DECISION

of the Fifth Board of Appeal

of 25 July 2016

In Case R 1182/2015-5

TKI HRASTNIK, d.d.
Za Savo 6 1430 Hrastnik Slovenia	Applicant / Appellant

represented by PATENTNA PISARNA D.O.O., Čopova 14, 1001 Ljubljana, Slovenia

v

Mivena Holding B.V.
Westeinde 56 5141 AD Waalwijk The Netherlands	Opponent / Respondent

represented by MERK-ECHT B.V., Keizerstraat 7, 4811 HL Breda, The Netherlands

APPEAL relating to Opposition Proceedings No B 2 000 092 (European Union trade mark application No 10 456 309)

The Fifth Board of Appeal

composed of G. Humphreys (Chairperson), V. Melgar (Rapporteur) and A. Pohlmann (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 30 November 2011, TKI HRASTNIK, d.d. (‘the applicant’) sought to register the word as amended

HORTY

for the following goods:

Class 1 ‒ 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.

2. The application was published on 11 January 2012.

3. On 10 April 2012, Mivena Holding B.V. (‘the opponent’) filed an opposition against the registration of the published trade mark application for as amendedgoods applied for. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

4. The opposition was based on the following earlier rights:

• Benelux trade marks: No 811 604 for the word ‘Horti-Cote’; filed on 30 October 2006 and registered on 7 February 2007, for ‘fertilizers’ in Class 1; No 863 961 for the word ‘Horti-Cote Plus’, filed on 28 April 2009 and registered on 10 July 2009 for ‘fertilizers’ in Class 1.

• International Registration No 1 091 564, with effect in Estonia, Spain, France, Greece, Italy, Poland and Portugal, for the word ‘Horti-Cote’, filed and registered on 31 August 2011, for ‘fertilizers’ in Class 1.

• International Registration No 1 091 563, with effect in Estonia, Spain, France, Greece, Italy, Poland and Portugal, for the word ‘Horti-Cote Plus’, filed and registered on 31 August 2011 for ‘fertilizers’ in Class 1.

5. By decision of 27 April 2015 (‘the contested decision’), the Opposition Division partially upheld the as amended for as amended the contested goods, namely ‘chemicals used in agriculture, horticulture and forestry; manures’ in Class 1, on the grounds that there was a likelihood of confusion. It gave, in particular, the following grounds for its decision:

• The Opposition Division first examined the opposition in relation to earlier Benelux trade mark No 811 604.

The goods

• The contested ‘chemicals used in agriculture, horticulture and forestry’ include, as a broader category, the opponent’s ‘fertilizers’. Since the Opposition Division could not dissect ex officio the broad category of the applicant’s goods they are considered identical to the opponent’s goods.

• The contested ‘manures’ are included in the broad category of the opponent’s ‘fertilizers’. Therefore, they are considered identical.

• The contested ‘chemicals used in industry and science as well as in photography; unprocessed artificial resins, unprocessed plastics; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry’ are not used for any fertilizing purpose and are therefore not produced or marketed by the same undertaking and not directed at the same end consumer. Therefore, they are considered dissimilar.

The signs

• The relevant territory is the Benelux.

• Visually, the signs are similar to the extent that they coincide in ‘HORT’. However, they differ in the letter ‘I’ and the hyphen and the word ‘COTE’ of the earlier mark and the letter ‘Y’ of the contested application.

• Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, being the Benelux countries where either French, Dutch or German is spoken, the pronunciation of the signs coincides in the syllables ‛HOR-TI’, present identically in both signs, and to that extent the signs are aurally similar. The letters ‘I’ and ‘Y’ are both pronounced the same in all three languages of the relevant territory. The ‘H’, present in both marks under comparison, is not pronounced in the French language. The pronunciation differs in the sound of the letters ‘COTE’ of the earlier mark which has no counterpart in the contested sign.

• Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the elements ‘HORTI’ and ‘HORTY’ will be allusively associated with an abbreviation of the term ‘horticultural’ as far as the Dutch and French language are concerned and then only those who are familiar with agricultural terminology. To that extent, the signs have a similar concept below average. For the German-speaking public and for the French and Dutch-speaking public who will not recognise an abbreviation for the term horticultural, neither of the signs will have a meaning. Since in this case a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs as far as this public is concerned.

• Taking into account the abovementioned visual, aural and, where applicable, conceptual coincidences, it is considered that the signs under comparison are similar.

• The elements ‘HORTI’ and ‘HORTY may be associated with ‘horticultural’ by a part of the public namely by the Dutch and French-speaking public and only those who are familiar with agricultural terminology. Bearing in mind that the relevant goods are ‘fertilizers’ it is considered that this element is distinctive below average for these goods, namely for ‘chemicals used in agriculture, horticulture and forestry’ and ‘manures’. Consequently, the impact of these elements is limited when assessing the likelihood of confusion between the marks at issue, but only for a part of the Dutch and French-speaking public. For the rest of the public in the Benelux countries the words have no meaning and the elements will have an average degree of distinctiveness.

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

• 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. The distinctiveness of the element ‘Horti’ must be seen as below average for a part of the Dutch and French-speaking public and for the goods in question, namely for ‘chemicals used in agriculture, horticulture and forestry’ and ‘manures’. The mark has a normal degree of distinctiveness for the rest of the public in the relevant territory and for the remaining goods in relation to which it has no meaning from the perspective of the public in the relevant territory.

• In the present case, the goods found to be identical are directed at agricultural customers with specific professional knowledge or expertise or at an average public seeking to acquire fertilizers for private garden use. The level of attention will be average for all consumers.

• A part of the goods have been found to be identical, a part is dissimilar.

• The element ‘HORTI’ in the earlier mark has a below average distinctiveness. For the rest, taken as a whole the earlier mark enjoys a normal degree of inherent distinctiveness.

• Both marks share the letter combination ‘HORT’. They differ in the last letters ‘i’ and ‘y’, and the hyphen followed by the word ‘COTE’ in the earlier mark’. However the presence of these different elements does not draw away the consumer’s attention from the element ‘HORT’. Moreover, the elements ‘HORTI’ and ‘HORTY’ are pronounced identically by all of the French, Dutch and German-speaking public in the Benelux countries. Consequently these shared word elements of the marks under comparison are visually highly similar, and aurally and for a part of the public, conceptually identical.

• It is considered that the visual, aural and conceptual similarities (for a part of the relevant public) between the signs are enough to counteract the differences and it is likely that the relevant public that does not associate ‘Horti’ and ‘Horty’ with horticultural products on being exposed to the use of both signs in relation to the goods in question and having an imperfect recollection of the earlier mark, would be likely to think that the goods for which the later mark is used are offered by the same undertaking as the goods offered under the earlier mark.

• Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partially well founded on the basis of the opponent’s Benelux (No 811 604) trade mark registration. The contested mark must be rejected for the goods found to be identical to those of the earlier trade mark.

6. On 22 June 2015, the applicant filed an appeal against the contested decision, requesting that the decision be as amended set aside as amended accepted. The statement of grounds of the appeal was received on the same day. The applicant argued as follows:

• The opposition was upheld for the goods that have never been applied for, namely: ‘cinematographic film, sensitized but not exposed; photographic paper; photometric paper; photosensitive plates; reagent paper; sensitized films, unexposed; sensitized paper; sensitized photographic plates; sensitized plates for offset printing; X-ray films, sensitized but not exposed’.

• The opposition was erroneously accepted for part of the contested goods. In order to prevent repetition, the applicant refers to its observations filed at the opposition procedure on 20 November 2014.

• The average consumer will understand the word ‘HORT’ as an abbreviation of the word ‘horticulture’, be it a German, French or Dutch-speaking consumer. In addition, as English is widely spoken throughout the European Union, it will be also understood. The University of Leibniz offers a study program on ‘International Horticulture’, which confirms its descriptive character even in German.

