OPPOSITION No B 2 664 160

Laboratorio Jaer, S.A., Barcelona, 411, 08620 San Vicente dels Horts (Barcelona), Spain (opponent), represented by Ryo Rodriguez Oca, S.L., Calle Juan Hurtado de Mendoza, 9 Apto. 507, 28036 Madrid, Spain (professional representative)

a g a i n s t

Leeds Lifescience Ltd., Brook Point, 1412 High Road, London, N20 9BH, United Kingdom (applicant), represented by Marks & US, Marcas y Patentes, Ibañez de Bilbao 26, 8º dcha, 48009 Bilbao (Vizcaya), Spain (professional representative).

On 23/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 664 160 is upheld for all the contested goods.

2. European Union trade mark application No 14 826 721 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 14 826 721 ‘AVANGUARD’, namely against all the goods in Classes 1 and 5. The opposition is based on European Union trade mark registration No 11 023 736 ‘VANGUARD’. 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.

a) The goods

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

Class 1: Chemicals used in industry, agriculture, horticulture and forestry; manures; chemical substances for preserving foodstuffs; fertilzers.

The contested goods are the following:

Class 1: Chemicals for use in pesticides.

Class 5: Pesticides.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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 for use in pesticides are included in the broad category of the opponent’s chemicals used in agriculture, horticulture and forestry. Therefore, they are identical.

Contested goods in Class 5

Goods in Class 5 are usually combinations of various chemicals. They are, in principle, not considered similar to goods included in Class 1, as their purpose as a finished product usually differs from that of goods in Class 1, which are mainly in their raw, unfinished state and not yet mixed with other chemicals and inert carriers into a final product.

However, it cannot be excluded that the opponent’s goods included in the broad category of chemicals used in industry, agriculture, horticulture and forestry might require only a few processing steps to be considered finished products such as pesticides. Such chemicals may have the same inherent purpose as the finished products, pesticides: to kill harmful insects. Furthermore, the same agro-chemical companies may produce the semi-processed goods as well as the final product. Moreover, they may be distributed through the same distribution channels. There is therefore a low degree of similarity between the contested pesticides and the opponent’s goods in Class 1 listed above (08/10/2013, R 1631/2012-1, QUALY / QUALIDATE, § 26-28).

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 to a low degree are directed at the public at large as well as at business customers with specific professional knowledge and expertise in the fields of agriculture and agrochemicals. Pest control companies have to comply with numerous specific legislative requirements with a view to protecting consumers, the environment, and plants and animals. The impact on safety of goods covered by a trade mark may result in an increase in the relevant consumer’s degree of attention (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 41). Therefore, the degree of attention is considered to be higher than average.

c) The signs

VANGUARD	AVANGUARD
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).

The earlier mark and the contested sign are both word marks, composed of one word, namely ‘VANGUARD’ in the case of the earlier mark and ‘AVANGUARD’ in the case of the contested sign.

Although the word ‘AVANGUARD’ of the contested sign is meaningless as such, at least part of the relevant public will associate it with the meaning of the word ‘avant-garde’, referring to ‘new and unusual or experimental ideas, especially in the arts, or the people introducing them’ (information extracted from Oxford Dictionaries on 10/10/2018 at https://en.oxforddictionaries.com), since it is very close to the equivalent words in official languages of the Member States (e.g. ‘avantgarda’ in Czech, ‘avant-garde’ in English and French, ‘avantgarde’ in German, ‘avanguardia’ in Italian, ‘avangards’ in Latvian, ‘avangardas’ in Lithuanian, ‘awangarda’ in Polish and ‘vanguardia’ in Spanish). Therefore, the distinctiveness of the word ‘AVANGUARD’ is seen as lower than average for this part of the public, since it might allude to the idea that the goods in question are manufactured using the most innovative technologies in the field.

