OPPOSITION No B 3 083 148

Multy Home LP, 100 Pippin Road, Concord, Ontario, L4K 4X9, Canada (opponent), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Tierra Verde s.r.o., Makovského náměstí 3147/2, 61600 Brno – Žabovřesky, Czech Republic (applicant), represented by Propatent Intellectual Property Law Firm, Pod Pekařkou 107/1, 147 00 Podolí, Praha 4, Czech Republic (professional representative).

On 06/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 083 148 is partially upheld, namely for the following contested goods and services:

Class 21: Containers; brushes; gardening gloves, garden syringes, spray nozzles for garden hoses, brushes for connection to garden hose.

Class 35: Retailing of containers, brushes, gardening gloves, garden sprinklers, garden hose sprayers, brushes for connection to garden hose, garden tools (hand-operated), gardening implements and implements for garden maintenance, wholesaling relating to containers, brushes, gardening gloves, garden sprinklers, garden hose sprayers, brushes for connection to garden hose, garden tools (hand-operated), gardening implements and implements for garden maintenance; operating an online shop specialised in containers, brushes, gardening gloves, garden sprinklers, garden hose sprayers, brushes for connection to garden hose, garden tools (hand-operated), gardening implements and implements for garden maintenance; the bringing together of containers, brushes, gardening gloves, garden sprinklers, garden hose sprayers, brushes for connection to garden hose, garden tools (hand-operated), gardening implements and implements for garden maintenance, for the benefit of others (excluding the transport thereof), enabling customers to conveniently view and purchase those goods.

2. European Union trade mark application No 17 972 408 is rejected for all the above goods and services. It may proceed for the remaining goods and 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 17 972 408 for the figurative mark . The opposition is based on European Union trade mark registration No 16 421 521 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK — SCOPE OF THE OPPOSITION

On 13/05/2019, the opponent filed a notice of opposition in which it indicated on the form that the opposition was directed against some of the goods and services of the contested sign, namely against all goods and services in Classes 21, 31 and 35. In the annex, however, which was filed together with the notice of opposition, the opponent states on pages 1 to 4 that the opposition is directed against [all] goods and services in Classes 3, 10, 16, 18, 21, 24, 31 and 35 of the contested sign. Nevertheless, at a later stage, on pages 16 to 19 of the very same annex, the opponent compares the goods of the earlier right only with the goods and services of classes 21, 31 and 35 of the contested sign.

In order to overcome the contradictory information contained in the notice of opposition and its annex, and in line with Article 2(2)(i) EUTMDR as well as the Guidelines of the Office (Part C, Opposition, Section 1, 2.4, page 638 and 2.4.3.1, page 653), the Opposition Division will assume that the opposition is directed against all the goods and services of the contested sign.

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 and services

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

Class 20: Garden planters of wood, rain barrels, non-metal water barrels.

Class 21: Window boxes.

The contested goods and services are the following:

Class 3: Cleaning preparations; cosmetics; preparations for personal hygiene; perfumery and fragrances; essential oils and aromatic extracts; perfumery; polishing, scouring and abrasive preparations; laundry preparations; laundry gels; washing powder; fabric enhancer; fabric softeners; substances for laundry use and for cleaning materials of textile; soaps; soap for laundry use; handwashing soaps; bleaching powders; stain removing preparations; dishwasher gels; regeneration salts for dishwashers, polishing preparations; cleaning stones; descalers; limescale-removing gels; bottle cleaners; all-purpose cleaners; toilet cleansers, biological drain cleaners; degreasing sprays; degreasers in concentrate form; septic tank activators; compost accelerators; essential oils; scented sachets; essential oils; dishwashing rinse aid; hair tonic; dentifrices.

Class 10: Menstrual cups.

Class 16: Paper; recycled paper; stationery and educational supplies; printed matter; stationery; bags and wrapping and packaging materials and storage materials of paper or cardboard; packaging; books; magazines, printed matter; newsletters, catalogues, guides (booklets); paper envelopes, document wallets and covers for exercise books, of recycled materials; compostable bags of paper for biodegradable waste.

Class 18: Canvas shopping bags; canvas pouches; bags of canvas for the production of vegetable milk; mesh bags; mesh bags for fruits and vegetables; baguette bags; net bags for shopping; sacks and bags of organic cotton; bags of recycled materials; umbrellas and parasols; luggage, bags, wallets and other carriers.

