OPPOSITION No B 2 732 934

Comercial Química Massó, S.A., Viladomat, 321, 5°, 08029 Barcelona, Spain (opponent), represented by Aguilar i Revenga, Consell de Cent, 415, 5°, 1ª, 08009 Barcelona, Spain (professional representative)

a g a i n s t

Spiess-Urania Chemicals GmbH, Frankenstr. 18 b, 20097 Hamburg, Germany (applicant), represented by Klickow & Partner Partnerschaftsgesellschaft mbB, Jessenstrasse 4, 22767 Hamburg, Germany (professional representative).

On 15/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 732 934 is partially upheld, namely for the following contested goods:

Class 1: Manures; Chemicals, namely chemicals with biological bases for treating deficiency diseases in plants, growth regulators; Chemicals with biological bases for protecting plant products (growing stock); Chemicals, including chemicals with biological bases, for use in agriculture, horticulture and forestry, including for landscaping and sports ground construction, for soil preservation, stock maintenance; Plant protection agents, Substances for preserving flowers; Manures, including natural manures; Soil amendments; Soil-conditioning preparations, including soil-strengthening and soil-aerating preparations and plant-enriching substances; Plant granulate for covering plant roots; Compost forming substances; Peat (fertiliser); Preparations for treating seeds, including mordants for seeds and seed denaturants; Chemical preparations for the treatment of seeds.

Class 3: Plants (Preparations to make shiny the leaves of -).

Class 5: Fungicides, herbicides; Chemical preparations for pesticidal purposes; Preparations for destroying weeds and vermin, Preparations for combating plant, fungal, animal and microbial pests; Repellents, Namely animal and insect repellents, attractants for animals and insects, preparations for confusing insects and household sanitary preparations for pests and parasites, Chemicals, including with biological raw materials, for destruction of pests, Mordants for seeds, Mordants for protecting plant products.

2.        European Union trade mark application No 15 063 852 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 15 063 852, namely against some of the goods in Classes 1 and 5 and all the goods in Class 3. The opposition is based on, inter alia, European Union trade mark registration No 10 098 424. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 10 098 424.

1. The goods

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

Class 1: Fertilizers.

The contested goods are the following:

Class 1: Manures; Chemical substances for preserving foodstuffs; Tanning substances; Chemicals, namely chemicals with biological bases for treating deficiency diseases in plants, growth regulators; chemicals with biological bases for protecting plant products (growing stock); Adhesives used in industry; Chemicals, including chemicals with biological bases, for use in agriculture, horticulture and forestry, including for landscaping and sports ground construction, for soil preservation, stock maintenance; Plant protection agents, substances for preserving animal foodstuffs and flowers; Manures, including natural manures; Soil amendments; Soil-conditioning preparations, including soil-strengthening and soil-aerating preparations and plant-enriching substances; Plant granulate for covering plant roots; Compost forming substances; Peat (fertiliser); De-icing chemicals; Preparations for treating seeds, including mordants for seeds and seed denaturants; Chemicals, Namely preparations for cleaning gardens and containers, included in class 1, Substances for preserving foodstuffs; Chemical preparations for the treatment of seeds.

Class 3: Plants (Preparations to make shiny the leaves of -); Cleaning preparations for gardens and containers.

Class 5: Fungicides, herbicides; Chemical preparations for pesticidal purposes; Preparations for destroying weeds and vermin, Preparations for combating plant, fungal, animal and microbial pests; Repellents, Namely animal and insect repellents, attractants for animals and insects, preparations for confusing insects and household sanitary preparations for pests and parasites, Chemicals, including with biological raw materials, for destruction of pests, Disinfectants, Mordants for seeds, Mordants for protecting plant products.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

A fertilizer is a natural or chemical substance that is spread on the land or given to plants, to increase fertility and growth, the same as manure that is solid waste from animals, or compost/peat that is a mixture of decaying plant material. Therefore, the contested manures; manures, including natural manures; compost forming substances; peat (fertiliser) are included in the broad category of the opponent’s fertilizers. Therefore, they are identical.

The contested chemicals, namely chemicals with biological bases for treating deficiency diseases in plants, growth regulators; chemicals with biological bases for protecting plant products (growing stock); chemicals, including chemicals with biological bases, for use in agriculture, horticulture and forestry, including for landscaping and sports ground construction, for soil preservation, stock maintenance; plant protection agents, substances for preserving flowers; soil amendments; soil-conditioning preparations, including soil-strengthening and soil-aerating preparations and plant-enriching substances; plant granulate for covering plant roots; preparations for treating seeds, including mordants for seeds and seed denaturants; chemical preparations for the treatment of seeds are chemical substances used in agriculture or gardening for treating, protecting, preserving or conditioning soil, plants or crops. These goods have the same nature as the opponent’s fertilizers as in all cases they are chemical substances used to improve fertility and growth. They have the same producers, end users and distribution channels, such as agricultural or garden-related shops. Therefore, they are similar to a high degree.

