OPPOSITION DIVISION

OPPOSITION No B 2 810 359

Valagro S.p.A.,Via Cagliari n. 1, 66041 Atessa (CH), Italy (opponent), represented by

Bugnion S.p.A., Via Sallustiana, 15, 00187 Roma, Italy (professional representative)

a g a i n s t

Genuss ohne Reue GmbH, Grabenweg 68, 6620 Innsbruck, Austria (applicant),

represented by MMMM Rechtsanwälte, Rudi-Dutschke-Str. 26, 10969 Berlin,

Germany (professional representative).

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95

have been repealed and replaced by Regulation (EU) 2017/1001 (codification),

Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)

2017/1431, subject to certain transitional provisions. All the references in this

decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to

the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods of European Union trade

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

Decision on Opposition No B 2 810 359 page: 2 of 5

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

Class 1: Fertilising preparations.

The contested fertilising preparations are included in the broad category of the

opponent’s fertilizers which will contain both chemical preparations and natural

fertilisers such as manure. Therefore they are identical.

b) 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 specialised goods directed at

The relevant territory is Italy.

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

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mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95,

Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark made up of the word ‘SWEET’ in a white bold

standard capital typeface, with a black outline. ‘SWEET’ will not be understood by

the Italian public and so is distinctive for the goods in question. The professional

public tend to understand English words related to their field, but the word in question

The contested sign is a figurative mark made up of the words ‘my Sweet’ portrayed in

in lower case. There is a small black spot to the right of the tail of the ‘y’ and two

are of rather decorative nature and therefore weak elements within the mark. The

‘my’ has no meaning in Italian and so is distinctive.

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

Visually, the signs coincide in the distinctive word ‘SWEET’. However, they differ in

the additional word ‘my’ and the black spots present only in the contested sign. They

present identically in both signs. The pronunciation differs in the sound of the letters

‛my’ of the contested mark, which has no counterpart in the earlier sign. Therefore,

the signs are aurally similar to at least an average degree.

examination of likelihood of confusion will proceed.

in the global assessment of likelihood of confusion.

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.

e) Global assessment, other arguments and conclusion

According to the case law of the Court of Justice, in determining the existence of

likelihood of confusion, trade marks have to be compared by making an overall

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assessment of the visual, aural and conceptual similarities between the marks. The

comparison ‘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, § 22 et seq.).

Such a global assessment of a likelihood of confusion implies some interdependence

between the relevant factors, and in particular, similarity between the trade marks

EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24;

similar to at least an average degree, the conceptual aspect not influencing the

distinctive character of the earlier mark is normal.

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

§ 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).

contained in full in the contested sign. The additional word ‘my’ and the differences in

confusion between them.

Likelihood of confusion covers situations where the consumer directly confuses the

trade marks themselves, or where the consumer makes a connection between the

economically linked undertakings.

registration No 1 650 218. It follows that the contested trade mark must be rejected

for all the contested goods.

As the earlier right Italian trade mark registration No 1 650 218 leads to the success

of the opposition and to the rejection of the contested trade mark for all the goods

S.L., EU:T:2004:268).

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COSTS

According to Article 109(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.

costs to be paid to the opponent are the opposition fee and the costs of

According to Article 67 EUTMR, any party adversely affected by this decision has a

right to appeal against this decision. According to Article 68 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 for

appeal must be filed within four months of the same date. The notice of appeal will be

deemed to have been filed only when the appeal fee of EUR 720 has been paid.