OPPOSITION No B 2 833 112

ФЛОРИЯН ООД, гр. Русе 7005, област Русе, община Русе, Потсдам No 7, 7005 Русе, Bulgaria (opponent), represented by IP Consulting Ltd., 6-8, Mitropolit Kiril Vidinski Str., entr. 8, floor 2, office 2, 1164 Sofia, Bulgaria (professional representative)

a g a i n s t

Floris BVBA, Keizershoek 312, 2550 Kontich, Belgium (applicant), represented by Patrick Theunis, Langbosweg 19, 2550 Kontich, Belgium (professional representative).

On 03/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 833 112 is partially upheld, namely for the following contested goods:

Class 31: Agricultural, horticultural and forestry products and grains not include in other classes; Seeds, Natural plants and Flowers and Flower bulbs; Wreaths of natural flowers; Dried flowers for decoration; Bouquets of natural flowers and of dried flowers; Live animals; Fresh fruits and vegetables; Foodstuffs for animals; Malt.

2. European Union trade mark application No 15 800 824 is rejected for all the above goods. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 800 824 for the word mark ‘Floris’. The opposition is based on:

1) European Union trade mark registration No 11 545 472 for the figurative mark below:

2) Bulgarian trade mark registration No 80 085 for the figurative mark below:

.

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.

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 Bulgarian trade mark registration No 80 085.

a) The goods and services

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

Class 1: Chemical products destined for industry, science, photography, agriculture,

horticulture and forestry; unprocessed artificial resins, unprocessed plastics; fertilizers; fire extinguishers; preparations for hardening and welding of metals; chemical substances for preserving foodstuffs; tanning substances; adhesives (adhesives) intended for industry.

Class 31: Agricultural, horticultural and forestry products and seeds not included in other classes; Live animals; fresh fruits and vegetables; seeds for sowing, live plants and flowers; animal feed; malt; seedlings; plants; turf grass; natural grass; shrubs.

The contested goods and services are the following:

Class 31: Agricultural, horticultural and forestry products and grains not include in other classes; Seeds, Natural plants and Flowers and Flower bulbs; Wreaths of natural flowers; Dried flowers for decoration; Bouquets of natural flowers and of dried flowers; Live animals; Fresh fruits and vegetables; Foodstuffs for animals; Malt.

Class 35: Advertising, business mediation in the purchase and sale, and import and export, in particular via the internet, including via an online shop; Office functions in the field of subscriptions; Mail order retailing and internet retailing; All the aforesaid services relating to agricultural, horticultural and forestry products, grains, seeds, natural plants, flowers, bulbs, garlands of natural flowers, dried flowers for decoration, bouquets of natural flowers and of dried flowers, live animals, fresh fruits and vegetables, foodstuffs for animals and malt, chemicals used in agriculture, horticulture and forestry (except preparations for destroying fungi, weeds, insects and parasites), manures, disinfectants, preparations for destroying vermin, fungicides, herbicides, furniture, mirrors, picture frames, ornamental objects and works of art of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and plastic, household utensils and containers (not of precious metal or coated therewith), articles for cleaning purposes, unworked or semi-worked glass (except glass used in building), glassware, porcelain, vases and earthenware, lace and embroidery, ribbons and braid, buttons, hooks and eyes, pins and needles, artificial flowers, games and playthings, decorations for Christmas trees; All the aforesaid services not relating to perfume and related articles.

Class 39: Distribution (supply), including via representatives, of agricultural, horticultural and forestry products, grains, seeds, natural plants, flowers, bulbs, garlands of natural flowers, dried flowers for decoration, bouquets of natural flowers and of dried flowers, live animals, fresh fruits and vegetables, foodstuffs for animals and malt, chemicals used in agriculture, horticulture and forestry (except preparations for destroying fungi, weeds, insects and parasites), manures, disinfectants, preparations for destroying vermin, fungicides, herbicides, furniture, mirrors, picture frames, ornamental objects and works of art of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and plastic, household utensils and containers (not of precious metal or coated therewith), articles for cleaning purposes, unworked or semi-worked glass (except glass used in building), glassware, porcelain, vases and earthenware, lace and embroidery, ribbons and braid, buttons, hooks and eyes, pins and needles, artificial flowers, games and playthings, decorations for Christmas trees; Information with regard to the aforesaid services.

PRELIMINARY REMARK

There are differences between the English version of the goods on which the opposition is based indicated in the notice of opposition and in the translated version of goods in the certificate of registration of earlier Bulgarian trade mark registration No 80 085. The differences are of linguistic nature and it is indicated in the notice of opposition that the opposition is based on all the goods of earlier Bulgarian trade mark registration No 80 085. Therefore, although the language versions of the goods differ, the goods are the same. For the purposes of the comparison the Opposition Division will take into account the translation submitted with the certificate of earlier Bulgarian trade mark registration.

