OPPOSITION No B 2 510 637

S.C. Johnson & Son, Inc., 1525 Howe Street, Racine, WI 53403-2236, United States of America (opponent), represented by Gilbey Legal, 43, Boulevard Haussmann, 75009 Paris, France (professional representative)

a g a i n s t

Orma SRL, C.SO Matteotti 57, 10121 Turin, Italy (applicant), represented by Interpatent, Via Caboto 35, 10129 Turin, Italy (professional representative).

On 04/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 510 637 is upheld for all the contested goods, namely:

Class 5:        Insecticides; Forestry (chemicals for -), [insecticides]; Pest control preparations and articles; Medical and veterinary preparations and articles.

Class 7:        Atomizers [machines] for insecticides; Power-operated sprayers for insecticides; Sprayers [machines] for agricultural use in spraying insecticides.

Class 8:        Syringes for spraying insecticides; Insecticide sprayers [hand tools]; Sprayers [hand-operated tool] for garden use in spraying insecticide; Sprayers [hand-operated tool] for agricultural use in spraying insecticides; Sprayers [hand-operated tool] for household use in spraying insecticide.

2.        European Union trade mark application No 13 765 896 is rejected for all the contested goods. It may proceed for the remaining goods.

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 13 765 896. Later, in its letter of 07/09/2016, the opponent limited the scope of its opposition and directed it against all the goods in Classes 5 and 8 and some of the goods in Class 7. The opposition is based on, inter alia, European Union trade mark registration No 1 468 800. 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 European Union trade mark ‘PYREL’ 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 27/02/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 27/02/2010 to 26/02/2015 inclusive.

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

Class 5:        Preparations for killing weeds and destroying vermin and insects; insecticides; fungicides; herbicides.

Class 9:        Electrical apparatus for repelling or attracting and destroying vermin and insects.

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 05/05/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 10/07/2016 to submit evidence of use of the earlier trade mark. In accordance with Rule 71 EUTMIR, this deadline was extended until 10/09/2016. On 07/09/2016, within the time limit, the opponent submitted evidence of use.

The evidence filed is the following:

• Invoices: a number of invoices, of which only 14 can be taken into account, as the rest of them post-date the relevant period. The invoices are dated 2011-2014 and are addressed to different companies in French territories (including Martinique in the Antilles), among them large supermarket chains such as Auchan and Carrefour. The invoices show the contested mark and identify the product with both a description and a code, which can be cross-referenced with the catalogues submitted; for example, the product ‘Pyrel Elctrc liq. Gtea 45N Rfl 1ea/24 FR’ is mentioned in invoice No FA5202016 dated 27/06/2013 and is coded with the number 03181730193761, which is found in the brochure ‘SCJ Experts Plan Insectes’ of 2013 along with the description ‘Pyrel Eléctrique Liquide Recharge 45 Nuits The Vert’.
• Brochures: three brochures dated 2012, 2013 and 2015. The mark appears in all of them together with the goods sold under it, bearing codes. As mentioned above, some of the goods that appear in the invoices are also shown in the brochures.
• Samples of packaging: packaging samples showing various goods such as ‘plaquettes anti-mouches’, ‘diffuseur électrique anti-moustiques’, ‘recharge liquid anti-moustiques’ and ‘stickers vitres anti-mouches’.

The opponent also refers to some documents submitted prior to the request for proof of the use of the mark, submitted to prove the enhanced distinctiveness of the earlier mark. These documents are:

• Advertisements:

• Pages extracted from the INA French radio and television audio-visual archives demonstrating that advertisements for PYREL products were broadcast by the most popular French television channels as early as 1999.
• A document from lareclame.fr, a leading French company in the advertising field, which published two print advertisements for PYREL products launched in 2013.
• A document published in June 2011 on the website of zeeagency.com, a marketing company active in the digital field, which mentions that zeeagency.com is in charge of the promotion of PYREL products and the creation of online advertisements (via the internet or mobile devices).