• The word ‘horticulture’ was derived from the Latin words ‘hortus’ (garden) and ‘cultura’ (cultivation). In modern times it relates to a branch of agriculture which deals with the art, science, technology and the business of plant cultivation.

• The relevant public will have at least some basic knowledge in the relevant field and will gather the necessary information before the purchase. The level of attention of the relevant public will vary.

• There are twenty EUTMs filed for the goods in Class 1 containing the word element ‘HORTI’, whereas only the applicant has filed a EUTM application for the word ‘HORTY’.

• In addition, the opponent’s earlier trade mark also include the word ‘COTE’ which is defined as ‘a shed or coop for small domestic animals and especially pigeons’ and is therefore highly distinctive for ‘fertilizers’. Two earlier marks include the element ‘plus’, also descriptive for the meaning of the sign in total.

• The applicant’s sign ‘HORTY’ shows its unique quality by adding a letter ‘Y’ at the end, whereas the element ‘HORT’ in the signs in conflict and in relation to the goods in question, has a weak distinctive character, which in consequence, adds to the significance of other elements in the marks.

• In addition, according to the EUIPO Convergence Program ‘when the common components of the relevant marks have a low degree of distinctiveness, the assessment of the likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression of the marks. It will take into account similarities/differences and distinctiveness of the non-coinciding components’. It is evident that the common component of the marks in question ‘HORT’ has a low degree of distinctiveness which in turn means that we have to take into account the non-coinciding components, which in the present case are different.

• The contested EUTM application was rejected for ‘chemicals used in agriculture, horticulture and forestry; manures’. These goods are very specific and target a highly attentive consumer. Since the word ‘HORT’ is descriptive for ‘chemicals used in agriculture, horticulture and forestry; manures’, the opponent cannot claim any exclusive rights to the registration or use of the word ‘HORT’, which should be left free to use by competitors. Even the non-professional user will place due care when selecting the goods, on the basis of previous investigation and with a help of a skilled sales assistant. The danger of confusion is therefore further diminished due to the nature of the goods.

• As the average consumer will be highly attentive, it will not believe that the goods under the mark ‘HORTY’ come from the same undertaking or are economically-liked to the opponent.

• The applicant registered the trade mark ‘HORTY’, in Slovenia, No 9 270 646 filed on 4 November 1992; in Croatia, No Z 20 000 118, filed on 31 January 2001; and in Serbia, No 65 392, filed on 12 June 2012, all for ‘liquid mineral fertilizers’ in Class 1.

7. In its observations in reply (marked as confidential) received on 28 September 2015, the opponent requests that the appeal be dismissed and that the contested EUTM application be rejected for all the goods applied for.

• The opponent agrees with the applicant that the contested EUTM application was not filed for the following goods ‘cinematographic film, sensitized but not exposed; photographic paper; photometric paper; Photosensitive plates; reagent paper; sensitized films, unexposed; sensitized paper; sensitized photographic plates; sensitized plates for offset printing; X-ray films, sensitized but not exposed’. This means that these goods should not have been taken into account in the appealed decision. However, these goods were not ‘added’ to the list of goods in Class 1. In other words, EUIPO did not allow protection for those goods, it only appears to be an error/oversight of the Opposition Division.

• The first four letters out of five of the EUTM application are identical to the first four letters of the opponent’s trade marks (HORT-HORT), in addition the fifth letter of EUTM application is highly similar to the fifth letter of the opponent’s trade marks (Y-I). The public will generally attach more importance to the first part of a trade mark. In the trade marks of the opponent, the word element HORTI is thus the dominant part. This means that this word element strikes the most attention. The marks in question are visually highly similar.

• The EUTM application is from a phonetic point of view thus identical to the first and second syllable of the opponent’s trade marks. The rhythm and sound of the respective marks is also similar.

