OPPOSITION No B 2 735 564

Compo Expert GmbH, Krögerweg 10, 48155 Münster, Germany (opponent), represented by Alpmann Fröhlich Rechtsanwaltsgesellschaft mbH, Verspoel 12, 48143 Münster, Germany (professional representative)

a g a i n s t

Alfonso Martinez Morcillo, C/ Santa Teresa nº 8- 1º D, 03590 Altea, Spain, (applicant]), represented by Padima, Calle Gerona 17, 1º A-B, 03001 Alicante, Spain (professional representative)

On 20/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 735 564 is upheld for all the contested goods, namely:

Class 1:         Chemicals used in agriculture, horticulture and forestry; Fertilizers for soil; Fertilisers, and chemicals for use in agriculture, horticulture and forestry. 

2.        European Union trade mark application No 15 242 175 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 242 175  (figurative), namely against all the goods in Class 1. The opposition is based on European Union trade mark registration No 156 604 ‘HORTRILON’ (word). 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.

1. The goods

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

Class 1: Chemicals used in agriculture, horticulture and forestry and in landscaping and sports field construction; earth for plants, soil conditioning chemicals, peat; manures.

The contested goods are the following:

Class 1: Chemicals used in agriculture, horticulture and forestry; Fertilizers for soil; Fertilisers, and chemicals for use in agriculture, horticulture and forestry.

Contested goods in Class 1

Chemicals used in agriculture, horticulture and forestry are identically contained in the lists of goods of both signs. Chemicals for use in agriculture, horticulture and forestry of the contested sign is identical to chemicals used in agriculture, horticulture and forestry of the earlier sign, since ‘for use in’ and ‘used in’, have the same meaning.

The contested fertilizers for soil, which are defined as ‘any substance, such as manure or a mixture of nitrates, added to soil to increase its productivity’ (Collins English Dictionary), include, as a broader category, the opponent’s manures. While from the above definition it is obvious that manures are included in fertilizers for soil, for the sake of completeness, manures are defined as ‘animal faeces, sometimes mixed with chemicals, that is spread on the ground in order to make plants grow healthy and strong’ (Collins English Dictionary). Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical.

The contested fertilisers for use in agriculture, horticulture and forestry, represent fertilizers designated for use in specific fields. Since ‘fertilizers’ are defined as ‘any substance, such as manure or a mixture of nitrates, added to soil or water to increase its productivity’ (Collins English Dictionary), manures of the earlier sign is obviously included in, or at least overlaps with the broader category of fertilisers for use in agriculture, horticulture and forestry. Therefore, these goods are considered 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 and at the professional public with specific professional knowledge or expertise in the field of agriculture, horticulture and forestry. The Opposition Division does not agree with the opponent that the general public shows an average degree of attention with respect to the goods at issue. On the contrary, the relevant goods are or contain chemicals and other specialised additives, which determine their properties and effect, depending on their contents they are aimed at different types of plants, soils, etc. and are not purchased on a daily basis. Therefore the general public, as well as the specialised public is considered to show attention that is higher than the average (25/06/2016, R 1182/2015-5, HORTY / Horti-Cote et al., § 18 – § 20)

3. The signs

HORTRILON
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).

In its observations, the applicant states that the initial part ‘HORT’, which both signs share, would go unnoticed since it will be considered related to the goods. While this might appear to be relevant for the goods designated for use in horticulture, this will not be the case for the goods used in agriculture and forestry, as has been correctly pointed out by the opponent. Further, since the relevant territory is the European Union, it is only in part of the Member States that ‘horticulture’ or a similar term is used for ‘the study and practice of growing plants’ (Collins English Dictionary). Even for these countries, given that as a rule consumers do not dissect a word into separate elements but perceive it as a whole, it is possible that part of the public do not link ‘HORT’ to horticulture but perceives the word elements as a whole. The word elements of the marks taken as a whole would be meaningless, since they are invented words and at most they might be perceived as allusive of characteristics of part of the goods and not as directly descriptive terms.

In other countries, by way of example in Estonia, Lithuania, Latvia, Bulgaria, there is a completely different term for horticulture (‘aiandus’ in Estonian, ‘sodininkystė’ in Lithuanian, ‘dārzkopībā’ in Latvian, ‘градинарство’ [‘gradinarstvo’] in Bulgarian). Accordingly, in those countries the term ‘horticulture’ will not be understood and therefore the first part ‘HORT’ will not suggest any link with horticulture.

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.

In view of the possibly varying degree of distinctiveness of the common beginning ‘HORT of the signs for the different parts of the public with respect to part of the goods, the Opposition Division will focus on the Estonian, Lithuanian, Latvian and Bulgarian-speaking part of the public, who would not see this element as allusive and for whom it will have a normal degree of distinctiveness.

