OPPOSITION No B 2 543 380

Compo Expert GmbH, Krögerweg 10, 48155 Münster, Germany (opponent), represented by Alpmann Fröhlich Rechtsanwaltsgesellschaft mbH, Verspoel 12, 48143 Münster, Germany (professional representative)

a g a i n s t

Ferti Export S.L., C/Alberto Aguilera, 62 escalera dcha 4-1, 28015 Madrid / Madrid, Spain (applicant), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative).

On 12/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 543 380 is partially upheld, namely for the following contested goods and services:

         Class 1:  Chemicals used in industry and agriculture; Fertilisers; Fertilisers.

         Class 35:  Retailing in shops, wholesaling and sale via global computer           networks of fertilisers, manures used in agriculture and chemicals.

2.        European Union trade mark application No 13 809 082 is rejected for all the above goods and services. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 809 082 for the figurative mark . The opposition is based on European Union trade mark registration No 5 156 815 ‘Fertilis speed’ and the International registration No 1 054 033, designating Croatia, ‘Fertilis speed’. 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 International trade mark registration designating Croatia No 1 054 033, for which no proof of use request was submitted and which, moreover, was still not subject to the obligation of use.

1. The goods and services

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

Class 1:        Fertilizers

The contested goods and services are the following:

Class 1:        Chemicals used in industry and agriculture; Fertilisers; Fertilisers.

Class 16:        Paper; Cardboard; Printed matter.

Class 35:        Retailing in shops, wholesaling and sale via global computer networks of fertilisers, manures used in agriculture and chemicals.

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

The contested fertilizers (contained twice in the applicant’s list), which are defined as natural or chemical substances that are spread on the land to make plants grow well, are identically contained in both lists of goods. Therefore, they are identical.

The contested chemicals for use in agriculture include, as a broader category, the opponent’s fertilizers. 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 chemicals for use in industry are similar to the opponent’s fertilizers, as they may coincide in producers and have the same nature.

Contested goods in Class 16

The contested paper; cardboard; printed matter comprise both raw materials and finished products such as sheets of paper or cardboard for example whereas the opponent’s goods are substances that supply soil or water with mineral and organic nutrients to aid the growth of plants. Therefore, the nature, purpose and method of use of the goods under comparison are different. They are usually produced by different undertakings and do not coincide in end users or distribution channels. Furthermore, these goods are not complementary, in the sense that one is indispensable for the use of the other, and they are neither in competition with each other. The contested goods are therefore dissimilar to the fertilizers of the earlier mark.

Contested services in Class 35

The contested retailing in shops, wholesaling and sale via global computer networks of fertilisers, manures used in agriculture are similar to a low degree to the opponent’s fertilizers.

Retail services concerning the sale of particular goods are similar to a low degree to those particular identical 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.

Fertilizers include, as said above, natural and chemical substances that are spread on the land to make plants grow well. Manures are used as natural substances to fertilise the soil since very old times and are hence natural fertilizers. Therefore, the contested retail services of fertilisers, manures used in agriculture and chemicals are similar to a low degree to the opponent’s fertilizers. The same principles apply to the services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, namely to the contested wholesale services and the sale via global computer networks in Class 35.

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 and services found to be identical or similar are directed at the public at large and also at specialised business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high as for instance the use of chemicals in agriculture might require a very specialised knowledge.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

Fertilis speed
Earlier trade mark	Contested sign

The relevant territory is Croatia.

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 right is a word mark consisting of two verbal elements, namely of ‘Fertilis’ and ‘Speed’. As word mark, the words as such are protected, not the type script used. The aforementioned verbal elements have no meaning in the relevant territory. As they will not be understood by the Croatian public those words are of normal distinctive character.

The contested sign is a figurative mark, consisting of four verbal elements and two figurative elements. On the left side of the sign several green blades of grass are depicted. To the right of those, the letters ‘FF Export’, and below in the centre the verbal element ‘FERTI’, and below this the verbal element ‘FEED’ can be read. All those verbal elements and letters are written in bold, green capital script whereby ‘FERTI’ – placed in the centre of the sign – is depicted in bigger typeface, as well as ‘FEED’ at the bottom of the contested sign. Before the word ‘FEED’ an orange rectangular line is placed.

The verbal elements ‘FERTI’ and ‘FEED’ of the contested sign have no meaning in the relevant territory and are, therefore, distinctive. Moreover, they are also the most eye-catching elements due to the fact that they are written in a larger typeface than the remaining words.