• The marks in question consist of fanciful words, namely ‘Horty’ and ‘Horti-Cote’. These words do not have any meaning in any of the EU languages, and the public will perceive the marks as fanciful words. Therefore, in principle, it is not possible to make a conceptual comparison. It is however possible that the part of the public which is familiar with the Latin word ‘hortus’ might relate the words ‘Horty’ and ‘Horti’ to that word (Hortus). The word ‘hortus’ means garden in Latin. If this is the case, these words share the same conceptual meaning in this respect. The opponent agrees however with the Opposition Division that part of the public will not recognise a relation between ‘Horty’ or ‘Horti’ and ‘horticulture’. For this part of the public the signs will have no meaning.

• The statement of the applicant regarding the meaning of the word element ‘COTE’ is obviously not correct. The word element ‘COTE’ does not refer to a shed.

• The Opposition Division correctly ruled that the above stated goods are identical.

• The ‘chemicals used in industry, science and photography; unprocessed artificial resins, unprocessed plastics; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry’ in the EUTM application are similar to the goods for which the trade marks of the opponent are registered. These goods are aimed at the same public, are produced by the same companies, sold in the same retail outlets, use the same distribution channels, share the same purpose and method of use.

• Consequently, taking into account the above stated, the goods of the EUTM application are identical, highly similar or similar to the goods of the trade marks of the opponent. This means that the second prerequisite of Article 8 (1)(b) EUTMR is met as well.

• The Opposition Division correctly decided that the level of attention of the relevant public is average (normal). The opponent does not agree with the statement of the applicant in this respect. The goods are directed at agricultural customers and at the public at large.

• In this case it is undeniable that the distinctive and dominant elements in the marks respectively are ‘HORTI’ and ‘HORTY’.

• The registration and the use of the EUTM application, which is highly similar to the trade marks of the opponent and which has been applied for identical, highly similar and similar goods will cause the relevant public to confuse the marks. The relevant public will deem that the respective marks originate from the same or at least economically-related companies or businesses. This will lead to detriment on the side of the opponent.

Reasons

8. The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.

Scope of the appeal

9. According to Article 59 EUTMR, ‘any party to proceedings adversely affected by a decision may appeal’. Moreover, pursuant to Articles 60 (2) EUTMR and 8(3) BoA-RP, in inter partes proceedings, the defendant may, in its response, seek a decision annulling or altering the contested decision on a point not raised in the appeal.

10. The Board notes that, in its response to the appeal, the opponent requests that the EUTM application ‘HORTY’ No 10 456 309 is rejected for all goods for which it seeks protection. In addition, in its written observations it contests the Opposition Division’s findings of dissimilarity of part of the goods of the contested EUTM application, namely ‘chemicals used in industry, science and photography; unprocessed artificial resins, unprocessed plastics; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry’ in Class 1, with the goods, i.e. ‘fertilizers’, for which its earlier trade marks are registered.

11. Since the opponent’s appeal challenges the decision on points not raised in the primary appeal, namely the rejection of the EUTM application for all the contested goods in Class 1, the ancillary appeal is admissible under Article 60 (2) EUTMR and Article 8(3) BoA-RP.

12. The applicant directed its appeal only against those goods for which the contested decision upheld the opposition, namely ‘chemicals used in agriculture, horticulture and forestry; manures’ in Class 1.

13. In view of the foregoing considerations, having regard to the scope of the applicant’s appeal, and observations filed by the opponent, the appeal shall continue on the basis of Article 8(1)(b) EUTMR in relation to all the contested goods in Class 1.

Likelihood of confusion - Article 8(1)(b) EUTMR

14. It follows from Article 8(1)(b) EUTMR that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

15. 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. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and account being taken of all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see 09/07/2003, T-162/01, Giorgio Beverly Hills, EU:T:2003:199, § 30 to 33 and the case-law cited).

The relevant public and the consumer’s level of attention

16. In the present case, the opposition is based on more than one earlier trade mark. While for its assessment the Opposition Division selected an earlier Benelux trade mark No 811 604, in the Board’s view, the earlier International Registration No 1 091 564 presents a stronger case from the opponent’s perspective.