• Market share:

• Pages from a survey conducted by Euromonitor International in 2010 stating that the owner of the mark registered the largest growth in share in 2009.
• Pages from a market study, dated November 2008 and conducted by Ipsos, stating that, in the minds of French consumers, PYREL products are natural and socially responsible. Likewise, the study shows that the mark was ranked fourth in terms of brand awareness in 2008.
• Pages from a market study conducted by Nielsen; they show that, for 8% of French respondents, PYREL is the first-choice insecticide brand. In addition, 42% of respondents declared that they remembered seeing PYREL products.
• Pages from a market study, dated August 2010 and conducted by Ipsos, showing that PYREL brand awareness grew continuously throughout the period 2004-2009.
• An internal table from the opponent’s company summarising a market study conducted by Nielsen in June 2015, showing that the opponent’s position in the French market has remained stable over the years.
• Pages from a market study dated October 2010 and conducted in France by The Boston Consulting Group. It shows that ‘PYREL’ is one of two marks of the opponent and that the products sold under it are composed of a 100% natural formula and are sold by a large number of important supermarket chains in France (inter alia Carrefour, Auchan, Leclerc, System U and Intermarché).
• Pages from a market study conducted in 2011, showing that 18% of French respondents indicated that they bought PYREL products due to their natural composition.
• A brand equity report relating to brands in the pest control market, conducted by Ispos in December 2014, according to which the mark is ranked fourth in the brand equity index in France.

• Press articles:

• An article published in 60 Millions de consommateurs, a magazine published by the French Institute of Consumers. The article compares the efficiency of insect repellents and refers to, inter alia, the goods at issue.
• Articles published between 2008 and 2011 in the online magazine Points de Vente, specialised in distribution and retail trade. The articles state that PYREL products are insecticides with a 100% natural formula, and PYREL is one of the four leading brands in this market in France. PYREL had a significant presence in the French market in 2011, with a market share of nearly 18%.
• Articles published between 2001 and 2013 in the online magazine LSA Conso, some of which explain that the owners of the mark at issue frequently launch new products under the mark, which enables them to gain share in the market of insecticides.
• An article published in the online magazine Que Choisir, a publication that defends the rights of consumers in litigation against corporations.

• Official recommendations: a list of recommended insect repellents published by the French health authorities in 2015, together with a document published by the French Institute for Public Health Surveillance in 2015.

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 documents on file, when evaluated as the whole, show that the earlier mark has been used in France, as the documents are in French, the addresses on the invoices are in France, and the market studies and other documents all refer to France. Furthermore, although some of the documents pre-date (some market studies) or post-date (some invoices) the relevant period, they prove that the mark has been used since 2009 and that its use for the French public grew considerably and steadily until the end of the relevant period. Consequently, the place and time of the use have been proved.

As for the nature of use, most of the documents containing images show the sign . Taking into account that the opponent’s mark was registered as the word sign ‘PYREL’, the sign as used on the market has variations acceptable under Article 15(1), second subparagraph, point (a) EUTMR, as they merely consist of the stylisation of the word itself, a depiction of a flower and a green oval background, all of which are non-distinctive for the goods at issue, as they may refer to the goods being eco-friendly.

In relation to extent, the fact that there are relatively few accounting documents, as some of the invoices post-date the relevant period, is compensated for by the information shown in the market studies and press articles, which demonstrates that the mark at issue is one of the best known in France for the relevant goods.

In relation to the goods, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

The goods for which there is proof of use in the relevant territory during the relevant period are:

Class 5:        Preparations for destroying insects; insecticides.

Class 9:        Electrical apparatus for repelling or attracting and destroying insects.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 1 468 800, whose use has been proved by the opponent for the abovementioned goods.

1. The goods

The goods on which the opposition is based are the following:

Class 5:        Preparations for destroying insects; insecticides.

Class 9:        Electrical apparatus for repelling or attracting and destroying insects.

The contested goods are the following:

Class 5:        Insecticides; Forestry (chemicals for -), [insecticides]; Pest control preparations and articles; Medical and veterinary preparations and articles.

Class 7:        Atomizers [machines] for insecticides; Power-operated sprayers for insecticides; Sprayers [machines] for agricultural use in spraying insecticides.

Class 8:        Syringes for spraying insecticides; Insecticide sprayers [hand tools]; Sprayers [hand-operated tool] for garden use in spraying insecticide; Sprayers [hand-operated tool] for agricultural use in spraying insecticides; Sprayers [hand-operated tool] for household use in spraying insecticide.

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.

Contested goods in Class 5

The contested insecticides; forestry (chemicals for -), [insecticides]; pest control preparations and articles are identical to the opponent’s preparations for destroying insects; insecticides, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with the contested goods.

Medical and veterinary preparations and articles are similar to insecticides, as these goods have the same purpose. They can have the same distribution channels. Furthermore, they are complementary.

