OPPOSITION No B 3 056 759

Quimicas Meristem, S.L., Carretera Moncada Naquera Km. 1,700, 46113 Moncada (Valencia), Spain (opponent), represented by Santiago Soler Lerma, Calle Poeta Querol, 1-3-10, 46002 Valencia, Spain (professional representative)

a g a i n s t

Fertinova, Intrarea Parfumului N4.Sectorul 3, 030842 Bucharest, Romania (applicant)

On 20/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 056 759 is partially upheld, namely for the following contested goods:

Class 5: Insect repellents; vermin repelling preparations; tobacco extracts [insecticides]; antiparasitic preparations from chemical sources; vermin destroying preparations.

Class 31: Live arthropods for the control of pests.

2. European Union trade mark application No 17 879 407 is rejected for part of the contested goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 879 407 for the word mark ‘STIMMAX’. The opposition is based on Spanish trade mark registration No 3 661 409 (figurative). 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.

1. The goods

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

Class 1: Chemical products for industry, science and photography, as well as for agriculture, horticulture and forestry; artificial resins in the rough, plastic raw materials; fertilizers for the soil; extinguishing compositions; preparations for tempering and welding metals; chemical products for preserving foods; curtient matters; adhesives (glues) for the industry.

The contested goods, after a partial rejection of the contested sign in previous opposition proceedings, are the following:

Class 5: Miticides for domestic use; glue coated strips for use against vermin; domestic biopesticides; insecticides for domestic use; insect repellents; powders for killing fleas on animals; antiparasitic preparations from chemical sources; antiparasitic preparations for pets; antiparasitic preparations from plant sources; vermin destroying preparations; mothproofing preparations; insect repellents for use on humans; insect repellents for use on animals; vermin repelling preparations; insect repellent incense; tobacco extracts [insecticides]; anti-horse-fly oils.

Class 31: Live arthropods for the control of pests.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

For the sake of completeness, most of the opponent’s arguments concerning the comparison of the goods in question refer to contested goods, which have already been rejected in previous proceedings. Therefore, these observations are not the subject of the present proceedings.

Contested goods in Class 5

Some of the opponent’s goods in Class 5 are chemicals related to the management of vermin in its global sense, namely preventive measures and pest control. In agriculture, vermin may be seen as small wild animals such as various rodents (mice or rats) that are harmful to crops, in addition to parasitic worms or insects (lice, bugs, fleas, etc) infecting agricultural plants. However, the opponent’s chemical products for agriculture are goods of chemical origin the purpose of which is, inter alia, to efficiently grow crops. Consequently, to a large extent, these goods may have the same purpose, as well as the same relevant public, namely farmers and agricultural experts, as the contested insect repellents; vermin repelling preparations; tobacco extracts [insecticides]; antiparasitic preparations from chemical sources; vermin destroying preparations. Furthermore, these goods may coincide in their distribution channels, as well as in their global origin — the chemical industry. Therefore, they are considered similar to a low degree.

The rest of the contested goods in Class 5 are essentially different from the opponent’s goods in Class 1 and, contrary to the opponent’s opinion, they are in no way related to the efficient growth of agricultural products or are simply not of a chemical origin (e.g. the contested antiparasitic preparations from plant sources). These contested goods are mostly pesticides used for domestic and sanitary purposes (glue coated strips for use against vermin; miticides, insecticides, biopesticides, etc.), as well as various repellents used on humans or animals (powders for killing fleas on animals; antiparasitic preparations for pets; insect repellents for use on humans; insect repellents for use on animals; mothproofing preparations; insect repellent incense; anti-horse-fly oils etc). Unlike the opponent’s goods, these contested goods are used in households (to disinfect, fight vermin or prevent unwanted insects, etc.), and will mostly be adapted and further processed according to the needs of their end users. Consequently, their distribution channels, as well as their relevant public and usual manufacturers will differ from those of the opponent’s goods which involve chemicals in their raw form or (synthetic or organic) compositions of a different purpose and method of use. Furthermore, these goods are not in competition. Therefore, they are considered dissimilar to all of the opponent’s goods.