17. For reasons of procedural economy, the Board will conduct its assessment of the likelihood of confusion on the basis of the earlier International Registration No 1 091 564, ‘Horti-Cote’, for ‘fertilisers’ in Class 1, with the focus on those territories, where neither of signs has a meaning, i.e. Estonia and Poland.

18. As for the relevant public, the goods in Class 1 are directed at both the average consumer and the specialised public. The consumer, by reference to whom the likelihood of confusion must be assessed, is deemed to be reasonably informed, observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

19. The goods at hand in principle, are addressed to the professional public with specific professional knowledge or expertise in the field of agriculture, horticulture and forestry. In that regard, a higher level of attentiveness than the public at large is expected (see, to that effect, 15/01/2013, T-451/11, Gigabyte, EU:T:2013:13, § 38 and the case-law cited)

20. The goods at issue are also aimed at end consumers (through retail, DIY stores and garden centres) to be used in house gardens. Although, the contested goods are available at moderate prices, however they are not purchased on the daily basis and moreover, because they contain chemical products of particular properties, which have direct effect on the health of plants, in the Board’s view, the level of attention paid by the general consumers will also be higher than average.

Comparison of the goods

21. Before turning to the comparison of the goods in the present case, it is necessary to define the scope of the contested goods.

22. The Board notes that the list of goods as applied for and published covers the following:

Class 1 ‒ 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.

23. The opponent challenged the contested application with respect to all the goods applied for.

24. The parties, when filing their arguments before the Opposition Division, referred to the goods listed above.

25. In the contested decision the Opposition Division considered that the contested goods are the following:

Class 1 ‒ 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; cinematographic film, sensitized but not exposed; photographic paper; photometric paper; photosensitive plates; reagent paper; sensitized films, unexposed; sensitized paper; sensitized photographic plates; sensitized plates for offset printing; X-ray films, sensitized but not exposed.

26. The Board considers that by adding the items to the specification, the Opposition Division presumably acted in accordance with the Communication No 2/12 of the President of the Office of 20 June 2012, issued following a judgment of the court (judgment of 19/06/2012, C-307/10, IP Translator, EU:C:2012:361), as regards European Union applications filed before 21 June 2012.

27. Acting on this communication it considered, however without the necessary explanation provided to the parties in the present proceedings, that as the contested application covered the class heading of Class 1, the intention of the applicant was to cover all the goods included in the alphabetical list of Class 1, and as a result, covered also the following goods which, according to the EUIPO’s practice did not fall within the natural and usual meaning of the class heading’s general indication:

‘Cinematographic film, sensitized but not exposed; photographic paper; photometric paper; photosensitive plates; reagent paper; sensitized films, unexposed; sensitized paper; sensitized photographic plates; sensitized plates for offset printing; X-ray films, sensitized but not exposed.’

28. The Board firstly notes that the contested EUTM application was filed on 30 November 2011 when the 9th edition of the Nice Classification was applicable. While the applicant’s list of goods in Class 1 covered all general indications, the Opposition Division failed to add, again without the necessary explanation, all the items not falling within the natural and usual meaning of the class heading selected by the EUIPO for goods in Class 1, namely:

‘Albuminized paper; baryta paper; blueprint cloth; blueprint paper; diazo paper; ferrotype plates [photography]; litmus paper; self-toning paper; sensitized cloth for photography; test paper, chemical;’

29. The Board, finds that the cited judgment (i.e. ‘IP Translator’ case) requires applicants to describe goods and services for which trade mark protection is sought with sufficient clarity and precision in the application for registration, so as to allow the authorities and economic operators, on that basis alone, to understand the scope of the protection (see judgment of 19/06/2012, C-307/10, IP Translator, EU:C:2012:361, § 49). As such, the judgment not only emphasised the requirement, which pertains to the application for registration, to define sufficiently clearly and precisely the extent, in terms of goods and services, of the application for registration, but also the need for legal certainty. The aim of legal certainty becomes frustrated when a EUTM application, during the opposition proceedings, is deemed to have been applied for goods and services that have not been listed in the application for registration, or in the publication thereof. In this respect, it is reiterated that an opposition can be based only on the grounds laid down in Article 8 EUTMR and not on the basis of classification or other filing formalities (see also decision of 11/02/2014, R 410/2013-2, NARIN / NAHRIN (fig.) et al., § 22 and of 08/09/2014, R 1960/2013-2, MOTORTOWN (fig.) / M MOTOR (fig.) et al., § 31-38, as confirmed by the decision of 18/03/2016, ‘MOTORTOWN’, T-785/14, ECLI:EU:T:2016:160, § 33).

