OPPOSITION No B 3 057 298

Aumale Synergies, Tour W – 102 Terrasse Boieldieu, 92800 Puteaux, France (opponent), represented by Cabinet Flechner, 22, avenue de Friedland, 75008 Paris, France (professional representative)

a g a i n s t

Fertinova, Intrarea Parfumului N 4.Sectorul 3, 030842 Bucharest, Romania (applicant).

On 21/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 057 298 is partially upheld, namely for all the contested goods with the exception of:

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

2. European Union trade mark application No 17 879 407 is rejected for all the contested goods, with the exception of the aforementioned, for which it may proceed to registration.

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, inter alia, French trade mark registration No 94 535 343 . The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

In principle, opposition has to be expressed in writing and must specify, in order to be admissible, the indications and elements laid down in Article 2(2)(a)(i) EUTMDR (inter alia, an indication of the goods or services on which each of the grounds of the opposition is based). Furthermore, the opponent can only complete or extend the notice of opposition on its own initiative during the three-month opposition period following the publication of the European Union trade mark application concerned.

As regards IR No 1 367 480 designating Spain and Portugal, on which the opposition was, inter alia, based, the Opposition Division notes that in its notice of opposition, dated 03/07/2018, the opponent indicated only goods in Class 1 as basis of the opposition. Subsequently, the extract submitted by the opponent in the substantiation period (i.e. 07/12/2018) revealed IR designated goods in both Classes 1 and 31. For the sake of completeness, the Opposition Division points out that even though the mark was registered for goods in Class 31, they cannot be taken into account for further examination; the opposition is not found admissible as it is based on these goods that were mentioned for the first time only after the expiry of the three-month opposition period.

Furthermore, after examination of the extract and the information contained, the Opposition Division notes that after a total provisional refusal the international registration above was entirely rejected for protection in the territory of Portugal, however, it was able to proceed to registration in the territory of Spain only for the goods in Class 31. As concluded above, these goods are outside of the scope of the present opposition and to that extent, the opposition would be without subject if it were to be based on the opponent’s international registration.

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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s French trade mark registration No 94 535 343.

a) The goods

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

Class 1: Chemicals for use in industry, science, photography, agriculture, horticulture and forestry; manures.

Class 31: Agricultural, horticultural and forestry products; grain (seeds), not included in other classes.

The contested goods are the following:

Class 1: Filtering materials [chemical, mineral, vegetable and other unprocessed materials]; growing media, fertilizers and chemicals for use in agriculture, horticulture and forestry; chemical substances, chemical materials and chemical preparations, and natural elements; fertilisers, and chemicals for use in agriculture, horticulture and forestry; foliar feeds; urea fertilizer; mineral fertilising preparations; marine fertilizer; peat [fertilizer]; compost; manganese fertilizer; organic digestate [fertilizer]; brewers’ grain [fertilizer]; bone meal [fertilizer]; leaf mold [fertilizer]; calcined potassium fertilizer; blood powder [fertilizer]; gypsum for use as a fertilizer; mulch for soil enrichment [fertiliser]; calcium silicate fertilizer; ammonium sulphate fertilizer; Thomas phosphatic fertilizer; double or triple superphosphate fertilizer; calcium superphosphate fertilizer; ammonium chloride fertilizer; ammonium nitrate fertilizer; manures for flowerpot plants; sodium nitrate fertilizer; mixtures of chemicals and microorganisms for fertilizing compost; amino acids for scientific purposes; polysaccharides for use in fermentation; polysaccharides for use in binding; seaweeds [fertilizers]; fertilizers for agriculture made of seaweed; seaweed based compost; seaweed extracts for use as a fertilizer; seaweed based soil conditioning products; seaweed based compost accelerators; seaweed extract for use as a growth stimulant on plants; lime for use in agriculture; agricultural acids; bacterial preparations for use in agriculture; granulated limestone for agricultural purposes; pulverized limestone for agricultural purposes; soil amendments for agricultural use; soil conditioners for agricultural purposes; liquid phosphate for foliar application to agricultural crops; mixtures of chemicals and natural materials for use as agricultural fertilizers; chemicals for use in coating agricultural seeds [other than fungicides, herbicides, insecticides, parasiticides].

