OPPOSITION No B 2 645 847

Plymag, S.L., Polig. Ind. Sector 2 C/Denia, 126, 03780 Pego (Alicante), Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

terracult GmbH, Kölnstraße 93, 53757 Stankt Augustin, Germany (holder), represented by Franz LLP, Adlerstr. 63, 40211 Düsseldorf, Germany (professional representative).

On 20/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 645 847 is upheld for all the contested goods.

2.        International registration No 1 244 917 is entirely refused protection in respect of the European Union.

3.        The holder bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 244 917. The opposition is based on Spanish trade mark registration No 2 073 141. The opponent invoked Article 8(1)(a) and (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 1:        Chemical products for industrial, science (with the exception of those directed to the medical science) and photography purposes, as well as those directed to agriculture, horticulture, silviculture, aminoacids, artificial resins and rough resins, rough plastic material, fertilizers (artificial and natural), compositions for fire extinguishing apparatus, preparations for the temple and soldering of metals, chemical products to preserve foods, curtient materials and adhesive substances for industrial purposes.

The contested goods are the following:

Class 1:        Peat, coarse peat; fibrous peat; humus fertilizers; peat culture substrates; cultivation soil, all aforementioned goods included in this class.

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

The contested peat, coarse peat; fibrous peat; humus fertilizers; peat culture substrates; …, all aforementioned goods included in this class overlap with the opponent’s fertilizers (artificial and natural). This is, among others, because peat is a type of a natural fertilizer. Therefore, they are identical.

The contested cultivation soil, all aforementioned goods included in this class and the opponent‘s fertilizers (artificial and natural) are similar. They are both used for growing plants which means that they have the same purpose of use. They also coincide in the relevant public and distribution channels. Furthermore, they are complementary.

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 both at the public at large and business customers with specific professional knowledge or expertise. The degree of attention will be higher than average due to the specialised nature of the goods concerned.

3. The signs

TERRABAL
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 contested figurative sign is black and white.

The element ‘TERRA’ included in both marks will be associated with the Spanish word ‘tierra’ meaning ‘land, soil’. Bearing in mind that the relevant goods are related to agriculture and growing plants, this element is weak for all the relevant goods.

The element ‘BAL’ of the earlier mark and the element ‘BALT’ of the contested sign have no meaning for the relevant public and are, therefore, normally distinctive.

The rectangular background and the two small thick slanted lines at the bottom right of the contested sign have only a decorative nature and are, therefore, very weak, if not non-distinctive.

The elements ‘terra BALT’ in the contested sign are the dominant elements as they are the most eye-catching. They are also the most distinctive elements of the contested sign, with ‘BALT‘ being more distinctive than ‘terra‘ .

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 and from top to bottom, which makes the part placed at the left or top of the sign (the initial part) the one that first catches the attention of the reader.

The fact that the earlier trade mark is depicted in upper case and the contested sign in a combination or lower and upper case has no bearing on the comparison of the marks, because the earlier mark is a word mark. Protection is therefore granted for the word itself, and not for the particular way in which the mark is written.

Visually, the signs coincide in ‘TERRA()BAL*’. However, they differ in the additional letter ‘T’ in the contested sign and in the structure of the word elements because the earlier mark is written as one word ‘TERRABAL’ whereas in the case of the contested sign, the word elements ‘terra’ and ‘BALT’ are written separately one underneath the other. The marks also differ in the weak figurative elements of the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, taking into account that the contested sign will be read from top to bottom, the pronunciation of the signs coincides in the sound of the letters ‛TERRABAL’, present identically in both signs. The pronunciation differs only in the sound of the additional letter ‛T’ at the end of the contested sign, which has no counterpart in the earlier sign.

Therefore, the signs are highly similar aurally.

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 through the coinciding weak element ‘TERRA’, the signs are conceptually similar to a low degree.

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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods have been found partially identical and partially similar. The degree of distinctiveness of the earlier mark is average and the degree of attention of the relevant public will be higher than average.

The marks are visually similar to an average degree, aurally similar to a high degree and conceptually similar to a low degree. These similarities lie in the dominant elements of the contested sign, ‘terra BALT’, which are also more distinctive than the figurative elements of the sign. Consequently, the overall impressions created by the marks are clearly similar.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 073 141. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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 holder 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

Richard BIANCHI

Vít MAHELKA

Lucinda CARNEY

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.