OPPOSITION No B 2 608 282

Cheminova A/S, Thyborønvej 78, 7673 Harboøre, Denmark (opponent), represented by Gorrissen Federspiel Advokatpartnerselskab, Silkeborgvej 2, 8000 Aarhus C, Denmark (professional representative)

a g a i n s t

Plant Impact plc, Rothamsted West Common, Harpenden Hertfordshire al5 2jq, United Kingdom (applicant), represented by E.A. Fenwick & Co. Limited,
5 Stonehouse Road, Sutton Coldfield, West Midlands B73 6LR, United Kingdom (professional representative).

On 21/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 608 282 is partly upheld, namely for all the contested goods (in Class 1).

2.        European Union trade mark application No 14 369 871 is rejected for all the above goods. It may proceed for the remaining services (in Class 42).

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services (in Classes 1 and 42) of European Union trade mark application No 14 369 871 (word mark:
“plant impact”). The opposition is based on European Union trade mark registration No 2 348 712 (word mark: “IMPACT”). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark No 2 348 712.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above (22/03/2004).

The contested application was published on 12/08/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 12/08/2010 to 11/08/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following in Classes 1 and 5:

Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Class 5: Plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; pesticides.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 05/09/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 10/11/2016 to submit evidence of use of the earlier trade mark. On 10/11/2016, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• printout from the Danish company register (Appendix 1);
• extract from the opponent’s annual report for 2015, pages 1-5 (Appendix 2);
• brochures for the Spanish market – undated (Appendix 3);
• extracts from brochures and catalogue pages for the Spanish market – undated (Appendix 4);
• overview of the opponent’s products sold in Spain – undated (Appendix 5);
• safety data sheets for the opponent’s products sold in Spain – dated June 2015 (Appendix 6);
• examples of labels used in Spain – undated (Appendix 7);
• examples of products sold in Spain – undated (Appendix 8);
• example of a label for one of the opponent’s products used in Italy – undated (Appendix 9);
• safety data sheets for a fungicidal product sold in Italy – dated June 2015 (Appendix 10);
• extracts from a catalogue distributed in Italy – dated 2015 (Appendix 11);
• printout from the opponent’s Romanian website about fungicides – undated (Appendix 12);
• safety data sheets for a fungicidal product sold in Romania – dated October 2013 (Appendix 13);
• example of a label for one of the opponent’s products used in Romania and Bulgaria – dated October 2012 and December 2013 (Appendix 14);
• printout from the opponent’s Polish website – undated (Appendix 15);
• safety data sheets for a fungicidal product sold in Poland – dated October 2014 and May 2015 (Appendix 16);
• catalogue page for the Polish market – undated (Appendix 17);
• examples of labels for a fungicidal product used in Croatia – dated January 2008, November 2011, November 2012, January 2014 and September 2014 (Appendix 18);
• registration certificates for a fungicidal product issued in Croatia – dated 1994, 2004, 2008, 2010 and 2012 (Appendix 19);
• various invoices addressed to clients in Spain, Croatia and Romania – dated between 2010 and 2016 (Appendix 20).

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) CTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely invoices and labels, for example, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned. In the present case, the opponent has used the sign partly as a word mark and partly with additional figurative elements, which does not alter the distinctive character of the mark in the form in which it was registered in a relevant manner. In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory. This is in particularly based on the submitted invoices, which are meaningful.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case the evidence shows genuine use of the trade mark for the goods in Class 5 fungicides.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

For the other goods and services in Classes 1 and 5, documents that could prove use of the mark, such as invoices, turnover and sales figures, advertisements, and extracts from tax accounts and/or commercial balance sheets, have not been submitted. Other relevant documents, such as affidavits, declarations by professional associations, evidence of market share and surveys, are also absent. The documents submitted are, at best, suitable for use as supplementary material; they are not sufficient to provide proof of use without further relevant documentation.

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 and services

The goods in Class 5 on which the opposition is based are the following:

Fungicides.

The contested goods and services in Classes 1 and 42 are the following (after limitations made by the applicant in its letters dated 12/05/2016 and 16/01/2017):

Class 1: Chemicals for use in agriculture, horticulture and forestry; composts; fertilisers; manures; adjuvant preparations for plants; plant growth regulators; plant nutrients; plant stimulants; plant tonics; preparations and substances for application to plants during periods of stress; preparations and substances for fortifying plants; preparations and substances for promoting the growth of plants; preparations and substances for strengthening plants; preparations and substances for the treatment of plants [other than fungicides, weedkillers, herbicides, insecticides and parasiticides]; chemicals and chemical products for the treatment of plant diseases; chemicals and chemical products for use in the prevention of environmental damage to plants; chemicals and chemical products for use in the therapy of environmental damage to plants; products for combating maladies of plants; products for maintaining the health of plants; yield promoters for crops and plants; yield maximisers for crops and plants; controlled release compositions for enhancing plant growth and yield; chemicals and chemical products for use in the manufacture of all of the aforesaid goods; bacterial and fungal substances for use in agriculture, horticulture and forestry; root growth enhancers and growth accelerators for use in agriculture, horticulture and forestry.

