OPPOSITION No B 3 052 052

TKI Hrastnik, d.d., Za Savo 6, 1430 Hrastnik, Slovenia (opponent), represented by Patentna Pisarna D.O.O., Čopova 14, 1001 Ljubljana, Slovenia (professional representative)

a g a i n s t

Hortiful, Josef-Reiert-Str. 4, 69190 Walldorf, Germany (applicant), represented by Garrigues IP S.L.P., C/Hermosilla 3, 28001 Madrid, Spain (professional representative).

On 23/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 052 is partially upheld, namely for the following contested goods and services:

Class 31: Fresh fruits and vegetables; root vegetables [fresh]; fresh pulses; agricultural produce (unprocessed -); agricultural and aquacultural crops, horticulture and forestry products; agricultural seeds; natural seeds; plants.

Class 35: Wholesale services in relation to horticulture products; wholesale services in relation to foodstuffs.

2. European Union trade mark application No 17 782 608 is rejected for all the above goods and services. It may proceed for the remaining 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 17 782 608 for the figurative mark . The opposition is based on Slovenian trade mark registration No 201 770 265 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.

a) The goods and services

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

Class 31: Agricultural, horticultural and forestry products and seed grains not included in other classes; fresh fruits and vegetables; seeds; natural plants; fresh flowers; foodstuffs for animals; plants; plants, dried, for decoration; seedlings; flower bulbs; rose bushes; trees.

Class 44: Agriculture, horticulture and forestry services; vermin exterminating for agriculture, horticulture and forestry; aerial and surface spreading of fertilisers and other agricultural chemicals; horticulture; gardening; plant nursery services; floral art; wreath making; garden, park and plantation planning; lawn care; landscaping (landscape planning); agricultural machine rental; consultancy relating to the aforesaid services; information services relating to the use of fertilisers in agriculture, horticulture and forestry.

The contested goods and services are the following:

Class 31: Fresh fruits and vegetables; root vegetables [fresh]; fresh pulses; agricultural produce (unprocessed -); agricultural and aquacultural crops, horticulture and forestry products; agricultural seeds; natural seeds; plants.

Class 35: Assistance and advice regarding business organization; business consultancy and advisory services; business management assistance; professional business consultancy; market study and analysis of market studies; wholesale services in relation to horticulture products; wholesale services in relation to foodstuffs; import and export services; import-export agency services; advisory and consultancy services relating to import-export agencies; efficiency experts.

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 31

The contested fresh fruits and vegetables; agricultural produce (unprocessed -); horticulture and forestry products; plants are identically contained in both lists of goods (including synonyms).

The contested root vegetables [fresh]; fresh pulses; agricultural crops; agricultural seeds; natural seeds are included in the broad category of the opponent’s agricultural products. Therefore, they are identical.

The contested aquacultural crops include as a broader category, or overlap with, the opponent’s plants to the extent that the latter also covers aquatic plants. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested services in Class 35

Wholesale services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested wholesale services in relation to horticulture products are similar to a low degree to the opponent’s horticultural products. The contested wholesale services in relation to foodstuffs are similar to a low degree to the opponent’s fresh fruits and vegetables.

The contested assistance and advice regarding business organization; business consultancy and advisory services; business management assistance; professional business consultancy; market study and analysis of market studies; import and export services; import-export agency services; advisory and consultancy services relating to import-export agencies; efficiency experts are all sorts of business services. These services are dissimilar to the opponent’s agricultural, horticultural and forestry-related goods and services in Classes 31 and 44. These goods and services have a different nature, a different purpose and a different method of use. They are neither complementary nor in competition with each other. Furthermore, they do not originate from the same undertakings, are offered through different distribution channels and target a different relevant public.

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 to a low degree are directed at the public at large and at a professional public with specific knowledge or expertise, for example in the fields of horticulture and agriculture.

The degree of attention is average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Slovenia.

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).

