OPPOSITION No B 2 767 641

AGRIA AD, Asenovgradsko shose, 4009 Plovdiv, Bulgaria (opponent), represented by Biliana Antranik Magardichian, 16A Prof. Ivan Duychev Str., Office 3, 1618 Sofia, Bulgaria (professional representative)

a g a i n s t

Finagris SA, Rue Saint-mathieu 24, 2138 Luxembourg, Luxembourg (applicant), represented by Joana Dez-Réis Grilo, Rua Rodrigo da Fonseca, 82- 2º Esq., 1250-193 Lisbon, Portugal (professional representative).

On 12/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 767 641 is partially upheld, namely for the following contested goods and services:

Class 1:        Agricultural chemicals; Agriculture (Manure for -); Chemicals (Industrial -); Chemicals used in horticulture; Chemicals used in forestry; Chemicals used in agriculture; Chemicals for use in herbicides; Chemicals for use in pesticides; Chemicals for use in aquaculture; Chemicals for use in pesticidal compositions; Soil conditioning chemicals [other than sterilising]; Mixtures of chemicals and natural materials for use as horticultural fertilizers; Fertilisers.

Class 5:        Preparations for destroying vermin; Agricultural pesticides; Fungicides; Herbicides; Insecticides; Parasiticides.

Class 35:        Retail services in relation to chemicals for use in agriculture; Retail services in relation to chemicals for use in forestry; Wholesale services in relation to chemicals for use in forestry.

2.        European Union trade mark application No 15 249 998 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 249 998, namely against some of the goods and services in Classes 1, 5 and 35. The opposition is based, inter alia, on Bulgarian trade mark registration No 36 662, ‘АГРИЯ 1050 AGRIA 1050’. 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 Bulgarian trade mark registration No 36 662, ‘АГРИЯ 1050 AGRIA 1050’.

1. The goods and services

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

Class 1:        Chemical products for industry, science, photography, agriculture, horticulture and forestry, unprocessed artificial resins, unprocessed plastics, fertilizers, extinguishing substances, substances for hardening and soldering, chemical substances for preserving foodstuffs, tannin, adhesives for industrial purposes.

Class 5:        Pharmaceutical, veterinary and sanitary preparations, dietary substances for medical use, food for babies, plasters, materials for dressings, materials for dental fillings and dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides.

The contested goods and services are the following:

Class 1:        Agricultural chemicals; Agriculture (Manure for -); Chemicals (Industrial -); Chemicals used in horticulture; Chemicals used in forestry; Chemicals used in agriculture; Chemicals for use in herbicides; Chemicals for use in pesticides; Chemicals for use in aquaculture; Chemicals for use in pesticidal compositions; Soil conditioning chemicals [other than sterilising]; Mixtures of chemicals and natural materials for use as horticultural fertilizers; Fertilisers.

Class 5:        Preparations for destroying vermin; Agricultural pesticides; Fungicides; Herbicides; Insecticides; Parasiticides.

Class 35:        Retail services in relation to chemicals for use in agriculture; Retail services in relation to chemicals for use in forestry; Retail services in relation to horticulture products; Wholesale services in relation to chemicals for use in forestry.

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 1

Agricultural chemicals; chemicals (Industrial -); chemicals used in horticulture; chemicals used in forestry; chemicals used in agriculture; fertilisers are identically contained in both lists of goods (including synonyms).

The contested agriculture (manure for -); mixtures of chemicals and natural materials for use as horticultural fertilizers are included in the broad category of the opponent’s fertilizers. Therefore, they are identical.

The contested soil conditioning chemicals [other than sterilising] are chemical products added to soil to improve its physical qualities; they improve poor soils and keep them in good condition. The opponent’s chemical products for agriculture cover a wide range of chemicals used to improve or protect the crops and soils. Therefore, the applicant’s goods are included in the broad category of the opponent’s goods. They are identical.

The contested chemicals for use in herbicides; chemicals for use in pesticides; chemicals for use in pesticidal compositions are raw chemicals that require few processing steps to be considered a finished product such as the opponent’s goods preparations for destroying vermin, fungicides, herbicides in Class 5. Such chemicals may be considered to already have the inherent purpose of fungicides, herbicides or preparations for destroying vermin – to kill or inhibit fungi, harmful plants and animals – in particular when the chemicals consist of the fungicides’, herbicides’ or preparations’ active ingredient. Furthermore, the same (agro-)chemical companies may produce the semi-processed goods as well as the final product. The public might be the same: not only the chemical industry, to produce the finished product, but also farmers, who will mix them to obtain their own biocide formula. There is therefore a similarity between chemicals used in the production of herbicides and pesticides and the finished product.

The contested chemicals for use in aquaculture are similar to the opponent’s chemical products for industry. The applicant’s goods are used in the cultivation of water plants and animals for human use or consumption. They are of the same nature and have the same producers and providers.

Contested goods in Class 5

Preparations for destroying vermin; fungicides; herbicides are identically contained in both lists of goods.

The contested insecticides; parasiticides are included in the broad category of the opponent’s preparations for destroying vermin. Therefore, they are identical.

The contested agricultural pesticides overlap with the opponent’s preparations for destroying vermin. Therefore, they are identical.

Contested services in Class 35

Retail and wholesale services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retail services in relation to chemicals for use in agriculture; retail services in relation to chemicals for use in forestry; wholesale services in relation to chemicals for use in forestry are similar to a low degree to the opponent’s chemical products for agriculture and forestry.