30. Furthermore, all these additional goods in Class 1 were only introduced by the Opposition Division at the final phase of the procedure, namely when the decision itself was issued, but without hearing the parties. The contested decision, to this extent, was based on reasons on which neither the applicant nor the opponent had the opportunity to present their comments, as required by Article 75 EUTMR.

31. It is noted, further, that the parties not only did not submit any comments in respect of these added goods, but the parties were confused by the fact that the contested decision included these items in the list of goods accepted for registration without providing any reasoning, as expressly stated in the applicant’s statement of grounds for the appeal and in the opponent’s observations thereto.

32. Pursuant to Article 76(1) EUTMR, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted to the facts, evidence and arguments provided by the parties. Thus, the arbitrary selection of said goods and the attention paid to them in the contested decision was in breach of both Articles 75 and Article 76(1) EUTMR (18/03/2016, T-785/14, MOTORTOWN / M MOTOR et al., EU:T:2016:160, § 30).

33. As a result, this part of the decision, namely the comparison of the goods, must be annulled and reassessed.

34. The contested goods in the present case are the following:

Class 1 ‒ 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.

35. The earlier mark is protected for the following goods:

Class 1‒ Fertilizers.

36. Neither party contests the Opposition Division’s finding with respect to the identity of the contested ‘chemicals used in agriculture, horticulture and forestry’ and ‘manures’ with the ‘fertilizers’ of the earlier Benelux trade mark. Since the earlier international registration is also registered for ‘fertilizers’, the Board confirms that these goods are identical.

37. The opponent claims that the contested ‘chemicals used in industry and science as well as in photography; unprocessed artificial resins, unprocessed plastics; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry’ are, contrary to the findings of the contested decision, similar to the opponent’s ‘fertilizers’, as these goods are aimed at the same public, are produced by the same companies, sold in the same retail outlets, use the same distribution channels, share the same purpose and method of use.

38. Since ‘fertilizer’ is any material of natural or synthetic origin that is applied to soil or to plant tissues in order to supply nutrients for the better cultivation of plants, it is clear that both, natural (organic) and synthetics (chemicals) substances are used as fertilizers in modern agriculture. In particular, synthetics used as components of fertilizers could well be used for various industry purposes and they can share the same origin. Therefore, the Board finds that the contested ‘chemicals used in industry’ are identical with ‘fertilizers’.

39. The Board finds also that ‘chemicals used in science’ may overlap with ‘fertilizers’, in particular, given that the recently advancing development in the field of genetically modified organisms (GMO) requires use of special fertilisers in the trial stages. Hence, the Board finds those goods complementary and therefore similar to a low degree with earlier mark’s ‘fertilizers’.

40. The ‘chemicals used in photography; unprocessed artificial resins, unprocessed plastics; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry’ substantially differ in purpose to the opponent’s ‘fertilizers’ and, in the Boards view, are dissimilar. Furthermore, since those contested goods are chemicals with a specific purpose different to ‘fertilizers’, it is very improbable that they are usually manufactured by the same undertakings as ‘fertilizers’.

The signs

41. The comparison of the conflicting signs in relation to the visual, aural or conceptual similarity of the marks in question has to take into account the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (06/10/2005, C‑120/04, Thomson Life, EU:C:2005:594, § 28). The comparison must be based on the perception, pronunciation and meaning of the conflicting signs in the languages of the Member States where the earlier marks are protected, in this case Estonian and Polish, and by reference to the public of the goods at issue.

