OPPOSITION No B 2 475 740

Servideu, S.L., Calle Angel Guimerà, 10, bajos, 25310 Agramunt, Spain (opponent), represented by Oficina Ponti, SLP, Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Rfl Akvaryum Sistemleri Sanayi Ve Ticaret Limited Sirketi, Tuna Mah. 666 Sok. No: 20 Esenler, Istanbul, Turkey (holder), represented by Carolina Margareto, Blasco Ibañez 72 1C, 28050 Madrid, Spain (professional representative).

On 24/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 475 740 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of international registration designating the European Union No 1 202 859 for figurative mark, namely against all the goods in Class 1 and some of the goods in Class 5. The opposition is based on European Union trade mark registration No 3 417 111 for figurative trade mark. The opponent invoked Article 8(1)(b) and 8(5) 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 1: Chemicals used in industry, as well as in agriculture, horticulture and forestry; manures; chemicals substances for preserving foodstuffs.

Class 5: Disinfectants; fungicides, herbicides and insecticides.

The contested goods are the following:

Class 1: Chemical products for aquarium keeping, namely, water treatment chemicals for use in aquariums, unprocessed raw plastics for filtering aquarium water; preparations for softening water; manures and fertilizers; absorbing carbons for use in aquariums; mineral substances in the nature of filtering materials for use in aquariums; biologically active enzymes and microorganisms that are aimed at sanitizing water environments and to treat the activation and optimization of biological filter systems; chemical preparations for testing aquaria and ponds water; water conditioning agents; mineral fertilising preparations for and ponds water; sea salts for aquarium fish and mineral nutriment (fertilizing preparations) for aquarium water; filtering materials made of chemical, mineral and vegetable substances as well as ceramic particles, particularly for aquaria and ponds; peat, mineral fertilizing preparations.

Class 5: Disinfectants for use in aquariums; preparations for destroying vermin for use in aquariums; fungicides for use in aquariums, herbicides for use in aquariums.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘particularly’, used in the holder’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the holder’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

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 assumed to be identical are directed at the public at large as well at business customers with specific professional knowledge or expertise. The degree of attention is average.

3. The signs

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).

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.

The earlier mark is a figurative mark consisting of the word element ‘flower’ depicted in green colour with exception of the letter ‘W’ that appears stylised and in red colour. On each side of the verbal element a small green rectangle is placed. The verbal element is set against a yellow rectangular background. The English-speaking public will understand the element ‘flower’ as ‘the part of a plant which is often brightly coloured with a pleasant smell, or the type of plant that produces these’ (www.dictionary.cambridge.org). Bearing in mind that some of the relevant goods are related to plant and agricultural products, it is considered that this element is weak for these goods, namely for Chemicals used in agriculture, horticulture and forestry; Chemical products for aquarium keeping, namely, water treatment chemicals for use in aquariums, unprocessed raw plastics for filtering aquarium water; manures and fertilizers in Class 1 and all the goods, namely disinfectants; fungicides, herbicides and insecticides in Class 5. Furthermore, the figurative elements of two small rectangles and the yellow background resembling a label are of a mere decorative character. Consequently, the word element ‘flower’ will be as weak as the decorative figurative elements of the mark for the aforesaid goods. In relation to the remaining goods, the verbal element will be more distinctive than the figurative elements.

However, for the non-English-speaking public the word ‘flower’ has no meaning and is therefore normally distinctive. For this part of the public the earlier mark is composed of a distinctive verbal element and less distinctive figurative elements of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative elements.

The contested mark is composed of an abstract figurative element resembling a round pot containing a moving liquid  and the word element ‘Reeflowers’ in black stylised typeface on the right side. The element ‘Reeflowers’ as a whole has no meaning in any of the relevant languages. Therefore, this element is normally distinctive for the non-English-speaking public. For this part of the public, there is no element that could be seen as more distinctive than other elements.