Although the elements ‘Horty’, in the earlier mark, and ‘horti’, in the contested sign, might be associated by part of the relevant public with ‘horticulture’ (‘hortikultura’ in Slovenian), a significant part of the relevant public will perceive these elements with no particular meaning, because the word ‘vrtnarstvo’ is much more common than the word ‘hortikultura’ in Slovenian. For reasons of procedural economy, the Opposition Division will focus on this part of the relevant public when assessing the signs, since a likelihood of confusion for a significant part of the relevant public is sufficient to reject the contested application.

The elements ‘Horty’ in the earlier mark and ‘hortiful’ in the contested sign will be perceived as meaningless and, therefore, distinctive.

The element ‘PROFI’ in the earlier mark will be associated with ‘professional’ and is, therefore, weak, as it refers to a characteristic of the goods, namely that they are for professional use or target a professional public.

The figurative element in the earlier mark consisting of a green background will be seen as having a purely decorative nature.

Consequently, the element ‘Horty’ is the most distinctive element in the earlier mark.

The second letter ‘O’ in the contested sign, depicted in orange and with leaves on top of it, will be perceived by the relevant public as a piece of fruit, most probably an orange, and is, therefore, at least weak in relation to the relevant goods, as it indicates their nature.

The signs have no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in their first four letters ‘HORT*’/’HORT****’. The coincidence at the beginning of the signs is particularly relevant, since 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. However, they differ in the letters ‘****Y’/’****IFUL’, and in the additional word ‘PROFI’ in the earlier mark, which has a limited impact as it is a weak element. The signs also differ in their stylisation and figurative elements, the latter having less impact on consumers for the reasons explained above. Moreover, it can be noted that 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).

Therefore, taking into account the coincidences at the beginning of the signs and the distinctiveness of the coinciding and differing elements, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‘HORTY’/’HORTI’, present identically in both signs, as the letters ‘Y’ and ‘I’ will be pronounced identically. The pronunciation differs in the syllable ‘FUL’ in the contested sign, and the additional word ‘PROFI’ in the earlier mark, which has, however, less impact, as it is weak.

Therefore, the signs are aurally similar to an average degree.

Conceptually, as the public in the relevant territory will perceive the meaning of the figurative element representing a piece of fruit in the contested sign and the word ‘PROFI’ in the earlier mark, as explained above, the signs are not conceptually similar. However, the impact of these conceptual differences is very limited since, both these elements are, at least, weak.

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 relevant 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, despite the presence of some less distinctive elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The earlier mark has a normal degree of distinctiveness. The relevant public is the public at large and a professional public, and the level of attention is average.

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).

The conflicting goods and services are partly identical, partly similar to a low degree and partly dissimilar.

The signs are visually and aurally similar to an average degree. Although the signs are conceptually not similar, this has limited impact on the assessment of the signs, since the conceptual differences are created by weak elements.

Taking into account the average degree of visual and aural similarity between the signs, it is considered that the relevant public, displaying not more than an average degree of attention, might be led to believe that the conflicting goods and services come from the same or economically linked undertakings. This likelihood of confusion exists not only for the identical goods, but also for the goods and services found to be similar to a low degree only, according to the abovementioned interdependence principle. The higher degree of similarity between the signs outweighs the lower degree of similarity between those goods and services.

The applicant refers to previous decisions of the Office to support its arguments that the signs are not similar. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings as the signs in those cases are not comparable to the signs in the present case. For example, in decision No 1238/2003 of 12/06/2003, ruling on opposition No B 371 585, only two letters were in the same position, while in the present case there are visually four letters in the same position and aurally up to five.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion for a significant part of the Slovenian public and, therefore, the opposition is partly well founded on the basis of the opponent’s Slovenian trade mark registration No 201 770 265 for the figurative mark .

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to a low degree to those of the earlier trade mark.

The rest of the contested 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 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

Chantal VAN RIEL

Saida CRABBE

Marzena MACIACK

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.