OPPOSITION No B 2 652 744

Timab Produits Industriels, 55 boulevard Jules Verger, 35800 Dinard, France (opponent), represented by Promark, 62 avenue des Champs Elysées, 75008 Paris, France (professional representative)

a g a i n s t

Omya AG, Baslerstrasse 42, 4665 Oftringen, Switzerland, (applicant), represented by Isarpatent – Patent- Und Rechtsanwälte Behnisch Barth Charles Hassa Peckmann & Partner MBB, Friedrichstrasse 31, 80801 München, Germany (professional representative).

On 16/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 652 744 is upheld for all the contested goods.

2.        European Union trade mark application No 14 588 578 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 588 578 ‘Omya Agrocarb’ (word). The opposition is based on French trade mark registration No 53 341 860 ‘AGROCARB’ (word). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 17/11/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in France from 17/11/2010 to 16/11/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 1:        Conditioners for soil.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 11/08/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 16/10/2016, further extended until 16/12/2016, the possibility to submit evidence of use of the earlier trade mark. On 12/12/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

• A sworn Affidavit of Bertrand Hemery (‘Affidavit’), Managing Director of the opponent, dated 30/09/2016, according to which the earlier mark was first used in 2006 in relation to the goods soil conditioners. It also contains, inter alia, information on the opponent’s sales and turnover of AGROCARB products in Europe from 2011 to September 2016;

• Technical specification sheet of AGROCARB product, dated 12/07/2016;

• Delivery notes for AGROCARB product in France (14 delivery notes within the relevant period and in particular from August 2012 to September 2015);

• Invoices for the sale of AGROCARB product in France (14 in total within the relevant period and in particular from August 2012 to September 2015). These invoices correspond to the above-mentioned delivery notes.

As far as the Affidavit is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the Affidavit are supported by the other items of evidence.

Further, the applicant argues that the technical specification sheet submitted by the opponent has no probative value, since this is an internal document. The above considerations regarding the weighing of evidence are fully applicable for the assessment of this evidence, as well.  

The applicant also argues that the invoices and delivery notes are not sufficient to prove genuine use in terms of extent, that turnover may not be proven by the Affidavit since it is an internal document and that there are no clear indications on the goods for which the mark has been used.

The applicant’s arguments are based on an individual assessment of each item of evidence. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

It is to be noted that the invoices for the relevant period and the delivery notes relate to the same sales of goods and the Opposition Division has duly taken this into account.

Most of the evidence is dated within the relevant period. With respect to the technical specification sheet, even though it is dated outside of the relevant period, it is a piece of evidence not directly showing use but indicating circumstances, related to the use of the mark by the opponent. Therefore, the technical specification sheet is considered together with the remaining evidence on use, submitted by the opponent.  

The invoices and delivery notes show that the place of use is France as this can be inferred from the EUR currency mentioned and the addresses of the addressees of the invoices. Consequently, the evidence of use filed by the opponent contains sufficient indications concerning the place of use.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The submitted 14 invoices, which fall within the relevant period, show that the opponent was selling the AGROCARB product from August 2012 to September 2015 to different addresses in different places in France. The sales evidenced by the invoices are for nearly 420 tones and for the total price of about EUR 16,000. It has to be taken into account also, that the goods in question, as can be seen from the invoices, are of a considerably low price. Accordingly, it is reasonably to presume that the invoices have been submitted to illustrate continuous sales in the relevant territory in the relevant period and not as indication of the realised volumes of sales. Moreover, these are not mass-consumption goods and therefore huge volumes of sales may not be expected.

It is settled case-law that the purpose of the provision on proof of use is not to assess commercial success or to review the economic strategy of an undertaking, or to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks. (08/07/2004, T-203/02, VITAFRUIT, ECLI:EU:T:2004:225, § 38). Upon taking into account these considerations, the Opposition Division finds that the evidence submitted show sufficient extent of use of the earlier mark.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

The evidence submitted show that the mark has been used as registered and as a trade mark, namely ‘AGROCARB’ is the name of the goods sold by the opponent.

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

As for the goods regarding which the mark has been used, the Opposition Division does not agree with the applicant that no evidence was submitted to show the specific goods for which the mark has been used. It should be reminded that the evidence should not be read in an isolated manner but together. The technical specification submitted by the opponent indicates that the AGROCARB product of the opponent is a soil-enriching agent in a powder form, the Affidavit states that the ‘AGROCARB’ product of the opponent is a soil conditioner and the delivery notes show sale of ‘AGROCARB’ products which is in powder form. Based on these pieces of evidence, it could be reasonably concluded that the goods in relation to which ‘AGROCARB’ mark has been used are conditioners for soil.  

