OPPOSITION No B 2 698 796

Sapec Agro S.A., Alameda Dos Oceanos, Lote 1.06.1.1. D, 3º, 1900-207 Lisboa, Portugal (opponent), represented by Sapec Agro S.A., Natacha Batista, Alameda Dos Oceanos, Lote 1.06.1.1. D, 3º, 1900-207 Lisboa, Portugal (employee representative)

a g a i n s t

BASF SE, Carl-Bosch-Str. 38, 67056 Ludwigshafen am Rhein, Germany (applicant), represented by BASF SE, Maren Svenja Stier, BASF SE GVX/W-C6, 67056 Ludwigshafen, Germany (employee representative).

On 28/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 698 796 is upheld for all the contested goods.

2.        European Union trade mark application No 15 053 631 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 320.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 053 631. The opposition is based on, Portuguese trade mark registration No 475 064. 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

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

Class 5:   Plant protection products.

The contested goods are the following:

Class 1:   Chemicals used in agriculture, horticulture and forestry, in particular plant strengthening preparations, chemical and/or biological stress-prevention preparations for plants, plant growth regulating preparations, seed treatment preparations, wetting preparations, natural or synthetic chemical substances to enhance sexual attraction or confuse insects.

Class 5:   Preparations for destroying and controlling vermin, insecticides, fungicides, herbicides, pesticides.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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 opponent’s plant protection products in Class 5 could be goods such as herbicides, fungicides and insecticides and preparations for destroying vermin, since these products can be used for protecting growth of crops and, in general, plants in agriculture, horticulture and forestry. The opponent’s goods may therefore have the same nature and method of use as the contested chemicals used in agriculture, horticulture and forestry, in particular plant strengthening preparations, chemical and/or biological stress-prevention preparations for plants, plant growth regulating preparations, seed treatment preparations, wetting preparations, natural or synthetic chemical substances to enhance sexual attraction or confuse insects in Class 1. These goods may also target the same relevant public, they may be sold through the same distribution channels and they may be manufactured by the same producers. Therefore, the contested goods in Class 1 are similar to the opponent’s in Class 5.

Contested goods in Class 5

The contested preparations for destroying and controlling vermin, insecticides, fungicides, herbicides, pesticides are preparations that are used to destroy unwanted animals, insects or vegetation. These goods are commonly used in the field of agriculture, horticulture and forestry to enhance and protect the growth of crops and plants, among other methods of use (e.g. insecticides are used to kill insects in general). The contested goods therefore overlap with the opponent’s plant protection products and are identical to the opponent’s goods.

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 or similar are directed at the public at large as well as at business customers with specific professional knowledge or expertise.

The impact on the environment of goods covered by a trade mark (e.g. how poisonous and dangerous they are for people’s health and how much harm they can cause on the environment) may result in an increase in the relevant consumer’s degree of attention (22/03/2011, T-486/07, CA, EU:T:2011:104, § 41). Therefore, the degree of attention of the relevant public is deemed to be higher than average.

3. The signs

IMPÉRIO	IMPERIS
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).

Both signs are word marks.

The earlier mark is composed of the word ‘IMPÉRIO’, which means ‘empire’ in Portuguese, while the contested sign, ‘IMPERIS’, is likely to be perceived by the vast majority of the Portuguese public as a misspelling of the earlier mark in plural (i.e. as ‘impérios) and/or as a word derived from the same root (e.g. from the Latin ‘imperium’). For the relevant goods, the signs have therefore no meaning and are distinctive.  

Visually, the signs coincide in the letters ‘IMPERI* and differ in their last letters ‘O’ and ‘S’. This means that the signs share six out of seven letters. The signs’ ‘E’ differ in that the ‘E’ is accented in the earlier mark, which is not the case in the contested sign. However, this difference may go on unnoticed and is not very striking when the signs are perceived as a whole. Therefore, the signs are visually highly similar.

Aurally, the signs coincide in the pronunciation of the letters ‘IMPERI*’. Although the earlier mark’s ‘E’ is accented, the accent only shows which syllable that is stressed when pronouncing the earlier mark. In this case, the same syllable (i.e. /per/) will be stressed when pronouncing the contested sign. Therefore, the signs differ only in the pronunciation of their last letters (i.e. ‘O’ and ‘S’). Bearing this in mind, the Opposition Division finds the signs aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the earlier mark means ‘empire’ in Portuguese and the contested sign (at least) will be associated with a similar meaning by the relevant public, the signs are conceptually similar to an average 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, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).

According to the same line of case-law, 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). In addition, the global assessment of the likelihood of confusion entails a certain interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

In the present case, the goods are partly identical and partly similar. The signs are visually and aurally highly similar and are similar conceptually. In this regard, 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 all the above, 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 Portuguese trade mark registration No 475 064. 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 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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Adriana VAN ROODEN

Christian RUUD

Pedro JURADO MONTEJANO

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.