OPPOSITION No B 2 712 050

Stichting Hortivation, ABC Westland 109, 2685 DB Poeldijk, the Netherlands (opponent), represented by Marqu Brands & Trademarks BV, Zuid-Hollandlaan 7, 2596 The Hague, the Netherlands (professional representative)

a g a i n s t

Messe Essen GmbH, Messehaus Ost Norbertstr., 45131 Essen, Germany (applicant), represented by Siebeke – Lange – Wilbert, Cecilienallee 42, 40474 Düsseldorf, Germany (professional representative).

On 31/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 712 050 is partially upheld, namely for the following contested goods and services:

Class 16:         Printed matter; magazine.

Class 35:         Arranging and conducting of commercial trade fairs, meetings.

Class 41:         Publishing of publications and printed matter, including on the internet.

2.        European Union trade mark application No 15 002 769 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 002 769. The opposition is based on, inter alia, European Union trade mark registration No 14 808 232. 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.

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 14 808 232.

1. The goods and services

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

Class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking, checking supervision, life-saving and teaching apparatus and instruments; data processing equipment and computers; software; software applications; software relating to mathematical models for greenhouse horticulture; electronic publications, downloadable or recorded on media; information in electronic form, downloadable or recorded on media.

Class 35:        Advertising; business management; business administration; office functions; business organization and business economics consultancy; market research and analysis; management of business projects for others; business project management; setting up and managing databases; updating and maintenance of data in databases; compilation of statistics; arranging of business and commercial contacts; service to assist in establishing a network of business contacts; consultancy relating to the aforesaid services; the aforesaid services whether or not provided via electronic channels, including the internet.

Class 42:        Scientific and technological services and research and design relating thereto; industrial analysis and research services; technological research with regard to the greenhouse horticulture; preparation of reports relating to technological research; engineering services; technological engineering services; analysis of technical data; providing technological information in the field of greenhouse horticulture; quality control; design and development of software; consultancy and information relating to the aforesaid services; the aforesaid services whether or not provided via electronic channels, including the internet.

The contested goods and services are the following:

Class 16:        Printed matter; magazine.

Class 35:        Arranging and conducting of commercial trade fairs, meetings.

Class 41:        Organising and arranging presentations, exhibitions, information events, conferences and congresses; publishing of publications and printed matter, including on the internet.

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

The term ‘including’, 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).

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 16

The contested printed matter; magazine respectively include and consist of paper publications. These goods are similar to the opponent’s electronic publications, downloadable in Class 9, as they have the same purpose, and they can have the same producers (i.e. publishers) and end users. Furthermore, they are in competition.

Contested services in Class 35

The contested arranging and conducting of commercial trade fairs, meetings consist of the organisation of events for commercial and promotional purposes. Therefore, these services are similar to a low degree to the opponent’s advertising, as they have the same promotional purpose and the same end users, namely companies that wish to acquire a competitive advantage or reinforce their position in the market through publicity.

Contested services in Class 41

The contested publishing of publications and printed matter, including on the internet consists of making available for sale to the public written content on paper and online. These services are similar to the opponent’s software in Class 9, as they can have the same purpose. Moreover, they can have the same producers (i.e. publishers) and end users.

The contested organising and arranging presentations, exhibitions, information events, conferences and congresses consist of event management services and are considered dissimilar to all the applicant’s goods and services in Classes 9, 35 and 42. The opponent’s goods in Class 9 are electronic items of various natures; the services in Class 35 essentially consist of advertising and business administration; finally, the opponent’s services in Class 42 are mainly scientific and consultancy services. These goods and services and the contested services have different natures, purposes and methods of use. They are neither in competition nor clearly complementary. Moreover, the usual commercial origins of the goods and services and their distribution channels and sales outlets are normally different.

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 and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise, inter alia, in the fields of publications and advertising. The degree of attention is average.

3. The signs

	hortivation
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 earlier mark is a figurative mark consisting of the word ‘HORTIVATION’ in slightly stylised upper case letters. Being meaningless, the word element is distinctive. The mark also includes a figurative device consisting of a grey zigzag horizontal line depicted on the left-hand side of and above the verbal element of the mark. 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). Therefore, although the figurative element of the mark is not devoid of distinctive character, it is of limited significance in the present comparison. This also applies to the stylisation of the mark.

The earlier mark has no elements that could be considered clearly more dominant than other elements.

The contested mark is the word mark ‘HORTIVATION’, which has no meaning for the relevant public and is, therefore, distinctive. As a general rule, when a sign is registered as a word mark, it is the word as such that is protected and not its written form; therefore, the typeface actually used at the moment of the filing of the mark is irrelevant. In the present case, any differences arising from the use of lower or upper case letters are immaterial.

Visually, the signs coincide in the string of letters ‘HORTIVATION’, which constitutes the entirety of the contested sign and is the only verbal element of the earlier mark. They differ in the stylisation and in the additional figurative element of the earlier mark, which are of limited relevance for the reasons given above. Therefore, the signs are visually highly similar.

Aurally, the signs coincide in the sound of the letters ‘HORTIVATION’, present identically in both signs. The figurative element of the earlier mark will not be pronounced and so it is not subject to a phonetic assessment. Therefore, the signs are aurally identical.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness, since its mark has no meaning in relation to the relevant goods. However, a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71). Enhanced distinctiveness requires recognition of the mark by the relevant public, acquired through the mark’s use or reputation. In any case, this has to be proven by the mark’s proprietor by submitting appropriate evidence. The opponent did not file any evidence in this regard.

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.

5. Global assessment, other arguments and conclusion

The contested goods and services are partly similar to varying degrees and partly dissimilar to the opponent’s goods and services. The degree of attention of the general and professional public is average, and the earlier mark has a normal degree of distinctiveness.

The signs are visually highly similar and aurally identical, because they both contain the distinctive word ‘HORTIVATION’. The marks differ only in the stylisation and additional graphic device of the earlier mark, which is not sufficient to distract the attention of average consumers from the distinctive word element or to have a significant impact on their imperfect recollection of the signs. Therefore, this difference is not sufficient to overcome the similarities between the signs or to render them sufficiently different that a likelihood of confusion on the part of the relevant public can safely be excluded. Considering that the verbal element in each sign is meaningless, the conceptual aspect has no bearing on the present comparison.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

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/services 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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be similar to those of the earlier trade mark.

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). In the present case, it is considered that the similarities between the signs are sufficient to outweigh the low degree of similarity between some of the services.

The rest of the contested services 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 services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

• Benelux trade mark registration No 980 795,.

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

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the signs and the goods and services are obviously not identical.

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 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

Andrea VALISA

Orsola LAMBERTI

Michele M. BENEDETTI-ALOISI

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.