PlanVet | Decision 2177809 - SaluVet GmbH v. Plandent Oy

Date Published: Oct 1, 2017

OPPOSITION No B 2 177 809

SaluVet GmbH, Stahlstraße 5, 88339 Bad Waldsee, Germany (opponent), represented by Dr. Hahn & Kollegen, Zeppelinstr. 128, 70193 Stuttgart, Germany

(professional representative)

a g a i n s t

Plandent Oy, Asentajankatu 6, 00880 Helsinki, Finland (applicant), represented by Krogerus Attorneys Ltd, Unioninkatu 22, 00130 Helsinki, Finland (professional representative).

On 09/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 177 809 is upheld for all the contested goods, namely  

Class 5:        Asthmatic tea; Disinfectants for hygiene purposes; Animal washes; Pharmaceutical preparations for treating dandruff; Pharmaceutical preparations for skin care; Bath preparations, medicated; Therapeutic preparations for the bath; Medicines for dental purposes; Articles for headache; Headache pencils; Preparations for the treatment of burns.

2.        European Union trade mark application No 11 549 433 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 11 549 433 namely against some of the goods in Class 5.  The opposition is based on European Union trade mark registration No 1 816 362 and the German trade mark registration No 1 142 889. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION – GERMAN TRADE MARK REGISTRATION No 1 142 889

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered - Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier German registration No 1 142 889 on which the opposition is based.

On 17/06/2013 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit has been extended and expired on 02/12/2013.

The opponent did not submit any evidence concerning the substantiation of its German earlier trade mark.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must, therefore, be rejected as unfounded, as far as it is based on this earlier right.

Preliminary remarks

On 17 June 2015, the opponent filed an appeal against the decision on opposition B 2 177 809 of 07/05/2015 requesting that the decision be set aside. On 24/08/2016, the Fifth Board of Appeal, in its decision R 1157/2015-5 annulled the contested decision and remitted the dossier to the Opposition Division to reconsider the case.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely European Union trade mark registration ‘PlantaVet’ No 1 816 362 and the German registration ‘PLANTAVET’ No 1 142 889.

As it has been established above, the German earlier right has not been substantiated and, therefore, the Opposition Division will analyse the proof of use submitted by the opponent only with regard to the European Union trade mark registration ‘PlantaVet’ No 1 816 362.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.

The contested application was published on 08/03/2013. The opponent was, therefore, required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 08/03/2008 to 07/03/2013 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 5:        Medical preparations, in particular veterinary preparations.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 02/10/2013, according to Rule 22(2) EUTMIR, the Office gave the opponent until 02/12/2013 to submit evidence of use of the earlier trade mark. On 02/12/2013, within the time limit, the opponent submitted the following evidence of use:  

Invoices show the mark ‘PlantaVet’

• Item 1 – Customer invoice of 07/07/2008, Germany, for the total amount of EUR 367, 38.
• Item 2 – Customer invoice of 17/02/2009, Germany, for the total amount of EUR 169, 12.
• Item 3 – Customer invoice of 19/10/2010, Germany, for the total amount of EUR 712, 57.
• Item 4 – Customer invoice of 04/07/2011, Germany, for the total amount of EUR 121, 86.
• Item 5 – Customer invoice of 14/12/2011, Germany, for the total amount of EUR 182, 25.
• Item 6 – Customer invoice of 24/09/2012, Germany, for the total amount of EUR 710, 67.
• Item 7 – Customer invoice of 15/02/2013, Germany, for the total amount of EUR 232, 29.

Delivery note

• Item 8 – Delivery note to HLZLogistik in Germany, 12/03/2009

Advertisements in magazines show the earlier mark ‘PlantaVet’ on different veterinary preparations.

• Item 9 – Advertisement in the magazine ‘Der praktische Tierarzt‘ (The common veterinary surgeon), Germany, dated 07/2008.

• Item 10 – Advertisement in the magazine ‘Der praktische Tierarzt‘ (The common veterinary surgeon), Germany, dated 10/2008.

• Item 11 – Advertisement in the magazine ‘Deutsches Tierärzteblatt’ (German magazine for veterinary surgeons) Germany, dated 07/2010.

• item 12 – Advertisement in the magazine ‘Deutsches Tierärzteblatt’ (German magazine for veterinary surgeons), Germany, dated 03/2011.