42. Regarding the comparison of the marks, it should be recalled that, according to case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see 23/10/2002, T‑6/01, Matratzen, EU:T:2002:261, § 30 and 18/10/2007, T‑28/05, Omega 3, EU:T:2007:312, § 54).

43. Furthermore, as is apparent from the case-law, consumers in general pay more attention to the first part of a mark, taking account of the fact that they read from left to right and that the beginning of a word sign is on the left (see, to that effect, 27/02/2008, T‑325/04, Worldlink, EU:T:2008:51, § 82).

44. The signs to be compared are words:

    Contested sign	Earlier CTM
    HORTY	HORTI-COTE

45. The relevant public is the Estonian and Polish-speaking public.

46. The applicant argues that the Opposition Division has incorrectly assessed the distinctive character of the word ‘HORT’ which led to the inaccurate finding of likelihood of confusion between the marks in question. In particular, since the average consumer will understand the word ‘HORT’ as an abbreviation of the word ‘horticulture’ in German, French and Dutch, therefore, this word must be considered entirely descriptive in relation to the goods in question and as a result – lead to a finding that the signs in question are dissimilar. In addition, the fact that the word is derived from Greek, only increases the probability of its understanding as relating to ‘horticulture’.

47. The Board finds that in Polish and Estonian the word ‘HORTY’ will not allude to ‘horticulture’, as the case is in Dutch and French, since this word does not exist in those selected languages. In Polish ‘horticulture’ is ‘ogrodnictowo’, and in Estonian ‘aiandus’; both clearly do not resemble ‘horticulture’.

48. Furthermore, neither in Polish, nor in Estonian do the words ‘HORTI’ or ‘HORTY’ have any meaning and in particular, no meaning with respect to the goods in question i.e. ‘fertilizers’ and therefore they will be considered fanciful words. Similarly, the word element, ‘COTE’ of the earlier mark, does not have any meaning in Polish or in Estonian and in those languages, will also be considered a fanciful word. Therefore, since the signs in question do not have any meaning in the languages at hand, the conceptual comparison is not applicable.

49. The Opposition Division correctly found that the signs are visually similar to the extent they coincide in their four letters ‘HORT’, and they differ only in the last letter ‘I’, hyphen and the word ‘COTE’ of the earlier mark and the letter ‘Y’ of the contested application.

50. Aurally, the signs coincide in the first syllable ‘HOR’, while the second syllables remain highly similar ‘TY’ in the contested sign and ‘TI’ in the earlier sign and to that extent the signs are aurally similar, both in Polish and Estonian. The pronunciation differs in the sound of the letters ‘COTE’ of the earlier mark which has no counterpart in the contested sign. In that regard, it must also be recalled that the consumer is deemed generally to pay greater attention to the beginning of a mark than to its end, the initial part of a mark normally having a greater impact, both visually and aurally, than the final part (see 22.05.2012, T‑179/11, Seven Summits, EU:T:2012:254, § 36, and the case-law cited).

51. In light of the above findings, it has to be concluded that, given the visual and aural similarities between the signs, the marks are similar.

Global assessment of the likelihood of confusion

52. According to the case-law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. It follows from the very wording of Article 8(1)(b) EUTMR that the concept of likelihood of association is not an alternative to that of likelihood of confusion, but serves to define its scope (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29 and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

53. Likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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 and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation 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).

54. The Board finds that the marks in question have no elements which could be considered clearly dominant (visually eye-catching), or more distinctive.

55. Taken as a whole, the earlier mark and the contested EUTM application have an average degree of distinctiveness, given that the word elements ‘HORTI-COTE’ and ‘HORTY’ are arbitrary in relation to the goods at hand.

56. A part of the goods have been found to be identical, a part similar to a lower degree and a part dissimilar.

57. According to the settled case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see 23/10/2002, T‑6/01, Matratzen, EU:T:2002:261, § 30 and 18/10/2007, T‑28/05, Omega 3, EU:T:2007:312, § 54). In the case at hand, the marks in question, share the word element ‘HORT’ positioned at the beginning of the signs, which is normally the part which is more likely to attract the public’s attention (16/03/2005, T-112/03, Flexi Air, EU:T:2005:102, § 64‑65). It follows that the signs at issue are similar.

