OPPOSITION No B 2 694 092

EuroChem Agro GmbH, Reichskanzler-Müller-Str. 23, 68165 Mannheim, Germany

(opponent), represented by Isenbruck Bösl Hörschler LLP, Eastsite One, Seckenheimer Landstr. 4, 68163 Mannheim, Germany (professional representative)

a g a i n s t

Zakłady Chemiczne "Siarkopol" Tarnobrzeg Spółka z o.o., Ul. Chemiczna 3, 39-400 Tarnobrzeg, Poland (applicant), represented by Kondrat & Partners, Al. Niepodległości 223/1, 02-087 Warszawa, Poland (professional representative).

On 01/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 694 092 is upheld for all the contested goods.

2.        European Union trade mark application No 15 017 841 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 017 841. The opposition is based on European Union trade mark registration No 10 319 531, European Union trade mark registration No 175 505 and international trade mark registration No 316 705 designating the European Union. 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 10 319 531.

1. The goods

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

Class 1:        Manures.

The contested goods are the following:

Class 1:        Mineral fertilising preparations; Manures.

Contested goods in Class 5

Manures are identically contained in both lists of goods.

The contested Mineral fertilising preparations overlap with the opponent’s Manures. Therefore, they are identical.

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 are directed at both, the public at large and business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to higher than average depending on the volume, the price and the frequency of the purchase of the goods.

3. The signs

NITROFOSKA	Unifoska
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the Opposition Division finds it appropriate, to focus the comparison of the signs first on the German-speaking part of the relevant public, for which parts of the verbal elements of the signs, as explained below, have a meaning.

The earlier sign is a word mark consisting of the single element ‘NITROFOSKA’. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case letters is immaterial. The beginning of the verbal element ‘NITRO’ is a prefix indicating that something belongs to the chemical nitro functional group. This exact meaning will not be perceived by most of the German-speaking public. However, the relevant public is so familiar with the prefix that it will perceive it as some kind of chemical substance that the present goods entail. Consequently, the relevant public will identify the sign’s components, namely ‘NITRO’ and ‘FOSKA’. The verbal component ‘FOSKA’ does not have a meaning and is therefore distinctive. The component ‘NITRO’ is considered to be less distinctive than the component ‘FOSKA’.

The contested sign is a word mark consisting of the single element ‘Unifoska’. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case letters is immaterial. The beginning of the verbal element ‘Uni’ is a prefix, with the meaning one or single, used in numerous German words such as universell, Universum and Universität. At least part of the public will perceive as indicating a character or feature of present goods, namely of being of universal usability. Consequently, the relevant public will identify the sign’s components, namely ‘Uni’ and ‘foska’. The verbal component ‘foska’ does not have a meaning and is therefore distinctive. The component ‘Uni’ is considered to be less distinctive than the component ‘foska’.

Visually and aurally, the signs coincide in the signs’ ending (and sound) ‘FOSKA’. Both signs consist of four syllables. The signs’ beginnings coincide in the letters ‘NI’, being the first and second letter of the earlier sign respectively being the second and third letter of the contested sign. However, the signs’ beginnings differ in the letters ‘TRO’ (earlier sign) versus ‘U’(contested sign) which do not have a counterpart in the other mark.

Taking all the above into account and the fact that the signs differ merely in their respective component which is of limited distinctiveness, the signs are considered visually and aurally similar to an average degree.

Conceptually, the signs as a whole do not have a meaning, but both signs start with a component that will be associated with prefixes of different meaning. The element that the signs coincide has no meaning. Therefore, the signs are not conceptually 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 German-speaking public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of an element of limited distinctiveness in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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).

Furthermore, account is 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).

The contested goods are found to be identical to the opponent’s goods. Furthermore, the earlier mark enjoys a normal degree of distinctiveness and the signs are visually and aurally similar to an average degree, which similarity is based most of all on the shared ending ‘FOSKA’. As concluded above, the ending will be identified by the relevant public when the average consumer is confronted with the signs. It is taken into account 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 services covered are from the same or economically linked undertakings. Since the relevant consumers still have to rely in their imperfect recollection of marks, it is indeed 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 that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the German-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In its observations, the applicant argues that the shared element ‘FOSKA’ has a low distinctive character given as it is referring to phosphorus that there are many trade marks that include the said element. In support of its argument the applicant refers to several European Union trade marks.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘FOSKA’. Therefore, the submitted evidence does not prove that the relevant part of the public is aware of the elements meaning of the element’s claimed meaning. Under these circumstances, the applicant’s claims must be set aside.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 319 531. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right European Union trade mark registration No 10 319 531 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant 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

Irina SOTIROVA

André Gerd Günther BOSSE

Plamen IVANOV

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.