OPPOSITION No B 2 739 988

Genective, Rue Henri Mondor, Biopôle Clermont-Limagne, 63360 Saint-Beauzire, France (opponent), represented by Regimbeau, 20, rue de Chazelles, 75847 Paris Cédex 17, France (professional representative)

a g a i n s t

Alltech Inc., 3031 Catnip Hill Road, Nicholasville Kentucky 40356, United States of America (applicant), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, The Netherlands (professional representative).

On 21/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 739 988 is partially upheld, namely for the following contested goods:

Class 31: Animal foodstuffs; animal feed.

2.        European Union trade mark application No 15 232 614 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 232 614. The opposition is based on international trade mark registration No 1 131 916 designating the European Union. 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.

1. The goods and services

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 goods and services on which the opposition is based are the following:

Class 5: Pesticides; pesticides, herbicides, insecticides, fungicides.

Class 31: Agricultural, horticultural and forestry products (neither prepared nor processed); grains (seeds), namely vegetable seeds, legume seeds, cereal seeds, small grain and corn seeds, sunflower seeds, soya seeds, rape seeds, pea seeds, grass and forage seeds; plants and natural flowers, plant seedlings, grains (cereals); genes for seeds for vegetables, legumes, cereals, small grain, corn, sunflowers, soya, rape, peas, grass, forage; genetically modified seeds, genetically modified vegetable seeds, genetically modified legume seeds, genetically modified cereal seeds, genetically modified small grain and corn seeds, genetically modified sunflower seeds, genetically modified soya seeds, genetically modified rape seeds, genetically modified pea seeds, genetically modified grass seeds and genetically modified forage seeds; seeds genetically modified for resistance to herbicides, insecticides, pesticides, fungicides resistance to drought, improving effectiveness of nitrogen treatments.

Class 42: Scientific and technological services as well as research and design related thereto in the fields of agro-food, bio-materials and bio-molecules; industrial analysis and research services in the fields of agro-food, bio-materials and bio-molecules; biotechnology research, laboratory and scientific services; genetic engineering research, laboratory and scientific services; phytogenetics research, laboratory and scientific services; research, laboratory and scientific services for transgenic products applied to agricultural, horticultural and forestry products and seeds; laboratory analysis, in biotechnology, genetic engineering, phytogenetics, transgenic products applied to agricultural, horticultural and forestry products and seeds; scientific services, namely organizing and analyzing genetic identification data with a view to establishing a map related to the genome of agricultural, horticultural and forestry products and seeds; genetic testing in the field of agriculture, horticulture, forestry and seeds with a view to improving seeds and vegetable varieties; scientific information services related to genes, genetic engineering, phytogenetics, transgenic products in the field of agriculture, horticulture, forestry and seeds.

Class 44: Agricultural, horticultural and forestry services, namely advice on growing practices, advice concerning the treatment of soils and for environmental protection, advice on plant growing; parasite and pest extermination in agriculture, horticulture and forestry; weed killing services; information and advice in the field of genetic engineering, phytogenetics, transgenic products applied to agricultural, horticultural and forestry products and seeds.

The contested goods are the following:

Class 5: Non-medicated additives for animal feed for use as nutritional supplements; nutritional additives for animal and livestock feed; feed supplements for livestock and pets.

Class 31: Animal foodstuffs; animal feed.

An interpretation of the wording of the list of the opponent’s goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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.

Contested goods in Class 5

The contested non-medicated additives for animal feed for use as nutritional supplements; nutritional additives for animal and livestock feed; feed supplements for livestock and pets are complex nutritional preparations, intended to supplement the diet of animals. They are produced by companies which specialise in the production of processed foodstuffs and nutritional supplements for animals.

Therefore, they are dissimilar to the opponent’s goods in Class 5 (pesticides, herbicides, insecticides, fungicides), because the latter are aimed at destroying unwanted organisms and conditions. They have different natures, purposes and methods of use. Furthermore, they are neither complementary nor in competition. Moreover, they are produced by different companies.

