OPPOSITION No B 2 607 854
MIP METRO Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (opponent), represented by Eva Schiller (MIP METRO Group Intellectual Property GmbH & Co. KG), Metro-Str. 1 Germany, 40235 Düsseldorf (employee representative)
a g a i n s t
Caldena Spółka z o.o., ul. Ks. Skorupki 5, 00-546 Warszawa, Poland (applicant), represented by Kancelaria Patentowa Rawa & Rawa Sp.j., ul. Stokrotkowa 52, 87-100 Toruń, Poland (professional representative).
On 20/01/2017, the Opposition Division takes the following
1. Opposition No B 2 607 854 is upheld for all the contested goods.
2. European Union trade mark application No 14 251 219 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 350.
The opponent filed an opposition against all the goods of European Union trade mark application No 14 251 219. The opposition is based on European Union trade mark registration No 8 911 018. 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
In its observations, the applicant argued that the actual use of the conflicting signs demonstrates that there is no likelihood of confusion, since the earlier trade mark is used only for designating the halls where the goods are offered for sale, while the contested sign is used on the goods themselves. However, the Opposition Division notes that the comparison of the goods and services required by Article 8(1)(b) EUTMR must relate to the description of the goods covered by the earlier mark relied on in opposition and not the goods for which the trade mark is actually used, unless, following an application in accordance with Article 43(2) and (3) EUTMR, the proof of use of the earlier mark is only in respect of some of the goods or services for which it is registered’ (see judgments 22/03/2007, T-364/05, Pam Pluvial, EU:T:2007:96, § 85 ‘Pam Pluvial’, para. 85 and 07/09/2006, T-133/05, Pam-Pim’s Baby-Prop, EU:T:2006:247, § 30). Thus, whether the opponent is currently using its mark in a specific commercial field is irrelevant as far as the use of its mark is not restricted in its specification to that field and a future use of its mark to identify goods or services within a different commercial field cannot be disregarded. Consequently, the applicant’s argument must be set aside.
The opposition is based on, inter alia, the following goods:
Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins; unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry; loam; earth for growing; peats; soil-conditioning chemicals; unexposed films; salt for icy roads; preparations for stimulating cooking for industrial purposes; distilled water; defoliants; compositions for repair; cryogenic preparations; printing plates (sensitized) for offset printing; starch for industrial purposes; additives (chemical) to oil and motor fuel; artificial sweeteners (chemical preparations); impregnating chemicals; chemicals for the treatment of water and water containers; antifreeze.
Class 5: Pharmaceutical and veterinary preparations, including with a homeopathic base; sanitary preparations for medical use; chemicals and preparations for sanitary purposes; cotton wool; cotton wool pads, cotton sticks; dietetic foods and food preparations; food for babies, including dietetic foods; herbs and herb extracts for medicinal purposes; nutritional additives, vitamin preparations; chewing gum for medical purposes; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying worms; fungicides; herbicides; deodorising room sprays; hygienic articles for women; napkins; dietetic substances and foods for nutrient-reduced and/or calorie-controlled diets.
Class 31: Agricultural, horticultural and forestry products and grains, not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; malt; bulbs; dried plants, straw mulch and litter peat, animal litter; animal food; seaweed; fish spawn, live crustaceans and shellfish; edible flowers.
The contested goods are the following:
Class 1: Manures; plant hormones (phytohormones); ameliorants for the soil; plant growth regulating preparations; growth promoters [other than for medical or veterinary use]; bacteria [other than for medical or veterinary purposes]; biostimulators (measures affecting the life processes of plants, other than being nutrients); chemicals for the protection of plants [other than fungicides, weedkillers, herbicides, insecticides, parasiticides].
Class 5: Fungicidal fungal agents; herbicides; insecticides; chemical preparations for pesticidal purposes; vermin destroying preparations; fungicides; herbicides; pesticides.
Class 31: Seeds; seedlings; fodder.
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
Manures are identically contained in both lists of goods.
