Putting the focus on purpose

1st Sep 2019

The practical use of goods led to a decision dismissal, reports Leanne Gulliver. T-366/18, Pet King Brands, Inc. v EUIPO – Virbac SA, General Court, 13th June 2019.

Putting the focus on purpose

T-366/18, Pet King Brands, Inc. v EUIPO – Virbac SA, General Court, 13th June 2019

Here, the General Court (GC) partially upheld Pet King Brands, Inc.’s (Pet King’s) opposition to Virbac SA’s (Virbac’s) EU trade mark (EUTM) application, finding that the Board of Appeal (BoA) had erred in law when assessing the degree of similarity between the goods.

The prime origin of the decision was an application by Virbac in January 2016 to register an EUTM for the word mark SUIMOX for the following class 5 goods: veterinary preparations; veterinary preparations and animal health care products, including antibiotics for animals; nutritional supplements for veterinary use; sanitary preparations for veterinary use; dietetic substances for veterinary purposes; disinfectants for veterinary use; preparations for killing weeds and destroying vermin; and vaccines for veterinary use.

In May 2016, Pet King opposed the registration of the application in its entirety on the basis that, contrary to Article 8(1)(b) EUTMR, the application is confusingly similar to its earlier EUTM (No 871232) for the word mark ZYMOX, which was registered on 18th July 2005 for “medicated ear drops for domestic animals” in class 5. 

During the adversarial stage of the proceedings, Virbac limited its class 5 specification to exclude “ear drops for animals”. 

In the first instance, the Opposition Division rejected the opposition in its entirety on the grounds that there was no likelihood of confusion. Pet King appealed to the BoA.

BoA assessment 

The BoA dismissed the appeal, concluding that it was unlikely that EU consumers would believe that the goods covered by the marks at issue would come from the same undertaking or from undertakings that were economically linked.

In reaching its decision and conducting a global assessment, it had taken into account the following relevant factors: (i) the relevant public was composed of both specialists and the general public with no specific medical, veterinary or pharmaceutical knowledge; (ii) veterinary products sold without prescriptions benefit from a high degree of attentiveness; (iii) some of the goods covered by the application are similar to an average degree, whereas other goods are dissimilar; and (iv) the conflicting signs were similar to a low degree visually and aurally, and they could not be compared conceptually. 

GC appeal

Pet King subsequently appealed the contested decision to the General Court (GC). 

Pet King challenged the BoA’s findings concerning the dissimilarity between the goods “medicated ear drops for domestic animals” and “preparations for destroying vermin; the aforesaid goods not including ear drops for animals”. Considering the criteria laid down in Canon (C-39/97), the GC held that these goods have the same purpose, namely goods designed to destroy parasitic worms or insects, including those in domestic animals. Furthermore, while the application expressly excludes “ear drops for animals”, as it still covered similar goods used for a similar purpose, the GC held that the specification restriction was of little importance. As such, the GC concluded that these goods must be regarded as having a high degree of similarity.  

As a result, the GC partially upheld the appeal and dismissed the contested decision from the BoA in respect of the similar class 5 goods.

Key points

  • Following Canon, the relevant factors to consider when assessing the similarity of goods and services include their nature and intended purpose
  • Removing the precise goods/services covered by an earlier registration will not necessarily avoid confusion if the remaining goods/services are considered similar

Leanne Gulliver is a Chartered Trade Mark Attorney at Osborne Clarke LLP