OPPOSITION No B 2 668 484

Nuter Feed, S.A., Avenida del Ejercito, 2-2º, 15006 La Coruña, Spain (opponent), represented by Ryo Rodriguez Oca, S.L., Calle Juan Hurtado de Mendoza, 9 Apto. 507, 28036 Madrid, Spain (professional representative)

a g a i n s t

Green S.A.D. Technology Spółka z o.o., ul. Waryńskiego 46A/1, 80-242 Gdańsk, Poland (applicant), represented by Kancelaria Prawa Własności Przemysłowej i Prawa Autorskiego Teresa Czub & Krzysztof Czub Rzecznicy Patentowi Spółka Partnerska, ul. Reduta Żbik 5, 80-761 Gdańsk, Poland (professional representative).

On 13/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 668 484 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 555 254, namely against all the goods in Classes 1 and 31. The opposition is based on Spanish trade mark registrations No 553 558 and No 298 286. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PRELIMINARY REMARK ON PROOF OF USE

At the applicant’s request, the opponent submitted proof of use of its earlier marks. However, for reasons of procedural economy, the Opposition Division will first analyse the likelihood of confusion and will analyse the proof of use only if it is deemed necessary.

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:

1. Spanish trade mark registration No 553 558

Class 1:        Chemical products for the industry, agriculture, horticulture and forestry; unprocessed artificial resins and unprocessed plastics; fire extinguishing compositions; tempering and soldering preparations; chemical products for preserving foodstuffs; tanning substances and adhesives used in industry.

2. Spanish trade mark registration No 298 286

Class 31:        Food and foodstuffs for animals, apiculture, agriculture and forestry exploitations, cattle, domestic animals and birds.

The contested goods are the following:

Class 1:        Chemical products and semi-finished products used in agriculture, horticulture and forestry, chemical products and fertilising preparations and manures used in agriculture, horticulture and forestry; manures and fertilising preparations; salts [fertilisers], compost; seed preserving substances, preparation of trace elements for plants, plant growth regulating preparations, agents and flower preservatives; earth for growing, humus; cultures of microorganisms for industrial purposes, cultures of microorganisms other than for medical and veterinary use.

Class 31:        Foodstuffs and additives to foodstuffs for animals.

Some of the contested goods are identical to goods on which the opposition is based; for example, the contested chemical products used in agriculture, horticulture and forestry in Class 1 are also contained in the list of goods of earlier Spanish trade mark No 553 558 (albeit with a slightly different wording) and the contested foodstuffs for animals in Class 31 are also contained in the list of goods of earlier Spanish trade mark No 298 286. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier marks.

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 assumed to be identical are directed at the public at large and at professionals with specific professional knowledge or expertise, for example in the chemical industry and in agriculture, horticulture and forestry.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase, the impact they may have (e.g. on plant growth or animal husbandry) and their price.

3. The signs

BIONA
Earlier trade marks	Contested sign

The relevant territory is Spain.

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 identical word marks consisting of the word ‘BIONA’.

The contested sign is a figurative sign composed of the verbal element ‘BIONICS’, the last letter ‘S’ being in stylised lettering, and an ellipse around the letters ‘BIO’, which is formed of leaves in different sizes and shades of green.

The Court has held that, although average consumers normally perceive a mark as a whole and do 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).

With respect to the present case, it can be reasonably assumed that the public in the relevant territory will readily discern the prefix ‘BIO’ included in all the signs as referring to biológico (organic or biological) or vida (life), and also to ‘biotechnology’ or ‘environmental sustainability’. This is justified by the fact that nowadays it is widely used in commerce to refer to organic and/or environmentally friendly products. This has also been confirmed by the General Court, which held that the term ‘bio’ is used on the market to indicate that the goods in question contribute to environmental sustainability, that they use natural products or that they have been produced organically (10/09/2015, T-610/14, BIO organic, EU:T:2015:613, § 17; 21/02/2013, T-427/11, Bioderma, EU:T:2013:92, § 45, 46).

Bearing in mind the nature of the goods in question, this prefix is weak for all of these goods, as it only indicates that they are of organic origin and/or were produced using natural methods. Therefore, the impact of this prefix on the perception of the relevant public is limited.

The figurative element of the contested sign, as described above, only reinforces the idea evoked by ‘BIO’ and is, therefore, considered weak for the relevant goods. Furthermore, it is established practice that when signs consist of both verbal and figurative components (as the contested sign does in the present case), 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). Considering all the above, the figurative element of the contested sign has only a limited impact on the consumer’s perception.

In terms of dominance, neither of the signs has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letter sequence ‘BION’, a substantial part of which, ‘BIO’, is considered weak, as explained in detail above. The signs differ in the last letter of the earlier marks, ‘A’, and in the last three letters of the contested sign, ‘ICS’. In addition, they differ in the figurative element of the contested sign and in the stylisation of the word ‘BIONICS’.