The applicant argues that the shared element ‘HORT’ is commonly used in other trade marks and provides a list of 5 European Union trade marks that contain the common prefix ‘HORT’. Even though the applicant has not specifically explained the relevance of this fact, if the Opposition Division presumes that the reason was to show that ‘HORT’ has a low distinctive character due to its common use, such claim is unfounded. In particular, the existence of 5 European Union trade marks, one of which is protected for goods different from Class 1, is not capable of proving such claim. Moreover, 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 ‘HORT’.

The earlier mark is a word mark consisting of the single word element ‘HORTRILON’. The contested sign is a figurative mark, comprised of the word element ‘HORTIMON’ in a lower case and quite standard font, in which the dot in the letter ‘I’ is represented as a stylised leaf, and a globe device, positioned above the word element. The device elements are not especially imaginative. One is a basic stylisation of the globe with several circles of latitude on it and one meridian, represented in a way to resemble a leaf appearing in the left part of the globe. The other one, if at all noticed by the consumer, is a representation of a leaf. In view of the goods at issue, the device elements are considered allusive, since they create connotations with plants and the goods at issue are aimed to be used in agriculture, forestry and horticulture. Therefore, these elements have a low degree of distinctiveness.

In the light of the foregoing, and upon taking into account that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign has a stronger impact on the consumer than the figurative component, the word element of the contested mark will have stronger impact on the overall impression of the sign.

On the dominant element(s) of the contested sign – the Opposition Division disagrees with the position of the applicant that it is the globe device that is the dominant element in the sign. Indeed, it is a bit bigger in size, when compared to the word element. On the other hand, it is quite basic and does not attract the attention with originality or specific details. At the same time, ‘HORTIMON” is represented in sufficiently large letters to attract attention and in view of the fact that consumers tend to notice and remember the word elements in composite signs more easily, this element equally attracts the consumer’s attention. Therefore, the contested sign has no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the common beginning ‘HORT’ and the common ending ‘ON’. They differ in their middle part which is ‘RIL’ in the earlier sign and ‘IM’ in the contested one, where however there is a coincidence in the vowel ‘I’. Also, the signs differ in the figurative devices of the contested sign which have no counterparts in the earlier mark.

It is to be noted that 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. In this respect, the common beginning of the signs will have a greater impact on the perception of the signs than the different middle part, moreover having in mind that the words also coincide in their last two letters. Additionally, the public is generally less aware of differences between long signs and the ones at issue are considerably long words – 9 and 8-letters respectively.

In view of the similarities in the word elements of the signs and the low degree of distinctiveness of the figurative elements of the contested sign, there is an average degree of visual similarity between the marks.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of ‘HORT(*)I*ON’. The pronunciation differs in the middle parts of the words, respectively ‘R*L’ of the earlier sign and ‘*M” of the contested one. Additionally, both words consist of three syllables, with identical vowels ‘O-I-O’, and therefore have identical rhythm and intonation. In this respect, the applicant argues that both words would be differently pronounced due to the presence of an accent mark in the contested one. As noted above, the stylised leaf above the letter ‘I” in “HORTIMON’ is more likely to be perceived as a kind of an original representation of the dot, which is part of the letter ‘I’ when written in lower case. As for the small dot or short line on top of the second letter ‘O’ of the element, part of the public might perceive it as an accent mark, while another not, because it is not separated from the letter, it is quite short and has a shape different from the one of an accent. Even for those who see the second ‘O’ as the stressed vowel in the word, it is possible that part of the consumers place the stress in ‘HORTRILON’ also on the last syllable.

In view of the above, depending on the perception of the additional element above the second letter ‘O’ in the contested sign, for part of the public the signs will be aurally similar to a high degree and for another part – to an average degree.  

Conceptually, as noted above, the public at large will not attribute any meaning to the word elements of the signs. It is only the figurative device(s) that would convey some semantic meaning to the contested mark. Accordingly, the consumers would not associate the earlier mark with any notion, while the contested sign would convey a concept linked to the globe, leafs, plants. Therefore, the signs are not conceptually similar.

Since 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 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

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).

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 signs were found to coincide in their beginning ‘HORT’ and their ending “ON” and to differ in their middle syllable, which does however contain an identical vowel ‘I”.

The goods were found to be identical and directed at the general public as well as at professionals, whose attention is higher than the average. The signs were found to be visually similar to an average degree, aurally similar to a high degree for part of the public and to an average – for another and conceptually not similar. The earlier mark has a normal degree of distinctiveness for the relevant public with respect to the goods at issue.

In view of the above and upon taking into account the principles of interdependence and of imperfect recollection, it is considered that the higher degree of attention of the relevant public may not overweigh the found identity of goods and similarity of signs. Therefore, there is a likelihood of confusion on the part of the Estonian, Lithuanian, Latvian and Bulgarian-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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 156 604. It follows that the contested trade mark must be rejected for all the contested goods.

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

Lucinda CARNEY

Teodora TSENOVA-PETROVA

Richard BIANCHI

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.