OPPOSITION No B 2 521 691

Wirtschaftsgenossenschaft deutscher Tierärzte eG, Siemensstr. 14, 30827 Garbsen, Germany (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Nutrion Internacional S.L., C/ Amado Nervo nº 11, Local 4, 28007 Madrid, Spain (applicant), represented by Jose Julián Fuentes Palancar, Bravo Murillo 9 – 48, 28015 Madrid, Spain (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 521 691 is partially upheld, namely for the following contested goods:

Class 5: Veterinary preparations; supplementary and dietetic food for animals; medicated additives for animal feed.

2. European Union trade mark application No 13 635 008 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 13 635 008, namely against some of the goods in Class 1 and all of the goods in Classes 5 and 31. The opposition is based on German trade mark registration No 138 023. 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.

1. The goods

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

Class 5: Remedies for veterinary purposes.

The contested goods are the following:

Class 1: Chemicals used in agriculture, horticulture and forestry.

Class 5: Veterinary preparations; supplementary and dietetic food for animals; medicated additives for animal feed.

Class 31: Foodstuffs for animals, grains and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; malt.

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 1

Although major chemical companies are usually involved in the production of all kinds of basic chemicals, including pharmaceuticals, the mere fact that their nature coincides – as all of them can be broadly classified as chemical products – is not sufficient to find them similar.

Consequently, although goods in Class 5 are usually combinations of various chemicals, they are, in principle, not considered similar to goods included in Class 1. Their purpose as a finished product usually differs from that of goods in Class 1, which are mainly in their raw, unfinished state and not yet mixed with other chemicals and inert carriers into a final product. The finished products in Class 5 usually also target different publics and do not have the same distribution channels.

Therefore, the contested chemicals used in agriculture, horticulture and forestry are raw chemicals used in the fields of agriculture, horticulture and forestry while the opponent’s remedies for veterinary purposes are finished products used in the veterinary field. These goods have different purposes and methods of use. Furthermore, these goods do not have the same distribution channels and they do not usually have the same commercial origin. Finally, they target different publics. Therefore, they are dissimilar.

Contested goods in Class 5

The contested veterinary preparations are included in the broad category of the opponent’s remedies for veterinary purposes. Therefore, they are identical.

The contested supplementary and dietetic food for animals and medicated additives for animal feed are, respectively, dietary supplements for animals and nutritional substances adapted for medical use prepared for animals with special dietary requirements, with the purpose of treating or preventing diseases. Their purpose is similar to the opponent’s remedies for veterinary purposes, substances used to treat animal diseases, insofar as they are used to improve the health or the medical conditions of animals. The relevant public coincides and these goods generally have the same distribution channels. Therefore, they are considered similar.

Contested goods in Class 31

The contested foodstuffs for animals, grains and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; malt are different from the opponent’s remedies for veterinary purposes. The goods at issue have different purposes. The mere fact that some of the contested goods and the opponent’s goods may be consumed by animals is not sufficient for a finding of similarity. In particular, while the opponent’s goods have a therapeutic purpose, some of the contested goods can be used merely for animal nutrition. Moreover, the contested goods are not usually manufactured or provided by the same companies. Finally, the distribution channels of these goods are different. Therefore, they are dissimilar.

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 as well as at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high. Indeed, for some goods, such as veterinary preparations, the relevant public’s degree of attention is relatively high, whether or not they are 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 quoted case law). In particular, medical professionals (such as veterinarians) have a high degree of attentiveness when prescribing medicines. With regard to non-professionals, they also have a higher than average degree of attention, regardless of whether or not the pharmaceuticals are sold on prescription, as these goods affect the state of health (of humans and also animals, in the case of veterinary pharmaceutical preparations).

3. The signs

RUMIN	RUMINER
Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

Visually, the earlier sign, ‘RUMIN’, is included in its entirety as the first five letters in the contested sign, ‘RUMINER’. Therefore, the first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. However, they differ in the last two letters, ‘ER’, present only in the contested trade mark.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘RUMIN’, present in the same position and order in both signs. The pronunciation differs in the sound of the last two letters, ‘ER’, of the contested mark, which have no counterparts in the earlier sign.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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 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.

5. Global assessment, other arguments and conclusion

According to the case law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. It follows from the very wording of Article 8(1)(b) EUTMR that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

A likelihood of confusion on the part of the public must be assessed globally. Such a global assessment implies some interdependence between the factors taken into account and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between these goods or 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; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global assessment, the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; 30/06/2004, T‑186/02, Dieselit, EU:T:2004:197, § 38).

In the present case, the goods target the public at large as well as business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high.

The goods are partly identical, partly similar and partly dissimilar.

The marks coincide visually and aurally in the letters ‘RUMIN’, which form the entirety of the earlier mark and are present, in the same order, as the first five letters of the contested sign, ‘RUMINER’.

Therefore, taking into consideration the fact that the signs differ only in the last two letters, ‘ER’, of the contested sign, and even though the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect, account must be 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).

This is also true for consumers with a high degree of attention, for some of the goods in the case at issue, who also need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Consequently, the Opposition Division considers that the differences between the signs are not sufficient to safely exclude the likelihood of confusion.

The applicant argued that the trade marks under comparison are short signs. This argument is not pertinent in the present case. The courts have not defined precisely what a short sign is. However, signs with three, or less than three, letters/numbers are considered by the Office to be short signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s German trade mark registration No 138 023.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or 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 shall 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

Andrea VALISA

Karin KUHL

Victoria DAFAUCE MENÉNDEZ

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.