OPPOSITION No B 2 993 494

KMB Technologies, LLC, P.O. Box 248, Knox, Indiana 46534, United States (opponent), represented by Schmitt-Nilson Schraud Waibel Wohlfrom Patentanwälte Partnerschaft mbB, Destouchesstraße 68, 80796 München, Germany (professional representative)

a g a i n s t

Alexandre Lefebvre, rue des Matériaux, 20 bte 61, 1070 Anderlecht, Belgium (applicant), represented by Sophie Racquez, rue du Brutia 24, 5030 Gembloux, Belgium (professional representative).

On 11/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 993 494 is partially upheld, namely for the following contested goods:

Class 1: Seaweed (fertilizers); expanded clay for hydroponic plant growing [substrate]; calcium cyanamide [fertilizer]; manures; hydrates; filtering materials (vegetable substances); nitrates; phosphates [fertilizers]; biological preparations, other than for medical or veterinary purposes; trace elements (preparations of -) for plants; plant growth regulating preparations; agricultural chemicals, except fungicides, herbicides, insecticides and parasiticides; fertilising preparations; seed preserving substances; salts (fertilisers); substrates for soil-free cultivation (agriculture); superphosphates [fertilizers]; soil for growing.

Class 31: Seed germ for botanical purposes, seed grains, seedlings, plant seeds, plants, other than those of the botanical genus Zea mays L; garden herbs, fresh; peppers (plants); fresh plants.

2. European Union trade mark application No 16 861 701 is rejected for all the above goods. It may proceed for the remaining goods and 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 16 861 701 for the figurative mark . The opposition is based on European Union trade mark registration No 6 447 635 for the figurative mark . 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 and services

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

Class 1: Fertilizers.

The contested goods and services are the following:

Class 1: Seaweed (fertilizers); expanded clay for hydroponic plant growing [substrate]; calcium cyanamide [fertilizer]; manures; hydrates; filtering materials (vegetable substances); nitrates; phosphates [fertilizers]; biological preparations, other than for medical or veterinary purposes; trace elements (preparations of -) for plants; plant growth regulating preparations; agricultural chemicals, except fungicides, herbicides, insecticides and parasiticides; fertilising preparations; seed preserving substances; salts (fertilisers); substrates for soil-free cultivation (agriculture); superphosphates [fertilizers]; soil for growing; biological tissue cultures, other than for medical or veterinary purposes; genes of seeds for agricultural production.

Class 11: Water intake apparatus; drip irrigation emitters (irrigation fittings); watering installations, automatic; water conduits installations; water distribution installations; lamps; electric lamps; watering machines for agricultural purposes; lamp chimneys; luminous tubes for lighting.

Class 20: Dinner wagons (furniture); racks; flower-stands (furniture); furniture; flower-pot pedestals; display racks; reservoirs, not of metal nor of masonry.

Class 21: Sprinklers; window-boxes; buckets; sprinkling devices; gardening gloves; pots; flower pots; sprinklers for watering flowers and plants; holders for flowers and plants (flower arranging); indoor terrariums (plant cultivation); indoor terrariums (vivariums); basins (receptables).

Class 31: Seed germ for botanical purposes, seed grains, fresh vegetables, seedlings, plant seeds, plants, other than those of the botanical genus Zea mays L; garden herbs, fresh; lettuce, fresh; peppers (plants); garden salads; fresh plants.

Class 37: Machinery installation, maintenance and repair; irrigation devices installation and repair.

Class 42: Chemical analysis; water analysis; architectural consultation; urban planning; conducting technical project studies; research in the field of environmental protection; research and development for others; biological research; bacteriological research; chemical research; technical research; construction drafting.

Class 44: Horticulture; gardening; aquaculture services; plant nurseries.

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 seaweed (fertilizers); calcium cyanamide [fertilizer]; manures; nitrates; phosphates [fertilizers]; trace elements (preparations of -) for plants; salts (fertilisers); superphosphates [fertilizers] are various types of fertilisers and plant nutrients (preparations of trace elements) that are added to soil to encourage the growth of plants. As such, these goods are included in, or overlap with, the opponent’s fertilizers. Therefore, they are identical.

The contested plant growth regulating preparations; fertilising preparations are synonymous with the opponent’s fertilizers. Therefore, they are identical.

The contested biological preparations, other than for medical or veterinary purposes; agricultural chemicals, except fungicides, herbicides, insecticides and parasiticides overlap with the opponent’s fertilizers insofar as the opponent’s goods are biological fertilisers (i.e. biofertilisers) and chemical (non-organic) fertilisers, respectively. Therefore, they are considered identical.

The contested expanded clay for hydroponic plant growing [substrate]; hydrates; filtering materials (vegetable substances); seed preserving substances; substrates for soil-free cultivation (agriculture); soil for growing are organic or inorganic materials with particular properties, intended for growing plants/preserving seeds. As such, they have the same nature and/or purpose as the opponent’s fertilizers. They also have the same distribution channels, target the same consumers and can be produced by the same undertakings. In addition, hydrates and seed preserving substances have the same method of use as the opponent’s goods. Therefore, these goods are similar.

