OPPOSITION No B 2 360 066

Nutristar S.p.A., Via del Paracadutista 9, 42122 Reggio Emilia, Italy (opponent), represented by Hoffmann · Eitle Patent- Und Rechtsanwälte Partmbb, Arabellastr. 30, 81925 München, Germany (professional representative).

a g a i n s t

Triasem, Chemin des Gordins, 16700 Ruffec, France (applicant), represented by Jean-François Delage, Chemin des Gordins, 16700 Ruffec, France (employee representative).

On 01/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 360 066 is upheld for all the contested services.

2.        European Union trade mark application No 12 576 311 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 12 576 311. The opposition is based on, inter alia, Italian trade mark registration No 1 210 894. 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 Italian trade mark registration No 1 210 894.

1. The goods and services

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

Class 5:         Zootechnical integrators, in particular zootechnical integrators for bovine feeding; integrators for animal feed based on proteins, amino acids, fats, fatty acids, carbohydrates, vitamins, mineral salts, mineral nutrients and/or trace elements, additives for animal feed; diet integrators for animals; feed integrators and vitamin preparations for animals, in particular for bovine feeding.

Class 31:         Zootechnical feed, in particular zootechnical feed for bovine feeding; feedstuff and additives for feedstuff (not for medical use), feedstuff in tablets, stable feed, wet feedstuff, dry feedstuff, litter, long-stalk litter/straw, hay, silage and water-soluble feedstuff; compound feedstuff, reconstituent forages, feedstuff for breeding, feedstuff based on mineral nutrients, complementary feedstuff and forage additives, supplementary feedstuff based on mineral nutrients for animals; additives and additive substances for feedstuff and forages not for medical use, in particular for bovine feeding; meal for animals, non-medicated integrators for animal feed.

Class 44:         Farming services, information services relating to farming agriculture, animal breeding, and livestock holdings; advisory services in the field of agriculture and animal rearing; provision of information, dissemination of information and online database services all relating to agriculture, livestock and animal breeding, namely for cattle and milk cows; provision of information, consultancy, and assistance all relating to agriculture and farming, and veterinary services for farmers and cattle farmers; advisory services for farmers and cattle farmers relating to animal nutrition, and food animal nutrition programs, namely for cattle and milk cows; providing online information relating to dietary supplements for animal use and nutrition for rear animals, namely for livestock holdings, cattle and milk cows; veterinary services, professional consultancy and advisory services relating to food animal nutrition programs for livestock holdings, cattle and milk cows; veterinary services, professional consultancy and advisory services relating to zootechnical integrators, namely zootechnical integrators for bovine feeding; integrators for animal feed based on proteins, amino acids, fats, fatty acids, carbohydrates, vitamins, mineral salts, mineral nutrients and/or trace elements, additives for animal feed; diet integrators for animals; feed integrators and vitamin preparations for animals, in particular for bovine feeding; veterinary services, professional consultancy and advisory services relating to zootechnical feed, namely zootechnical feed for bovine feeding; feedstuff and additives for feedstuff, feedstuff in tablets, stable feed, wet feedstuff, dry feedstuff, litter, long-stalk litter/straw, hay, silage and water-soluble feedstuff; compound feedstuff, reconstituent forages, feedstuff for breeaing, feedstuff based on mineral nutrients, complementary feedstuff and forage additives, supplementary feedstuff based on mineral nutrients for animals; additives and additive substances for feedstuff and forages not for medical use, in particular for bovine feeding; meal for animals, nonmedicated integrators for animal feed; veterinary treatments for animals, namely for livestock holdings, cattle, and milk cows.

The contested services are the following:

Class 44:         Agriculture services enabling the preparation of seeds; agricultural services for coating seeds with fertiliser and other products used in agriculture; agriculture and horticulture services, in particular relating to the sifting, preparation, treatment, coating and/or immunisation of seeds, grains, roots or the like before sowing or planting.

The term ‘in particular’, used in the applicant’s list of services, indicates that the specific services 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

Contested services in Class 44

The opponent’s farming services are the activity or business of growing crops and raising livestock. Therefore, the contested agriculture services enabling the preparation of seeds; agricultural services for coating seeds with fertiliser and other products used in agriculture; agriculture and horticulture services, in particular relating to the sifting, preparation, treatment, coating and/or immunisation of seeds, grains, roots or the like before sowing or planting and the opponent’s services overlap in so far as the farming services involve the preparation and coating of seeds. 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 services found to be identical are directed mainly at farmers. The services at issue are specialised services directed at people and business customers with specific professional knowledge or expertise.

The degree of attention is considered to be average.

3. The signs

	NUTRISTAR
Earlier trade mark	Contested sign

The relevant territory is Italy.

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).

Conceptually, even though the marks as a whole are invented terms which evoke no clear concept they consist of two words which are allusive of the services in question, ‘nutri’ alluding to the nutritional character of the end product of the services and ‘star’ alluding to their supreme quality. Since the additional figurative element in the earlier mark has no meaning, conceptually the marks are identical.

Visually, the marks are highly similar, merely differing in the curved line and the typeface of the earlier mark which have little impact from a visual perspective since these figurative elements are not more eye-catching than the verbal element and in general consumers tend to pay more attention to verbal elements than to figurative elements (judgment of 14/07/2005, T-312/03 Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4, Best Tone, § 24; and 13/12/2011, R 53/2011-5, Jumbo, § 59).

Aurally, the marks are identical because they consist of or contain the same verbal elements. 

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, even though the mark consists of two words which are allusive of the services in question, ‘nutri’ alluding to the nutritional character of the end product of the services and ‘star’ indicating their supreme quality, as a whole, the earlier trade mark has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark resides in the combination of its constituent elements and must be seen as normal.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22 et seq.).

In the present case, the relevant services have been found identical and they target mainly farmers with an average degree of attention. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness in relation to the relevant services. The signs are aurally and conceptually identical. Moreover, the signs are visually highly similar.

Pursuant to Article 8(1)(b) EUTMR the trade mark applied for shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

 

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 Italian trade mark registration No 1 210 894. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier right, Italian trade mark registration No 1 210 894, leads to the success of the opposition and to the rejection of the contested trade mark for all the services 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

Adriana VAN ROODEN

Benjamin Erik WINSNER

Boyana NAYDENOVA

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.