The contested plant hormones (phytohormones); ameliorants for the soil; plant growth regulating preparations; growth promoters [other than for medical or veterinary use]; bacteria [other than for medical or veterinary purposes]; biostimulators (measures affecting the life processes of plants, other than being nutrients); chemicals for the protection of plants [other than fungicides, weedkillers, herbicides, insecticides, parasiticides] are included in the broad category of the opponent’s chemicals used in agriculture and horticulture. Therefore, they are identical.
Contested goods in Class 5
Fungicides; herbicides are identically contained in both lists of goods.
The contested fungicidal fungal agents are included in the broad category of the opponent’s fungicides. Therefore, they are identical.
The contested chemical preparations for pesticidal purposes; pesticides include as broader categories the opponent’s fungicides; herbicides. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested insecticides and vermin destroying preparations are chemical substances used to kill insects or wild animals, e.g. rodents, which are harmful to crops, farm animals or game. The opponent’s herbicides are chemical substances used to destroy or inhibit the growth of unwanted plants and are widely used in agriculture. Hence their nature and purpose is very similar. They are also likely to be produced by the same businesses specialising in the relevant field (production of pesticides). Furthermore, they will be distributed through the same distribution channels and they target the same public. Therefore, these goods are considered highly similar.
Contested goods in Class 31
Seeds are identically contained in both lists of goods.
The contested seedlings are included in the broad category of the opponent’s natural plants and flowers. Therefore, they are identical.
The contested fodder is included in the broad category of the opponent’s agricultural, products. Therefore, they are identical.
- 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 directed at both the average consumers and business customers with specific professional knowledge or expertise in the agriculture, horticulture or forestry areas. The degree of attention will vary from average to high, depending on the use and the scope of application of the products (domestic or industrial purposes) and their price.
- The signs
Earlier trade mark
The relevant territory is 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.
The earlier mark is a figurative mark consisting of the word ‘makro’, depicted in bold yellow lower case characters on a dark blue background.
The contested sign is a figurative mark including the verbal element ‘MacroSpeed’ written in standard white letters of which the letters ‘M’ and ’S’ are written as capital letters and the remaining letters are presented in lower case and placed above a set of curved lines in sky blue, three from each side (left and right) and overlapping while the lines are expanded at the bottom. Because of their shape and position, these lines could be perceived, at least by a part of the relevant public, as hilly fields. Both elements are set against a cerulean blue shield-shaped label with thin white and blue border lines. The label is placed on the upper half of a white/greyish rectangular background which otherwise includes in its lower part three curved lines in sky blue, cerulean blue and green colour and forming a wavy pattern.
The element ‘macro’ in the contested sign is a common prefix referring to something of ‘large, long, or great in size or duration’ (see e.g. Collins Dictionary at www.collinsdictionary.com) whereas the element ‘speed’ will be perceived as for example ‘the rate at which something moves, is done, or acts’ (see the same source). Considering the nature and purpose of the goods at issue the verbal element ‘speed’ may be well perceived in the sense that these goods are very effective, as they will act fast, they will speed up the desired effect. Hence this element of the contested sign is considered as laudatory and therefore weak.
As to the earlier mark, the element ‘makro’ may be perceived by the relevant public as a misspelling of the word ‘macro’. However, considering that this term is normally used as a prefix and never on its own, the Opposition Division notes that the earlier mark does not convey any clear meaning in relation to the goods at issue.
As regards the figurative elements in the earlier mark, they are considered as purely decorative. A part of the figurative elements of the contested sign are of decorative nature, the crossed lines, if perceived as hilly fields are non-distinctive and this due to the character of the relevant goods which belong in the field of agriculture. Therefore, the verbal elements in both signs are more distinctive (considering the above evaluation of the word ‘speed’ in the contested sign) than the figurative elements.
Neither of the signs has any element that could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the letters ‘MA*RO’ of their verbal elements ‘makro’ and ‘Macro’ and differ in their respective third letters ‘K/C’, their stylisation, figurative elements and in the additional verbal element ‘Speed’ of the contested sign.
