PANAX | Decision 2250333 - BASF SE v. Oxon Italia S.p.A.
Date Published: May 15, 2018
OPPOSITION No B 2 250 333
Basf SE, Carl-Bosch-Str. 38, 67056 Ludwigshafen am Rhein, Germany (opponent), represented by Maren Svenja Stier, Basf SE, GVX/W-C6, 67056 Ludwigshafen, Germany (employee representative)
a g a i n s t
Oxon Italia S.p.A., Via Carroccio 8, 20123 Milano, Italy (applicant), represented by Fumero S.R.L., Via Sant’Agnese 12, 20123 Milano, Italy (professional representative).
On 13/01/2017, the Opposition Division takes the following
1. Opposition No B 2 250 333 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods of European Union trade mark application No 11 829 538. The opposition is based on German trade mark registration No 30 749 156 and earlier Austrian trade mark No 258 695. 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.
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 German trade mark registration No 30 749 156.
- The goods
The goods on which the opposition is based are the following:
Class 1: Chemical used in agriculture, horticulture and forestry, especially plant fortifying preparations and surfactants, plant growth regulating preparations.
Class 5: Pesticides, especially preparations for destroying vermin, fungicides, herbicides, insecticides.
The contested goods are the following:
Class 5: Chemicals for the protection of agricultural crops and foodstuffs from vermin and other noxious organisms or microorganisms; fungicides; herbicides, weed inhibitors; antiparasitic preparations, insecticides, acaricides, nematicides, rodenticides.
Fungicides, herbicides, insecticides are identically contained in both lists of goods.
The contested chemicals for the protection of agricultural crops and foodstuffs from vermin and other noxious organisms or microorganisms; weed inhibitors; antiparasitic preparations, acaricides, nematicides, rodenticides are included in the broad category of, or overlap with, the opponent’s pesticides. Therefore, they are identical.
- Relevant public – degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to higher than average.
- The signs
Earlier trade mark
The relevant territory is Germany.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
Both marks are word marks.
The marks have no elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the letters ‘*A*AX’, placed in the same positions in both signs. The signs differ in their first letters, ‘C’ in the earlier mark and ‘P’ in the contested mark, as well as in their third letters, ‘R’ in the earlier mark and ‘N’ in the contested mark.
The first parts of the conflicting marks are different. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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 signs are visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters /*/A/*/A/X/, present identically in both signs. The pronunciation differs in the sound of the letters /C/*/R/*/*/ of the earlier sign and /P/*/N/*/*/ of the contested mark. Moreover, the sounds produced by the letter /C/ (pronounced as /K/) and the letter /P/ are quite striking.
Therefore, the signs are aurally similar to a low degree.
Conceptually, 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.
- 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.
- Global assessment, other arguments and conclusion
The goods were found to be identical and 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 higher then average.
The signs are visually and aurally similar to the extent that they coincide in their second, fourth and fifth letters, ‘*A*AX’. They differ in their first and third letters, ‘C*R**’ in the earlier mark and ‘P*N**‘ in the contested mark.
Neither of the signs is particularly long, and, therefore, the differences between them will be easily perceived by the relevant public. On this point, the courts have already established that the length of signs may influence the perception of differences between them. The shorter a sign, the more easily the public is able to perceive all its single elements. Therefore, small differences may frequently lead in short words to a different overall impression (06/07/2004, T-117/02, Chufafit, EU:T:2004:208, § 48; 20/04/2005, T-273/02, Calpico, EU:T:2005:134, § 39; 23/05/2007, T-342/05, Cor, EU:T:2007:152). Moreover, the marks have different beginnings and, as mentioned above, consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. Therefore, it is considered that the coincidence in merely the second, fourth and fifth letters is not sufficient to outweigh the differences between the signs.
The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25). For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
Taking the above into account, it is considered that the similarities between the marks are not enough to give rise to a likelihood of confusion, and that the differences between the marks create different impressions, so that even the part of the public with an average degree of attention will not think that the goods come from the same or economically linked undertakings.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
The opponent has also based its opposition on earlier Austrian trade mark No 258 695, ‘CARAX’, registered for chemicals used in agriculture, horticulture and forestry, especially plant fortifying preparations, surfactants and plant growth regulating preparations in Class 1 and fungicides in Class 5.
Since this mark is identical to the one which has been compared and covers the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.
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 applicant 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 applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.