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: Conditioners for soil.

The contested goods are the following:

Class 1: Calcium carbonate based substances for the improvement of the soil.

Contested goods in Class 1

It should firstly be mentioned that in its observations the applicant discusses whether the goods at issue are raw products or finished products and heavily relies on this fact in its conclusions on the comparison of the goods. The goods of the earlier and of the contested marks do not contain any indication as to the type of product (raw or finished) they relate to. The applicant has not adduced any evidence in support of its argumentation, either. Accordingly, the Opposition Division does not accept that the goods differ in nature and/or function because the contested ones are raw products, while the ones of the earlier mark – finished products. This is not indicated in the list of goods of the signs, nor may be inferred on the basis of other factors.

Conditioners of soil are ‘a substance added to the soil to improve its physical characteristics, esp. one made synthetically for the purpose’ (Oxford English Dictionary Online). The contested goods are calcium carbonate based substances for the improvement of the soil or in other words, substances for improvement of the soil, which has calcium carbonate as their main ingredient. Accordingly, the contested goods are included in, or at least overlap to a considerable extent with, the broader category of the opponent’s goods. Hence these goods are 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 the professional public with specific professional knowledge or expertise in the field of agriculture. The relevant goods may contain specialised additives, which determine their properties and effect, depending on their contents they are aimed at different types of plants, soils, etc. and are not purchased on a daily basis. Therefore the general public, as well as the specialised public is considered to show attention that is higher than the average (25/06/2016, R 1182/2015-5, HORTY / Horti-Cote et al., § 18 – § 20; 02/07/2015, R 2724/2014/1, PLANT HEALTH CARE, § 18).

3. The signs

AGROCARB	Omya Agrocarb
Earlier trade mark	Contested sign

The relevant territory is France.

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 marks share the identical element ‘AGROCARB’, which is the second out of the two word elements of the contested sign and fully comprises the earlier mark. The applicant contends that the word taken as a whole would be perceived as descriptive because the public will split it into ‘AGRO’ and ‘CARB’, where the first part will be understood as related to agriculture and the second – to carbonate or carbohydrates.

It is true that even though trade marks are generally seen as a whole, consumers tend to split the marks into words that are known to them or suggest a concrete meaning. In the case at hand, the Opposition Division agrees that the prefix ‘AGRO’ will be perceived as related to ‘agriculture’ (‘agriculture’ in French). It is used as a prefix in French words such as ‘agro-industry’ (‘agro-industrie’), ‘agro-food’ (‘agro-alimentaire), ‘agritourism’ (‘agro-tourisme’), etc. and the consumers will see the link with agriculture.

At the same time, a straightforward link with some concept may not be said to exist with respect to the element ‘CARB’, forming the second part of ‘AGROCARB’. It is undisputable that ‘CARB’ is the first part of the words ‘carbonate’ (identical in French) and ‘carbohydrates’ (‘glucides; hydrates de carbone’ in French). The applicant has not adduced evidence in support why the relevant public, which in this case is the French public, will perceive the second part of ‘AGROCARB’ as evoking the concept of carbonate. The mere fact that the component in question is contained in the word, does not mean that consumers would see such a link, especially having in mind that this is the second part of the word. ‘CARB’ is not commonly used as an abbreviation or a shorter version of ‘carbonate’. Depending on the case, it is ‘CO2’ or ‘CO3’ that are used to indicate the carbonate ion in a chemical formula and this is how professionals would normally expect to see a ‘carbonate’ indicated. As for non-professionals, such as for example home gardeners, given that ‘CARB’ is not commonly used to indicate ‘carbonates’, the possibility that it evokes a concept related to ‘carbonates’ is even more remote. As for ‘carbohydrates’, they are one of the main types of nutrients. It is not clear to the Opposition Division how could the concept of carbohydrates be seen as describing a characteristic of calcium carbonate based substances for the improvement of the soil or of soil conditioners.

It is settled case-law, that ‘a trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services is descriptive of those characteristics only if there is no perceptible difference between the neologism or the word created and the sum of its component parts. Where the combination is unusual for the goods concerned, the neologism or the word creates an impression which, merely by virtue of this combination, is sufficiently far removed from the meaning arising from the component elements’ (12/06/2007, T-339/05, Gigabyte, ECLI:EU:T:2013:13, § 18 and the case-law cited).

