OPPOSITION No B 3 019 299

Belchim Crop Protection Luxembourg, S.a.r.l., 40, avenue Monterey, 2163 Luxembourg, Luxembourg (opponent), represented by BAP IP BVBA - Brantsandpatents, Charles de Kerchovelaan 17, 9000 Gent, Belgium (professional representative)

a g a i n s t

Fertinagro Biotech S.L., Pol. Ind. La Paz, Parcelas 185-188, 44195 Teruel, Spain (applicant), represented by Protectia Patentes y Marcas S.L., C/ Arte 21, 2ºA, 28033 Madrid, Spain (professional representative).

On 28/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 019 299 is upheld for all the contested goods and services.

2. European Union trade mark application No 16 951 303 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 951 303 , namely against all the goods and services in Classes 1 and 42. The opposition is based on, inter alia, Benelux trade mark registration No 947 021 for the word mark ‘VALIS’. 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 Benelux trade mark registration No 947 021, because this earlier mark has the largest scope of goods.

a) The goods and services

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

Class 1: Chemical products for use in agriculture, horticulture and forestry; fertilizer.

Class 5: Disinfectants; products for the destruction of pests, pesticides, fungicides and herbicides; parasiticides.

The contested goods and services are the following:

Class 1: Biological activators; Biochemical and chemical preparations for use in laboratory analysis; Chemical substances and reagents; Diagnostic reagents for scientific use; Proteins and enzymes, all the aforesaid for use in the agricultural and livestock farming industry.

Class 42: Laboratory research; Research and development of biological monitoring, all the aforesaid for use in the agricultural and livestock farming industry.

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 proteins and enzymes, all the aforesaid for use in the agricultural and livestock farming industry are included in the broad category of the chemical products for use in agriculture, horticulture and forestry of the earlier mark. Therefore, they are identical.

The contested chemical substances and reagents overlap with the earlier chemical products for use in agriculture, horticulture and forestry. Therefore, they are identical.

The contested biological activators are included in the broad category of the opponent’s fertilizer. Therefore, they are identical.

The contested biochemical and chemical preparations for use in laboratory analysis; diagnostic reagents for scientific use are similar to the opponent’s chemical products for use in agriculture, horticulture and forestry because they could coincide as to their nature (chemical products) and their producers (chemical industry).

Contested services in Class 42

The contested laboratory research; research and development of biological monitoring, all the aforesaid for use in the agricultural and livestock farming industry are at least similar to a low degree to the opponent’s chemical products for use in agriculture, horticulture and forestry. While the goods and services are of a different nature, they could coincide in their producers/providers, end users and distribution channels. Finally, they could be complementary.

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 and services found to be identical or similar are directed at the public at large (e.g. fertiliser and biological activators) or at business customers with specific professional knowledge or expertise (e.g. diagnostic reagents for scientific use).

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, their price and the frequency of purchase.

c) The signs

VALIS
Earlier trade mark	Contested sign

The relevant territory is the Benelux.

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 unitary character of the Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (09/03/2005, T‑33/03, Hai, EU:T:2005:89, § 39; 03/03/2004, T‑355/02, ZIRH, EU:T:2004:62, § 36).

The common element ‘valis’ is not meaningful in certain territories, for example in those countries where French is understood. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the relevant public.

The earlier mark is a word mark that consists of the single element ‘VALIS’. In word marks the word is protected as such. Therefore, it is also protected in lower case characters as ‘valis’.

The contested sign is a figurative mark. It consists of a figurative element in the form of a stylized ladybird (in red and black colours), the term ‘Bio’ in black letters and the term ‘valis’ in red letters. The two colours clearly separate the verbal element into the terms ‘Bio’ and ‘valis’.

The common element ‘valis’ of the signs has no meaning for the relevant public and is, therefore, distinctive.

The applicant claims on the one hand that ‘valis’ is a prefix that stands for ‘valifenalate’ and it filed an extract form the website ‘Ontobee’ in this context. On the other hand, the applicant also makes the rather contradictory claim that ‘none of the confronted signs has a recognisable meaning’. Given that the extract provided by the applicant does not mention the term ‘valis’, it cannot serve to corroborate the applicant’s claim regarding the existence of the prefix ‘valis’. Consequently, the applicant’s arguments regarding the lack of distinctiveness of the common element ‘valis’ must be set aside.

The figurative element of the contested mark will be recognized as a stylized representation of a ladybird. The device is distinctive for the relevant goods and services. However, 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).

The element ‘Bio’ of the contested sign will be understood as a short form for ‘biological’ (in French ‘biologique’) by the relevant public. Bearing in mind that the relevant goods and services are related to agriculture this element is non-distinctive for these goods and services.

The contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the distinctive element ‘valis’. However, they differ in the non-distinctive term ‘Bio’, the distinctive device of a ladybird and the colour red in the contested sign.

Therefore, the signs are at least similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛valis’, present identically in both signs. The pronunciation differs in the sound of the additional letters ‛Bio’ of the contested mark. However, these letters are non-distinctive. The device has no impact on the aural comparison as it will not be pronounced.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meanings of the word ‘Bio’ and the figurative element 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.

The goods and services are partly identical and partly similar (at least to a low degree). They are directed at the general public and at business customers. The degree of attention varies from average to high.

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).

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 earlier mark enjoys a normal degree of distinctiveness.

The signs are visually at least similar to an average degree and aurally highly similar. The coinciding element ‘valis’ plays an independent distinctive role in both signs, while the additional word element ‘Bio’ of the contested sign is non‑distinctive. The device of a ladybird is a distinctive element in the contested sign. However, this difference between the signs is not sufficient to create a different overall impression, since the verbal component of the sign usually has a stronger impact on the consumer than the figurative component.

Indeed, 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, there is a likelihood of confusion on the part of the French-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the Benelux is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 947 021. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier Benelux mark leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights 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, 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

Octavio MONGE GONZALVO

Beatrix STELTER

Martin EBERL

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.