OPPOSITION No B 2 380 320
Koppert B.V., Veilingweg 14, 2651 Berkel en Rodenrijs, Netherlands (opponent), represented by Bird & Bird LLP, Zuid-Hollandplein 22, 2596 The Hague, Netherlands (professional representative)
a g a i n s t
Sinochem Agro Co. Ltd., 17F-19F, No. 33, South Henan Road, Huangpu District, Shanghai, China (holder), represented by Bugnion S.P.A., Viale Lancetti 17, 20158 Milano, Italy (professional representative).
On 22/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 380 320 is upheld for all the contested goods.
2. International registration No 1 180 361 is entirely refused protection in respect of the European Union.
3. The holder bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods of international registration designating the European Union No 1 180 361. The opposition is based on European Union trade mark registration No 4 271 912. 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 goods and services
The goods and services on which the opposition is based are the following:
Class 5: Crop protectors included in this class, including crop protectors based on fungi, bacteria or microorganisms; insecticides; preparations for destroying vermin, fungicides, herbicides; veterinary preparations; fly glue strips for catching insects; devices for promoting the growth of and for improving crops.
Class 20: Beehives; nest boxes for bumble bees.
Class 31: Live animals, including live animals for destroying vermin on crops and for pollination; foodstuffs for animals.
Class 44: Agriculture, horticulture and forestry services; services relating to the destruction of vermin on crops and pollination; consultancy in the field of organic plant protection and in the field of natural pollination; cultivation of insects, mites, nematodes, fungi and bumble bees; consultancy obtained through the taking and assessing of samples for determining possible diseases and pests in crops; on-site checking (including by hand) of crops to determine possible diseases and pest in crops; placing traps (possibly in combination with bait) for detecting insects whereby diseases and pests, caused by those insects, can be determined; verbal and written reporting in response to samples taken and checking (including by hand) of crops for possible diseases and pests; the aforesaid services also relating to the cultivation of fruit, mushrooms, grapes, sports and golf courses and public green spaces.
The contested goods are the following:
Class 5: Germicides for agricultural purposes; germicides; fungicides, pesticides; soil-sterilising preparations; biocides; weedkillers, acaricides; preparations for destroying noxious plants; chemical preparations to treat wheat blight [smut].
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 5
The contested germicides for agricultural purposes and germicides are products or agents that are designed to kill and destroy germs and bacteria. They are highly similar to some of the opponent’s goods, such as preparations for destroying vermin, fungicides, as they have the same purpose (to destroy unwanted small organisms) and the same nature (poison), they are offered in the same stores and it is not unusual for the same kinds of undertakings to produce them.
Fungicides are identically contained in both lists of goods.
The contested pesticides include, as a broader category, the opponent’s insecticides. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested soil-sterilising preparations include, as a broader category, the opponent’s preparations for destroying vermin, fungicides, herbicides, which are often used as soil sterilants. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested biocides include, as a broader category, the opponent’s insecticides. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested weedkillers, acaricides are types of pesticides used in crop protection. They are identical to the opponent’s crop protectors included in this class, including crop protectors based on fungi, bacteria or microorganisms, since they are included in or overlap with these goods.
The contested preparations for destroying noxious plants are included or overlap with the opponent’s herbicides, which are chemicals that destroy plants, especially weeds. Therefore, they are identical.
The contested chemical preparations to treat wheat blight [smut] include, as a broader category, the opponent’s preparations for destroying vermin, fungicides, which are often used to treat this disease. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
- 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 and highly similar are specialised goods directed either at both the professional public and the public at large or specifically at professionals with specific professional knowledge or expertise.
The degree of attention, given the potentially hazardous nature of the goods, is high for both publics.
- The signs
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KOPPERT
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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).
The earlier mark is a word mark consisting of the word ‘KOPPERT’. The contested sign is a figurative mark, which consists of the word ‘Compert’, written in standard bold black title case letters.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
Given this, the signs are distinctive to an average degree.
Visually, the signs coincide in the letters ‘*O*PERT’. The marks are also of the same length. However, they differ in their first letters, ‘K’/‘C’, and in their third letters, ‘P’/‘M’.
Therefore, they are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the sound of the letters ‘*O*PERT’, and also for part of the public in the sound of their first letters, ‘K’/‘C’. Conversely, the pronunciation differs in the sound of the letters ‘P’/‘M’, placed in the third position in both marks, and also in the signs’ first letters, ‘K’/‘C’, for the part of the public that pronounces them differently.
Therefore, the signs are aurally similar to a high degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
In the present case, the contested goods are identical or highly similar to the opponent’s goods and they target not only the public at large but also professionals. The degree of attention in relation to the goods in question is high for both publics. The marks are visually similar to an average degree and aurally similar to a high degree. The conceptual aspect does not influence the outcome of the assessment.
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). 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).
Considering the above and the fact that the main differences between the signs lie in two letters, and aurally, for part of the public, in only one letter placed in the middle of the signs, where it is more likely to be overlooked by consumers, it is highly conceivable that the relevant consumer will perceive the goods in question marked with the signs in question as coming from the same undertaking or from economically linked undertakings.
Consequently, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 4 271 912. 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 holder 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
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Benoit |
Begoña |
Pedro |
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.