The earlier Bulgarian trade mark registration No 80 085 is registered for the entire class headings of Classes 1 and 31 of the Nice Classification. It was filed on 26/02/2008. In accordance with the Common Communication on the Implementation of ‘IP Translator’ of the European Trade Mark and Design Network, the Office considers that its scope of protection includes both the natural and usual meaning of the general indications in the heading and the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 9th edition.

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 31

The contested agricultural, horticultural and forestry products and grains not include in other classes; seeds, natural plants and flowers and flower bulbs; live animals; fresh fruits and vegetables; foodstuffs for animals; malt are either identically contained in both lists (including synonyms) or included in the opponent’s broad category agricultural, horticultural and forestry products and grains not include in other classes in Class 31. Therefore, they are identical.

The contested wreaths of natural flowers; dried flowers for decoration; bouquets of natural flowers and of dried flowers are at least similar to the opponent’s live plants and flowers. The goods under comparison may coincide in their purpose, relevant public, origins and distribution channels. They may also be in competition.

Contested services in Classes 35 and 39

The contested services in Class 35 are aimed at supporting or helping other businesses to carry out or improve their business. The contested services in Class 39 consist in getting the goods moved from one place to another and provision of information related to these services. These services are provided by specialist companies whose business is not the manufacture and sale of the goods. The contested services differ from the opponent’s goods in terms of their nature, purpose and method of use. They do not have the same distribution channels and are not in competition. The fact that some goods may appear in advertisements or be distributed is insufficient for finding similarity.

The alphabetical lists of Classes 1 and 31 also contain a series of goods that do not fall within the natural and usual meaning of said general indications, namely albuminized paper; baryta paper; blueprint cloth; blueprint paper cinematographic film, sensitized but not exposed; diazo paper; ferrotype plates [photography]; litmus paper; photographic paper; photometric paper; photosensitive plates; reagent paper; self-toning paper; sensitized cloth for photography; sensitized films, unexposed; sensitized paper; sensitized photographic plates; sensitized plates for offset printing; test paper, chemical; x-ray films, sensitized but not exposed in Class 1 and aromatic sand for pets [litter] and sanded paper for pets [litter] in Class 31. However, when comparing these goods with the contested services, the same reasoning as in the previous paragraph applies. Therefore, the contested services are dissimilar to all the opponent’s goods.

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

The degree of attention is considered average.

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

c) The signs

	Floris
Earlier trade mark	Contested sign

The relevant territory is Bulgaria.

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 is figurative. It is composed of the letters ‘FL’, a flower and the letters ‘RI’, all set against an oval label. The sign is in a combination of yellow, green, red and black colours. The use of the figurative element representing a flower instead of the letter ‘O’ is likely to be grasped by the relevant public. Therefore, at least a significant part of the relevant public will pronounce the earlier sign as ‘FLORI’, especially that all the remaining letters are consonants and the vowel ‘O’ makes the sign easier to pronounce. The word ‘FLORI’ has no meaning in Bulgarian and is distinctive to a normal degree in relation to the relevant goods.

As to the figurative elements of the earlier mark, it is recalled that when a sign consists of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37). In addition, the figurative element representing a flower refers to the nature of at least some of the relevant goods such as plants and flowers, and its impact is even more attenuated in relation to them. Furthermore, the background in the form of an oval label is likely to be perceived by consumers as a mere decorative element and not as an element indicating the commercial origin of the goods in question.

None of the elements of the earlier mark is considered visually dominant.

The contested sign is composed of one word ‘Floris’.

Visually, the signs coincide in the letters ‘FL*IS’ in the same positions. They differ in the letters ‘O’ and ‘S’ of the contested sign and the figurative elements and colours of the earlier mark.

Therefore, the signs are visually similar to a low degree.

Aurally, as mentioned above, the earlier mark is likely to be pronounced as ‘FLORI’. Consequently, the pronunciation of the signs coincides in the sound of the string of letters ‛FLORI’ and differs in the sound of the final letter ‘S’ of the contested sign. Since the public reads from left to right, the differing sound placed at the end of the sign will catch less attention of the reader. The signs will be pronounced with the same rhythm and intonation as ‘FLORI and ‘FLORIS’ are of similar length and they have the same vowel structure.

Therefore, the signs are aurally highly similar.

Conceptually, the public in the relevant territory will perceive the flower in the earlier mark. The contested sign has no meaning in the relevant territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, the impact of the figurative element representing a flower is limited, as explained above.

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. 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, despite the presence of some elements in the mark that have less impact, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The goods are identical or at least similar. The signs are visually similar to a low degree and aurally highly similar. The signs are not similar conceptually. However, the concept of a flower represented in the earlier mark is not of a significant weight. The earlier mark has a normal degree of distinctiveness and the public’s level of attention is average.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

It is considered that the coincidences with the element of the earlier mark that has the strongest impact on the consumers and that lead to the low degree of visual similarity and high degree of aural similarity are sufficient for the consumers to consider that the identical and at least similar goods come from the same or economically linked undertakings.

