OPPOSITION No B 3 063 001

BASF Agro B.V., Arnhem (NL), Zweigniederlassung Zürich, Tiergarten 7, 8055 Zürich, Switzerland (opponent), represented by Noerr Alicante IP, S.L., Avenida México 20, 03008 Alicante, Spain (professional representative)

a g a i n s t

Comercial Quimica Masso S.A., C/ Viladomat 321 5º, 08029 Barcelona, Spain (applicant), represented by Aguilar i Revenga, Consell de Cent 415 5° 1ª, 08009 Barcelona, Spain (professional representative).

On 19/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 063 001 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 17 888 216 (word mark ENERGY), namely initially against all the goods in Classes 1 and 5. During the proceedings the applicant restricted the list of goods and services. The opposition is based on, inter alia, Greek trade mark registration No F 153 557 (word mark ENERGIZER). The opponent invoked Article 8(1)(b).

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(s) 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.

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 Greek trade mark registration No F 153 557 (word mark ENERGIZER).

a) The goods

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

Class 5: Means for the extermination and pest vermin, fungicides, herbicides, pesticides.

The contested goods, after several limitations of the applicant, are the following:

Class 5: Preparations for preventing or treating plant diseases, namely fungicides.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

Fungicides are identically contained in both lists of goods.

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 found to be identical are directed at the public at large and also at a specialised public, such as agronomists and farmers, with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high because the goods at issue contain chemical products of particular properties, may be venomous and are not purchased on the daily basis.

c) The signs

ENERGIZER	ENERGY
Earlier trade mark	Contested sign

The relevant territory is Greece.

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 word ‘energy’, which represents the contested mark, is a basic English word and as such it is most likely that its meaning will be understood by the majority of the relevant public (16/12/2015, T-356/14, Kerashot, EU:T:2015:978, § 54, making reference to 10/10/2012, T-569/10, Bimbo Doughnuts, EU:T:2012:535, § 65 and 03/09/2009, C-394/08 P, Zipcar, EU:C:2009:334, § 51).

This is more so the case as regards the relevant Greek-speaking public, since the English word (being the earlier mark) itself originated from the Greek language (ἐνέργεια/ energeia). Therefore, the relevant public will at least associate the contested mark with said Greek word which apart from ‘energy’ in the physical sense means also ‘action’. Consequently, the contested mark alludes to the efficacious results of the goods concerned and is, therefore, of weak distinctive character.

The earlier mark will also allude to this concept, since, though the word energizer as such has no meaning in Greek, the consumers will still identify the original word ἐνέργεια in the earlier mark. As a whole though, the earlier mark is not lacking distinctive character.

Visually, the signs coincide in the first five letters ‘ENERG’ and differ in the rest (*IZER/Y). They also differ considerably in their length, the earlier sign consists of nine letters while the contested mark consists of only six letters.

Therefore, the signs are similar to an average degree.

Aurally, since I and Y are pronounced identically in Greek, the pronunciation of the signs coincides in the sound of the letter syllables ‛energi/y*’, present identically in both signs. However the pronunciation differs in the fact that the earlier mark contains a further syllable (Zer).

Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning as they both allude to the Greek word ἐνέργεια, being weak in relation to the relevant goods, the signs are conceptually similar to an average degree.

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 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.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods were found to be identical. The level of attention of the relevant public varies from average to high. The distinctiveness of the earlier mark is average. The signs have been found aurally and visually similar to an average degree. They are also conceptually similar to an average degree, however it has to be borne in mind that this similarity results from a concept with a very low distinctive character.

Although the signs coincide in the string of letters ‘ENERG’, the signs’ endings ‘IZER’ / ‘Y’, are completely different from a visual and partly also from an aural perspective. Taking into account the average to high degree of attention, the differences between the signs are clearly perceptible and would not be overlooked.

Contrary to the opponent’s arguments, the fact that consumers will generally remember the beginning of a mark rather than the end cannot hold in all cases and does not cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression produced by those marks, since the average consumer normally perceives a trade mark as a whole and does not analyse its different aspects (12/06/2018, T‑136/17, cotecnica MAXIMA (fig.) / MAXIM Alimento Superpremium (fig.), EU:T:2018:339, § 60). Consequently, it is the overall impression produced by the marks that should be taken into consideration and not any individual parts in isolation.

The differences between the signs have a sufficiently significant impact on the overall impressions of the signs to outweigh the commonality arising from the term/letters ‘ENERG’. Therefore, based on the overall assessment of the signs, the Opposition Division considers that the visually and aurally differing elements of both signs, conveyed by the differing endings and the weakness of the common concept ‘ενέργεια’ (action) enable consumers, irrespective of their degree of attention (average to high), to differentiate the signs and to safely exclude a likelihood that they may associate the goods at issue with the same or economically linked undertakings, even in relation to the goods found to be identical. The length of the signs is also quite different which further differentiates the signs.

In spite of the visual coincidence in the string of letters ‚ENERG’, there is no likelihood of confusion because the concept to which this verbal element alludes (action), is weak for the relevant goods.

The opponent refers to previous decisions of the Office to support its arguments. 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 opponent are not relevant to the present proceedings.

The opponent referred, inter alia, to the following decision of the Office (B 1 980 674 of 19/09/2013) which upheld an opposition comparing the signs ‘ENERGETIX’ and ‘(+) ENERGY’; the opponent however failed to mention that this decision was annulled by the Boards of Appeal on 30/06/2014 (R 2256/2013-2). Others decisions which were mentioned by the opponent are also not applicable as the signs were obviously much closer (ENERGY/ ) or related to goods where the verbal element ‘energy’ has a normal degree of distinctive character (ENERGIE/ ) as Energy or Energie (energy in German or French) are fully distinctive for goods in Class 25.

Considering all the above, 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.

The opponent has also based its opposition on the following earlier trade mark:

 Greek trade mark registration No F75423 for the word mark ENERGIZER

Since this mark is identical to the one that has been compared, the outcome cannot be different. Therefore, no likelihood of confusion exists with respect to this sign neither.

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

Konstantinos MITROU

Lars HELBERT

Tobias KLEE

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.