OPPOSITION No B 2 622 440

Bayer Intellectual Property GmbH, Alfred-Nobel-Str. 10, 40789 Monheim am Rhein, Germany (opponent), represented by Bomhard IP, S.L., C/ Bilbao, 1, 5º, 03001 Alicante, Spain (professional representative)

a g a i n s t

Stoller Europe S. L. U., C/ Alisios Nº 24, Pol. Ind. Pla de la Vallonga, 03006 Alicante, Spain (applicant), represented by Alberto Paz Espuche, Agilmark Patentes & Marcas S.L., Parque cientifico de la Universidad Miguel Hernández de Elche, Avda de la Universidad s/n, Edificio Quórum IV, 03202 Elche (Alicante), Spain (professional representative).

On 31/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 622 440 is partially upheld, namely for the following contested goods:

Class 1:         Manures; Phosphates; Nitrogenous fertilisers.

2.        European Union trade mark application No 14 496 921 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 496 921. The opposition is based on United Kingdom trade mark registration No 2 471 216. 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.

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. The contested application was published on 11/09/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the United Kingdom from 11/09/2010 to 10/09/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 5:        Preparations for killing weeds and destroying vermin, insecticides, herbicides, fungicides.

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 20/09/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 25/11/2016 to submit evidence of use of the earlier trade mark. On 10/11/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Enclosure 1: A document showing an overview of the advertising for ‘HARVEST’ trade mark in the UK during the years 2011 and 2012.
• Enclosure 2: Environmental Information sheet of the ‘HARVEST’ product (a total herbicide/desiccant in agriculture and horticulture for the control of grass and broad-leaved weeds and desiccation pre-harvest in a wide range of crops and non-crop situations).
• Enclosure 3: A package insert providing a full product description, use instructions, as well as the manufacturer’s address.
• Enclosure 4: A copy of a Safety Data Sheet for the product ‘HARVEST’ dated of August 2014.
• Enclosure 5: Five invoices showing the sale of HARVEST products from 2011 until 2015 (one invoice per year).
• Enclosure 6: Screenshot from the opponent’s UK website showing information about ‘HARVEST’ product.

The applicant argues that the evidence submitted by the opponent is not enough to show genuine use of the earlier mark. According to the applicant, the overview of the advertising of ‘HARVEST’ (Enclosure 1) is totally out of the relevant period as it is dated in September 2016. The Enclosures 2, 3 and 4 do not show any market share or sales. The invoices are very few and are not enough to show use of the earlier mark. Copies of the websites (Enclosure 6) are not independent proof of use as they don’t give information on products that come from their own company.  

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Enclosures 1 to 5 show that the place of use is the United Kingdom. This can be inferred from the language of the documents (English), the currency mentioned in the invoices and advertisement expenses (GBP – Great Britain Pounds – £) and some addresses in the United Kingdom in the aforementioned enclosures. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period, namely the copy of a safety data sheet (Enclosure 4), the document showing an overview of the advertising (Enclosure 1) and invoices covering the years 2011, 2012, 2013, 2014 and 2015 . Therefore, there are sufficient indications as regards time of use.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The documents filed, namely the invoices together with other documents, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Although, the opponent only submitted five invoices (one per relevant year), the invoices show sale of 104 packs of ‘HARVEST’ products (EUR 151 per unit). In an overall assessment, and in the context of further material submitted such as a package insert (Enclosure 3), a copy of safety data sheet  and other documents, these evidence does provide the Opposition Division with the minimum level of information concerning the commercial volume, the territorial scope, the duration, and the frequency of use during the relevant period in the relevant territory so that it allows for a conclusion that the sales in question constitute use which is not merely token use.  

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

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 following goods:

Class 5:        Preparations for killing weeds, herbicides.

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

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 United Kingdom trade mark registration.

1. The goods

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

Class 5: Preparations for killing weeds, herbicides.

After the limitation of 15/09/2016, the contested goods are the following:

Class 1: Manures; Phosphates; Nitrogenous fertilisers; Chemical substances for preserving foodstuffs; Industrial chemicals.

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.

