OPPOSITION No B 2 957 390

Aumale Synergies, Tour W - 102 Terrasse Boieldieu, 92800, Puteaux, France (opponent), represented by Cabinet Flechner, 22, avenue de Friedland, 75008, Paris, France (professional representative)

a g a i n s t

Agrolac, S.A., Av. dels Vents 9-13. Esc. A, 6º 2ª Badalona, 08917, Barcelona, Spain (applicant), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036, Barcelona, Spain (professional representative).

On 04/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 957 390 is upheld for all the contested goods.

2. European Union trade mark application No 16 667 818 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 667 818, ‘STIMAGRO’. The opposition is based on, inter alia, French trade mark registration No 94 535 343, ‘STIM’. 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 French trade mark registration No 94 535 343, ‘STIM’.

1. The goods

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

Class 1: Chemicals for use in industry, science, photography, agriculture, horticulture and forestry; manures.

Class 31: Agricultural, horticultural and forestry products (neither prepared, not processed); grain (seeds).

The contested goods are the following:

Class 1: Agricultural chemicals, except fungicides, herbicides, insecticides and parasiticides.

Class 5: Herbicides; Parasiticides; Fungicides; Insecticides; Preparations for destroying vermin.

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

Herbicides are chemicals that are used to destroy plants, especially weeds. Parasiticides are any substance capable of destroying parasites. Fungicides are chemicals that can be used to kill fungus or to prevent it from growing. Insecticides are chemical substances that are used to kill insects. Preparations for destroying vermins are preparations to kill small animals such as rats and mice which cause problems to humans by carrying disease and damaging crops or food (information extracted from Collins English Dictionary on 20/06/2018 at https://www.collinsdictionary.com/dictionary/english).

The contested agricultural chemicals, except fungicides, herbicides, insecticides and parasiticides are included in the broad category of the opponent’s chemicals for use in agriculture. Therefore, they are identical.

Contested goods in Class 5

The earlier mark’s goods such as chemicals for use in agriculture, horticulture and forestry in Class 1 require a few processing steps to be considered finished products such as the contested fungicides. Such chemicals may be considered to already have the same inherent purpose of fungicides, namely to kill or inhibit fungi or fungal spores, in particular when they consist of the fungicide’s active ingredient. Furthermore, the same (agro-) chemical companies may produce the semi-processed goods, as well as the final product (08/10/2012, R 1631/2012-1, QUALY / QUALIDATE, § 27-28). Therefore, these goods are similar to a low degree.

The same principles may be applied to the remaining contested goods in this class, namely herbicides; parasiticides; insecticides; preparations for destroying vermin and the opponent’s chemicals for use in agriculture. Therefore, these goods are similar to a low degree.

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 or similar to a low degree are directed at the public at large as well as at business customers with specific professional knowledge or expertise.

The impact on the environment of goods covered by a trade mark (e.g. how poisonous and dangerous they are for people’s health and how much harm they can cause on the environment) may result in an increase in the relevant consumer’s degree of attention. Therefore, the degree of attention of the relevant public is deemed to be higher than average.

c) The signs

STIM	STIMAGRO
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 earlier mark is a word mark, ‘STIM’.

The contested sign is a word mark, ‘STIMAGRO’.

The earlier mark ‘STIM’ has no meaning for the relevant public and is, therefore, distinctive.

The contested sign ‘STIMAGRO’ has no particular meaning in the relevant territory and is, therefore, distinctive. However, at least part of the relevant public will be able to split the mark into the elements ‘STIM’ and ‘AGRO’, because the verbal element ‘AGRO’ alludes to the food industry and words like ‘agro-industrie’, meaning agribusiness, and agroalimentaire, meaning the food-processing industry (information extracted from Collins Dictionary on 20/06/2018 at https://www.collinsdictionary.com/dictionary/french-english/agro-industrie and https://www.collinsdictionary.com/dictionary/french-english/agroalimentaire). The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Bearing in mind that the relevant goods are related to the agricultural business, the element ‘AGRO’ is weak for these goods and this part of the public.

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.

Visually, the signs coincide in the verbal element ‘STIM’, which is distinctive and constitutes the entire earlier mark. However, they differ in the ending of the contested word mark, namely ‘AGRO’, which is however weak, as described above.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘STIM’, present identically in both signs. This coinciding element is distinctive. The pronunciation differs in the sound of the letters ‛AGRO’ of the contested sign, which have no counterparts in the earlier mark. This element is weak.

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

Conceptually, although at least a part of the public in the relevant territory will perceive the meaning of the element ‘AGRO’ of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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.

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 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the goods are identical or similar to a low degree. The degree of attention is higher than average.

The signs are visually and aurally similar to an average degree, to the extent that they coincide in the first four letters of the contested sign, ‘STIM’, which constitutes the entire earlier mark. The degree of distinctiveness of the earlier mark is normal.

Taking into account all the circumstances if the case, the differences between the marks are not sufficient to counterbalance the similarity between them. The relevant public could be mistaken regarding the origin of the goods that are identical or similar to a low degree.

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 consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to a low degree to those of the earlier trade mark. The similarity of the signs counterbalances the low similarity of the goods.

As the earlier right, French trade mark registration No 94 535343, ‘STIM’, 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

Loreto URRACA LUQUE

Lena FRANKENBERG GLANTZ

Claudia ATTINÀ

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.