The Opposition Division cannot see any material nexus between the contested chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry; substances for preserving animal foodstuffs; chemicals, namely preparations for cleaning gardens and containers, included in class 1, substances for preserving foodstuffs and the opponent’s fertilizers. They clearly differ in nature, purpose and method of use. Furthermore, they do not coincide in producers, end users or distribution channels and they are not complementary or in competition. Therefore, they are dissimilar.

Contested goods in Class 3

The contested plants (preparations to make shiny the leaves of -) differ in purpose from the opponent’s fertilizers in Class 1. However, it is common for the companies producing fertilisers for plants to also market other products for the plants care like the contested ones. Furthermore, these goods target the same consumers and are distributed through the same channels of trade. Therefore, the goods are similar.

The contested cleaning preparations for gardens and containers have a different nature, purpose and method of use than the opponent’s fertilizers. The usual commercial origin, distribution channels and end users are different. Furthermore, they are neither complementary nor in competition. Therefore, they are dissimilar.

Contested goods in Class 5

The contested fungicides, herbicides; chemical preparations for pesticidal purposes; preparations for destroying weeds and vermin, preparations for combating plant, fungal, animal and microbial pests; repellents, namely animal and insect repellents, attractants for animals and insects, preparations for confusing insects and household sanitary preparations for pests and parasites, chemicals, including with biological raw materials, for destruction of pests, mordants for seeds, mordants for protecting plant products are similar to the opponent’s fertilizers in Class 1. Although their natures and methods of use may be different, these goods serve a similar purpose (i.e. plant growth enhancing since they prevent conditions that could inhibit plant growth). They can originate from the same undertakings and target the same end users. They can also coincide in their distribution channels.

The contested disinfectants are not related to the opponent’s fertilizers in Class 1. The opponent’s goods are intended to promote the growth of plants whereas the contested goods are hygienic preparations. The nature of the goods is different, as is their purpose and methods of use. The goods also differ in distribution channels, producers and end users. Furthermore, they are not complementary or in competition. Consequently, 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 to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high depending on the specific nature and specialisation of the particular goods.

3. The signs

	MAGMA
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 common element ‘MAGMA’ will be understood by the relevant public in virtually all the Members States of the European Union as a ‘hot fluid or semi-fluid material below or within the earth's crust from which lava and other igneous rock is formed on cooling’ because this word exists in all European languages (including the transliterations of Greek and Bulgarian words). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The element ‘HQ’ of the earlier mark will be understood by the English-speaking public as a common abbreviation of the word ‘Headquarters’ and together with the element ‘MASSÓ’, it could, therefore, be understood as a reference to the location of the headquarters of the enterprise. In this regard, these elements are weak for all the goods and services and this part of the public.

For the remaining part of the relevant public the element ‘HQ’  has no meaning and is, therefore, distinctive, whereas the element ‘MASSÓ’ may be perceived as a surname at least by a part of the relevant public, in particular the Spanish-speaking public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The element ‘MAGMA’ in the earlier sign is the dominant element as it is the most eye-catching.

The black rectangular background and the green waving line placed between the verbal elements ‘MAGMA’ and ‘HQ MASSÓ’ in the earlier mark are less distinctive figurative elements of a purely decorative nature.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

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.

Visually, the signs coincide in the element ‘MAGMA’, written in a fairly standard bold typeface in the earlier sign and that is the first and dominant element in this mark.  Therefore, the contested sign is fully contained in the earlier mark. The signs differ in the elements ‘HQ MASSÓ’, which are less dominant, and weak for the English-speaking part of the public, and in the figurative elements of the earlier mark, which are, however, also less distinctive with a lower impact.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables ‘/mag-ma/’, present identically in both signs as a dominant element in the earlier mark. The pronunciation differs in the sound of the less dominant elements, and weak for the English-speaking part of the public, ‛HQ MASSÓ’ of the earlier sign, which have no counterparts in the contested mark.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, and at least for the English-speaking part of the public the conceptual differences are weak, the signs are conceptually highly similar.

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 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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

It has been established in the previous sections of this decision that the contested goods are partly identical, partly similar to varying degrees and partly dissimilar to the goods on which the opposition is based. They target both the public at large and professionals, with a degree of attention that may vary form average to high. The earlier mark has a normal degree of distinctiveness in relation to all the relevant goods.

It has also been concluded that the signs are visually, aurally and conceptually highly similar. The differences between the signs are not sufficient to counteract their similarities since they are mainly confined to elements which are less distinctive or less dominant within the signs, as explained in detail above.

In addition, account should 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).

Furthermore, it should also be born in mind that 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 covered are from the same or economically linked undertakings. 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 which it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the degree of similarity between them as regards identical and similar (to varying degrees) goods. Therefore, the relevant public, even professionals with a high degree of attention, may believe that the goods come from the same undertaking or, at least, economically-linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion (including likelihood of association) on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees 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.

The opponent has also based its opposition on Spanish trade mark registration No 2 966 100 for the figurative mark .

Since this mark is identical to the one which has been compared and covers the same scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. 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 will 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

Marta GARCÍA COLLADO

Alexandra APOSTOLAKIS

Vanessa PAGE

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.