The situation is different for the English-speaking public. The Court has held that 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, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

Therefore, it is considered that the English-speaking public will perceive the English word ‘flowers’ at the end of the contested sign and understand it as the plural form of the word ‘flower’. Bearing in mind that some of the relevant goods are related to plant and agricultural products, it is considered that this element is weak for these goods, Chemicals used in agriculture, horticulture and forestry; Chemical products for aquarium keeping, namely, water treatment chemicals for use in aquariums, unprocessed raw plastics for filtering aquarium water; manures and fertilizers in Class 1 and all the goods, namely disinfectants; fungicides, herbicides and insecticides in Class 5. Consequently, the word element ‘flowers’ is weak for these goods. The same public may perceive the word ‘Reef’ as referring to ‘a line of rocks or sand just above or just below the surface of the sea, often dangerous to ships’ (see www.dictionary.cambridge.org). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. Therefore, the initial part ‘Reef’ is more distinctive as the element ‘flowers’ for the English-speaking public.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.

However, it must be borne in mind that even when signs consist of both verbal and figurative components, in principle, the verbal component of the sign also has a strong impact on the consumer. 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; 19/12/2011, R 233/2011-4, Best Tone § 24; 13/12/2011, R 53/2011-5, Jumbo, § 59).

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.

Visually, the signs coincide in the sequence of letters ‘***flower*’. However, they differ in the sequence of letters ‘Ree’ at the beginning of the contested sign and its additional last letter ‘s’. Furthermore, the signs differ in the figurative elements and colours as well as in the graphical stylisation of both marks.

The differing letters ‘Ree’ are at the beginning of the contested sign where they will catch the attention of the reader. Therefore, the signs are similar to a low degree for the part of the public who understands the element ‘flower’ or ‘flowers’ found to be weak for part of the goods. The same applies to the non-English-speaking public who will not dissect this element from the contested sign.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛flower’, identically present in both signs. The pronunciation differs in the sound of the first three letters ‛Ree’ and the last letter ‘S’ of the contested mark, which have no counterparts in the earlier sign.  

Therefore, the signs are similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the non-English-speaking public in the relevant territory neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As regards the English-speaking public in the relevant territory, the coinciding word ‘flower’ or ‘flowers’ will evoke a concept of ‘the part of a plant which is often brightly coloured with a pleasant smell, or the type of plant that produces these’. As this element is weak for part of the goods, it can conceptually only establish a low degree of similarity for these goods whilst it establishes a normal degree of similarity for the remaining goods. However, the attention of the relevant public will be attracted by the additional verbal element ‘Reef’ placed at the beginning of the contested sign which is normally distinctive for all the goods at hand. The signs therefore differ conceptually as far as this verbal element is concerned.

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 has a reputation as result of its long standing and intensive use in the European Union in connection with all the goods  for which it is registered, namely all the goods in Classes 1, 5 and 31. 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 evidence to support this claim. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• Invoices: 60 copies of invoices issued between 2007 and 2013 in respect of the commercial activity of the opponent. The invoices are addressed to companies in Spain. The trade mark ‘flower’ as registered appears at the top of each invoice as a company label. Some of the products do refer to some ‘flower’-products, but the products are named in Spanish and are not translated into the language of proceedings and it is not clear to which goods the invoices refer.
• Product Catalogues for the years 2007, 2009, 2010, 2011, 2012, issued in Spanish with their translation into the language of proceedings: the opponent’s trade mark as registered is shown on the first page of the catalogues. A wide range of products bearing the trade mark ‘flower’ as registered is shown together with the respective packaging. Under the mark various products, as for example fertilizers, lawn, seeds, moss killers, insecticides, fungicides and herbicides are sold. The catalogues make only very general references to the opponent’s company and its marketing activities, such as advertising in magazines.
• Advertising material from various Spanish magazines (e. g. garden, Bricomania, casa joven, jardín), showing the figurative mark on top of the document, which is in Spanish. These articles are related to the fields of agriculture and horticulture. The advertisements show the use of the opponent’s sign in relation to a wide range of goods (fertilizers, insecticides, land and soil improvements, manures, etc.).
• Extracts from www.francejardineries.com in English showing flower-products with its description in English: Bonsais Potting Soil, showing the opponent’s trade mark as registered; Cactus Potting Soil, Soil for Lawn, Geraniums fertilizer, Green Plants Fertilizer, plants potting soil, universal premium potting soil,  universal liquid fertilizer, none of them are dated;
• Press information (magazines) with information and advertisements of FLOWER products, 2008 to 2013.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through use.