The word ‘VANGUARD’ of the earlier mark is an English word meaning, inter alia, ‘a group of people leading the way in new developments or ideas’ (information extracted from Oxford Dictionaries on 10/10/2018 at https://en.oxforddictionaries.com). As this word is considered synonymous with ‘avant-garde’ in English and due to its close proximity to the equivalent words in other official languages of the Member States mentioned above, it cannot be excluded that at least part of the aforementioned relevant public will perceive the word ‘VANGUARD’ of the earlier mark as referring to the same concept outlined above in relation to the word ‘AVANGUARD’ of the contested sign. For that part of the public, the distinctiveness of the word ‘VANGUARD’ is lower than average, for the reasons explained above.

However, the word ‘VANGUARD’ of the earlier mark has an average degree of distinctiveness for the part of the public that will not associate it with any meaning (e.g. the Lithuanian- and Polish-speaking parts of the public). Moreover, for the part of the public that will not perceive any meaning in either the word ‘VANGUARD’ of the earlier mark or the word ‘AVANGUARD’ of the contested sign (e.g. the Hungarian-speaking part of the public), both words have an average degree of distinctiveness.

Visually and aurally, the signs coincide (irrespective of the different pronunciation rules in different parts of the relevant territory) in the sequence of letters/sounds ‘VANGUARD’, which constitute the entirety of the earlier mark and eight letters/sounds (out of nine) of the contested sign. The signs differ in the first letter/sound, ‘A’, of the contested sign.

Although consumers generally tend to focus on the beginning of a sign when they encounter a trade mark (because the public reads from left to right, which makes the part placed at the left of the sign the one that first catches the attention of the reader), the fact that the contested sign incorporates the earlier mark in its entirety will not be overshadowed by the addition of the differing letter at the beginning of the contested sign. Therefore, the signs are considered visually and aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public that associates both marks with the same meaning, the signs are conceptually identical.

For the part of the public that associates only the contested sign with the meaning explained above, the signs are not similar conceptually, since the earlier mark is meaningless for this part of the public.

For the part of the public that perceives both signs as meaningless, a conceptual comparison is not possible and 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average in relation to the goods in question for the part of the public that perceives the meaning of the word ‘VANGUARD’ as explained above. However, the mark has a normal degree of distinctiveness for the remaining part of the public, for which the word ‘VANGUARD’ is meaningless.

e) Global assessment, other arguments and conclusion

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/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).

As concluded above, the contested goods are partly identical and partly similar to a low degree to the opponent’s goods, and they target the public at large and business customers with a higher than average degree of attention.

The signs are visually and aurally similar to a high degree and conceptually identical for at least part of the relevant public. As detailed in section c), the contested sign incorporates the earlier mark in its entirety and differs in only one additional first letter, which is clearly insufficient to offset the commonalities. Taking into account the facts that average consumers rarely have the chance to make a direct comparison between different marks and that even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54), it is highly conceivable that the relevant consumers, even those with a higher than average degree of attention and especially those for whom the signs convey the same concept, will assume that the goods in question come from the same undertaking or economically linked undertakings. The same is true for those consumers who perceive both signs as meaningless or associate only the contested sign with the meaning outlined above, since the high degree of visual and aural similarity is sufficient for the relevant consumers to make a connection between the conflicting signs. Consequently, it cannot be safely excluded that the relevant consumer will confuse the marks or, alternatively, perceive the contested mark as a sub-brand or variation of the earlier mark (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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 opponent’s European Union trade mark registration No 11 023 736 ‘VANGUARD’. It follows that the contested trade mark must be rejected for all the contested goods that were found to be identical to the opponent’s goods.

Taking into account the abovementioned principle of interdependence, the contested trade mark must also be rejected for the goods that were found to be similar to a low degree to the goods of the earlier trade mark, as the obvious similarities between the signs offset the low degree of similarity between the goods in question.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Cristina CRESPO MOLTÓ

Rasa BARAKAUSKIENE

Biruté SATAITE-GONZALEZ

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.