In its observations, the applicant argues that the word ‘FLOR’ has a low distinctive character given that many trade marks include this term. In support of its argument the applicant refers to some Benelux, European Union and international trade mark registrations.

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 applicant did not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘FLOR’. In addition, the territory concerned by earlier Bulgarian trade mark registration is the territory of Bulgaria. Under these circumstances, the applicant’s claims must be set aside.

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 partly well founded on the basis of the opponent’s Bulgarian trade mark registration No 80 085.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

The opponent has also based its opposition on European Union trade mark registration No 11 545 472 for the figurative mark below:

This earlier European Union trade mark registration invoked by the opponent covers the following goods and services:

Class 1: Chemicals used in agriculture, horticulture and forestry; Manures; Liquid, granulated and mineral fertilisers.

Class 31: Grains and agricultural, horticultural and forestry products not included in other classes; Live animals; Fresh fruits and vegetables; Seeds; Natural plants and flowers; Foodstuffs for animals; Malt; Aloe vera plants; Aromatic sand for pets [litter]; Almonds [fruits]; Beans, fresh; Pine cones; Meal for animals; Linseed meal for animal consumption; Groats for poultry; Wreaths of natural flowers; Shellfish, live; Algae for human or animal consumption; Garden herbs, fresh; Peas, fresh; Grapes, fresh; Mushroom spawn for propagation; Mushrooms, fresh; Residue in a still after distillation; Marc; Poultry, live; Preparations for egg laying poultry; Wood chips for the manufacture of wood pulp; Trees; Barley; Live animals; Menagerie animals; Products for animal litter; Wheat; Sugarcane; Vegetables, fresh; Stall food for animals; Grains [cereals]; Grains for animal consumption; Cocoa beans, raw; Potatoes, fresh; Mash for fattening livestock; Chestnuts, fresh; Coconuts; Christmas trees; Copra; Nettles; Silkworms; Chicory roots; Cuttle bone for birds; Sanded paper for pets [litter]; Cucumbers, fresh; Lime for animal forage; Dog biscuits; Seed germ for botanical purposes; Oil cake; Draff; Rape cake for cattle; Spiny lobsters, live; Flax meal [fodder]; Linseed for animal consumption; Hazelnuts; Lentils, fresh; Lemons, fresh; Vine plants; Onions, fresh vegetables; Bulbs; Malt for brewing and distilling; Lettuce, fresh; Olives, fresh; Yeast for animal consumption; Algarovilla for animal consumption; Mussels, live; Sea-cucumbers, live; Straw mulch; Beverages for pets; Rough cork; Unsawn timber; Oats; Lobsters, live; Rice, unprocessed; Rice meal for forage; Distillery waste for animal consumption; Palms [leaves of the palm tree]; Palm trees; Fruit, fresh; Strengthening animal forage; Bred stock; Oranges; Litter peat; Leeks, fresh; Bagasses of cane [raw material]; Animal fattening preparations; Wheat germ for animal consumption; Seedlings; Crustaceans, live; Plants; Plants, dried, for decoration; Crayfish, live; Rhubarb; Fish, live; Fish spawn; Fish meal for animal consumption; Locust beans; Rose bushes; Rye; Silkworm eggs; Seeds; Cereal seeds, unprocessed; Hay; Straw [forage]; Straw litter; Salt for cattle; Spinach, fresh; Trunks of trees; Residual products of cereals for animal consumption; Oysters, live; Fishing bait, live; Undressed timber; Raw barks; Sesame; Marrows; Sod; Bran; Truffles, fresh; Fodder; Peanuts, fresh; Peanut meal for animals; Peanut cake for animals; Juniper berries; Hops; Pet food; Edible chews for animals; Bird food; Foodstuffs for animals; Bushes; Maize; Maize cake for cattle; Beet; Pollen [raw material]; Flowers, natural; Flowers, dried, for decoration; Chicory [salad]; Citrus fruit; Coconut shell; Peppers [plants]; Hop cones; Berries, fresh fruits; Roots for food; Cola nuts; Nuts [fruits]; Eggs for hatching, fertilised; Bran mash for animal consumption.

Class 44: Veterinary services; Agriculture, horticulture and forestry services; Landscape gardening; Management of greenhouses.

These goods and services are dissimilar to the contested services in Class 35 and 39. The opponent’s goods in Classes 1 and 31 are dissimilar for the same reasons for which the goods in the same classes of earlier Bulgarian trade mark registration No 80 085, compared earlier, were found dissimilar. The opponent’s services in Class 44 are also not similar to the contested services in Classes 35 and 39. The services under comparison have different natures, purposes, usual providers and distribution channels. They are also not in competition. The mere fact that some of these services may concern the same field is not sufficient for finding similarity. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Arkadiusz GÓRNY

Justyna GBYL

Michele M. BENEDETTI - ALOISI

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.