In addition, and contrary to the applicant’s claims, due to the orange graphical element underneath the word ‘FERTI’ and next to the verbal element ‘FEED’, the effect of the already larger typeface is reinforced. Therefore, the attention of the public is more drawn to those two words which therefore dominate the contested sign, and less to the top of the sign (see for instance ECLI:EU:T:2006:370  judgement of 30/11/2006, T-43/05, para 63 et seq).

The word ‘EXPORT’ – meaning the shipment of an article or good to another country – might however be understood by the relevant public as making an allusion to ‘the Croatian quite similar counterpart, namely ‘eksport’ (see https://en.glosbe.com/en/hr/export). Bearing in mind that the relevant goods and services concern fertilizers and their distribution, this element is considered weak as it may give information that the goods and services are aimed for export purposes.

The letters ’FF’ will be understood as such by the relevant public, but they do not convey any meaning. And the green blades of grass will be recognised as such by all the relevant public as well. As this trade mark covers agricultural products and services, the green grass will be understood as a reference to the nature and agriculture and is therefore considered to be of weak distinctive character.

The orange rectangular line is of mere decorative nature and, therefore, non-distinctive.  

Visually, the signs are similar to the extent that they coincide in the letters ‘FERTI’ which form the beginning of the earlier sign and the centre part of the contested sign. Furthermore, they both end with the letters ‘EED’. On the other hand, they differ in the remaining letters of each mark, namely ‘LIS’ and ‘SP’ of the earlier right and ‘FF EXPORT’ respectively ‘F’ of the contested sign. In addition they differ in the figurative elements of the contested sign and with respect to the colour green used in the contested sign. Therefore, the signs are visually similar at most to an average degree.

Aurally, the signs coincide in the identical sound of the letters ‘FERTI’, present at the beginning of the earlier right respectively in the middle of the contested sign, and in the last three letters, namely ‘EED’. To that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‘LIS-SP’ and ‘FF EXPORT’ and ‘F’ of the respective signs. Therefore, bearing in mind that the signs have an identical beginning respectively centre part and an identical ending, and also taking into account the weak distinctive character of ‘EXPORT’, they are considered overall 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, parts of the contested sign might be understood (as described above) as alluding to the action of exporting products into other countries or to nature and be perceived as such by the public.

 

The earlier sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

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).

Moreover, 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).

As stated above, the goods and services are partly identical or similar to varying degrees and partly dissimilar. The signs are visually and aurally similar to an (no more than) average degree, on account of the identical and coinciding string of letters ‛FERTI’ and ‘EED’. These letters ‘FERTI’ and ‘EED’ are contained in the most eye-catching element of the contested sign and constitute as well the first five and the last three letters of the earlier right, which consists in total of 13 letters.

The figurative elements of the contested sign are fairly basic and decorative and will have little or no impact on the consumers. Furthermore the element ‘EXPORT’ is weak and there is no concept in the earlier mark that would assist the consumers in differentiating between the marks, and the same holds true in relation to the figurative element of the green grass.

The differences between the signs are not sufficient to counteract the visual and aural similarities, even for highly attentive consumers as even those consumers need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, 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), for instance for goods designated for export purposes.

Given the principle of interdependence, and especially taking into account the similarity of the signs on a visual and aural level, a likelihood of confusion cannot be excluded even in the case of services that are similar only to a low degree.

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 International trade mark registration designating Croatia.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

In its observations, the applicant seems to argue that the earlier trade mark has a low distinctive character given that there are many trade marks that include ’FERTI’. In support of its argument the applicant refers to several EU trade mark registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ’FERTI’. Under these circumstances, the applicant’s claims must be set aside.

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 varying degrees 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)(b) EUTMR, the opposition based on this article and directed at these services cannot be successful.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to the dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Considering all the above, there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. In particular, the decision B 658 130 ‘Elise/Elision’ concerns trade marks which consist of only one word and it is constant practice that small differences in short word elements have a greater impact on the perception of the consumer than small differences in signs which consist of several words. In addition, as indicated in the quotation from this decision, there were conceptual differences which are not the case here.

The opponent has also based its opposition on the following earlier trade mark:

European trade mark registration No 5 156 815 for the word mark ‘Fertilis speed’.

Since this mark is identical to the one which has been compared and covers the same scope of goods, the outcome cannot be different with respect to the goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods. For the same reasons it was not necessary to examine the submitted proof of use.

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

Denitza STOYANOVA-VALCHANOVA

Karin KLÜPFEL

Swetlana BRAUN

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.