OPPOSITION No B 2 763 343

Bayer SAS, 16, rue Jean-Marie-Leclair, CP 90106, 69266, Lyon, France (opponent), represented by Bomhard IP, S.L., C/Bilbao, 1- 5º, 03001 Alicante, Spain (professional representative)

a g a i n s t

Comercial Quimica Masso S.A., C/ Viladomat 321- 5º, 08029 Barcelona, Spain (applicant), represented by Aguilar I Revenga, Consell de Cent 415- 5°-1ª, 08009 Barcelona, Spain (professional representative).

On 30/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 763 343 is upheld for all the contested goods.

2. European Union trade mark application No 15 473 903 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 473 903 ‘McKAL’. The opposition is based on, inter alia, French trade mark registration No 1 481 582 ‘MIKAL’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

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 French trade mark registration No 1 481 582 ‘MIKAL’.

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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 for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

The date of filing of the contested application is 25/05/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in France from 25/05/2011 to 24/05/2016 inclusive.

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 relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 5: Fungicides for vine. Preparations for destroying weed and vermin.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 23/03/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 28/07/2017 (after an extension) to submit evidence of use of the earlier trade mark. On 25/07/2017, 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:

• Various printouts of the Opponent’s websites: cropscience.bayer.es, bayer-agri.fr and algeria.cropscience.bayer.com/fr from the Internet Archive WaybackMachine web.archive.org, from the years between 2011 and 2016 making reference to MIKAL fungicide products;

• Various printouts from third party websites and press from the years between 2012 and 2016 referring to MIKAL as a fungicide produced by Bayer- camn.fr (La Coopérative d'Approvisionnement des Maraichers Nantais - The Supply Cooperative of Nantais Maraichers) in its Viticulture report of 2013, peris.fr (Distributeur de produits agricoles en Languedoc-Roussillon - Distributor of agricultural products in Languedoc-Roussillon) in its Technical and Informative Recommendations report of 2016, racinesap.fr (among others, a distributor of agro-pharmaceutical products) in its Technical Information Collective Recommendations report of 2013 (Informations Techniques préconisations collectives) (Technique et Informatif Préconisation Collective de L'équipe); www.vitisphere.com

• Photos and layouts of product packaging containing a mark MIKAL with Bayer S.A.S. in France printed on the side;

• Bayer CropScience price lists of October 2011, October 2013 and October 2014 regarding crop protection in France, containing the fungicide products sold under MIKAL mark; documenting orders and number of the price lists in 2011, 2012 and 2014;

• External analysis conducted by Kynetec (an independent worldwide market survey company) regarding advertisement investments (in thousand euro) and number of advertisements related to MIKAL Flash products in France for the years 2013, 2014, 2015 and 2016;excerpts from the UK company register and Kynetec’s own website;

• Samples of Bayer SAS French brochures of MIKAL fungicide products.

All the enclosed documents show that the place of use is France. This can be inferred from the language of the documents, and some addresses in France. Therefore, the evidence relates to the relevant territory.

All of the evidence is dated within the relevant period.

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.

The evidence shows that the mark has been used in accordance with its function and as registered. The additional words used (such as Flash, Premium, Plus) do not alter the distinctive character of the mark, as these words are non-distinctive, describing the characteristics of the products or its value.

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).

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence shows genuine use of the trade mark only for the following goods:

Class 5: Fungicides for vine.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 5: Fungicides for vine.

The contested goods, after the limitation of 12/12/2017, are the following:

Class 1: Manures; Artificial manures; Manure in liquid form; Manure in solid form; Organic fertilizers; Mineral fertilising preparations; Natural fertilizers; Manures for flowerpot plants; Manures for use on grass or grassland; Chemical fertilizers; Rigid manures; Liquid manure substitute; Plant hormones (phytohormones); Plant growth regulating preparations; Nutrients for plants; Trace element feeds for plants.

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.

The opponent’s Fungicides for vine are preparations used to kill or inhibit fungi or fungal spores. Fungi can cause serious damage in agriculture. These goods have the purpose of the maximisation of crop yield and quality.

The contested goods are manure and fertilisers, and plant growth regulating preparations of different types. Manure is organic or chemical matter used as a fertilizer in agriculture that contributes to the fertility of the soil and replenishes it with essential elements. Similar arguments apply also to the growth regulating preparations and hormones. They are agricultural chemical products that are used to improve the quality of the soil and/or enhance the growth of plants. Some manures, such as for example horse manure, also show significant fungicidal properties. Some hormones can be genetically modified to fight fungus. The contested goods may be used alongside the opponent’s fungicides by the same consumers and bought from the sale outlets where products for use in agriculture are sold or in garden stores. The goods at hand therefore serve a similar purpose of use and are generally required by the same public. The distribution channels can also coincide. Those goods are, therefore, similar to the opponent’s goods (in analogy to decision of 10/09/2012, R 1991/2011-1, Remus (Fig. Mark) / Revus).

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 similar are directed at the public at large and at customers with specific professional knowledge or expertise.

The degree of attention will vary from average to high due to the nature of the goods.

3. The signs

MIKAL	McKAL
Earlier trade mark	Contested sign

The relevant territory is France.

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 elements of the word marks MIKAL and MCKAL have no meaning for the relevant public and are, therefore, distinctive.

Visually and aurally, the signs coincide in M_KAL, and in their length. However, they differ in their second letters I/C, considering also that in the case of word marks, it is the word that is protected and not its written form.

Therefore, the signs are visually and 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 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

The goods have been found similar. The visual, aural and conceptual aspects have been examined.

The earlier mark and the contested sign have been found to be similar to the extent that they have the letters ‘M_KAL’ in common. The signs have an identical length. The difference is in the letters I/C in the middle of the signs. However, these differences can be easily overlooked, and, in any event cannot outweigh the prevailing coinciding letters perceived by the public. The similarities between the signs are thus sufficient to cause at least part of the public to believe that the conflicting goods which are similar come from the same or economically linked undertakings.

Account is taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and the consumers may be easily confused because they will have to rely on the imperfect picture of the marks that they have kept in their mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). 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).

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include letters KAL. In support of its argument the applicant refers to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element KAL. Under these circumstances, the applicant’s claims must be set aside.

The applicant also refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings as they refer to different goods and services and are, furthermore overruled the decisions of the higher instance referred to in section a) of this decision.

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 French trade mark registration No 1 481 582. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right, French trade mark registration No 1 481 582 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Zuzanna STOJKOWICZ

Erkki Münter

Cristina CRESPO MOLTO

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.