OPPOSITION No B 2 742 644

AGRIA AD, Asenovgradsko shose, 4009 Plovdiv, Bulgaria (opponent), represented by Biliana Antranik Magardichian, 16A Prof. Ivan Duychev Str., Office 3, 1618 Sofia, Bulgaria (professional representative)

a g a i n s t

AusBiodiesel Pty Ltd, In the Suite of RBHM Level 5, 53 Berry St, North Sydney, NSW 2060, Australia (holder), represented by Michelle Anne Ward, Indelible IP Limited, Woodfield House, Llanishen, Chepstow, Monmouthshire NP16 6QS, United Kingdom (professional representative)

On 26/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 742 644 is upheld for all the contested goods, namely:

Class 1: Chemicals used in industry and science; seaweeds (fertilisers); seaweed based compost; seaweed based soil conditioning products; seaweed plant food; seaweed based compost accelerators; seaweed based root treatment preparations.

2.        International registration No 1 270 505 is refused protection in respect of the European Union for all of the contested goods. It may proceed for the remaining goods.

3.        The holder bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of international registration designating the European Union No 1 270 505 ‘’, namely against some of the goods in Class 1. The opposition is based on European Union trade mark No 12 613 378 ‘CUPMAN’ (word mark). 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 1: Soil improving preparations; plant growth regulants; vine disease preventing chemicals; additives, chemical, to fungicides; additives, chemical, to insecticides; chemical products for the treatment of plant diseases; chemicals for use as intermediates in the manufacture of pesticides; chemicals used in agriculture, horticulture and forestry; chemicals for use in herbicidal compositions; chemicals for use in the manufacture of insecticides; chemicals for use in pesticidal compositions; chemicals for use in the agrochemical industry [other than fungicides, weed killers, herbicides, insecticides, parasiticides].

Class 5: Preparations for destroying vermin; herbicides; soil-sterilising preparations; fungicides, herbicides; biocides; insecticides; pesticides; vine disease treating chemicals; parasiticides.

The contested goods are the following:

Class 1: Chemicals used in industry and science; seaweeds (fertilisers); seaweed based compost; seaweed based soil conditioning products; seaweed plant food; seaweed based compost accelerators; seaweed based root treatment preparations.

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 chemicals used in industry cover, as a broad category, the opponent’s chemicals for use in the agrochemical industry [other than fungicides, weed killers, herbicides, insecticides, parasiticides]. 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 seaweeds (fertilisers); seaweed based soil conditioning products are covered by the opponent’s broad category of soil improving preparations. These goods are therefore identical.

The contested seaweed based compost; seaweed plant food; seaweed based compost accelerators; seaweed based root treatment preparations are identical to the opponent’s plant growth regulants, since the opponent’s category covers the contested goods.

The contested chemicals used in science are similar to the opponent’s chemicals for use in the agrochemical industry [other than fungicides, weed killers, herbicides, insecticides, parasiticides], as the latter are mainly industrial chemicals, despite their specific purpose. These goods have the same nature and can come from the same kind of undertakings.

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 both the general public and professionals, and the degree of attention paid during their purchase is deemed to be higher than average.

This is justified by the fact that the goods in question can have a significant impact on the plants/trees/plantations/soil on which they are used, which can lead to an economic impact for consumers (e.g. for professionals in the field), and by the fact that they can be toxic and/or dangerous for the users.

3. The signs

CUPMAN
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.

For part of the public in the relevant territory, the marks under comparison will be perceived as fanciful terms conveying no concept. This applies to, for instance, the Spanish- and Italian-speaking consumers.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that will perceive both marks as meaningless (e.g. the Spanish- and Italian-speaking parts of the public).

As explained above, since the words forming the marks under comparison have no meaning for the relevant public referred to above, they are both of average distinctiveness.

Visually, the signs coincide in the sequence of letters ‘PMAN’, which occupy the same position within the marks, and differ in the letters ‘KEL’ of the contested sign and ‘CU’ of the earlier mark.

The signs are visually similar to an average degree.

Aurally, for a significant proportion of the consumers in the relevant territory, including the Spanish- and Italian-speaking consumers, the letters ‘C’ and ‘K’ are pronounced identically when positioned preceding a vowel, as in these signs. Therefore, the marks under comparison coincide in the sound of their first letters, ‘C’ and ‘K’, and in the sound of the sequence of letters ‘PMAN’, present identically in both signs. These coinciding sounds, ‘C/K’ and ‘PMAN’, occupy the same positions within both marks (i.e. the first letter and last four letters, respectively).

The signs differ in the sound of the letters ‘U’ in the earlier mark and ‘EL’ in the contested sign. Since the differing sounds are preceded and followed by the coinciding sounds referred to above, their aural impact is somewhat reduced.

Therefore, the signs are considered aurally similar to a high degree.

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.

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 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

The signs are visually similar to an average degree and aurally highly similar, and have no concepts that could help consumers to differentiate them.

The goods are partly identical and partly similar.

The average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, according to the principle of imperfect recollection, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. Even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks. Based on this, consumers might believe that the conflicting goods that are identical or similar come from the same undertaking or economically-linked undertakings.

In addition, having regard to the principle of interdependence, it is considered that the commonalities between the signs, together with the identity and similarity between the goods, are enough to outweigh their dissimilarities, and may induce at least part of the public to believe that the conflicting goods come from the same undertaking or economically-linked undertakings.

Furthermore, it is common practice in the relevant market for manufacturers to make variations to their trade marks, for example by altering the typeface or colours, or varying part of the marks, in order to denote new product lines or to endow a trade mark with a new, fashionable image.

In the present case, although the public in the relevant territory might detect certain differences between the signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that at least part of the public will perceive the contested sign as a variation of the earlier mark. It is, therefore, conceivable that the relevant public will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking.

Considering all the above, there is a likelihood of confusion on the part of the part of the public that perceives both marks as meaningless, which includes, inter alia, the Spanish- and Italian-speaking parts 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 well founded on the basis of the opponent’s European Union trade mark registration No 12 613 378. 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

Eva Inés PÉREZ SANTONJA

María del Carmen SUCH SANCHEZ

Richard BIANCHI

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.