OPPOSITION No B 3 009 290

Floragard Beteiligungs-GmbH, Gerhard-Stalling-Straße 7, 26135, Oldenburg, Germany (opponent), represented by Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB, Hollerallee 73, 28209, Bremen, Germany (professional representative)

a g a i n s t

Haojing Bao, No. 681, Fang Er Group, Fangjun Village, Nanma Town Dongyang City, Zhejiang Province, China (applicant), represented by Isabelle Bertaux, 55 rue Ramey, 75018, Paris, France (professional representative).

On 26/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 009 290 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 140 203 for the word mark ‘FLORA GUARD’. The opposition is based on international trade mark registration No 503 440 for the word mark ‘Floragard’. 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 goods

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

Class 1: Peat, clods of peat, peat flour for soil improvement, peat for fertilizers, mixture of fertilizer made with peat, fertilizers, humiferous fertilizers, growing substrate, humus, peat for clusters of swamp plants.

The contested goods are the following:

Class 8: Hand tools, hand-operated; shovels [hand tools]; garden tools, hand-operated; ear-piercing apparatus; saws [hand tools]; hobby knives [scalpels]; scissors; daggers; tableware [knives, forks and spoons].

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.

Notwithstanding Article 33(7) EUTMR, stating that the Nice Classification serves purely administrative purposes, the classification may serve as a tool to identify the common characteristics of certain goods / services. Many classes of the Nice Classification are structured according to factors such as function, composition and / or purpose of use which may be relevant in the comparison of goods / services.

According to the explanatory notes for Class 1 of the Nice Classification, this class includes mainly chemical products used in industry, science and agriculture, including those for the manufacture of products belonging to other classes. In fact, the earlier mark protects mainly, pea and fertilizers, that is, material (natural or synthetic) that is applied to soils or to plant tissues to supply one or more plant nutrients, essential for the growth of plants.

On the other hand, the contested goods mainly include hand-operated implements used in the different professions. The Opposition Division agrees with the opponent that there might be a certain connection between the opponent´s goods and the contested garden tools as they are all used in gardening. However, this connection is not deemed sufficient to render the goods similar. The nature of the opponent’s goods in Class 1 (chemical preparations and substances for agriculture) evidently differs from all the contested goods in Class 8 (hand operated implements). Furthermore, their respective purpose and method of use are essentially different. The opponent argues that the opponent’s goods and the contested goods would be used in connection with each other. Nevertheless, the mere fact that a particular good is used in connection with another does not suffice in itself to show that these are similar since; in particular, their nature, intended purpose and commercial origin may be completely different. Furthermore, it is true that the opponent’s and some of the applicant’s goods may be offered in the same shops and via the same distribution channels; however, they originate from different manufacturers. The Opposition Division is of the opinion that the relevant public is well aware that the manufacturers of tools and implements do not produce fertilizers or peats at the same time because the know-how and the production facilities are very different

The opponent states that the goods in conflict are complementary and in competition. However, the fact that both sets of goods may be used in relation to each other does not make them complementary. They will be generally bought and used independently. Moreover, the mere fact that the potential customers coincide does not automatically constitute an indication of similarity. The same group of customers may be in need of goods or services of the most divergent origin and nature. Therefore, the compared goods are neither complementary, nor in competition. The Opposition Division considers that the contested goods in Class 8 and all the opponent’s goods in Class 1 are to be considered dissimilar.

The opponent argues that the conflicting signs are very similar in all the aspects of the comparison and invokes the interdependence principle according to which a lesser degree of similarity between the goods and services may be offset by a higher degree of similarity between the marks involved. However, dissimilarity of the goods under comparison cannot be overcome by a possible high similarity of the conflicting marks.,

1. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Richard BIANCHI

Alexandra APOSTOLAKIS

Saida CRABBE

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.