Class 42: Research and development relating to promotion of growth for plants in agriculture, horticulture and forestry; research and development relating to crop enhancement or crop nutrition.

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

Class 1 mainly covers chemical products for industrial, scientific and agricultural purposes, including those used for the manufacture of products falling within other classes.

It cannot be excluded that goods such as chemicals used in agriculture, horticulture and forestry require few processing steps to be considered a finished product, such as a fungicide. Such chemicals may be considered to already share the inherent purpose of fungicides: to kill or inhibit fungi or fungal spores, in particular when they consist of the fungicide’s active ingredient. Furthermore, the same (agro-) chemical companies may produce the semi-processed goods as well as the final product. There is therefore a low degree of similarity between the contested chemicals used in agriculture, horticulture and forestry and the opponent’s fungicides (08/10/2012, R 1631/2012-1, QUALY / QUALIDATE, § 27-28). The same reasoning applies to the following contested goods: adjuvant preparations for plants; plant growth regulators  plant stimulants; plant tonics; preparations and substances for application to plants during periods of stress; preparations and substances for fortifying plants; preparations and substances for promoting the growth of plants; preparations and substances for strengthening plants; preparations and substances for the treatment of plants [other than fungicides, weedkillers, herbicides, insecticides and parasiticides]; chemicals and chemical products for the treatment of plant diseases; chemicals and chemical products for use in the prevention of environmental damage to plants; chemicals and chemical products for use in the therapy of environmental damage to plants; products for combating maladies of plants; products for maintaining the health of plants; yield promoters for crops and plants; yield maximisers for crops and plants; controlled release compositions for enhancing plant growth and yield; chemicals and chemical products for use in the manufacture of all of the aforesaid goods; bacterial substances for use in agriculture, horticulture and forestry; root growth enhancers and growth accelerators for use in agriculture, horticulture and forestry.

The remaining contested composts; fertilisers; manures; plant nutrients; fungal substances for use in agriculture, horticulture and forestry and the opponent’s fungicides in Class 5 are not only chemical products but also finished products with a specific use in the agriculture industry. They therefore have similar purposes, since fungicides in Class 5 can be considered to have growth-enhancing properties, as they prevent conditions that could inhibit plant growth. Therefore, these goods are similar to a low degree.

Contested services

The contested research and development relating to promotion of growth for plants in agriculture, horticulture and forestry; research and development relating to crop enhancement or crop nutrition have different natures and purposes from the opponent’s goods. Furthermore, these goods and services are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that these goods and services came from the same undertaking or economically linked undertakings. Therefore, 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 similar to a low degree 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, because the goods are not consumed or purchased on a daily basis and will therefore be selected carefully.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

IMPACT	plant impact
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The coinciding element ‘IMPACT’ and the additional word of the contested sign ‘plant’ are not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Hungarian- and Lithuanian-speaking parts of the public.

Both signs are word marks, which are protected in all different typefaces.

Visually and aurally, the earlier trade mark is included in its entirety as the second element of the contested sign. The signs differ in the first word of the contested sign, ‘plant’. Therefore, they are visually and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; and 30/06/2004, T-186/02, Dieselit, EU:C:2011:238, § 38).

The contested goods are similar to a low degree and the contested services are dissimilar. The signs are visually and aurally similar to an average degree.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the services are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Taking into account the average degree of visual and aural similarity between the signs, the fact that the earlier trade mark is included in its entirety in the contested sign, the average degree of distinctiveness of the earlier trade mark and the no more than average degree of attention of a part of the public, there is, even taking into account the low degree of similarity between the goods, a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and therefore the opposition is upheld.

Contrary to the applicant’s opinion, the differences between the signs are not sufficient to distinguish them clearly from each other. They will be regarded as originating from the same undertaking or from economically linked undertakings. The degree of distinctiveness of the earlier trade mark is not lower than average, because it will not be understood by a relevant part of the public (see above). Insofar as the applicant has quoted the decision of the Office No 2898/2003 of 17/12/2003 ruling on opposition No B 352 403, besides the fact that it does not represent the Office’s current practice, not only the signs (‘IMPACTO’ versus ‘CLEAN IMPACT’) but also the relevant territory (Spain) are different from those in the present case. Therefore, this decision cannot be taken into account as a significant factor.

Considering all the above, there is a likelihood of confusion on the part of the Hungarian- and Lithuanian-speaking parts 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.

There is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is partly well founded under Article 8(1)(b) EUTMR.

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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 shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Magnus ABRAMSSON

Peter QUAY

Martin EBERL

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.