OPPOSITION DIVISION
OPPOSITION No B 2 682 915
Sapec Agro, S.A.U., Carretera de Constanti, Km 03, Nave 2, Polígono Nirsa, 43206 Reus (Taragona), Spain, (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain, (professional representative)
a g a i n s t
Spiess-Urania Chemicals GmbH, Frankenstr. 18 b, 20097 Hamburg, Germany, (applicant), represented by Klickow & Partner Partnerschaftsgesellschaft mbB, Jessenstrasse 4, 22767 Hamburg, Deutschland, (professional representative).
On 08/03/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 682 915 is partially upheld, namely for the following
contested goods:
Class 1: Chemicals used in industry, science and photography; Unprocessed artificial resins, unprocessed plastics; Manures; Fire extinguishing compositions; Tempering and soldering preparations; Chemicals used in electroplating; Chemical substances for preserving foodstuffs; Tanning substances; Adhesives used in industry; Chemicals, including chemicals with biological bases, for use in agriculture, horticulture and forestry, including for landscaping and sports ground construction, for soil preservation, stock maintenance; Plant protection agents, substances for preserving animal foodstuffs and flowers; Manures, including natural manures; Soil amendments; Soil-conditioning preparations, including soil- strengthening and soil-aerating preparations and plant-enriching substances; Plant granulate for covering plant roots; Compost forming substances; Peat (fertiliser); De-icing chemicals; Preparations for treating seeds, including mordants for seeds and seed denaturants; Chemicals, Namely preparations for cleaning gardens and containers, included in class 1, Substances for preserving foodstuffs.
Class 5: Fungicides, herbicides; Chemical preparations for pesticidal purposes; Chemicals, namely chemicals with a biological base for treating deficiency diseases in plants, plant growth regulators; Preparations for destroying weeds and vermin and chemicals, namely chemicals with a biological base for the protection of plants (growing stock), namely preparations for combating plant, fungal, animal and microbial parasites; Repellents, namely animal and insect repellents, animal and insect bait, preparations for disorientating insects and hygienic preparations for household use for combating parasites and pests, chemicals, including chemicals with a biological base for combating parasites, disinfectants, seed
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dressings, mordants for protecting plant products, seed preparations.
2. European Union trade mark application No 14 816 227 is rejected for all the
above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 816 227816 227, namely against all the goods in Classes 1 and 5. The opposition is based on Spanish trade mark registrations No 2 729 038, SUPORTER, and No 3 090 987, SUPORTER. The opponent invoked Article 8(1) (b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.
According to the same provision, in the absence of such proof the opposition must be rejected.
The applicant requested that the opponent submit proof of use of one of the Spanish trade marks on which the opposition is based, namely trade mark No 2 729 038.
The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the contested application which was published on 11/01/2016. The opponent was therefore required to prove that the above mentioned trade mark on which the opposition is based was put to genuine use in Spain from 11/01/2011 to 10/01/2016 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:Pharmaceutical and veterinary preparations; Sanitary preparations for medical purposes and intimate hygiene not being personal toilet; Dietetic substances adapted for medical use, food for babies; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides.
According to Rule 22(3) EUTMIR, the evidence of use shall 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 21/04/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 19/08/2016 to submit evidence of use of the earlier trade mark. On 09/08/2016, within the time limit, the opponent submitted evidence of use.
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The evidence to be taken into account is the following:
A 3 pages product information leaflet – undated – presenting the product SUPORTER. SUPORTER is described as a new product designed to improve spray mixtures, correcting their pH and increasing the wetting effect, so as to enlarge the effectiveness of the phytosanitary and phytosanitary processing. Furthermore, it is explained how to use this product.
Invoices: 65 invoices, dating from 15/10/2013 to 06/05/2016, issued by Sapec Agro. In those invoices, altogether sales of about 70.000,- Euro of a product named SUPORTER, in different sizes (1l or 5l) are invoiced to a variety of clients in Spain.
In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.
The evidence of use shows that the mark has been used for a product which enhances the effectiveness of phytosanitary substances. This good does not fall within any of the categories for which the earlier mark is registered. It is especially not a fungicide or herbicide, as it only enhances features of given products. Therefore, the opponent has not shown use for the goods for which the mark is registered, but for other goods for which it has no protection.
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 Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was used for the goods for which the mark is registered in the relevant territory during the relevant period of time.
Therefore, the opposition based on this earlier right must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.
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
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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 Division will now examine the opposition in relation to the opponent’s Spanish trade mark registration No 3 090 987, SUPORTER.
a) The goods
The goods on which the opposition is based are the following:
Class 1: Manures, fertilizers, nutritional substances (fertilizers) in liquid form for use in agriculture, Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; Unprocessed artificial resins, unprocessed plastics; Manures; Fire extinguishing compositions; Tempering and soldering preparations; Chemical substances for preserving foodstuffs; Tanning substances; Adhesives used in industry.
