OPPOSITION No B 1 753 642

Agricultura Moderna, S.A., Gonzalo de Cordoba, 2 2ª Pl., Edificio Oporto, 28010 Madrid, Spain (opponent), represented by Herrero & Asociados, Alcalá, 35, 28014 Madrid, Spain (professional representative)

a g a i n s t

Tecniferti S.A., Rua de Ourém, Lote 14, 2º I Urbanização Almoinha Grande, 2416-903 Leiria, Portugal (applicant), represented by Alvaro Duarte & Associados, Avª Marquês de Tomar nº 44-6º, 1069-229 Lisboa, Portugal (professional representative).

On 30/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 753 642 is upheld for all the contested goods.

2. European Union trade mark application No 9 322 711 is rejected in its entirety.

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 9 322 711. The opposition is based on Spanish trade mark registration No 2 116 553. 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 the earlier Spanish trade mark on which the opposition is based.

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 publication of the contested application.

The contested application was published on 31/08/2010. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 31/08/2005 to 30/08/2010 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 1: Fertilizer.

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 18/02/2011, according to Rule 22(2) EUTMIR, the Office gave the opponent until 19/04/2011 to submit evidence of use of the earlier trade mark. On 12/04/2011, within the time limit, the opponent submitted evidence of use.

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 to be taken into account is the following:

• Annex 1: Sworn Declaration of 31/03/2011. The document gives information about the sales turnover between 31/08/2005 and 31/08/2010 in Spain for the goods fertilizers bearing the trade mark 'HUMISEL'.

• Annex 2: 60 copies of invoices dated between 2005 and 2010, issued by the opponent, a Spanish company Agricultura Moderna to different customers in Spain. The invoices refer to the sale of goods under the trade mark 'HUMISEL 15'.

• Annex 3: an undated document which appears to be a dossier of amount of sales of the 'HUMISEL 15' products to different clients in Spain.

• Annex 4: price lists for different products among which 'HUMISEL 15' product appears.

• Annex 5: Product safety specifications of 19/04/2010 in Spanish for the product 'HUMISEL 15'. According to the document the product is 'ácido húmico - fertilizante para uso en cultivos y plantaciones agrícolas'.

• Annex 6: Product specification in Spanish for 'HUMISEL' product.

Annex 7: an extract from the website, listing the products produced by the opponent. The earlier mark 'HUMISEL' is mentioned in relation to the goods 'extracto húmico'.

The invoices and other documents, namely price lists and product specifications show that the place of use is Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned (EURO) and some addresses of the customers in Spain. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated and falls within the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

As far as the sworn declaration is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The documents filed, namely the invoices together with the remaining documents, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of the earlier mark 'HUMISEL'. Use of the mark need not be quantitatively significant for it to be deemed genuine. Although the physical volumes of the sales concerning the products under a trade mark 'HUMISEL' are moderate, they are significant enough not to be concluded as merely token. Moreover, the invoices submitted by the opponent should be taken as samples of sales and do not represent the total sales (which can be inferred from the non-consecutive numbering of the invoices).

The evidence shows that the mark has been used as registered in a trade mark sense, publicly and outwardly for all the goods for which the mark is registered. The opposition Division notes that in some of the evidence the earlier mark 'HUMISEL' appears together with a number '15'. This addition may be seen an indication of the line of products or quantity of grams of the product itself. In those circumstances it must be held that the use of the word mark ‘HUMISEL’ together with other indications is irrelevant, it do not alter its distinctive character within the meaning of Article 15(1)(a) CTMR’ (paragraph 53).

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).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory. Also, the evidence shows that the earlier mark has been used as registered for all the relevant goods, namely fertilizers.

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: Fertilizer.

The contested goods are the following:

Class 1: Fertilizers.

Fertilizers are identically included in both lists of goods.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise (e.g. farmers, plant growers, etc.). The degree of attention displayed by the relevant public ranges from average to high, depending on the specificities, price and frequency of purchase of the goods.

However, it is clear from case-law that, where the relevant public is made up of consumers who are part of the general public and professionals, the group with the lowest level of attention must be taken into account (15/07/2011, T-221/09, ERGO Group, EU:T:2011:393, § 21 and the case-law cited and 15/02/2011, T-213/09, Yorma’s, EU:T:2011:37, § 25). It follows therefore, that even for these goods or services which address both the general public and professionals, account must be taken of the level of attention of the consumer who is part of the general public.

3. The signs

HUMISEL	HUMIGEL
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).

Both marks are word marks and have no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in six out of seven letters, namely ‘HUMI-EL’. The only difference between the signs is in their fifth letter ‘S’/'G'. Due to the position of the differing letters in the middle of the signs, these differences are more likely to go unnoticed by consumers.

The first parts of the conflicting marks (HUMI-) are identical. 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 highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛HUMI-EL’, present identically in both signs. The pronunciation differs in the sound of their fifth letter ‛S’/'G'.

Therefore, the signs are aurally highly similar.

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.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

In the present case, the goods under comparison are identical. The signs are visually and aurally highly similar as they share six out of seven letters in the same position. The marks only differ in their fifth letter 'S'/'G'.

Moreover, the marks under comparison will not be associated with any meaning and will be perceived as fanciful words. Therefore, there is no concept that could render the signs more distinguishable and, thus, avoid the potential for confusion between them that arises from their visual and aural similarities.

In view of the foregoing and taking into account all the relevant circumstances of the case, also the imperfect recollection principle and the interdependence principle between the relevant factors, the Opposition Division concludes that the signs are sufficiently similar to induce a likelihood of confusion on the part of the relevant public in relation to identical goods.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the Spanish trade mark registration No 2 116 553. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Lars HELBERT

Janja FELC

Adriana VAN ROODEN

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.