Class 5: Agricultural biopesticides; insecticides for agricultural use; acaricides; miticides for agricultural use; miticides for domestic use; acaricides for industrial purposes; sporicides; fungicidal fungal agents; preparations for destroying dry rot fungus; algicides; aquatic algaecide; algicides for agricultural use; arachnicides; glue coated strips for use against vermin; biocides; natural biocides; synthetic biocides; domestic biopesticides; fungicides for killing vermin; insecticides; insecticides for domestic use; insect repellents; larvae exterminating preparations; larvicides; pesticides for horticultural use; pyrethrum powder; 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; preparations for controlling insects; lice treatment preparations [pediculicides]; insect repellents for use on humans; insect repellents for use on animals; vermin repelling preparations; aquatic weed killers; forestry (chemicals for -), [herbicides]; forestry (chemicals for -), [fungicides]; forestry (chemicals for -), [insecticides]; forestry (chemicals for -), [parasiticide]; worm repellents for use on turf or grass; insect repellent incense; tobacco extracts [insecticides]; anti-horse-fly oils; vine disease treating chemicals.

Class 31: Mycelium for agricultural purposes; 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.

Contested goods in Class 1

The contested filtering materials [chemical, mineral, vegetable and other unprocessed materials]; growing media, fertilizers and chemicals for use in agriculture, horticulture and forestry; chemical substances, chemical materials and chemical preparations, and natural elements; fertilisers, and chemicals for use in agriculture, horticulture and forestry; foliar feeds; urea fertilizer; mineral fertilising preparations; marine fertilizer; peat [fertilizer]; compost; manganese fertilizer; organic digestate [fertilizer]; brewers’ grain [fertilizer]; bone meal [fertilizer]; leaf mold [fertilizer]; calcined potassium fertilizer; blood powder [fertilizer]; gypsum for use as a fertilizer; mulch for soil enrichment [fertiliser]; calcium silicate fertilizer; ammonium sulphate fertilizer; Thomas phosphatic fertilizer; double or triple superphosphate fertilizer; calcium superphosphate fertilizer; ammonium chloride fertilizer; ammonium nitrate fertilizer; manures for flowerpot plants; sodium nitrate fertilizer; mixtures of chemicals and microorganisms for fertilizing compost; seaweeds [fertilizers]; fertilizers for agriculture made of seaweed; seaweed based compost; seaweed extracts for use as a fertilizer; seaweed based soil conditioning products; seaweed based compost accelerators; seaweed extract for use as a growth stimulant on plants; lime for use in agriculture; agricultural acids; bacterial preparations for use in agriculture; granulated limestone for agricultural purposes; pulverized limestone for agricultural purposes; soil amendments for agricultural use; soil conditioners for agricultural purposes; liquid phosphate for foliar application to agricultural crops; mixtures of chemicals and natural materials for use as agricultural fertilizers; chemicals for use in coating agricultural seeds [other than fungicides, herbicides, insecticides, parasiticides] are all various categories of fertilisers, namely chemical or natural substances added to soil or land to increase its fertility, organic matter such as manure and compost, as well as other chemicals used for the purpose of agriculture, horticulture and forestry. As such all these are included in at least one of the following broad categories of the opponent: chemicals for use in industry, science, photography, agriculture, horticulture and forestry; manures, or at least overlap with them. These goods are consequently identical.

The contested polysaccharides for use in fermentation; polysaccharides for use in binding are chemical and organic compositions for use in the manufacture of food and beverages. These goods, as well as the contested amino acids for scientific purposes are included in the broad categories of the opponent’s chemicals for use in industry and science. Therefore, they are identical.

Contested goods in Class 5

The contested agricultural biopesticides; insecticides for agricultural use; acaricides; miticides for agricultural use; sporicides; fungicidal fungal agents; preparations for destroying dry rot fungus; algicides; aquatic algaecide; algicides for agricultural use; arachnicides; biocides; natural biocides; synthetic biocides; fungicides for killing vermin; insecticides; larvae exterminating preparations; larvicides; pesticides for horticultural use; pyrethrum powder; preparations for controlling insects; lice treatment preparations [pediculicides]; aquatic weed killers; forestry (chemicals for -), [herbicides]; forestry (chemicals for -), [fungicides]; forestry (chemicals for -), [insecticides]; forestry (chemicals for -), [parasiticide]; worm repellents for use on turf or grass; vine disease treating chemicals are various preparations for pest control, such as fungicides, insecticides and herbicides that may have the same nature (of chemicals) and origin (chemical industry) as the opponent’s chemicals for use in agriculture, horticulture and forestry. Even though the opponent’s goods resemble raw chemicals, while the contested goods are finished products with clear designation and purpose, this cannot in itself prevent the finding of some similarity between the goods. On the contrary, due to their similar designation in the above sectors, these goods are likely to target the same relevant public, such as agricultural, horticultural and forestry experts with a certain knowledge and know-how of the respective chemical preparations and their use. Furthermore, these goods will be often available using the same distribution channels. They are hence, considered similar to a low degree to the opponent’s chemicals for use in agriculture, horticulture and forestry.