The contested goods are the following:
Class 1: Chemicals used in industry, science and photography; Unprocessed artificial resins, unprocessed plastics; Manures; Fire extinguishing compositions; Tempering and soldering preparations; Chemicals used in electroplating; Chemical substances for preserving foodstuffs; Tanning substances; Adhesives used in industry; Chemicals, including chemicals with biological bases, for use in agriculture, horticulture and forestry, including for landscaping and sports ground construction, for soil preservation, stock maintenance; Plant protection agents, substances for preserving animal foodstuffs and flowers; Manures, including natural manures; Soil amendments; Soil-conditioning preparations, including soil-strengthening and soil- aerating preparations and plant-enriching substances; Plant granulate for covering plant roots; Compost forming substances; Peat (fertiliser); De-icing chemicals; Preparations for treating seeds, including mordants for seeds and seed denaturants; Chemicals, Namely preparations for cleaning gardens and containers, included in class 1, Substances for preserving foodstuffs.
Class 5: Pharmaceutical, veterinary and sanitary preparations; Dietetic substances adapted for medical use, food for babies; Plasters, materials for dressings; Material for stopping teeth, dental wax; Fungicides, herbicides; Chemical preparations for pesticidal purposes; Chemicals, namely chemicals with a biological base for treating deficiency diseases in plants, plant growth regulators; Preparations for destroying weeds and vermin and chemicals, namely chemicals with a biological base for the protection of plants (growing stock), namely preparations for combating plant, fungal, animal and microbial parasites; Repellents, namely animal and insect repellents, animal and insect bait, preparations for disorientating insects and hygienic preparations for household use for combating parasites and pests, chemicals, including chemicals with a biological base for combating parasites, disinfectants, seed dressings, mordants for protecting plant products, seed preparations.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
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The term ‘including’, used in the applicants 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 applicant’s list of goods to show the relationship of individual goods with a broader category is exclusive and restricts the scope of protection only to the specifically listed goods.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 1
The contested Chemicals used in industry, science and photography; Unprocessed artificial resins, unprocessed plastics; Manures; Manures, including natural manures; Fire extinguishing compositions; Tempering and soldering preparations; Chemical substances for preserving foodstuffs, tanning substances; Adhesives used in industry are identically contained in both lists of goods (including synonyms). Therefore they are identical.
The contested Substances for preserving foodstuffs are synonyms of the opponent’s Chemical substances for preserving foodstuffs. Therefore they are identical.
The contested Chemicals, including chemicals with biological bases, for use in agriculture, horticulture and forestry, including for landscaping and sports ground construction, for soil preservation, stock maintenance; Plant protection agents, substances for preserving animal foodstuffs and flowers; Chemicals used in electroplating; De-icing chemicals; Chemicals, namely preparations for cleaning gardens and containers, included in class 1 are included in the broad category of the opponent’s Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry. The same holds true for the contested Preparations for treating seeds, including mordants for seeds and seed denaturants which consist of the use and application of biological and chemical agents that control or contain primary soil and seed borne infestation of insects and diseases. Therefore, they are identical.
Likewise, also the contested Soil amendments; Soil-conditioning preparations, including soil-strengthening and soil-aerating preparations and plant-enriching substances are preparations, with which soil is treated prior to planting in order to improve the quality of the soil. These goods are therefore included in or overlap with the broad category of the opponent’s Manures, fertilizers, nutritional substances (fertilizers) in liquid form for use in agriculture. Therefore, they are identical.
The contested Compost forming substances; Peat (fertiliser); Plant granulate for covering plant roots are included in the opponents Manures, fertilizers, nutritional
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substances (fertilizers) in liquid form for use in agriculture. Therefore, they are identical.
Contested goods in Class 5
The contested Fungicides, herbicides; Chemical preparations for pesticidal purposes; Chemicals, namely chemicals with a biological base for treating deficiency diseases in plants, plant growth regulators; Preparations for destroying weeds and vermin and chemicals, namely chemicals with a biological base for the protection of plants (growing stock), namely preparations for combating plant, fungal, animal and microbial parasites; Repellents, namely animal and insect repellents, animal and insect bait, preparations for disorientating insects, chemicals, including chemicals with a biological base for combating parasites, disinfectants, seed dressings, mordants for protecting plant products, seed preparations are all goods used in the context of agriculture or to disinfect and/ or to destroy vermin, parasites and germs in order to facilitate and enhance the growth of plants or to prevent vermin from infecting houses, animals and other living beings. As such, they have the same nature and the same purpose as the opponent’s Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry. They can also have the same method of use, and can be in competition with each other. Furthermore, their distribution channels can be the same, and the relevant public might expect that those goods are produced by the same company. Therefore those goods are similar.