Both enhanced distinctiveness and reputation require recognition of the mark by a significant part of the relevant public. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including whether it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing the use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22).

Furthermore, it must be recalled that, as follows from Article 76(1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the acts, evidence and arguments submitted by the parties. Therefore, in assessing whether the earlier mark enjoys reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market, nor conduct an ex officio investigation, but should base its findings exclusively on the information and evidence submitted by the opponent. The evidence must be clear, convincing and ultimately reveal facts necessary to safely conclude that the mark is known by a significant part of the public (06/11/2014, R 0437/2014-1, SALSA/SALSA (fig.) et al.).

In the present case, the material submitted by the opponent consists mainly of invoices, catalogues and documents related to press clips and advertisements. Although the documents do show the use of the opponent’s trade mark as registered, they do not show the extent of recognition by the relevant public.

The material consists ofwide range of products that are sold under the trade mark ‘flowers’. However, it is not clear from the invoices what types of products are sold under the trade mark. The trade mark appears at the top of each invoice and seems to be used as a company name. In its submissions, the opponent adds a table with the sales figures and advertising investments for the period 2007 until 2010. However, these figures do not contain any reference and details as to how this turnover was reached, what the products are, etc. The volumes of sales are not corroborated by any documentation emanating from independent parties. The opponent did not submit any documentation related to survey, inquiries or market shares that could indicate the level of recognition of the trade mark in the Spanish market or its perception by the Spanish public. As a result, the evidence does not show any indication of the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation or acquired distinctiveness.

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 non-English-speaking public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, for this part of the public. At the same time, the mark has a meaning for the English-speaking public on account of the way the word ‘flower’ will be perceived (see above in section c). Given the stylised nature of the verbal element, especially of the letter ‘w’, the distinctiveness of the earlier mark must be seen as normal as well, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29).

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, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the case at hand, the goods were assumed to be identical and are directed at the public at large and professionals whose degree of attention is deemed average.

The signs are visually and aurally similar to a low degree given that the signs coincide in the element, ‘flower’, of the signs. However, it must be borne in mind that the difference between the marks lies in the beginning of the signs, namely in the contested sign’s first element ‘Ree’, as well as in the last letter ‘s’ in the contested sign. This is relevant both for the part of the public who perceives not only the common word ‘flower’ but also the word ‘Reef’ of the contested sign and dissects it from the sign ‘Reeflowers’ and for the part who only perceives the first three letters as such and does not perceive the semantic content ‘Reef’. This additional element will be noted visually, aurally and, for those who understand it, conceptually.

Furthermore, the common word is weak for part of the goods and for those English-speaking public who understand the verbal components of the marks, which reduces the importance of the similarity between the signs stemming from this element. Moreover, this part of the public will nonetheless perceive the meaning of the word ‘Reef’, as well as notes that, conceptually, the earlier mark refers to a single flower, whereas the contested sign relates to many flowers.

As regards the figurative elements of each sign, it must be borne in mind that although these elements are normally less important than the verbal components of a sign, their role in determining the overall impression cannot be set aside. Their impact on the overall impression will be greater when they are prominent, unusual and immediately noticeable, as in the contested sign.  

The different overall impressions also result from the representation of the earlier sign, which, despite including a non-distinctive frame element and being less complex than the contested sign, is entirely different in terms of colours, typeface and size of the letters, as well as the fact that the middle letter ‘W’ is highly stylised and represented in red. This, together with the further visual and aural differences referred to above, will contribute to clearly differentiating the marks.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the conditions may not be sufficient. The opposition may still fail if the holder establishes due cause for the use of the contested trade mark.

In the present case, the holder did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark(s) has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR, that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected on this ground as well.

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 opponent is the losing party, it must bear the costs incurred by the holder in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Lars HELBERT

Sigrid DICKMANNS

Martin EBERL

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.