OPPOSITION No B 2 998 352

Bayer S.A.S., 16, rue Jean-Marie Leclair, 69009 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

SBM developpement, Les 4 M 111 chemin du Petit Bois, 69130 Ecully, France (applicant), represented by Cabinet Germain & Maureau, 12 rue Boileau, 69006 Lyon, France (professional representative).

On 21/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 998 352 is upheld for all the contested goods.

2. European Union trade mark application No 17 069 303 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 of European Union trade mark application No 17 069 303 for word mark ‘DESIM’, namely against all the goods in Class 5. The opposition is based on international trade mark registration No 380 718 designating Germany, Austria and Spain, for the word mark ‘DECIS’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

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.

With its observations of 18/06/2018, the applicant requested the proof of use but did not request the proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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.

In the present case, the Opposition is based on an International registration with different designations. The Opposition Division finds it appropriate to focus the examination on the German and Austria designations due to the broader scope of protection in these territories.

a) The goods

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

Class 5: Preparations for destroying weeds and pests.

The contested goods (after a limitation requested by the applicant on 26/06/2018), are the following:

Class 5: Preparations for destroying vermin; Rodenticides; Insecticides; Fungicides; Herbicides; Herbicides; all the aforementioned products for exclusive use in connection with the agriculture industry for the protection of crops and 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.

Contested goods in Class 5

Vermin (are pests or nuisance animals that spread diseases or destroy crops or livestock. A pest is a destructive insect or other animal that attacks crops, food, livestock, etc. Therefore, the contested preparations for destroying vermin for exclusive use in connection with the agriculture industry for the protection of crops and plants are included in the opponent’s preparations for destroying pests. Therefore, they are identical.

A rodenticide is a poison used to kill rodents, including rats, mice, squirrels, hamsters and porcupines inter alia. The contested rodenticides for exclusive use in connection with the agriculture industry for the protection of crops and plants are included in the broad category of the opponent’s preparations for destroying pests. Therefore, they are identical.

Insecticides are substances used to kill insects. The contested insecticides for exclusive use in connection with the agriculture industry for the protection of crops and plants are included in the opponent’s preparation for destroying pests. Therefore, they are identical.

Weeds are wild plants growing where they are not wanted and in competition with cultivated plants. Herbicides, also commonly known as weed killers, are chemical substances used to control unwanted plants. The contested herbicides for exclusive use in connection with the agriculture industry for the protection of crops and plants are included in the opponent’s preparations for destroying weeds. Therefore, they are identical.

Fungicides are chemical compounds or biological organisms used to kill parasitic fungi or their spores. Fungi can cause serious damage in agriculture, resulting in critical losses of yield, quality, and profit. The contested fungicides for exclusive use in connection with the agriculture industry for the protection of crops and plants are closely related to the opponent’s preparations for destroying weeds. They have the same purpose, namely the protection of the plants against any kind of damage. They usually coincide in producer, relevant public and distribution channels. Therefore, they are similar to a high degree.

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

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

In the present case, the goods of the earlier mark target the general and professional public and the contested goods target a professional public exclusively (for exclusive use in connection with the agriculture industry). Therefore, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 81).

c) The signs

DECIS	DESIM
Earlier trade mark	Contested sign

The relevant territories are Germany and Austria.

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 signs are word marks. The earlier sign consists of the verbal element ‘Decis’, the contested one of the verbal element ‘Desim’.

The verbal elements of both signs have no meaning for the German speaking public, therefore, they are distinctive for the relevant goods.

The 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, both signs consist of five letters. They coincide in their first two letters ‘DE’ and the penultimate letter ‘I’. However, they differ in their third and fifth letters namely C/S and S/M

Therefore, as the beginning of the sign usually catches the attention of the consumers, the signs are similar to an average degree.

Aurally, it has to be taken into account that the marks have the same number of syllables ‘DE-CIS and ‘DE-SIM’. The German-speaking public will pronounce the earlier mark as /de-cis/ and the contested mark as /de-sim/. The pronunciation of the DECI / DESI will be almost identical as the C before the letter I will be pronounced as a sharp s sound. The signs differ in the last letter of the signs namely ‘S’ in the earlier mark and ‘M’ in the contested sign.

Therefore, the signs are similar to a high 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.

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

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.

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).

The relevant public has rarely 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 if they pay a high degree of attention they need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

In the present case, the goods are partly identical and partly similar to a high degree. The relevant public are specialists with specific knowledge or expertise, with the degree of attention varying from average to high. The earlier mark enjoys an average degree of inherent distinctiveness.

The signs are visually similar to an average degree and aurally similar to a high degree. Contrary to the applicant´s arguments, similarity is not only based on the fact that the signs coincide in the first letters ‘DE’, which according to the applicant is a common fact. As shown before, there is a strong phonetic similarity based on the fact that the first four letters are aurally highly similar (pronounced almost identical). Therefore, the applicant’s argument regarding the number of European Union trade mark registrations starting with the letters ‘DE’ must be set aside.

The applicant argues in favour of coexistence of the marks by referring to the opponent’s transfer of a similar trade mark (DESIMO) and the implicit acceptance of coexistence of these signs on the market by the opponent. The opponent disputes this arguing that the applicant was only allowed to use the trade mark (DESIMO) within a licence agreement and was not allowed to apply for similar trademarks. With regard to that, the Office has to point out that the subject of the current proceedings is only the assessment of the likelihood of confusion between the contested sign ‘DESIM’ and the earlier sign ‘DECIS’. Any eventual transfer of similar marks between the applicant and the opponent is not part of the ongoing proceedings and therefore will not be taken into account.

Considering all the above, there is a likelihood of confusion on the part of the public, namely for the German speaking professional public in Germany and Austria.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 380 718 designating Germany and Austria. It follows that the contested trade mark must be rejected for all the contested goods.

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

Octavio MONGE GONZALVO

Claudia MARTINI

Beatrix STELTER

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.