OPPOSITION No B 2 634 635

Aqua-Terra Bioprodukt GmbH, Langenselbolder Str. 8, 63543 Neuberg, Germany (opponent), represented by Katscher Habermann Patentanwälte, Dolivostr. 15A, 64293 Darmstadt, Germany (professional representative)

a g a i n s t

Trade Corporation International, S.A. Unipersonal, Alcalá, 498, planta 2, 28027 Madrid, Spain (applicant), represented by Silex IP, Poeta Joan Maragall 9, Esc. Izq., 3º Izq., 28020 Madrid, Spain (professional representative).

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

DECISION:

1.        Opposition No B 2 634 635 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 611 206 for the word mark ‘ASCOTOP’. The opposition is based on, inter alia, European Union trade mark registrations No 292 102 and 4 310 348, both for the word mark ‘aquatop’. 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 registrations No 292 102 and 4 310 348.

1. The goods

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

European Union trade mark registration No 292 102

Class 1: Biological substances and chemicals used in agriculture, horticulture and forestry, namely manures and preparations for conditioning, reconstructing and recultivating soil, plants, sludge, ponds, waters, sewage, for use in sewage treatment plants, for processing liquid manure and compost preparation and for preventing the erosion and evaporation of plants and soil.

Class 31: Biological substances and chemicals used in agriculture, horticulture and forestry, namely manures and preparations for conditioning, reconstructing and recultivating soil, plants, sludge, ponds, waters, sewage, for use in sewage treatment plants, for processing liquid manure and compost preparation and for preventing the erosion and evaporation of plants and soil.

European Union trade mark registration 4 310 348

Class 1: Deodorising substances for and in media, including liquids, waters, mud and solids, included in class 1; biological substances and chemicals used in agriculture, horticulture and forestry, namely manures and preparations for conditioning, reconstructing and recultivating soil, plants, sludge, ponds, waters, sewage, for use in sewage treatment plants, for processing liquid manure and compost preparation and for preventing the erosion and evaporation of plants and soil; biological substances and chemicals, namely preparations for decomposing fats in waters, waste waters and other liquid and solid media; scouring preparations, namely preparations for decomposing fats in waters, waste waters and other liquid or solid media; chemicals used in industry and science; chemical cleaning preparations and preservatives, including for vehicles, aeroplanes and ships.

Class 3: Deodorising substances for and in media, including gases, air, liquids, waters, mud and solids, included in class 3; biological and chemical cleaning and care preparations, including for use in clarifying installations, including for use in motor vehicles, vehicles, aeroplanes and ships, included in class 3; polish and lacquer-care preparations, including for motor vehicles, vehicles, aeroplanes and ships, including all for industrial purposes; pipe cleaners.

The contested goods are the following:

Class 1: Manures; manures; seaweed based soil conditioning products; fertilisers and manures.

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

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods 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).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

Manures are identically contained in both lists of goods, listed three times as manures in the list of the contested goods and listed as biological substances and chemicals used in agriculture, horticulture and forestry, namely manures in the opponent’s list of goods of the earlier EUTMs.

The contested fertilisers refer to any substance, such as manure or a mixture of nitrates, added to soil or water to increase its productivity (Collins English Dictionary online, 30/08/2017 at https://www.collinsdictionary.com/dictionary/english/fertilizer). These goods include as a broader category, the opponent’s biological substances and chemicals used in agriculture, horticulture and forestry, namely manures of the earlier EUTMs. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested seaweed based soil conditioning products are included in the broad category of, or overlap with, the opponent’s biological substances and chemicals used in agriculture, horticulture and forestry, namely preparations for conditioning, reconstructing and recultivating soil. 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 the public at large (e.g. enthusiasts of gardening) and at professionals in, inter alia, the agricultural field. The degree of attention will be higher than average, since the purpose of the products is rather specific in terms of, for example, choosing which fertiliser is the most appropriate to use in certain conditions. As regards the general public, it must be assumed that purchases of fertilisers will be infrequent and will usually be made with professional assistance at specialist outlets. Furthermore, consumers are aware of the potential health risks these products may present to the person working with them or to others.

3. The signs

aquatop	ASCOTOP
Earlier trade marks	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 marks are the word marks ‘aquatop’. The contested sign is the word mark ‘ASCOTOP’. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.

The verbal elements ‘AQUATOP’ and ‘ASCOTOP’, constituting the marks under comparison, have no meanings for the public in the relevant territory.

However, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Therefore, as pointed out by the opponent, it is reasonable to assume that the element ‘AQUA’, included at the beginning of the earlier marks, will be perceived by the relevant consumers with its meaning of ‘water’. Indeed, the element ‘AQUA’ is a common Latin word, ‘which the European Union consumer may be assumed to know’ (28/11/2013, T-410/12, vitaminaqua, EU:T:2013:615, § 57, and 28/01/2015, T-123/14, AquaPerfect, EU:T:2015:52, § 34). Nevertheless, although fertilisers can be used with water (e.g. dissolved in water), the element ‘AQUA’ does not refer to or evoke any specific characteristics of the goods at issue. Therefore, the Opposition Division sees no reason to consider the inherent distinctiveness of this term to be less than average. In any event, the sole element of the mark, ‘AQUATOP’, as a whole is an invented word with no straightforward meaning in relation to the goods at issue. Therefore, its distinctiveness is average.

As for the contested sign, ‘ASCOTOP’, the majority of the relevant public will perceive it as a whole as a meaningless verbal element with an average distinctiveness.

It cannot be excluded that part of the public, such as some of the Spanish consumers, may perceive the beginning ‘ASCO’ of the contested sign as ‘disgust’ – ‘a great loathing or distaste aroused by someone or something’, as the word ‘asco’ exists as such in Spanish. This element is of average distinctiveness in relation to the goods at issue.

Furthermore, part of the English-speaking public that will dissect the earlier mark in two parts because of its meaningful beginning may perceive its endings, ‘TOP’, as denoting ‘the best or finest part of anything’, and thus as a laudatory element that is weak for all the goods in question. However, this finding does not apply for the contested sign, which either will be perceived as a single meaningless element or will be dissected by some of the Spanish consumers into two elements because of the meaningful beginning ‘ASCO’. However, in the second scenario the ending ‘TOP’ is not likely to be perceived with its meaning in English by the Spanish consumers, since this word is not used in common parlance in Spanish.

Conceptually, reference is made to the above assertions concerning the semantic content conveyed by the marks for the different parts of the public.

Consequently, for the part of the public that will perceive meanings in the earlier marks but will not attribute any meaning to the contested sign, ‘ASCOTOP’, the signs are not conceptually similar.

The same applies for the part of the public that will perceive the meaning of ‘AQUA’ (and part of the public also of ‘TOP’) in the earlier marks and that may perceive the element ‘ASCO’ in the contested sign with a meaning. As the signs will be associated with different meanings in that case, the signs are not conceptually similar either.

Visually and aurally, the signs coincide in the sequence of letters ‘A***TOP’. However, they differ in the letters in second, third and fourth position in these words, namely ‘QUA’ in the earlier mark and ‘SCO’ in the contested sign.

An examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details. Considering that the beginning ‘AQUA’ of the earlier marks (and for a part of the public ‘ASCO’ of the contested sign) will be associated with a clear meaning, these letters will be perceived together and the coinciding first letter ‘A’ in the marks will not be dissected from them. The Opposition Division takes the view that the different beginnings, ‘AQUA’ and ‘ASCO’, of the conflicting signs play a more important role in the consumer’s perception than the common ending, ‘TOP’. 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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Moreover, since the alphabet is made up of a limited number of letters which, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them. In the present case, the letters that the signs have in common, ‘A***TOP’, do not constitute independent elements and the differing letters in their initial elements will be noticed by the relevant consumers.

Consequently, taking into account all of the above, the marks are visually and aurally similar to only 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 marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods under comparison are identical. The degree of attention of the relevant public is higher than average.

The signs are visually and aurally similar to a low degree. The letters that the signs have in common are mostly concentrated at the endings of the marks, where consumers do not focus so much attention, while the different beginnings, ‘AQUA’ and ‘ASCO’, are clearly perceptible and will not go unnoticed by the relevant public.

Regarding the conceptual comparison, the marks have no concept in common that would lead the public to associate one with the other. Furthermore, it must be taken into account that the existence of conceptual differences between signs can counteract the visual and phonetic similarities between them when at least one of the two signs has a sufficiently clear and specific meaning that the public is capable of grasping immediately (14/10/2003, T-292/01, ‘Bass’, § 54).

Therefore, the mere coincidence in a string of letters is not sufficient for the marks to convey a similar overall impression.

Consequently, the Opposition Division finds that the differences between the signs will enable the relevant consumers to safely distinguish between them and will not lead consumers to associate the goods, even those that are identical, with the same undertaking or economically linked undertakings, let alone confuse the signs.

Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on earlier German trade mark registration No 1 163 015 for the word mark ‘aquatop’. Since this mark is identical to the ones which have been compared and covers no broader scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Benjamin Erik WINSNER

Boyana NAYDENOVA

Begoña URIARTE VALIENTE

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.