• item 13 – Advertisement in the magazine ‘Deutsches Tierärzteblatt’ (German magazine for veterinary surgeons), Germany, dated 07/2011.

• item 14 – Advertisement in the magazine ‘ Pferdespiegel’, Germany, dated 04/2012.

• item 15 –  Advertisement in the magazine ‘veterinärSPIEGEL’ (Veterinary mirror), Germany, dated 04/2012.

• item 16 – Advertisement in the magazine ‘Der praktische Tierarzt‘ (The common veterinary surgeon), Germany, dated 12/2012.

• item 17 – Advertisement in the magazine ‘Der praktische Tierarzt‘ (The common veterinary surgeon), Germany, dated 02/2013.

• item 18 – Advertisement in the magazine ‘Der praktische Tierarzt‘ (The common veterinary surgeon), Germany, dated 04/2013.

• item 19 -  Advertisement in the magazine ‘Deutsches Tierärzteblatt’ (German magazine for veterinary surgeons), Germany, dated 05/2013.

• item 20 - Advertisement in the magazine ‘Deutsches Tierärzteblatt’ (German magazine for veterinary surgeons), Germany, dated 09/2013.

Pricelists show the earlier mark ‘PlantaVet’ on the bottom of the covers.

• items 21-23a – show the covers of the pricelists of the opponent in the period from 2008-2013.

Advertising folders showing the earlier mark ‘PlantaVet’ in relation to different veterinary preparations.

• item 24 – ‘PhlogAsept Konzentrat’, Germany, regarding a  preparation for local treatment of skin and mucous membranes of animals.

• item 25 –  ‘EquiPulmin liquid’, regarding a preparation for convalescence for horses.

• item 26 –  ‘Restitutionsfluid plus’, regarding a preparation to improve the circulation of the blood and to warm the muscles.

• item 27 – ‘Atemwegstherapie’, regarding a preparation for the therapie of the respiratory tracts for animals in case of Rhinitis, Laryngitis, Bronchitis, Pneumonia.

• item 28 –  ‘PlantaPulmin basic’, regarding a preparation to improve the digestion and in case of metabolic disturbance for animals.

• item 29 – ‘VulnoPlant Huf-und Klauenspray’, regarding a preparation for the treatment of injury of hoofs and claws of animals.

• item 30 – ‘ContrAcar Pet’, regarding a preparation against lack of silicic acid and calcium of skin and ankle of animals.

• item 31 –  ‘’PlantaSil’, regarding a preparation against lack of silicic acid and calcium of skin and ankle animals.

• item 32 –  ‘Renes/Viscum cop. PLV’, regarding a preparation for the treatment of chronic renal insufficiency for cats.

• Item 33 – ‘Hepar com PLV’, preparation for the treatment of diseases of the liver for animals.

• Item 34 - ‘Gesunderhaltung und Terapie der Leber beim Kleintier’, preparation to improve the functions of the liver for pets.

• Item 35 - ‘PlantaFerm-KT’, preparation to ease acute resorption disturbances of peristalsis.

• item 36 -  ‘RevivoVet’, preparation to sustain the breathing of animals.

• Item 37 – ‘PlantaVet’, an advertising leaflet to introduce the undertaking of the opponent with its veterinary products Phytopharmaka.

• item 38 – ‘HeparCheval’, regarding the preparation to improve the health of animals.

• Item 39 – Gesunderfaltung und Therapie des Verdauungsapparates’, regarding preparations to treat and to improve the digestive system for horses.

Statutory Declaration

• Item 40 – Affidavit of Dr. Sandra Graf-Schiller, Managing Director of PlantaVet GmbH, 26/11/2013, Germany.

Packages and labels show the earlier mark ‘PlantaVet’ in relation to various veterinary products.

• item 41 –  Folded box ‘VulnoPlant’, dated 01/04/2008

• item 42 –  Folded box ‘VulnoPlant’, dated 26/11/2008

• Item 43 –  Folded box ‘PhlogAsept’, dated 16/12/2009

• Item 44 – Label ‘VulnoPlant Huf-und Klauenspray’, dated 06/12/2010

• Item 45 - Folded box ‘PlantaMun’, dated 21/06/2011

• item 46 -  Folded box ‘CaniPulmin’, dated 13/02/2012

• Item 47 – Folded box ‘Coffea praeparata oral’, dated 27/02/2013

If the earlier mark is a European Union mark, it must be used ‘in the European Union’ (Articles 15(1) and 42(2) EUTMR). Following the judgment of 19/12/2012, C-149/11, ‘Leno’, Article 15(1) EUTMR must be interpreted as meaning that the territorial borders of the Member States should be disregarded when assessing whether a CTM (EUTMR per analogy) has been put to ‘genuine use’ in the Community (European Union, per analogy), (19/12/2012, C-149/11, ‘Leno’, EU:C:2012:816, § 44).

