Solutox | Decision 2549015 - Eurovet Animal Health B.V. v. LIPIDOS TOLEDO S.A.
Date Published: Oct 1, 2017
OPPOSITION No B 2 549 015
Eurovet Animal Health B.V., Handelsweg 25, 5531 AE Bladel, The Netherlands (opponent), represented by Abcor B.V., Frambozenweg 109/111, 2321 KA Leiden, The Netherlands (professional representative)
a g a i n s t
Lipidos Toledo S.A., Calle San Romualdo 12-14, 28037 Madrid, Spain (applicant), represented by GB Lazaro y Asociados, S.L. Patentes y Marcas, C/ Risco De Peloche Nº 4- 3º D, 28038 Madrid, Spain (professional representative)
On 03/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 549 015 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services covered by the European Union trade mark application No 13 595 657. The opposition is based on European Union trade mark registration No 1 442 847. The opponent invoked Article 8(1)(b) EUTMR.
SOLUDOX | Solutox |
Earlier trade mark | Contested sign |
PRELIMINARY REMARK
During the proceedings, on 18/08/2016, the EUTM application in question was partially refused in parallel opposition proceedings No B 2 551 151. This decision became final. On 15/12/2016, the opponent confirmed that it maintained the opposition against the remaining services covered by the EUTM application.
Proof of use of the earlier mark was requested by the applicant on 03/02/2016. However, for reasons of procedural economy, at this point the Opposition Division considers it appropriate not to undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, namely veterinary preparations, which is the best scenario in which the opponent’s case can be considered.
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 and services
The goods on which the opposition is based are the following:
Class 5: Veterinary preparations.
The contested services are the following:
Class 35: Import and export services; advertising.
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.
By their nature services are generally dissimilar to goods. This is because goods are articles of trade, wares or merchandise. Their sale usually entails the transfer in title of something physical. Services, on the other hand, consist of the provision of intangible activities. They can, however, be complementary. Services can also have the same purpose and thus be in competition with goods or it may be common in the market sector for the manufacturer of the goods to also provide such services and then the relevant public may coincide. It follows that under certain circumstances similarity between goods and services can be found. This is, in the present case, however, not applicable.
The contested import and export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. As they are classified in Class 35, they are considered to relate to business administration. These services do not relate to the actual retail or wholesale of the goods; they would be preparatory or ancillary to the commercialisation of such goods. For these reasons, goods are to be considered dissimilar to import and export services for those goods. The fact that the subject matter of the import/export services and the goods in question could be the same – as in the present case, veterinary preparations - is not a relevant factor for finding a similarity.
The contested advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc. The fact that some goods, such as the opponent’s veterinary preparations, may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods being advertised.
In summary, the opponent’s goods and the contested services have different natures and methods of use, different producer and provider and target a different public. They do not have the same purpose nor are they therefore complementary or in competition with each other.
For these reasons, the goods and services under comparison are dissimilar.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1)(b) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Zuzanna STOJKOWICZ | Cynthia DEN DEKKER | Jessica LEWIS |
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.