The opponent emphasises, in its submissions, the impact of the identical beginning of the conflicting signs, namely ‘BION’, on the consumer’s perception. Although the opponent was correct in stating that there is an established legal practice according to which it is considered that consumers pay more attention to the beginning of a mark, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that 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 (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52).

In view of the above, considering the limited impact of the weak prefix ‘BIO’, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in their first two syllables, ‛BI-O’, which constitute a weak element in all the signs. The pronunciation differs in the final syllable of each sign, ‘NA’ of the earlier marks and ‘NICS’ of the contested sign, although the sound of the letter ‘N’ is present at the beginning of both syllables.

Therefore, considering the limited impact of the weak prefix ‘BIO’, the signs are aurally similar to a low degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the prefix ‘BIO’, included in all the signs, and the figurative element in the contested sign will be associated with the meanings explained above. To that extent, considering the limited impact of the concepts present in the signs (all the concepts lie in the parts of the signs considered weak), the signs are conceptually similar to 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 claimed that the earlier trade marks have been used for many years and enjoy enhanced distinctiveness (by referring to ‘goodwill’) but did not file any evidence to prove this claim within the time limit given by the Office pursuant to Rule 19 EUTMIR.

It is pointed out that the evidence to prove use submitted by the opponent on 02/12/2016 cannot be taken into account in the assessment of enhanced distinctiveness, as it was received after the deadline to substantiate the opposition, namely 16/07/2016. According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted within the time limit set by the Office.

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 relevant goods from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of the weak prefix ‘BIO’ in the marks as stated above in section c) of this decision.

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).

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.

As concluded above, the goods in question were assumed to be identical; the relevant public consists of the public at large and professionals; the degree of attention varies from average to high; and the earlier marks enjoy a normal degree of inherent distinctiveness for the relevant goods.

The conflicting signs are visually, aurally and conceptually similar to a low degree, given that the similarities result mainly from the sequence of letters ‘BIO’, which is weak in the context of the goods in question, as explained in detail above in section c) of this decision. According to settled case-law, if trade marks have identical parts that are weak or devoid of distinctive character, the differences between the signs are to be given more importance in the overall assessment of the signs (18/03/2002, R 0814/2001-3, ALL-DAY AQUA / Krüger All Days, § 50; 14/05/2001, R 0257/2000-4, e plus / PLUS, § 22).

The differences between the signs, albeit not particularly striking, are still readily perceptible and are sufficient to enable the relevant public, not only the part with a high degree of attention but also the part with an average degree of attention, to safely distinguish between them. When encountering the conflicting signs, the relevant public will pay less attention to the weak prefix ‘BIO’, present in all the signs, and will mentally register the differences, even though they are at the ends of the signs. This substantially reduces the likelihood of confusion between the conflicting signs to such an extent that it can be safely ruled out, despite the assumed identity between the goods at issue.

Consequently, it is concluded that the average consumer, who, for the purposes of the assessment of likelihood of confusion, is considered reasonably well informed and reasonably observant and circumspect, will neither directly confuse the conflicting signs nor perceive them as coming from the same undertaking or from economically linked undertakings. This is even the case of the general public with an average degree of attention.

In its submissions, the opponent refers to the principle of imperfect recollection of the signs, taking into account that average consumers rarely have the chance to make a direct comparison between different marks. When assessing the likelihood of confusion, the Opposition Division has taken this principle into consideration. Nevertheless, bearing in mind all the relevant circumstances of the case, the Opposition Division finds that, contrary to the opponent’s view, the dissimilarities between the signs at issue are sufficient to allow the relevant public to avoid a likelihood of confusion, including a likelihood of association.

Furthermore, the opponent argues that its earlier marks have successfully been used as a basis in other opposition proceedings before the Office. However, it did not indicate the specific proceedings, and therefore this argument must be set aside.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion (including likelihood of association) on the part of the public in the relevant territory. Therefore, the opposition must be rejected.

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.

As in the notice of opposition the opponent indicated that the contested sign would take unfair advantage of or be detrimental to the distinctiveness or repute of the earlier marks, the Opposition Division will now examine the opposition on the basis of Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

In the notice of opposition of 01/03/2016, the opponent also invoked, as a second ground of the opposition, Article 8(5) EUTMR. Furthermore, in the notice of opposition and in its observations of 18/07/2016, the opponent claimed that the earlier marks on which the opposition is based had been used in Spain since 1955 (in its observations, it refers to 1953) and had acquired a certain reputation (or a certain amount of goodwill, according to its observations). Therefore, the opponent is of the opinion that the contested sign would benefit from this reputation/goodwill.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party shall provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade marks.

On 04/03/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 16/07/2016.

The opponent did not submit any evidence concerning the reputation of the trade marks on which the opposition is based. For the sake of completeness, it must be added that the documents submitted by the opponent on 02/12/2016 to prove the use of the marks cannot be taken into account as proof of reputation, as they were submitted after the period for the substantiation of its opposition.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must also be rejected as unfounded insofar as this ground is concerned.

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

María del Carmen SUCH SANCHEZ

Martin MITURA

Vita VORONECKAITĖ

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.