In territorial terms and in view of the unitary character of the European Union trade mark, the appropriate approach is not that of political boundaries but of market(s). Moreover, one of the aims pursued by the European Union trade mark system is to be open to businesses of all kinds and sizes. Therefore, the size of an undertaking is not a relevant factor to establish genuine use.

As the Court indicated in ‘Leno’, it is impossible to determine a priori and in the abstract what territorial scope should be applied in order to determine whether the use of the mark is genuine or not (19/12/2012, C-149/11, ‘Leno’, EU:C:2012:816, § 55). All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity (19/12/2012, C-149/11, ‘Leno’, EU:C:2012:816, § 58).

The majority of the evidence is dated within the relevant period or refers to it. The material filed by the opponent proves beyond doubt that the use takes place in Germany and thus, in the European Union. The place of use can also be inferred from the submitted excerpts from magazines and advertising folders, as they refer to German consumers of the veterinary preparations of natural origin, mainly of plant origin for treating or preventing diseases in animals. Furthermore, the languages of the documents are German and English. The invoices submitted provide sufficient information concerning the commercial volume, the length of the period and the frequency of the use. Although the goods listed in all the relevant invoices do not bear the name of the earlier trade mark it is clear from their content, where the earlier mark ‘PlantaVet’ appears that they are sold under the opponent’s sign. Likewise, the extracts from specialist veterinary magazines and the advertisement folders show the earlier sign as it had been registered, namely as a word mark.

Taking into account the evidence in its entirety, the Opposition Division finds that the evidence submitted by the opponent is sufficient to establish genuine use of the earlier trade mark during the relevant period in the relevant territory for some of the relevant goods.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

If a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories relating to which the goods or services for which the trade mark has actually been used actually belong  (14/07/2005, T-126/03, ‘Aladin’, EU:T:2005:288, § 45).

As stated in the decision of the Fifth Board of Appeal of 24 August 2016, the goods for which use of the earlier mark has been shown are mainly based on natural and advertised as natural products.

Therefore, the subcategory for which use of the earlier mark has been shown is:

Class 5: Homeopathic veterinary preparations.

In the present case, the evidence proves use only for homeopathic veterinary preparations. These goods can be considered to form an objective subcategory of the broad category of medical preparations and seen more narrowly of veterinary preparations.

The applicant argues that the evidence submitted by the opponent was insufficient and has not proven the use of the earlier right in the European Union. In this regard the Opposition Division notes that, it is sufficient if the evidence of use proves that the trade mark owner has seriously tried to acquire or maintain a commercial position in the relevant market. In the present case the evidence filed by the opponent sufficiently proves the use of the earlier sign for homeopathic veterinary preparations in Germany, thus, within the relevant territory of the European Union. Therefore the applicant’s arguments must be set aside.

Consequently, the Opposition Division will take into account the opponent’s homeopathic veterinary preparations in Class 5 in the analysis of the likelihood of confusion.

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:        Homeopathic veterinary preparations.

Initially, the opponent in the notice of opposition indicated that he filed the opposition against some of the goods of the contested sign in Class 5, namely:

Pharmaceutical and veterinary preparations; Sanitary preparations for medical purposes; Dietetic food and substances adapted for medical or veterinary use; Dietary supplements for humans and animals; Alginates for pharmaceutical purposes; Alginate dietary supplements; Aloe vera preparations for pharmaceutical purposes; Antibiotics; Acetates for pharmaceutical purposes; Asthmatic tea; Bacterial preparations for medical and veterinary use; Bacteriological preparations for medical and veterinary use; Biological tissue cultures for veterinary purposes; Biological tissue cultures for medical purposes; Biological preparations for veterinary purposes; Biological preparations for medical purposes; Disinfectants for hygiene purposes; Dietetic beverages adapted for medical purposes; Dietetic foods adapted for medical purposes; Dietetic substances adapted for medical use; Veterinary preparations; Animal washes; Elixirs [pharmaceutical preparations]; for; Enzymes for veterinary purposes; Enzymes for medical purposes; Enzyme dietary supplements; Enzyme preparations for veterinary purposes; Enzyme preparations for medical purposes; Eucalyptus for pharmaceutical purposes; Pharmaceutical preparations; Fennel for medical purposes; Phenol for pharmaceutical purposes; Gentian for pharmaceutical purposes; Glucose dietary supplements; Yeast for pharmaceutical purposes; Yeast dietary supplements; Pharmaceutical preparations for treating dandruff; Pomades for medical purposes; Preparations of trace elements for human and animal use; Hormones for medical purposes; Pharmaceutical preparations for skin care; Anticryptogamic preparations; Chemical reagents for medical or veterinary purposes; Chemical preparations for veterinary purposes; Chemical preparations for pharmaceutical purposes; Chemical preparations for medical purposes; Mineral food supplements; Mineral water salts; Mineral waters for medical purposes; Bath salts for medical purposes; Bath preparations, medicated; Therapeutic preparations for the bath; Medicinal alcohol; Medicinal infusions; Medicinal drinks; Medicinal tea; Medicinal herbs; Medicines for veterinary purposes; Medicines for dental purposes; Medicines for human purposes; Lecithin dietary supplements; Nutritional supplements; Magnesia for pharmaceutical purposes; Milk ferments for pharmaceutical purposes; Candy, medicated; Malt for pharmaceutical purposes; Mangrove bark for pharmaceutical purposes; Milk of almonds for pharmaceutical purposes; Vermifuges; Royal jelly for pharmaceutical purposes; Royal jelly dietary supplements; Propolis dietary supplements; Cultures of microorganisms for medical and veterinary use; Mint for pharmaceutical purposes; Moleskin for medical purposes; Opium; Opiates; Opodeldoc; Articles for headache; Headache pencils; Frostbite salve for pharmaceutical purposes; Preparations for the treatment of burns; Balms for medical purposes; Balsamic preparations for medical purposes; Cachou for pharmaceutical purposes; Pectin for pharmaceutical purposes; Linseed for pharmaceutical purposes; Linseed dietary supplements; Linseed meal for pharmaceutical purposes; Linseed oil dietary supplements; Protein supplements for animals; Protein dietary supplements; Depuratives; Nutritive substances for microorganisms; Dietary supplements for animals; Castor oil for medical purposes; Drugs for medical purposes; Vaccines; Digestives for pharmaceutical purposes; Glucose for medical purposes; Pollen dietary supplements; Starch for dietetic or pharmaceutical purposes; Turpentine for pharmaceutical purposes; Oil of turpentine for pharmaceutical purposes; Tinctures for medical purposes; Albumin dietary supplements; Albuminous foodstuffs for medical purposes; Albuminous preparations for medical purposes; Cotton for medical purposes; Wheat germ dietary supplements; By-products of the processing of cereals for dietetic or medical purposes; Vitamin preparations; Greases for veterinary purposes;  Ointments for pharmaceutical purposes; Greases for medical purposes; Herbal teas for medicinal purposes.

After the opposition decision B 2 187 139 of 03/06/2014 became final and which rejected partially the contested mark, the opponent in his letter of 06/02/2015 informed the Office that he maintained the opposition with respect to the remaining goods, as mentioned in the Notice of Opposition.

The remaining goods after the opposition decision B 2 187 139 were the following:

Class 5: Material for stopping teeth, dental wax; Asthmatic tea; Sunburn ointments; Deodorants, other than for human beings or for animals; Disinfectants for hygiene purposes; Disinfectants for chemical toilets; Fumigating sticks; Chemical contraceptives; Animal washes; Vaginal washes; Air deodorising preparations; Deodorants for clothing and textiles; Smelling salts; Dental amalgams; Dental mastics; Dental lacquer; Dental cements; Dental abrasives; Dental impression materials; Preparations to facilitate teething; Teeth filling material; Oxygen baths; Chemical preparations to treat mildew; Preparations for destroying mice; Pharmaceutical preparations for treating dandruff; Poultices; Sanitary pants; Insect repellents; Insecticides; Insect repellent incense; Pharmaceutical preparations for skin care; Tissues impregnated with pharmaceutical lotions; Air purifying preparations; Breast-nursing pads; Personal sexual lubricants; Alloys of precious metals for dental purposes; Preparations for callouses; Cattle washes; Fly glue; Fly destroying preparations; Fly catching paper; Caustic pencils; Cement for animal hooves; Chemical conductors for electrocardiograph electrodes; Salts for mineral water baths; Mothproof paper; Mothproofing preparations; Dog lotions; Repellents for dogs; Dog washes; Dental amalgams of gold; Rubber for dental purposes; Gum for medical purposes; Sanitary tampons; Bath preparations, medicated; Therapeutic preparations for the bath; Medicine cases, portable, filled; Medicinal hair growth preparations; Medicines for dental purposes; Remedies for foot perspiration; Remedies for perspiration; Medical preparations for slimming purposes; Slimming pills; Diapers for pets; Corn remedies; Corn rings for the feet; Liniments; Solutions for contact lenses; Solvents for removing adhesive plasters; Antiparasitic collars for animals; Parasiticides; Antiparasitic preparations; Bone cement for surgical and orthopaedic purposes; Lead water; Milking grease; Soil-sterilising preparations; Lacteal flour for babies; Menthol; Sea water for medicinal bathing; Molding wax for dentists; Mud for baths; Articles for headache; Headache pencils; Preparations for the treatment of burns; Paper for mustard plasters; Hemorrhoid preparations; Pants, absorbent, for incontinents; Contact lens cleaning preparations; Porcelain for dental prostheses; Chewing gum for medical purposes; Absorbent cotton; Chemical preparations for the diagnosis of pregnancy; Antirheumatism bracelets; Herbicides; Rat poison; Appetite suppressant pills; Tanning pills; Preparations for reducing sexual activity; Cedar wood for use as an insect repellent; Semen for artificial insemination; Eyepatches for medical purposes; Eye-washes; Antirheumatism rings; Mouthwashes for medical purposes; Wart pencils; Sanitary pads; Adhesives for dentures; Thermal water; Preparations for destroying noxious animals; Sanitary towels; Pesticides; Napkins for incontinents; Bunion pads; Food for babies; Babies’ napkins [diapers]; Babies’ diaper-pants; Hemostatic pencils; Styptic preparations; Chemical preparations for treating phylloxera; Vine disease treating chemicals; Hydrogen peroxide for medical purposes; Cooling sprays for medical purposes; Belts for sanitary napkins [towels], Preparations for callouses; Slug exterminating preparations; Milking grease; Panty liners [sanitary]; Tobacco-free cigarettes for medical purposes.

 

In the letter of 20/01/2017 the opponent enumerated the contested goods against which he wished to proceed with the opposition, namely Asthmatic tea; Disinfectants for hygiene purposes; Animal washes; Pharmaceutical preparations for treating dandruff; Pharmaceutical preparations for skin care; Bath preparations, medicated; Therapeutic preparations for the bath; Medicines for dental purposes; Royal jelly dietary supplements; Articles for headache; Headache pencils; preparations for the treatment of burns; Greases for veterinary purposes.

The Opposition Division notes that the goods, namely Royal jelly dietary supplements; Greases for veterinary purposes cannot be considered as being contested in the present opposition because they are not present on the list of the contested remaining (dissimilar) goods for which the Opposition B 2 187 139 of 03/06/2014 has been rejected. These goods were deleted from the applicant’s list of goods following the limitation done by the applicant on 18/03/2014.

Therefore, taking into account the goods mentioned by the opponent in its letter of 20/01/2017, the only contested goods relevant for the present opposition are the following:

Class 5:        Asthmatic tea; Disinfectants for hygiene purposes; Animal washes; Pharmaceutical preparations for treating dandruff; Pharmaceutical preparations for skin care; Bath preparations, medicated; Therapeutic preparations for the bath; Medicines for dental purposes; Articles for headache; Headache pencils; Preparations for the treatment of burns.

As a preliminary remark, it should be noted that pharmaceutical preparations refer to any kind of medicine, i.e. a substance or combination of substances for treating or preventing disease in people or animals. From this definition, it can already be concluded that veterinary preparations are identically included in the broader term of pharmaceutical preparations. Therefore, they are identical.