The contested goods in Class 5 are also dissimilar to the opponent’s goods in Class 31. The only relevant point of contact between the contested non-medicated additives for animal feed for use as nutritional supplements; nutritional additives for animal and livestock feed; feed supplements for livestock and pets and the opponent’s goods is that some of the opponent’s goods in Class 31 can constitute the raw materials of the applicant’s goods in Class 5. However, this is not sufficient to consider them similar according to Article 8(1)(b) EUTMR. The goods are different in nature and purpose and they are not in competition. Furthermore, and more importantly, they are not produced by the same companies. As mentioned above, the contested goods are produced by industries which specialise in the production of processed foodstuffs and nutritional supplements for animals, whereas the opponent’s goods consist of unprocessed agricultural, horticultural and forestry products, grains, seeds for agriculture, natural plants and flowers, etc., which are typically produced by farms and agricultural undertakings.

The contested goods are also clearly dissimilar to the opponent’s services in Class 42 and 44. These goods in services differ in their nature, as goods are tangible whereas services are intangible. They also differ in their ultimate purpose; they are neither complementary nor in competition. They do not target the same consumers and do not originate from the same companies.

The opponent’s services include the scientific and technological services as well as research and design related thereto in the fields of agro-food. Although these services are provided, broadly speaking, in relation to the same market sector in which the applicant manufactures its nutritional supplements, it must be clarified that the earlier services in Class 42 are provided by specialised companies which investigate in a specific scientific and technological field, in relation to theoretical and practical aspects thereof, the need to achieve better solutions and methods, new technological advances, etc. Therefore, these services are provided by professionals (scientists) to other professionals, whereas the applicant’s goods target the owners of animals searching for nutritional supplements for their diet. It follows that these goods and services target different consumers and do not normally originate from the same undertakings.

Contested goods in Class 31

The opponent’s agricultural, horticultural and forestry products (neither prepared nor processed) are a broad category which includes, inter alia, unprocessed agricultural produce which may be used as fodder for animals and animal feed.

Therefore, the contested animal foodstuffs; animal feed cannot be clearly separated from the abovementioned broad category of the opponent’s goods. It follows that these goods overlap and, therefore, are considered identical.

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 identical are directed at the public at large and at business customers from the agricultural field. The degree of attention of the public is considered to be average.

3. The signs

GENECTIVE	GEN'ACTIV
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Considering the specificities of the aural and conceptual comparison mentioned below, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Both signs are word marks. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the sign is presented in upper or lower case characters. The earlier sign consists of the verbal element ‘GENECTIVE’ and the contested sign consists of the verbal element ‘GEN'ACTIV’.

The beginning of both signs ‘GEN-’ is likely to be associated by the public with ‘genetics’ (‘the study of heredity and the variation of inherited characteristics’) or ‘genes’ (‘a unit of heredity which is transferred from a parent to offspring and is held to determine some characteristic of the offspring’, ‘a distinct sequence of nucleotides forming part of a chromosome, the order of which determines the order of monomers in a polypeptide or nucleic acid molecule which a cell (or virus) may synthesize’); (for both terms, information extracted from Oxford Dictionaries at http://www.oxforddictionaries.com/). In relation to the relevant goods, this element is weak as it may be perceived as conveying information as regards their essential qualities (e.g., that they are genetically modified).

Nonetheless, it must be noted that the earlier mark, considered as a whole, is a fanciful term, which conveys no clear meaning or information. It follows that, despite the suggestiveness carried by its initial element, the sign as a whole is meaningless and distinctive in relation to the relevant goods.

The second element of the contested sign, ‘ACTIV’, will be perceived as an allusion to the word ‘active’ (‘having a chemical or biological effect on something’, ‘characterized by busy or lively activity’ or ‘(of a thing) working; operative’); (information extracted from Oxford Dictionaries at http://www.oxforddictionaries.com/). This element is also weak in relation to the relevant goods as it suggests that they have some type of active properties (e.g., agricultural produce/animal feed with active biological effects).