The contested biological tissue cultures, other than for medical or veterinary purposes; genes of seeds for agricultural production comprise materials related to crop and plant genetics. As such, they have nothing relevant in common with the opponent’s fertilizers. Even though these contested goods and some fertilisers may be broadly classed as plant biotechnology, this fact per se does not render these goods similar. The goods under comparison have different natures and purposes. They do not have the same method of use and are not necessarily complementary, nor are they in competition. They do not have the same distribution channels and do not target the same public. Finally, it could not be reasonably expected that they would be produced by the same undertaking. Therefore, they are dissimilar.

Contested goods in Classes 11 and 21

The contested goods in Class 11 are devices and installations used for lighting or watering and/or for hydroponics or the propagation of plants, and the contested goods in Class 21 are mainly gardening articles and decorative items.

Even though these goods have some links with the opponent’s fertilizers (since those in Class 11 can be used to encourage plant growth, and some of those in Class 21, such as window-boxes, gardening gloves or pots, can be found in the same sales outlets), the connections between the contested goods and the opponent’s goods are not strong enough to render them similar.

The nature and method of use of the contested goods are totally different from those of the opponent’s goods. They do not have the same producers (as the manufacturing sites, technical know-how and expertise required are completely different). Moreover, they are not in competition and they are not complementary. Indeed, the link between them is not sufficiently close, in the sense that one is essential or significant for the use of the other so that consumers may think that the responsibility for the manufacture of these goods lies with the same undertakings (11/05/2011, T‑74/10, Flaco, EU: T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU: T:2012:615, § 25; 04/02/2013, T‑504/11, Dignitude, EU: T:2013:57, § 44). Therefore, the goods are dissimilar.

Contested goods in Class 20

The contested dinner wagons (furniture); racks; flower-stands (furniture); furniture; flower-pot pedestals; display racks; reservoirs, not of metal nor of masonry have nothing relevant in common with the opponent’s fertilizers. The fact that some items of furniture (e.g. flower-pot pedestals) are related to plants and may be found in the same outlets (plant shops) and target the same consumers, and the fact that reservoirs may be used for irrigation purposes do not render these goods similar, as they do not coincide in other relevant factors. They have different natures and purposes. They are not complementary or in competition. Importantly, they are not manufactured by the same undertakings, as the manufacturing sites, technical know-how and expertise required are very different. Therefore, these goods are dissimilar.

Contested goods in Class 31

The contested seed germ for botanical purposes, seed grains, seedlings, plant seeds, plants, other than those of the botanical genus Zea mays L; garden herbs, fresh; peppers (plants); fresh plants have a certain degree of similarity to the opponent’s fertilizers in Class 1. The opponent’s goods are intended to contribute to the growth, health and strength of grains, seeds and plants; they improve the fertility of the soil or the water in which grains, seeds and natural plants are cultivated. Consequently, they are essential and/or significant for the contested goods. Moreover, these goods may have the same distribution channels (e.g. nurseries), as the contested goods are all products that may be used by professional and non-professional agriculturists, horticulturists and gardeners alongside the opponent’s goods (11/03/2015, R 796/2014-4 toñifruit fig. / TONIFRUIT; § 13-14 and case-law cited therein). Therefore, these goods are similar to a low degree.

The contested fresh vegetables, other than those of the botanical genus Zea mays L; lettuce, fresh; garden salads are not sufficiently close to the opponent’s goods. The fact that fertilizers may indirectly improve the growth and quality of fresh vegetables, for instance, namely by cultivating the plants that bring forth these vegetables, will not be sufficient in itself to show that the goods are similar. The nature, purpose and method of use of these goods are distinct. Moreover, the goods are sold in different stores and directed at different consumers. They are not in competition with each other, nor are they complementary in the sense that the opponent’s goods are indispensable or important for the use of the applicant’s so that consumers may think that the same undertaking is responsible for producing all these goods (11/03/2015, R 796/2014-4 toñifruit fig. / TONIFRUIT; § 15). Therefore, these goods are dissimilar.

Contested services in Class 37

The contested services in Class 37 concern the installation and maintenance of machinery, including of irrigation devices. Even though some of these services (i.e. those relating to irrigation devices) may target the same consumers as the opponent’s fertilizers, this fact is insufficient to render these goods and services similar. In addition to the general difference in nature (as services are intangible and goods are tangible), the services and goods under comparison do not have the same distribution channels and are not necessarily complementary or in competition. It is not reasonable to assume that consumers would think that the contested services and the opponent’s goods were produced by the same undertaking. Therefore, they are dissimilar.

Contested services in Class 42

The contested services in Class 42 concern analysis, consultation, and research and development activities in various fields, including chemical and biological fields. These are services rendered by professionals in relation to the theoretical and practical aspects of the fields concerned.

