OPPOSITION No B 2 709 874

Syngenta Participations AG, Schwarzwaldallee 215, 4058 Basel, Switzerland (opponent), represented by NLO Shieldmark B.V., Postbus 29720, 2502 LS Den Haag, The Netherlands (professional representative)

a g a i n s t

BMC Moerdijk B.V., Middenweg 36 a, 4782 PM Moerdijk, The Netherlands (applicant), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, The Netherlands (professional representative).

On 26/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 709 874 is upheld for all the contested goods.

2.        European Union trade mark application No 15 126 139 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 126 139 for the figurative mark  . The opposition is based on international trade mark registration No 593 014 designating the European Union for the word mark ‘PEAK’. 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:        Products for destroying vermin; fungicides, herbicides.

The contested goods are the following:

Class 1:        Hydrated chicken ash fertilizer; hydrated poultry ash fertilizer; products for soil improvement, fertilizers; fertilizers and preparations for use in agriculture, horticulture and forestry; PK fertilizer, mineral fertilizer; artificial fertilizer; inorganic fertilizer; raw material for fertilizer.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

The contested goods of Class 1 are preparations for use in agriculture, horticulture and forestry, fertilizers and products for soil improvement. The opponent’s products for destroying vermin are, inter alia, pest control preparations such as chemical products for pesticidal purposes. Although their natures and methods of use may differ, these goods have similar purposes (i.e. to improve the characteristics of the soil and promote plant growth). They can originate from the same undertakings and target the same end users. They can also be sold side by side in the same outlets. Therefore, these goods are similar.

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 similar are directed at the public at large and/or at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

PEAK
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.

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

According to the applicant, the common element ‘PEAK’ is commonly used in English-speaking part of the public and may be laudatory and therefore weak for this part of the public for the relevant goods. However, regardless as to whether or not this element has a low degree of distinctiveness, for the other part of the public, it has no meaning and it is distinctive. At the opposite, in the contested sign, the English word ‘SOIL’, written in a different font from that of ‘PEAK’, can be identified and understood by at least part of the French-speaking public as the French equivalent word ‘sol’ is very close. For those consumers, this element is weak because it indicates that the goods in question are intended for the treatment of soils, in order to guarantee and/or improve their qualities and the plant growth. The Opposition Division will first examine the opposition in relation to the French-speaking part of the relevant public.

The contested sign is also composed of less distinctive figurative elements because of their purely decorative nature. Therefore, the verbal element ‘PEAK’ is the most distinctive element of the contested sign. As regards the colours which are only present in the contested sign, it must also be pointed out that, when signs consist 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. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37).

Moreover, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the fact that the common element is totally incorporated at the initial part of the verbal element in the contested sign is a highly relevant factor for the assessment of the similarities between the marks. The applicant argues in its observations that the contested sign consists of five prominent figurative elements depicted in several shades of green and brown and placed at the beginning of the trade mark in a dominant position. The Opposition Division agrees that these elements are placed in the initial part of the contested sign. However, their size is comparable to that of the verbal elements and, as seen above, their distinctive character is low because they are relatively banal.

Visually, the signs coincide because the earlier mark is totally reproduced at the beginning of the contested sign, with the exception of the figurative elements found lowly distinctive and/or with little impact. The signs also differ in the additional element ‘SOIL’ which is lowly distinctive for a significant part of the French-speaking public. Aurally, reference is made to the previous visual coincidences between the marks, also applicable in the aural comparison, but with the difference that the figurative elements of the contested sign are not subject to a phonetic assessment.

Therefore, the signs are considered visually similar to an average degree and aurally to a higher degree than average for a significant part of the French-speaking public at least.

Conceptually, although a part of the French-speaking consumers may perceive the meaning of ‘SOIL’ in the contested sign, as explained above, the other sign has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, this conceptual difference between the signs has little impact because, for those consumers, the additional element ‘SOIL’ has a low degree of distinctiveness.

For the rest of the French-speaking consumers, 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 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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

The goods, considered to be similar, are directed at the public at large and/or at professionals whose degree of attention may vary from average to high.

The signs are visually similar to an average degree and aurally similar to a higher degree than average at least for part of the French-speaking public, essentially because the common element ‘PEAK’, which is distinctive, is totally incorporated in the initial part of the verbal element of the contested sign, with the exception of some figurative elements placed at the beginning of the sign but found lowly distinctive and, therefore, with little impact on consumers. Moreover, the additional English word ‘SOIL’ has a low degree of distinctiveness as regards at least a significant part of the French-speaking public. The attention of these consumers will be attracted by the fanciful verbal element, ‘PEAK’, of the contested sign.

Account must also be 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). In the present case, there is a likelihood of confusion even for consumers with a high degree of attention because the differences between the signs are confined to non distinctive or secondary elements and aspects.

Moreover, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings. Indeed, 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 or services that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include ‘PEAK’. In support of its argument the applicant refers to many trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. Moreover, the evidence filed does not demonstrate that French-speaking consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘PEAK’ for goods in Classes 1 or 5. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on a significant part of the French-speaking 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 international trade mark registration No 593 014 designating the European Union. 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

Sandra IBAÑEZ

Benoit VLEMINCQ

Frédérique SULPICE

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.