OPPOSITION No B 2 711 797

EuroChem Agro GmbH, Reichskanzler-Müller-Str. 23, 68165 Mannheim, Germany (opponent), represented by Isenbruck Bösl Hörschler LLP, Eastsite One Seckenheimer Landstr. 4, 68163 Mannheim, Germany (professional representative)

a g a i n s t

Evonik Degussa GmbH, Rellinghauser Str. 1-11, 45128 Essen, Germany (applicant), represented by Roland Weiß, Rodenbacher Chaussee 4, 63457 Hanau-Wolfgang, Germany (professional representative).

On 24/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 711 797 is upheld for all the contested goods, namely:

Class 1: Fertilisers, and chemicals for use in agriculture, horticulture and forestry.

2. European Union trade mark application No 14 760 301 is rejected for all the contested goods. It may proceed for the remaining, non-contested, goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 760 301, namely against some of the goods in Class 1. The opposition is based on international trade mark registration No 897 643 designating the European Union. 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.

1. The goods

The goods on which the opposition is based are the following:

Class 1: Fertilizer containing nitrogen.

The contested goods are the following:

Class 1: Fertilisers, and chemicals for use in agriculture, horticulture and forestry.

The contested fertilisers; chemicals for use in agriculture, horticulture and forestry (the latter mentioned twice in the applicant’s list of goods) include, as broader categories, or overlap with the opponent’s fertilizer containing nitrogen, which is a substance containing the chemical element nitrogen that is added to soil or the land to increase fertility. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s 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 both the general public and the professional public working with fertilisers and chemicals for use in agriculture, horticulture and forestry.

The degree of attention may vary from average to high, depending on the specific nature of the goods (e.g. it will be high for chemicals with potential hazardous effects), the frequency of purchase and the intended use.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

Flexammon	FLEXAMINO
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Both marks are word marks. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters, or in a combination thereof.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The coinciding element ‘FLEX’ will not be associated with the word ‘flexible’ or ‘flexibility’ in certain territories (e.g. in Bulgaria, Croatia, Latvia, Estonia, Hungary or Lithuania), that is, where the equivalent word in the relevant language is fundamentally different (e.g. ‘гъвкавост gŭvkavost’ for ‘flexibility’ and ‘Шнур shnur’ for ‘flex’ in Bulgarian; ‘savitljivost’ for ‘flexibility’ and ‘savijati’ for ‘flex’ in Croatia; ‘elastīgums’ for ‘flexibility’ in Latvian; ‘paindlikkus’ for ‘flexibility’ in Estonian; ‘rugalmassag’ for ‘flexibility’ and ‘rugalmas’ for ‘flex’ in Hungarian; ‘lankstus’ for ‘flexibility’ and ‘lankstus’ for ‘flexible’ in Lithuanian).

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian-, Croatian-, Latvian-, Estonian-, Hungarian- and Lithuanian-speaking parts of the public.

Furthermore, it is not likely that the general public will dissect from the rest of the marks the elements ‘AMMON’ in the earlier mark and ‘AMINO’ in the contested sign and associate them with a chemical compound containing nitrogen, as argued by the opponent. Not only does the average consumer normally perceive a sign as a whole and does not proceed to analyse its various details, it is also not very likely that the average consumer is familiar with names of chemical compounds. Therefore, neither of the signs has any elements that are considered more distinctive than other elements.

Visually, the signs are both composed of a nine-letter verbal element and coincide in their first six letters, ‘FLEXAM***’. However, despite their endings coinciding in two letters, albeit in a different order, their endings still differ, ‘MON’ in the earlier mark and ‘INO’ in the contested sign.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the marks are pronounced as /FLE/XA/MON/ and /FLE/XA/MI/NO/. The pronunciation of the signs coincides in the sound of their first six letters, ‛FLEXAM’, present identically in both signs. The double ‘M’ in the earlier mark will have no or only a very limited impact on the pronunciation. The pronunciation of the signs differs in the sound of their endings, ‘ON’ in the earlier mark and ‘INO’ in the contested sign, despite their endings sharing the sound of the letters ‘O’ and ‘N’, as they are placed in a different order.

Therefore, the signs are aurally similar to an average 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.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The contested goods are identical to the opponent’s goods.

The earlier mark has an average degree of distinctiveness.

The relevant public is both the general public and the professional public. As mentioned in section b) of this decision, the likelihood of confusion is assessed in relation to the general public, which is the part of the public most prone to confusion. The degree of attention will vary from average to high.

The signs are visually and aurally similar to an average degree. As both marks will be perceived as meaningless, the conceptual aspect of the comparison is not relevant in the present case.

While it may be true that the relevant public is more attentive when acquiring some of the contested goods, it does not mean that the purchaser always has the opportunity to compare the marks side-by-side. Accordingly, some degree of imperfect recollection of the absent mark at the time of acquisition cannot be totally ruled out (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54). Moreover, as mentioned above, the conflicting goods are identical. The identity between the goods will compensate for the differences in the endings of the marks and will, therefore, lead to a likelihood of confusion.

Considering all the above, there is a likelihood of confusion on the part of the Bulgarian-, Croatian-, Latvian-, Estonian-, Hungarian- and Lithuanian-speaking parts of the general public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 897 643 designating the European Union. 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

Alexandra APOSTOLAKIS

Saida CRABBE

Ric WASLEY

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.