The contested hygienic preparations for household use for combating parasites and pests serve to protect the inhabitants of houses and their belongings and food from parasites and diseases. As such, they can have the same purpose as the opponent’s Chemical substances for preserving foodstuffs, like for instance hormone traps for moths. They can also have the same method of use, and can be in competition with each other. Furthermore, their distribution channels can be the same, and the relevant public might expect that those goods are produced by the same company. Therefore those goods are similar at least to a low degree.
However, the contested Pharmaceutical, veterinary and sanitary preparations; Dietetic substances adapted for medical use, food for babies; Plasters, materials for dressings; Material for stopping teeth, dental wax have no common link to the earlier goods as they serve a completely different purpose and have a different nature. They do not have the same method of use, and are not in competition with each other. Furthermore, their distribution channels are different, and the relevant public will not expect that those goods are produced by the same company. Therefore those goods are dissimilar.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or
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expertise. The degree of attention is considered to vary from average to high, as the use of chemical substances can also require a high professional knowledge as these substances are potentially very dangerous ones.
c) The signs
SUPORTER
Earlier trade mark Contested sign
The relevant territory is Spain.
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 earlier mark is a word mark, composed of eight letters. As a word mark, the sign is protected as such, independently of the type script used.
The contested sign is a figurative mark composed basically of one word element plus one figurative element. The word consists of 9 black and bold letters forming the element Supporter, whereby the S is written in upper case, and the remaining letters are written in lower case. In the letter O which is completely black, a figurative element of a white sprout is inserted. However, this does not impede that the letter O is clearly recognizable.
The earlier mark has no elements that could be considered clearly more distinctive than other elements. The element SUPORTER has no meaning for the goods at issue in the relevant territory.
As regards the contested sign, it is composed of a distinctive verbal element which has no meaning in the relevant territory, and a less distinctive figurative element of a sprout, as it refers to the use of some of the products at issue, namely goods for agriculture, horticulture and forestry purposes. Therefore, the verbal element is more distinctive than the figurative element. Regardless of the question of their distinctiveness, in the overall perception of the sign, the element Supporter has the most impact and it is also the dominant element as it is the most eye-catching due to its size.
Visually, the signs coincide in ‘SUP*ORTER’ which has an independent distinctive role in the contested sign and is also clearly its dominant element. However, they differ in the second ‘P’ in the verbal element ‘SUPPORTER’ of the contested sign, and in the sprout in the letter ‘O’ that is only present in the contested sign.
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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) /
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BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
The verbal parts of the conflicting marks are almost identical, and the earlier sign is completely repeated in the contested sign, where it forms also its dominant element. The figurative element is very small and might go unnoticed by the public, but in any event does not prevent from seeing clearly the letter O in the contested sign. Therefore SUPOR*TER maintains its independent distinctive role in the younger sign.
Therefore, the signs are similar to high degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SUPORTER’, present identically in both signs. The additional letter ‘P’ in the dominant element of the contested sign will not change this identical pronunciation of ‘SUPORTER’. The figurative element is very small and might go unnoticed by the public, but in any event does not prevent from seeing clearly and pronouncing the letter O in the contested sign. Therefore the signs are aurally identical.
Conceptually, neither the earlier sign nor the verbal element of the contested sign have a meaning for the public in the relevant territory. However, part of the public might recognize the sprout in the contested sign, and for this public, the signs differ in this regard. Since a conceptual comparison is either not possible, or the signs are not conceptually similar, 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.
d) 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.
e) Global assessment, other arguments and conclusion
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/services covered are from the same or economically linked undertakings.
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
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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).
In the case at hand, there exists a likelihood of confusion. The signs are visually highly similar and aurally identical and the goods are partially identical and partially similar. The earlier sign is completely and almost identically contained in the contested sign, where it retains an independent distinctive role. Furthermore, this verbal element is also the dominant element in the contested sign, and will mainly attract the attention of the consumers. In the present case, the relevant public will readily use the word ‘Suporter’, present almost identically in both marks, to refer to these marks and will pay more attention to this element that it will consider to be the actual indicator of origin. The differences between the signs are linked to elements with a reduced visual impact and/or a less distinctive character, which the public will not perceive as particularly relevant information on the commercial origin of the goods. In the Opposition Division’s view, those differences are not sufficient to dispel the likelihood that the relevant public may perceive the marks as variants of each other used by the same or economically linked companies.
Average consumers may legitimately believe that the contested trade mark is a new version or a brand variation of the earlier figurative mark. Therefore, the Opposition Division considers that there is a likelihood of confusion, including a likelihood of association, even considering that the degree of attention with regard to some of the relevant goods may be higher than average.
Therefore the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registration. It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
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The Opposition Division
Peter QUAY Karin KLÜPFEL Sigrid DICKMANNS
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.