ireland. To support its claims, the applicant submits some pieces of evidence aimed at demonstrating that it owns a portfolio of “BIM” trade marks.
However, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts relating to the status or perception of a EUTM before the filing date of the EUTM are irrelevant. Therefore, the applicant’s arguments in that regard must be set aside.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the general 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. There is no need to analyse the remaining part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 777 551. It follows that the contested trade mark must be rejected for all the contested goods.
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
Solveiga BIEZA | Keeva DOHERTY | Natascha GALPERIN |
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.