The contested manures are similar to the opponent’s herbicides. The opponent’s goods are substances intended for preventing, destroying or controlling any pest or unwanted species of plants by causing harm and interfering with their growth. These goods can be considered growth enhancing, since they prevent conditions that could inhibit plant growth. The contested manures are used in the agricultural industry for the purpose of ensuring healthy plant growth. Therefore, the goods under comparison all serve a similar purpose and can be found in the same outlets (for instance garden centres), can be used in combination, may target the same consumer and can have the same distribution channels.

The contested nitrogenous fertilisers; phosphates and the opponent’s herbicides are similar to the extent that they serve the same purpose of improving the quality of the soil, are distributed through the same distribution channels and are intended for the same public (either farmers or individual consumers that practise gardening). Furthermore they may be produced by the same companies.

The contested industrial chemicals are dissimilar to the opponent’s goods in Class 5 for which use has been shown. The goods applied for are raw chemicals or other materials used in the field of industry while the opponent’s goods are finished products used to destroy or inhibit the growth of plants, especially weeds. The argument that some products in Class 5 can contain or consist of chemical substances is not strong enough to find a similarity between the goods under comparison. The goods applied for target industry and professionals and they are further processed, while the opponent’s goods are finished products aimed at the general end consumer. These goods have different nature, purposes and methods of use. Furthermore, these goods do not have the same distribution channels and they do not usually have the same commercial origin.

The contested chemical substances for preserving foodstuffs are used to keep food fresh until it is purchased by an end consumer. Contrary to the opponent’s view, the Opposition Division considers that these goods are dissimilar to the opponent’s goods as they have a different purpose, nature and different end users. In addition, they are normally sold in different stores and are not in competition nor are they complementary.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise.

The level of attention is considered to vary from average to higher than average, depending on the price and frequency of purchase of these goods.

3. The signs

HARVEST	HARVEST PLUS
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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 word ‘HARVEST’ included in both marks refers to ‘the process or period of gathering in crops’ in English. Bearing in mind that the relevant goods are preparations for killing weeds and herbicides in Class 1 and manures; phosphates; nitrogenous fertilisers; chemical substances for preserving foodstuffs in Class 5, this word may be understood as indicating that they are preparations used for agriculture purposes (for improving the harvest). Therefore, the distinctiveness of this word for the relevant goods is considered to be weak in the perception of the relevant public.

The word ‘PLUS’ will be regarded as something positive or something that has an advantage or added value or quantity. As this word is widely used to describe an advantage or good quality of products, it is considered to be non-distinctive for all the relevant goods. 

In light of the above, the Opposition Division considers that the combination of the verbal elements ‘HARVEST PLUS’ in the contested mark as a whole will be associated by the relevant public with the meaning that the goods at stake assure better harvest.

Visually, the signs coincide in the word ‘HARVEST’. They differ in the additional word ‘PLUS’ of the contested mark which is considered to be non-distinctive.

Therefore, the signs are similar to a high degree.

The same considerations as above apply to the aural comparison.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the word ‘PLUS’ is non-distinctive in relation to the goods at hand, the signs will be associated with almost the same meaning. Therefore, the signs are conceptually highly similar.

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. Reference is made to the previous assertions concerning the semantic content conveyed by the word ‘HARVEST’; in the present case, the earlier trade mark as a whole has a meaning in relation to the relevant goods from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as low for the relevant goods at hand.

5. Global assessment, other arguments and conclusion

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, C-251/95, Sabèl, EU:C:1997:528, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Although the distinctive character of an earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, on the one hand, and a trade mark applied for which is not a complete reproduction of it, on the other, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T-112/03 ‘Flexi Air’).

The contested goods have been found partly similar and partly dissimilar to the ones covered by the earlier mark.

The signs contain the same verbal element ‘HARVEST’ which is the first and an independent element of the contested sign and the only verbal element of the earlier mark. Although, this element may be seen as weak for the relevant goods, as mentioned above, the only additional differing element that could help the relevant consumers differentiate the signs, is the word ‘PLUS’, which as set out before is non-distinctive. Consequently, the consumers will not pay much attention to it. All these factors make the marks similar to a high degree on all three levels of comparison that will induce a likelihood of confusion on the part of the relevant public.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s United Kingdom trade mark registration.

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

The rest of the contested goods 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 goods cannot be successful.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Fabian GARCIA QUINTO

Janja FELC

Francesca CANGERI SERRANO

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.