Likewise, the contested acaricides for industrial purposes are found similar to a low degree to the opponent’s chemicals for use in industry since they may coincide in their relevant public and distribution channels, as well as in their purpose.

However, the remaining 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 are essentially different from all the opponent’s goods. These are mostly pesticides used for domestic and sanitary purposes, as well as various repellents and antiparasitic preparations used, inter alia, on humans or animals. Unlike the goods under comparison above and especially given the broad spectrum of application, the remaining contested goods may be used in households (to disinfect, fight vermin or prevent unwanted insects, etc.), and will often be adapted and further processed according to the needs of their end users. Consequently, their distribution channels, as well as their relevant publics and usual manufacturers will differ from those of the opponent’s goods. Furthermore, these goods are not in competition. Therefore, they are considered dissimilar to any of the opponent’s goods.

Contested goods in Class 31

The contested mycelium for agricultural purposes is included in the broad category of the opponent’s agricultural, horticultural and forestry products. These goods are identical.

However, while the opponent’s goods in Class 31 are raw and unprocessed goods from the agricultural, horticultural and forestry sectors, concerned with the growing of plants or fruits for human or animal consumption or use, these goods do not include live animals. Consequently, the contested live arthropods for the control of pests are considered dissimilar to the opponent’s goods in Class 31, as these have different purposes and methods of use, as well as different relevant public, distribution channels and providers. In addition, these goods are considered very different from the opponent’s goods in Class 1.

b) Relevant public — degree of attention

In the present case, the goods found to be identical or similar to a low degree are directed at the public at large, as well as at persons 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 high, depending on the price, specialised nature, or terms and conditions of the goods purchased. In the present case, a high degree of attention would be justified by the fact that part of the goods must be used by professionals in order to be used properly, 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 France.

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 element ‘STIM’ has no meaning for the relevant public and is, therefore, distinctive. The rather standard stylisation that the earlier sign bears will have only a limited impact on the overall perception of the sign as it is of a merely decorative nature.

As regards the contested sign, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they 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). In the present case, as the opponent suggests, it cannot be excluded that a part of the public may perceive the ending ‘MAX’ of the contested sign as the commonly used abbreviation for ‘maximum’. Bearing in mind that this verbal element is of a laudatory nature (e.g. evocative of positive characteristics of the goods, such as their strength or effectiveness), it will be of a limited distinctiveness when perceived in relation to the relevant goods. To that extent, the remaining part of the sign ‘STIM’, which is meaningless and distinctive (see above), will have more attention paid to it.

For the remaining part of the consumers the contested sign as a whole will be a meaningless fanciful word of an average distinctiveness.

Visually and aurally, the signs coincide in the sequence of letters ‘STIM’, constituting the entire earlier mark and the initial part of the contested sign. However, they differ in the additional letter sequence ‘MAX’ in the contested sign, as well as in the slight stylisation of the earlier mark.

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. Therefore, given the fact that the earlier mark’s verbal element is entirely reproduced in the contested sign, the signs are similar at least to an average degree from a visual and aural point of view.

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 conveys any concept, 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 identical, partly similar to a low degree and partly dissimilar. The degree of attention of the relevant public will vary between average and high for the reasons mentioned in the previous section.

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 earlier mark as a whole enjoys a normal degree of distinctiveness.

In the present case, the earlier mark is entirely reproduced at the beginning of the contested sign so at least an average degree of similarity can be established on a visual and aural level. The differing verbal part ‘MAX’ of the contested sign remains secondary in the overall perception conveyed by the contested sign, as it is read and pronounced last, regardless of whether it is perceived as a meaningful and simple informative message by consumers (and of reduced impact for this reason) or it is not perceived separately within the sign.

Furthermore, 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.

Indeed, it is highly conceivable that some of the relevant consumer (dissecting the signs) may perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Since the signs differ only in the additional ending of the contested sign, and in a typeface that has low impact in the earlier mark, it is likely that consumers may perceive them as originating from the same undertaking (e.g. a sub-brand to indicate a new version of the goods).

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

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to a low degree to those of the earlier trade mark. Given the principle of interdependence, the lower degree of similarity between some of the goods is outweighed by the similarity between the signs.

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.

The opponent has also based its opposition on the Benelux trade mark registration No 978 683 for the word mark ‘STIM’, registered for goods in Class 1. Since this mark covers the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. 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

María del Carmen SUCH SÁNCHEZ

Manuela RUSEVA

María Clara IBÁÑEZ FIORILLO

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.