OPPOSITION No B 3 029 041

Brunel-Chimie Derives, 14 rue Harald Stammbach, 59290 Wasquehal, France (opponent), represented by Cabinet Beau De Lomenie, Immeuble Eurocentre, Euralille, 179, Boulevard de Turin, 59777 Lille, France (professional representative)

a g a i n s t

Yanco Limited, 1 Estuary Banks, Estuary Commerce Park, L24 8RQ Liverpool, United Kingdom (applicant), represented by Brabners Llp, Horton House, Exchange Flags, L2 3YL Liverpool, United Kingdom (professional representative).

On 18/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 029 041 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 17 256 223 namely against all the goods in Classes 5, 7, 8 and 21. The opposition is based on European Union trade mark registration No 9 003 302 “KAPO” (word mark). 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.

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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.

a) The goods

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

Class 01: Chemicals used in agriculture, horticulture and forestry; additives, chemical, to insecticides.

Class 05: Insecticides, insect repellents, acaricides; veterinary preparations; disinfectants; preparations for destroying vermin; mothproofing preparations; fly catching paper; fumigation preparations for medical purposes; repellents for people and animals; fungicides.

Class 08: Insecticide vaporisers (hand tools); syringes for spraying insecticides.

Class 21: Insect traps.

The contested goods are the following:

Class 05: Insecticides; insecticides for agricultural, domestic, horticultural and veterinary use; insect repellents; insect repellent preparations; insect killing preparations; insecticide preparations; insecticide powders; insecticide spray; insecticide lotions; repellent lotions; medicated lotions; pharmaceutical lotions; insect and fly catching paper; mosquito coils and mats; larvicides; larvicides for agricultural, domestic, horticultural and veterinary use; moth proofers; pesticides (other than germicides, fungicides, herbicides, disinfectants, sanitary preparations and substances); pesticides for agricultural, domestic, horticultural and veterinary use (other than germicides, fungicides and herbicides, disinfectants, sanitary preparations and substances); rodenticides; rodenticides for agricultural, domestic, horticultural and veterinary use; miticides; miticides for agricultural, domestic, horticultural and veterinary use; pharmaceutical preparations and substances; veterinary preparations and substances.

Class 07: Sprayer machines; electric sprayers; power-operated sprayers; spray guns; Atomizer machines; Vaporizer machines; sprayer machines, electric sprayers, power-operated sprayers, spray guns, atomizer machines and vaporizer machines for use in spraying insecticides, larvicides, pesticides (other than germicides, fungicides, and herbicides, disinfectants, sanitary preparations and substances), rodenticides and miticides; sprayer machines; sprayer machines, electric sprayers, power-operated sprayers, spray guns, atomizer machines and vaporizer machines for agricultural, domestic, horticultural and veterinary use; parts and fittings for the aforesaid goods.

Class 08: Hand operated sprayers; hand operated spray guns; hand operated Atomizers; hand operated vaporizers; hand operated sprayers, spray guns, atomizers and vaporizers for use in spraying insecticides, larvicides, pesticides (other than germicides, fungicides and herbicides, disinfectants, sanitary preparations and substances), rodenticides and miticides; hand operated spraying machines; hand operated sprayers, spray guns, atomizers and vaporizers for agricultural, domestic, horticultural and veterinary use; parts and fittings for the aforesaid goods.

Class 21: Insect, pest, fly and rodent traps; devices and apparatus for attracting, repelling and killing insects, flies, pests and rodents; bottles; plastic bottles; aerosols, not for personal use; aerosol containers, aerosol valves; electrically operated apparatus for generating an insecticide vapour; electric devices for attracting, repelling and killing insects; electrical apparatus for driving away insects; electric traps for insects; electric insect repelling devices; parts and fittings for the aforesaid goods.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

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

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

Also for goods like herbicides or insecticides, due to their probable impact on human health, the relevant consumers will pay a higher attention when choosing them.

c) The signs

KAPO
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).

The Opposition Division finds it most unlikely that the word “KAPO” – as proposed by the applicant – will be associated with a prisoner in a concentration camp. Even if a minority of consumers would make this association it has no meaning for the goods in question, therefore it is distinctive.

The word “ZAPPO” has no meaning for the relevant public and is, therefore, distinctive. The applicant states that the English speaking part of the relevant public will recognise the word “zap” in the sense of “destroy or obliterate”. However the Opposition Division is of the opinion that the vast majority of the public will not dissect the sign in to the elements “Zap” and “po” because the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. Therefore, since the sign does not have a clear or specific meaning, it has a normal degree of distinction

Visually, the signs coincide in the letters “*AP*O”. However, they differ in the different letters at the beginning of the signs, namely “K” respective “Z”, the second letter “P” and the colours blue and red used in the contested sign.

Therefore, the signs are similar to a low degree.

The opponent states that the sign have nearly the same length. However the General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters “*A*PO”, present identically in both signs. The pronunciation differs in the sound of the first letters “Z” respectively “K” and the second “P” in the contested sign, the pronunciation of which will be noted in some languages. The double letter “P” will also have an effect on the pronunciation of the letter “A” in some languages like English or German, where the “a” becomes a short vowel.

Therefore, the signs are similar to a low degree.

Conceptually, neither of the signs has a meaning for the vast majority of 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 for this part of the public.

A small part of the public in the relevant territory might perceive the meaning of the earlier mark 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 for this part of the public.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’). The examination will proceed on the assumption that the earlier mark has enhanced distinctiveness.

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).

Although the signs coincide in the element “*AP*O”, there is no likelihood of confusion. The additional different elements are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks.

This is specifically so, since the first letters of the signs are different. 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.

Additionally the length of the signs influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

In the present case the respective beginnings of the signs are the clearly distinguishable letters “Z” and “K” additionally the contested sign contains a double letter “P” and is depicted in red and blue. Since the signs are relatively short this differences are clearly perceivable.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

Likewise, even assuming that the earlier mark enjoys an enhanced distinctiveness due to extensive use, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of extensive use.

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

Martin EBERL

Reiner SARAPOGLU

Volker MENSING

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.