Retail services in relation to horticulture products and chemical products for horticulture are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical. The retail of ‘horticulture products’ consists in the bringing together, for the benefit of others, of seeds, grains, vegetables and other land products not having been subjected to any form of preparation for consumption, enabling the consumers to view and purchase them. The opponent’s chemical products for horticulture are substances added to the soil or crops to improve or protect them. Since the goods subject to retail and the opponent’s goods are dissimilar, no similarity between the contested retail services and the opponent’s goods can be found. The retail services in relation to horticultural products are not similar to any of the other goods in Class 1 or 5 of the earlier mark either.

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.

The goods and services at issue are specialised goods and services directed at the public at large, for example gardening enthusiasts, as well as at business customers, for example farmers and chemical industry undertakings, with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price and specialised nature of the purchased goods and services.

3. The signs

АГРИЯ 1050 AGRIA 1050
Earlier trade mark	Contested sign

The relevant territory is Bulgaria.

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 trade mark is the word mark ‘АГРИЯ 1050 AGRIA 1050’. The first verbal element is a Cyrillic transliteration of the second verbal element, ‘AGRIA’, which is in Latin characters. Both words are followed by the numerals ‘1050’.

The contested sign is a figurative mark that consists of the word element ‘AGRIS’ in a stylised navy blue typeface. Above the letter ‘I’, a helicoid green element serves as the letter’s dot. However, the figurative elements are of a purely decorative nature.

When encountering the earlier mark, consumers will notice that, although it is composed of both Cyrillic and Latin words, one is the transliteration of the other and, consequently, they will recall only one of the versions, since one replicates the other.

The prefix ‘AGRI’, present in both signs, directly refers to the agricultural purpose of the identical and similar goods and services at issue (24/03/2010, T-423/08, Hunagro, EU:T:2010:116). Given that the verbal elements ‘AGRIA’ and ‘AGRIS’ are connected with agricultural production, the distinctive character of these elements in relation to fertilisers, manures and agricultural chemicals, and the retail and wholesale thereof, is limited.

The numerals ‘1050’ of the earlier sign are likely to be perceived as meaning that the ingredients are in the proportion of 10 of one and 50 of another in the final product and, to this extent, these numerals have a weak distinctive character.

Neither of the signs has any elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the sequence of letters ‘AGRI’, present in both signs. However, they differ in the Cyrillic version of the word ‘AGRIA’ (‘АГРИЯ’) and in the numerals ‘1050’ (twice) of the earlier mark, which have no counterparts in the contested sign. The signs also differ in the final Latin letters, ‘A’ and ‘S’. The figurative elements of the contested sign constitute a further visual difference between the signs. Therefore, the signs are visually similar to a low degree.

Aurally, as stated above, taking into account that the public will perceive the Cyrillic and Latin letters in the earlier sign as the transliterations of each other, the public will pronounce the earlier sign by reference to only one of its versions; therefore, the pronunciation of the signs coincides in the syllables ‛A-GRI’, present identically in both signs. The pronunciation differs in the sound of the letters ‛A’ and ‘S’ of the verbal elements, which have no counterparts. The signs also differ in the sound of the numerals ‘1050’ of the earlier mark, which creates a difference in the intonation and rhythm of the signs. Therefore, the signs are aurally similar to an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘AGRI’, included in both signs, will be associated with the meaning explained above. This element, although of limited distinctiveness, together with the numerals of the earlier sign, will lead the signs to be conceptually similar to a low degree, as both relate to the agricultural purpose of the goods and services in question.

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 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, despite the presence of an element of limited distinctiveness in the mark as stated above in section c) of this decision.

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.

Likelihood of confusion implies some interdependence between the relevant factors, and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the 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). 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.

In the present case, some of the goods at issue are identical and some are similar. Some of the services are similar to a low degree to the goods for which the earlier mark is registered, and the remainder are dissimilar. They target the general and professional public, whose degree of attention may vary from average to high.

The similarity between the signs results from the visual, aural and conceptual commonalities in the verbal elements of the signs, although both signs contain a prefix of limited distinctiveness and the earlier mark includes a word in the Cyrillic alphabet. At least from the aural perspective, the Cyrillic word will be disregarded, as it will be perceived as the transliteration of the same word in Latin characters and will not be pronounced twice.

The differences in the last letters of the signs’ verbal elements, ‘A’ versus ‘S’, as well as the numerals of the earlier mark and the contested sign’s figurative elements, are likely to have a limited impact for the public, taking into account the fact that 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). Account must be taken of the fact that 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.

Moreover, 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 contested sign contains additional elements, the relevant public will focus on the coinciding verbal element, albeit of limited distinctiveness, rather than on its figurative features. The same applies to the numerals of the earlier mark, which have a weak distinctive character. These elements cannot overshadow the aural commonalities between the earlier mark and the contested sign, especially taking into account that the contested sign is almost fully contained in the earlier mark. Therefore, a likelihood of confusion exists, as the goods in question are identical or similar, and even for those services whose similarity to the invoked goods is deemed low.

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 Bulgarian trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (to various degrees) to those of the earlier trade mark.

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:

• Bulgarian trade mark registration No 37 365, , and
• Bulgarian trade mark registration No 58 725, .

Since the goods covered by these marks invoked as basis of the opposition are the same as those already compared, 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.

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

Sigrid DICKMANNS

Octavio MONGE GONZALVO

Julia SCHRADER

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.