Contested goods in Classes 7 and 8

All the contested goods in these classes have the same purpose as and are complementary to the insecticides for which the earlier mark is registered. They are all used in the activity of getting rid of insects and the goods are essential for each other, not only when used in households, but also when used in fields. This means the goods are used in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (see, to that effect, 11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). Therefore, the contested goods in Classes 7 and 8 are similar to a low degree to the goods protected by the earlier mark in Class 5.

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 and similar to various degrees are directed at the public at large and 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

PYREL
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.

As the opponent has claimed (and proved) the enhanced distinctiveness of the earlier mark in France, the Opposition Division will focus the comparison of the signs on the French-speaking part of the relevant public.

The earlier mark is a word mark and, as such, it lacks dominant elements. The applicant contends that the prefix ‘PYRE*’ is non-distinctive for insecticides and the like, as it is often found in words that describe this type of product. The Opposition Division finds that, although this may be the case for part of the public, part of the public concerned is the public at large, which is not aware of these considerations and for which ‘PYRE*’ will not mean anything in connection with the goods and will, therefore, be distinctive. The relevance of this element in the likelihood of confusion for the professional public will be dealt with in section e) of this decision.

The contested trade mark is figurative and, given that the verbal element of the sign is depicted in two different colours, consumers will be able to perceive the word ‘PYRE’ (in orange, apart from the letter ‘Y’ which is depicted in green in the shape of a leaf) and the word ‘GREEN’ (in green). Taking into account that the English word ‘GREEN’ is very basic, a relevant part of the French public will be able to understand that it refers to insecticides whose composition is ecological. Therefore, this part of the sign is descriptive for the goods, even for the general public.

Visually, the signs coincide in ‘PYRE’, as a relevant part of the public will see a letter ‘Y’ in the leaf depicted in ‘P*RE*’ in the contested mark. The marks differ in the last letter of the earlier trade mark, ‘*L’, and the element ‘GREEN’ and the figurative elements of the contested mark (the stylisation of the letter ‘Y’ in the shape of a leaf and the two colours of the sign). However, taking into account that the word ‘GREEN’ is not distinctive for the goods at issue and that the leaf will be perceived as the letter ‘Y’, also present in the earlier mark, the marks are deemed to be visually similar to an average degree.

Aurally, the marks coincide in the pronunciation of ‘PYRE*’, and differ in the pronunciation of the letter ‘L’ of the earlier mark and the word ‘GREEN’ of the contested mark. However, the lack of distinctiveness of the word ‘GREEN’ means that there will be a high degree of aural similarity between the most distinctive parts of the marks, namely ‘PYREL’ and ‘PYRE*’.

Conceptually, the majority of the consumers will not perceive any meaning either in ‘PYREL’ or in ‘PYRE*’; whereas, as already mentioned, for a relevant part of the public ‘GREEN’ will be understood with the meaning given above. Taking into account that the contested mark has a meaning whereas the earlier mark does not, the marks are not conceptually similar.

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.

According to the opponent, the earlier trade mark enjoys a high degree of distinctiveness as result of its long-standing and intensive use in France in connection with the goods. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the evidence listed and described above, from which it is apparent that the earlier mark is indeed well known in France, as it has been widely used for years, and is considered, by the French public, one of the top trade marks in the field of insecticides and is even recommended by the French health authorities. Therefore, the mark indeed enjoys an enhanced degree of distinctiveness.

5. 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 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.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.

The goods are identical and similar to various degrees, and the public concerned is the public at large and business customers. The degree of attention varies from average to high.

The applicant argues that there can be no confusion among the relevant public, as ‘PYRE*’ is not distinctive for the goods in question. However, as seen above, part of the relevant public comprises average consumers who will not perceive any particular concept in ‘PYRE*’. In addition, account must be taken of the fact that, even if ‘PYRE*’ were descriptive or weak for the professional public, the other elements of the contested sign would be even weaker. Furthermore, the similarities between the signs are placed at the beginnings of the signs and 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. Furthermore, it must be stated that 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).

Considering all the above, there is a likelihood of confusion on the part of the French-speaking part of the public in relation to the identical and similar goods. 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. Furthermore, the opponent has proved the enhanced distinctiveness of its trade mark and this, together with the rest of the factors evaluated above, leads the Opposition Division to conclude that, even in relation to goods that are similar to only a low degree, the relevant consumers will think that they originate from the same undertakings or from companies with economic ties. Consequently, the opposition is also well founded in relation to the goods that are similar to a low degree. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right European Union trade mark registration No 1 468 800 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Angela DI BLASIO

María Belén IBARRA DE DIEGO

Natascha GALPERIN

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.