The marks have no element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in their initial string of letters ‘G-E-N’. They also coincide in the string of letters represented from the fifth to the eighth position in both signs: ‘C-T-I-V’. They differ solely in their fourth letter (‘E’ in the earlier mark and ‘A’ in the contested sign), in the final letter ‘E’ of the earlier mark and in the apostrophe in the contested sign. Therefore, the signs have a similar length (nine versus eight letters) and coincide in the precise position of seven of those letters.

Although the apostrophe in the contested sign facilitates the understanding that the sign has two meaningful elements, it will not inhibit the public from instantly perceiving the mark as a whole.

Furthermore, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, even considering the weakness of their initial element, this coinciding string of letters will still have a significant impact on the public’s attention, allied to the noticeable coincidence in their remaining letters.

Therefore, the marks are visually similar to an average degree.

Aurally, for the relevant English-speaking public in question, the final letter ‘E’ of the earlier mark is mute and is not pronounced. Therefore, both signs will be pronounced in a sequence of seven sounds (‘jin-ek-tiv’ vs ‘jin-ak-tiv’). It is clear that they have the same aural length, structure and rhythm, differing solely in the initial sound of their second syllable which, however, establishes only a minor difference for the relevant public at issue, according to the pronunciation of such sounds in English.

It follows that the marks are aurally similar to a high degree.

Conceptually, neither of the signs has a clear meaning as a whole. Nonetheless, as established above, their beginnings ‘GEN-’ will evoke a concept, which is however weak in relation to the relevant goods. The second element of the contested sign, ‘ACTIV’, also evokes a concept, which is also inherently weak for all the goods.

It follows that the differentiating conceptual feature of the contested sign has a reduced impact on the public’s attention, because it also alludes to characteristics of the contested goods and it is also weak.

Therefore, considering that the signs will be associated with a similar meaning, due to their identical beginnings and also bearing in mind the weak distinctive character of this element, they are considered 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 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, as explained above in section c) of this decision, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark.

5. Global assessment, other arguments and conclusion

The contested goods are identical or dissimilar to the goods and services covered by earlier international trade mark registration No 1 131 916 designating the European Union.

The earlier mark is distinctive to an average degree.

The signs under comparison have been found to be visually similar to an average degree, as they coincide in a total of seven of their letters (seven out of nine in the earlier mark and seven out of eight in the contested sign): the initial sequence ‘GEN-’ and the additional sequence ‘-CTIV’.

Both marks are pronounced in three syllables of identical proportions and their pronunciation produces a highly similar pattern and rhythm. The only aural difference lies in a single sound placed in the middle of the signs, where it is likely to be unnoticed by the relevant public.

In addition, the fact that the signs coincide in their beginnings is of particular relevance when assessing the likelihood of confusion between the marks at issue, because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

As explained above in section c), although the identical beginning ‘GEN’ is weak in relation to the goods, it does establish a clear conceptual link between the marks, which is not decisively counteracted by the additional concept of the contested sign, which is also weakly distinctive. It follows that this additional concept does not help consumers in distinguishing clearly between the signs.

As regards the apostrophe contained in the contested sign, it is considered that this small difference is insufficient to counterbalance the significant similarity between the marks described above.

Account should also be taken of the fact that consumers only rarely have the chance to make a direct comparison between the different marks and must place their trust in the imperfect picture of them that they have kept in their minds (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Furthermore, account must also be taken of the principle that a likelihood of confusion implies some interdependence among the relevant factors, and in particular a 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). In the present case, this principle is of particular importance, considering that the contested goods in Class 31 are identical to the goods covered by the earlier mark.

Consequently, taking into consideration all the circumstances of the case, the Opposition Division concludes that the marks under comparison convey a similar overall impression. Therefore, as the relevant public may believe that the identical goods at issue come from the same or from economically-linked undertakings, there is a likelihood of confusion on the part of the English-speaking part of the public.

As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is partly well-founded on the basis of the opponent’s international trade mark registration No 1 131 916 designating the European Union. It follows from the above that the contested trade mark must be rejected for the goods found to be identical 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) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Monika CISZEWSKA

Gueorgui IVANOV

Liliya YORDANOVA

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.