OPPOSITION No B 2 687 302

Adp Fertilizantes SA, Estrada Nacional No.10, Apartado 88, 2616907 Alverca Do Ribatejo, Portugal (opponent), represented by A.G. Da Cunha Ferreira, LDA., Avenida 5 de Outubro, 146-7º, 1050-061 Lisboa, Portugal (professional representative)

a g a i n s t

Bioeconijar S.L., Ctra. San José Km. 3, 04117 Barranquete-Nijar, Spain (applicant), represented by Vicario Consulting S.L., P° Castellana, núm. 139-7° izda., 28046 Madrid, Spain (professional representative).

On 18/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 687 302 is upheld for all the contested goods, namely:

Class 31:        Agricultural crops, horticulture and forestry products.

2.        European Union trade mark application No 14 965 826 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 and services of European Union trade mark application No 14 965 826 for the figurative mark, namely against some of the goods in Class 31. The opposition is based on, inter alia, Portuguese trade mark registration No 413 261 for the word mark ‘BIOTERRA’. 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 Portuguese trade mark registration No 413 261.

1. The goods

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

Class 1:        Mineral organic fertiliser and soil organic improvers.

The contested goods are the following:

Class 31:        Agricultural crops, horticulture and forestry products.

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.

The contested agricultural crops, horticulture and forestry products are similar to a low degree to the opponent’s mineral organic fertiliser in Class 1, which is a substance that provides nutrition for plants and supports their growth. These goods can have the same producers and distribution channels.

Although the conflicting goods differ in their natures, they are complementary in the sense that one is indispensable or important for the use of the other; therefore, consumers may think that the same company is responsible for producing those goods. Mineral organic fertiliser is destined to contribute to the growth, health and strength of offspring, grains, seeds, natural plants and flowers; it improves the fertility of the soil or the water in which offspring, grains, seeds and natural plants and flowers are cultivated. Consequently, it is an essential and significant good for the contested agricultural crops, horticulture and forestry products. Moreover, the conflicting goods may share the same distribution channels and points of sale as the contested goods in Class 31 are all products that may be used by professional and non-professional agriculturists, horticulturists and foresters alongside the earlier plant growth regulators, fertilizers, manures and agricultural chemicals; they can be found in the same specialized stores (11/03/2015, R 796/2014-4, TOÑIFRUIT (FIG. MARK) / TONIFRUIT, § 14).

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 to a low degree are directed at the public at large and at professionals working with chemicals, or in agriculture, horticulture and forestry. The degree of attention may vary from average, for inexpensive agricultural products, to high, especially in the case of professionals working with hazardous chemicals or cultivating plants subject to food safety regulations.

3. The signs

BIOTERRA
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 mark is the word mark ‘BIOTERRA’. It is important to note that, 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 contested sign is a figurative mark made up of three conjoined elements. This sign starts with the letter ‘B’, followed by an element depicting a branch with two leaves and the letter ‘O’. All these elements are green. They are followed by the element ‘tèrraneo’, written in smaller brown letters.

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).

Due to differences in the sizes and colours of the letters and because the branch with leaves can easily be perceived as a stylised depiction of the letter ‘I’, the public is likely to perceive in the contested sign the elements ‘BIO’ and ‘térraneo’, which convey the concepts explained below.

It can be reasonably assumed that the public in the relevant territory will readily discern the prefix ‘BIO’, included in both signs, as referring to ‘biological’ or ‘life’, and also to ‘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 component ‘TERRA’ in the earlier mark will be perceived by the relevant public as ‘land, soil’. Bearing in mind that the relevant goods are related to agriculture and growing plants, this component is weak for all the relevant goods.

The applicant argues that the component ‘TERRÁNEO’ comes from the name ‘Mediterranean Sea’. However, it does not submit any evidence to support its argument. Consequently, this argument must be set aside. Nevertheless, the Opposition Division considers that the component ‘TERRÁNEO’ in the contested sign will be associated by the relevant public with the Portuguese word ‘terrenho’, which means ‘land’ in Portuguese, since it is very similar to the equivalent word in the official language in the relevant territory. Bearing in mind that the relevant goods are agricultural crops, horticulture and forestry products, this element is weak for these goods.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as conveying the same concepts, the signs are conceptually identical. The figurative element resembling a branch in the contested sign only reinforces the perception of ‘bio’/‘organic’.

Visually, the signs coincide in the letters ‘B*OTERRA***’. However, they differ in the additional letters, ‘NEO’, which form the last and thus less noticeable part of the contested sign, and in the figurative element between the letters ‘B’ and ‘O’ of the contested sign, which is likely to be intuitively perceived as a stylised letter ‘I’ depicting a branch with leaves; in the earlier mark, there is a standard letter ‘I’ between the same letters. Furthermore, the signs differ in that there is an accent above the letter ‘A’ in the contested sign. However, this latter difference has a minor visual impact and does not change the perception that the signs have the letter ‘A’ in common. They also differ in the overall stylisation of the contested sign (the typeface and the colours). 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, the signs are visually similar to an average degree.

Aurally, the relevant public will pronounce the contested sign as ‘BIOTERRANEO’, due to the conceptual meaning of the sign. Consequently, the pronunciation of the signs coincides in the sound of the letters ‛BIOTERRA***’, present in both signs. The accent on the ‘A’ in the contested sign will not have an impact that could result in any relevant aural difference. The pronunciation differs in the sound of the additional letters, ‛NEO’, at the end of the contested sign. Therefore, the signs are aurally 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all of the goods in question.

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).

The earlier mark’s degree of distinctiveness is lower than normal. However, it is recalled that, although the distinctive character of the 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, there may be a likelihood of confusion on account, in particular, of a high degree of similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

In the present case, the earlier mark is weak but the signs are conceptually identical, aurally similar to a high degree and visually similar to an average degree. The goods are similar to a low degree. They target the public at large and professionals whose degree of attention will vary from average to high.

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), and even consumers with 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).

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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the relevant public.

Therefore, the opposition is well founded on the basis of the opponent’s Portuguese trade mark registration No 413 261. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier Portuguese trade mark registration No 413 261 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Justyna GBYL

Alexandra APOSTOLAKIS

Boyana NAYDENOVA

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.