Contested goods in Class 31

With regard to the goods in Class 31, according to the opponent, it is commonly known that ‘many insects are important in biologically controlling plant pests since they have special food needs during their adult stage’. The Opposition Division notes that indeed these goods may have a similar purpose to the opponent’s chemicals used in agriculture to the extent that they are used as pest management alternatives in agriculture, in particular, organic versus chemical pest control. Despite the fact that these two categories of goods have completely different methods of use and most likely distribution channels, it can be assumed that they will target the same public, namely professional consumers in the field of agriculture. Moreover, their purposes of controlling pests will be in direct competition. Consequently, taking into account the abovementioned, the contested live arthropods for the control of pests are considered similar to a low degree to the opponent’s chemical products for agriculture, horticulture and forestry in Class 1.

b) Relevant public — degree of attention

In the present case, the goods found to be similar to a low degree are directed at the public with specific professional knowledge or expertise in the sectors of agriculture, horticulture, forestry and pest control.

The public’s degree of attentiveness may vary from average to above average, depending on the price, specialised nature, or terms and conditions of the goods purchased. Indeed, a higher degree of attention would be particularly justified by the fact that the goods target professionals with know-how concerning their proper use, or can have serious consequences for other goods, such as plants and crops.

c) The signs

	STIMMAX
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 elements composing the conflicting signs have no meanings for the relevant public and are, therefore, distinctive. The stylisation that the earlier sign bears, including its colours, will only have a limited impact on the overall perception of the sign as it is of a merely decorative nature from a trade mark perspective.

While the earlier mark will be rather perceived as a single element of a fanciful nature, the contested sign, although it is composed of one verbal element, may be broken down into the elements ‘STIM’ and ‘MAX’ by part of the public to the extent that it contains the double ‘M’ and the clearly perceivable syllables [STIM/MAX] which may suggest such dissection. Moreover, such mental dissection happens when the signs convey a concrete meaning, or resemble words that consumers already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). The ending ‘MAX’ of the contested sign may be seen as a commonly used abbreviation for ‘maximum’, which may be of a laudatory nature for the goods in question (e.g. evocative of positive characteristics of the goods, such as their strength or effectiveness). However, when considered as a whole, the mark remains distinctive. For the remaining part of the consumers, the contested sign will be perceived as a whole and will, therefore, be a meaningless fanciful word of an average distinctiveness.

Visually and aurally, the signs coincide in the sequence of letters ‘STIM*AX’, constituting the entire earlier mark and most of the contested sign. They only differ in the additional letter ‘M’ in the contested sign, as well as in the slight stylisation of the earlier mark. Therefore, given that the signs only differ in one letter that will produce no additional sound in the contested sign, the signs are visually highly similar and aurally identical.

Conceptually, although a part of the public in the relevant territory may perceive a meaning in 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. In the case that neither of them convey any concept, a conceptual comparison cannot be carried out.

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 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 earlier mark must be seen as normally distinctive.

e) Global assessment, other arguments and conclusion

The goods are partly similar to a low degree and partly dissimilar. The degree of attention of the relevant public will vary between average and above-average for the abovementioned reasons. The earlier mark as a whole enjoys a normal degree of distinctiveness.

The signs have been established as visually highly similar and aurally identical, whereas the conceptual aspect will either not have an impact or, if it does, the signs will be not similar. As mentioned above, the differences between the signs are confined to components of a lesser importance, namely one additional letter between other identical letters and decorative stylisation that cannot divert the attention of the consumers from the word itself. Even if the syllable ‘MAX’ in the contested sign may be understood by some of the public as an informative message and, therefore, may have reduced distinctiveness, this itself cannot be considered as a sufficient difference to change the overall impression that both signs convey. Consequently, it cannot be excluded that the relevant public may confuse the signs when having a global approach by perceiving them in their entirety without further dissection.

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). Consequently, in the present case the lower degree of similarity between the goods will be compensated by the greater similarity between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration.

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

The rest of the contested goods 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 goods 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Mads Bjørn Georg JENSEN

Manuela RUSEVA

Meglena BENOVA

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.