However, the stylisation of the letters in the marks and their figurative elements play only a minor role and will have less impact on consumers, since it should be borne in mind that, when a sign consists of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. Moreover, in the present case the blue rectangular background of the earlier mark as well as the figurative elements and the background of the contested sign are of either decorative nature or non-distinctive.
Hence, the focus will be on the words and in this case the first parts of the verbal elements are almost identical.
The verbal element of the contested sign does not exist as such in English. Nevertheless, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).
Therefore, the relevant consumer is very likely to recognize two verbal elements there, the prefix ‘Macro’ and the word ‘Speed’. And this even more since the first letters of each of these words are in capital letters and as such creating a clear visual distinction between them.
Considering that the element ‘Macro’ is very clearly perceivable in the contested sign and that the other verbal element ‘Speed’ is considered weak in relation to the goods at issue, the Opposition Division finds that the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the verbal element of the earlier sign, ‘makro’, and of the first word element of the contested sign, ‘macro’, as the letters ‘C’ and ‘K’, when following the letter ‘a’, will be pronounced identically, in accordance with the pronunciation rules of the English language. The pronunciation differs in the sound of the additional word ‘speed’ in the contested sign, which has no counterpart in the earlier mark. As stated above, the word ‘speed’ in the contested sign is considered weak in relation to the goods in question.
Therefore, the signs are aurally similar to an average degree.
Conceptually, the only word element of the earlier mark, ‘makro’ will be associated by the relevant public with the English prefix ‘macro’. The contested sign will be perceived as two verbal elements, the prefix ‘macro’ referring to the notion of ‘large, long, or great in size or duration’ and the word ‘speed’ referring to inter alia ‘the rate at which something moves, is done, or acts’. As explained above, the Opposition Division considers the element ‘speed’ weak in relation to the goods at issue. As to the figurative elements, as already mentioned above, they will be either perceived as rather decorative elements or one part of the public might see in the crossed lines hilly fields and therefore will perceived them as such. However, the concept of fields is non-distinctive in connection to the relevant goods. Therefore, while taking into account that the signs coincide in the meaning of the elements ‘makro/macro’, they are considered 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.
- 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 clear or direct meaning for any of the goods in question (pesticides and agricultural products) from the perspective of the public in the relevant territory. Furthermore, it is neither commonplace nor banal on the relevant market. 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 two 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).
The likelihood of confusion includes a likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16).
In the present case, the goods at issue are identical and highly similar and are directed at the public at large and professionals whose degree of attention will vary from average to high.
The similarity between the signs results from the almost identical elements ‘makro’ and ‘Macro’ whereas ‘makro’ constitutes the only verbal element of the earlier mark and the element ‘Macro’ is the first part of the verbal element of the contested mark. The Applicant argues that the colour blue in both marks is in completely different shades which contribute to their different overall perception. The Opposition Division notes that the use of different shades of blue does not result in significant, striking differences between the marks. Neither, the further figurative elements in the contested sign contribute significantly to the different overall perception, since as already stated above, these are either of a decorative nature or non-distinctive. Furthermore, the weak verbal element ‘Speed’ has also a limited impact on the overall impression produced by the contested sign on the relevant public.
Taking into consideration all the foregoing, the Opposition Division considers that the dissimilarities between the signs are not enough to counteract their visual, aural and conceptual similarities.
The Opposition Division notes, that it is a common practice for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, modernized image. Moreover, consumers are well accustomed to word marks being stylised and embellished with logotypes and other devices.
Since the component ‘Macro’ will be easily recognized and perceived in the contested sign and because it is most commonly used as a prefix, the relevant consumer may legitimately believe that the contested sign is a brand variation of the earlier trade mark and assume that the goods at issue come from the same undertaking or from economically-linked undertakings.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking public in the relevant territory.
Therefore, the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 8 911 018. 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.
Since the opposition is 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 as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
It follows that the contested trade mark must be rejected for all the contested goods.
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
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.