In the case at hand, ‘AGROCARB’ is an invented word, composed of the identifiable element ‘AGRO’ and the element ‘CARB’, which does not evoke a specific concept, either alone or taken together with ‘AGRO’. Even if upon a detailed analysis of the separate elements of the word and the goods at issue it might be inferred that ‘CARB’ stands for carbonates, such conclusion does not stem directly from the immediate perception of the word. When analysing a sign, it is the immediate impression created in the consumers that is of relevance and not possible findings after a detailed consideration, which goes far beyond the usual perception of a mark. The way an invented word is or could have been created could only be relevant if it is apparent to the relevant consumers and they therefore see a concept behind the word. The case at hand does not show such characteristics.

In the present case the Opposition Division finds that when perceiving the element ‘AGROCARB’, the consumer will see the word as related to agriculture due to the prefix ‘AGRO’. The second part of the word would not evoke a specific concept. Therefore, the word taken as a whole will be seen as an original unit. Accordingly, the element ‘AGROCARB’ taken as a whole has normal distinctiveness in relation to the goods at issue.  

The contested mark contains an additional element, which is the four-letter word ‘Omya’, positioned in the first place of the sign. The word is meaningless for the relevant public and therefore of normal degree of distinctiveness.

Visually, the signs coincide in ‘AGROCARB’, which constitutes the earlier sign and is the second component of the contested sign. The signs differ in the word ‘Omya’ of the contested mark, which has no counterpart in the earlier one. The argument of the applicant that the differing word ‘Omya’ is the first element of the sign and will therefore attract the attention of the consumers is duly considered by the Opposition Division. However, it is noted that this principle of perception of signs, as referenced by the applicant, is not absolute and different factors may influence its relevance. In the case at hand, the word ‘Omya’ is considerably short – four letters and the entire mark contains two elements in total. In view of this, it is not likely that the consumers ignore the second element ‘AGROCARB’, which is an invented word composed of eight letters. In view of the length of the two components of the mark, it is unlikely that only the first component is remembered by the consumers.

In view of the above and upon taking into account that the earlier mark is entirely contained in the contested sign, being its second out of two components, it is considered that the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of ‘AGROCARB’ (three syllables), present identically in both signs. The pronunciation differs in the sound of ‘Omya’ (two syllables) in the contested mark, which has no counterpart in the opponent’s mark. Accordingly, the signs are considered aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs share the word ‘AGROCARB’, which will allude to agriculture, agriculture-related, due to its prefix, the signs taken as a whole are conceptually similar to a very low degree, given the fact that the agriculture-related connotations would be allusive to the goods at question.

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. As stated above in section c), the word ‘AGROCARB’ taken as a whole, which constitutes the earlier mark, is an invented word with no meaning in relation to the goods at question. Therefore, the earlier mark has a normal degree of distinctiveness, despite its weak element ‘AGRO’.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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).

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).

In the case at hand it has been established that the goods are identical and that the relevant public is composed of professionals and the general public, who show a higher degree of attention. The earlier mark is entirely contained in the contested sign, representing the second out of two word elements, which has been found to lead to similarity between the signs to an average degree from visual and aural point of view and to a very low conceptual similarity. The earlier mark has a normal degree of distinctiveness with respect to the goods in question.  

In view of the above, it follows that there is likelihood of confusion on the part of the public.

It is to be noted that even if the earlier mark had a lower than normal degree of distinctiveness with respect to the goods at question, what would have been the case if ’AGROCARB’ as a whole were allusive to characteristics of the goods (relevant if ‘CARB’ were also a weak element – a position not supported by the Opposition Division on the arguments stated above), this was not going to change the outcome of the proceedings. In particular, it is the settled case-law that the finding of a weak distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion. The distinctive character of the earlier mark is one of the factors to be taken into account when assessing the likelihood of confusion and as stated above, there is interdependence between the relevant factors, which is relevant for the final outcome. Thus, even in a case involving an earlier mark of a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T-112/03, FLEXI AIR, ECLI:EU:T:2005:102, § 61).

Likelihood of confusion covers, inter alia, situations where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. It is settled case-law that notwithstanding that the overall impression may be dominated by one or more components of a composite mark, it is quite possible that in a particular case an earlier mark used by a third party in a composite sign still has an independent distinctive role in the composite sign, without necessarily constituting the dominant element. In such a case the overall impression produced by the composite sign may lead the public to believe that the goods or services at issue come from companies which are linked economically (06/10/2005, C-120/04, Medion, ECLI:EU:C:2005:594, § 30 and § 31).

Given that the earlier mark is entirely contained in the contested one, that it is an invented word and as such – unique, that the additional element in the contested sign is a single, considerably short word, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 53 341 860. 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.

The Opposition Division

Eva Inés PÉREZ SANTONJA

Teodora TSENOVA-PETROVA

Vita VORONECKAITE

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.