Even though some of these services (e.g. chemical analysis; research in the field of environmental protection and biological and chemical research) are needed to produce the opponent’s fertilizers, this fact is insufficient to find these goods and services similar. They meet different needs and are not in competition with each other. The goods and services in question do not target the same public and are not distributed or rendered through the same channels. On the contrary, producers of fertilizers, even if they are heavily involved in research and development activities, are unlikely to render these services to third parties, and undertakings offering the abovementioned services would not be expected by the relevant public to manufacture or sell the opponent’s goods. The other contested services (e.g. architectural consultation and construction drafting) are even less similar. Therefore, the contested services are dissimilar to the opponent’s goods.

Contested services in Class 44

The contested horticulture; gardening; aquaculture services; plant nurseries concern the cultivation of plants and flowers (horticulture; gardening; aquaculture services), and their sale (plant nurseries).

A certain link between the contested services and the opponent’s fertilizers cannot be denied, as they target the same consumers (e.g. horticulturalists and individual consumers who like gardening and plants); however, this connection is not sufficiently strong to render these services and goods similar. In particular, the differences in usual origin outweigh any similarities, as consumers would not expect producers of the opponent’s goods to render the contested services in Class 44 or vice versa, which rules out any complementarity between them as well. Therefore, they are dissimilar.

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 various degrees) are directed at both professionals in the field of agriculture, horticulture and gardening and consumers interested in these fields.

The degree of attention may vary from average (in relation to certain goods, such as fresh plants) to high (in relation to fertilizers used by professionals, since these goods are likely to have a direct impact on their professional activities and, as they are used in high quantities, must usually comply with strict environmental rules).

3. The signs

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 figurative marks. The earlier mark is composed of the verbal element ‘SURF’, depicted in a rather standard upper case italic typeface, and a figurative element consisting of three curved lines above and below the verbal element, forming an oval.

The element ‘SURF’ is a basic English word that will be understood in all Member States as referring to ‘a sport or activity consisting in riding on waves’. However, as it has no connection with the relevant goods, it is distinctive. The curved lines are considered of a purely decorative nature and therefore their degree of distinctiveness is more limited.

The contested sign consists of two verbal elements, namely ‘Green’ and ‘SURF’, depicted in a rather standard typeface in title case blue letters (‘Green’) and upper case green letters (‘SURF’) and surrounding a figurative device consisting of basic shapes and depicting two trees in green and white and two geometrical figures in blue resembling a house and a plot.

The verbal element ‘Green’ is an English word commonly used in commerce in the whole of the European Union. It not only describes a colour but also refers to environmentally friendly products or services (see, for example, 27/02/2018, R 8/2017‑4, GREEN FLUTE (fig.) / AMBAR-GREEN, § 29; 12/07/2018, R 288/2018‑5, GREENIC (fig.) / GREENICE (fig.), § 25). Therefore, this element is weak in relation to the relevant goods (fertilisers, plants), as it alludes to their characteristics and/or their nature. Similarly, the figurative device is also weak, as it alludes to the nature of the relevant goods. The same can be said in relation to the use of the colour green. The public will understand the meaning of these weak elements and will not pay as much attention to them as to the other, distinctive, element of the mark (i.e. the verbal element ‘SURF’). Consequently, the impact of the weak elements is limited when assessing the likelihood of confusion between the signs at issue.

In addition, when signs consist 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).

Neither of the marks has any element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the verbal element ‘SURF’, which is the only verbal element of the earlier mark and the most distinctive element of the contested sign. They differ in the weak verbal element ‘Green’ of the contested sign and in their figurative elements (which are less distinctive than the verbal element in the earlier mark and weak in the contested sign). They also differ in their colours, also weak in the case of the colour green in the contested sign, and in their rather standard typefaces.

In the light of the above, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in the different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛SURF’, present identically in both signs, and which constitute the only verbal element of the earlier mark and the most distinctive element of the contested sign. The pronunciation differs in the sound of the letters ‛Green’ of the contested sign, which constitute a weak element, as explained above.

Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with ‘the activity of surfing’, and since the word ‘Green’ and the figurative device of the contested sign are considered weak and therefore have a lesser impact on the assessment, the signs are conceptually similar to an average degree.

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 Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, §22).

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods and services are partly identical or similar (to various degrees) and partly dissimilar.

The degree of attention of the relevant public may vary from average to high. However, 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).

The signs are aurally similar to a high degree, and visually and conceptually similar to an average degree. The earlier mark enjoys an average degree of distinctiveness.

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, 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 or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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 European Union trade mark registration No 6 447 635.

Applying the aforementioned principle of interdependence, it is considered that the high degree of aural similarity and the average degrees of visual and conceptual similarity between the signs are sufficient to offset the low degree of similarity between some of the goods. Therefore, there is a likelihood of confusion even for the goods that are similar only to a low degree.

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

The rest of the contested goods and 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 goods and services cannot be successful.

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

Richard BIANCHI

Alicia BLAYA ALGARRA

Inés GARCÍA LLEDÓ

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.