Homeopathy is a system of alternative medicine based on the doctrine of like cures like, a claim that a substance that causes the symptoms of a disease in healthy people would cure similar symptoms in sick people. Homeopathic medical preparations require preparation, with various methods including succussion, trituration and dilution of the natural substance, usually a plant. Nowadays, it is also widely known that the active ingredients/substances of the pharmaceutical/veterinary preparations currently in use are based on natural products, often of plant origin. Since the Opposition Division cannot dissect the opponent’s goods from the broad category of pharmaceutical/veterinary preparations, the opponent’s Homeopathic veterinary preparations overlap with these goods.

Therefore, the contested Pharmaceutical preparations for treating dandruff; Pharmaceutical preparations for skin care; Medicines for dental purposes; Preparations for the treatment of burns; Bath preparations, medicated; Therapeutic preparations for the bath overlap with the opponent’s Homeopathic veterinary preparations. It is impossible for the Office to filter them from the broad categories of goods. Since the Office cannot dissect ex officio the broad categories of the conflicting goods, they are considered identical. 

The contested Articles for headache; Headache pencils serve to ease the pain. There are various ways to treat the headache from the preventative medication to more alternative headache treatments like acupuncture, hypnosis, mediation but also herbal and nutritional health products. Therefore, the above contested goods may coincide in producer, distribution channels and consumer with the opponent’s goods. These goods are highly similar.

Asthma is a chronic inflammatory disease in which the bronchial airways constrict causing shortness of breath, wheezing, coughing and chest tightness. Although the main course of treatment of asthma is inhaled bronchodilators and corticosteroids, drinking certain teas may help to prevent an attack. Therefore, the contested Asthmatic tea may coincide in producer, distribution channels and consumer with the opponent’s goods. Therefore, they are highly similar.

The contested Animal washes; Disinfectants for hygiene purposes are used in the medical field and they may coincide with the opponent’s Homeopathic veterinary preparations in purpose, producers, distribution channels and end users. Therefore, they are considered similar to the opponent’s goods.

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 or similar are directed at the public at large and at specialised public, e.g. veterinary professionals with a higher than normal level of attentiveness.

3. The signs

PlantaVet	PlanVet
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). 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 Hungarian- and Greek-speaking part of the relevant public that will see no meaning in the signs in dispute.

Both signs are word marks.  

The earlier mark is composed of nine letters: ‘P-l-a-n-t-a-V-e-t’.

The contested sign is composed of seven letters: ‘P-l-a-n-V-e-t’.  

In case of word marks it is the word as such that is protected and not the way in which it is represented. Therefore, the fact that the signs in question are written partly in upper- and partly in lowercase letters does not have an impact on the comparison.

None of the marks has a meaning in relation to the relevant goods for the relevant public in the relevant territories. Consequently, their inherent distinctiveness must be seen as normal.

The marks under comparison have no elements which could be considered more dominant (visually eye-catching) than other elements.

Visually and aurally, the signs coincide in the letters ‘P-l-a-n-V-e-t’. They display a similar structure in that they have a similar length, start and ending. The 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. On the other hand, they differ in the letters ‘t’ and ‘a’ of the earlier mark which have no counterparts in the contested sign. However, these letters are placed in the middle of the earlier mark and, therefore, they will not catch the attention of the relevant consumer.

Taking into account the fact that the coincidence in the beginning of the signs is more relevant, the signs are visually and aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territories. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 in relation to any of the goods at hand from the perspective of the public in the relevant territories. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods are partly identical and partly similar to various degrees.

The signs are visually and aurally similar to a high degree and the conceptual aspect does not influence the assessment of the similarity of the signs. All the letters of the contested sign are included in the earlier mark. The differences between the signs are limited to the additional letters ‘t’ and ‘a’ placed in the middle of the earlier mark, where the attention of the relevant public is normally not focused. The signs are also not short and, therefore, these differences cannot be easily detected even for a professional public. Additionally, as stated above, the signs have no concepts that would help a consumer to distinguish them.

As it has been established above, the distinctiveness of the earlier mark is normal.

It is also assumed that consumers tend to remember similarities rather than dissimilarities between signs, and that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’).

In the present case, the dissimilarities between the signs are not sufficient to safely counteract their similarities.

Therefore, considering all the above, the Opposition Division finds that there is a likelihood of confusion between the trade marks in question on the part of the Hungarian- and Greek-speaking part of the public in relation to all the contested goods, and, therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 1 816 362. 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 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

Gueorgui IVANOV

Monika CISZEWSKA

Liliya YORDANOVA

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.