58. Furthermore, the Board considers that the strong similarities residing in the signs’ (distinctive) verbal elements counteract the differences between the marks, which lie in the last letter of the word element ‘HORT’, namely ‘Y’, in the contested sign, and ‘I’ in earlier sign; nor is the second word element of the earlier mark ‘COTE’ sufficiently eye-catching to divert the consumers’ attention away from the dominant element of the contested sign, which partially reproduces the opponent’s mark.

59. Bearing in mind, the visual and aural similarities between the signs, the Board considers that, for goods that are identical there is a likelihood of confusion on part of the public (namely Polish and Estonian-speaking). The two marks are likely to be linked in the minds of consumers, who, because of the similar word element ‘HORT’, may interpret the mark applied for as a variant of the earlier mark and, accordingly, as coming from the same or from economically-linked undertakings.

60. As a final remark, the Board notes, that although a careful selection of the products could presumably leave little if any room for the ‘imperfect recollection’ of a certain contested mark, in the present case it is reasonable to assume that the purchase will be carried out by attentive consumers, both end users and professionals, with a relatively high degree of attentiveness. Given however, the common element of the sign, they will believe that the goods actually originate from the same undertaking and in particular that the contested sign belongs to the opponent’s family of marks with the common element ‘HORT’.

Final remark on the applicant’s submissions before the Board

61. In support of its arguments in defence, the applicant refers to the fact that there are a number of EUTMs registered containing the word element ‘HORTI’ for goods in Class 1, it further claims that the mark ‘HORTY’ was successfully registered as national trade mark in Slovenia, Croatia and Serbia.

62. Notwithstanding, the EUTMs and national trade marks referred to are not fully comparable to the present one, it must be recalled that the European Union trade mark regime is an autonomous system and the legality of the decisions of the EUIPO and the Boards of Appeal must be assessed solely on the basis of the EUTMR, and not the Office’s practice in earlier decisions (15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 47; 22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 39). In view of the above, although it is correct that the Office should take into account the decisions already taken in respect of similar proceedings and consider with special care whether or not it should be decided in the same way, the previous trade mark registrations cited by the applicant cannot alter the Board’s findings in the present case, for the reasons given in this decision.

63. As the earlier International Registration No 1 091 564 leads to the success of the opposition and to the rejection of the contested mark for the goods found to be identical and similar to the low degree, there is no need to examine the other earlier rights invoked by the opponent (judgment of 16/09/2004, T-342/02, Moser Grupo Media’, EU:T:2004:268, § 48).

64. Thus, in view of the above, the Board finds that the differences between the marks are not enough to exclude a likelihood of confusion on the part of the public, within the meaning of Article 8(1)(b) EUTMR.

65. In light of the foregoing considerations, the applicant’s appeal is dismissed in its entirety. The opponent’s appeal is admitted as far as the identical and similar goods are concerned, namely ‘chemicals used in industry and science’, and dismissed in the remainder.

Costs

66. Since the applicant is the losing party within the meaning of Article 85(1) EUTMR, it must bear the costs incurred by the opponent in the appeal proceedings.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the applicant’s appeal;

1. Partially upholds the opponent’s appeal and annuls the contested decision to the extent that it rejected the opposition with respect to:

Class 1 ‒ Chemicals used in industry and science.

2. Dismisses the opponent’s appeal for the remainder and allows the contested EUTM to proceed to registration for the following goods:

Class 1 ‒ Chemicals used in photography; unprocessed artificial resins, unprocessed plastics; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

3. Orders the applicant to bear the opponent’s costs of the appeal proceedings, amounting to EUR 550.

Signed G. Humphreys

Signed V. Melgar

Signed A. Pohlmann

Registrar: Signed H.Dijkema