Class 21: Cosmetic and toilet utensils and bathroom articles; articles for the care of clothing and footwear; cleaning articles; tableware, cookware and containers; brushes and other cleaning utensils; material for brush-making; gardening gloves, garden syringes, spray nozzles for garden hoses, brushes for connection to garden hose; unworked or semi-worked glass; combs of wood; toothbrushes and accessories relating thereto; bamboo toothbrushes; toothbrush cases of bamboo; filling and bottling stands and accessories relating thereto; brushes and other cleaning utensils, namely coconut brushes for vegetables and tableware, coconut brushes with handles, for vegetables and tableware, coconut brushes with handles for glasses and bottles, brushes of wood for tableware, replacement heads for brushes of wood for tableware, brushes of wood for glasses, brushes of wood for vegetables, nail brushes of wood; toilet brushes of wood; hand agitator for washing tableware and laundry.

Class 24: Cloth, textiles and substitutes for textiles; textile goods, and substitutes for textile goods; linens; kitchen and table linens; cloths of terry cloth, kitchen cloths of canvas; washable kitchen cloths; washable coffee filters; bed linen; bed covers; children's bed linen of satin; luxury bed linen and luxury french bedlinen; fitted bed sheets; luxury fitted sheets; bath linen; hand towels and bath towels; terry towels, bath sheets; bags for menstrual cups; washable cotton wool pads; panty liners of textile; filtering materials of textile; filtering materials of textile; furnishing fabrics; bed linen; household linen and bedding of organic cotton.

Class 31: Fodder; litter and bedding materials for animals; agricultural and aquacultural crops, horticulture and forestry products from botanical genera other than impatiens; soap nuts.

Class 35: Commercial trading and consumer information services; retailing of cleaning preparations, cosmetics, perfumery, preparations for personal hygiene, laundry supplies, compost accelerators, fragrancing preparations, paper, stationery, teaching material, printed mater, office requisite, wrapping and packaging materials, packaging, storage materials, knapsacks, pouches, umbrellas, parasols, valises, exchanges, cosmetic and toilet utensils, and bathroom articles, articles for treating items of clothing and footwear, articles for cleaning purposes, crockery, kitchen utensils and containers, brushes and other articles for cleaning, gardening gloves, garden sprinklers, garden hose sprayers, brushes for connection to garden hose, brush-making materials, garden tools (hand-operated), gardening implements and implements for garden maintenance, unworked and semi-worked glass, menstrual cups, textile material, textiles and substitutes therefor, textile goods and component pieces for textile goods, bed linen and blankets, sheets, table linen, bedsheets, bags for menstrual cups, bedding, foodstuffs and fodder for animals, bedding and litter for animals, agricultural and aquacultural crops, horticultural and forestry products, of botanical genera other than impatiens and soap nuts, wholesaling relating to cleaning preparations, cosmetics, perfumery, preparations for personal hygiene, laundry supplies, compost accelerators, fragrancing preparations, paper, stationery, teaching material, printed mater, office requisite, wrapping and packaging materials, packaging, storage materials, knapsacks, pouches, umbrellas, parasols, valises, exchanges, cosmetic and toilet utensils, and bathroom articles, articles for treating items of clothing and footwear, articles for cleaning purposes, crockery, kitchen utensils and containers, brushes and other articles for cleaning, gardening gloves, garden sprinklers, garden hose sprayers, brushes for connection to garden hose, brush-making materials, garden tools (hand-operated), gardening implements and implements for garden maintenance, unworked and semi-worked glass, menstrual cups, textile material, textiles and substitutes therefor, textile goods and component pieces for textile goods, bed linen and blankets, sheets, table linen, bedsheets, bags for menstrual cups, bedding, foodstuffs and fodder for animals, bedding and litter for animals, agricultural and aquacultural crops, horticultural and forestry products, of botanical genera other than impatiens and soap nuts; operating an online shop specialised in cleaning preparations, cosmetics, perfumery, preparations for personal hygiene, laundry supplies, compost accelerators, fragrancing preparations, paper, stationery, teaching material, printed mater, office requisite, wrapping and packaging materials, packaging, storage materials, knapsacks, pouches, umbrellas, parasols, valises, exchanges, cosmetic and toilet utensils, and bathroom articles, articles for treating items of clothing and footwear, articles for cleaning purposes, crockery, kitchen utensils and containers, brushes and other articles for cleaning, gardening gloves, garden sprinklers, garden hose sprayers, brushes for connection to garden hose, brush-making materials, garden tools (hand-operated), gardening implements and implements for garden maintenance, unworked and semi-worked glass, menstrual cups, textile material, textiles and substitutes therefor, textile goods and component pieces for textile goods, bed linen and blankets, sheets, table linen, bedsheets, bags for menstrual cups, bedding, foodstuffs and fodder for animals, bedding and litter for animals, agricultural and aquacultural crops, horticultural and forestry products, of botanical genera other than impatiens and soap nuts; publicity; business mediation; business administration services for processing sales made on the internet; the bringing together of cleaning preparations, cosmetics, perfumery, preparations for personal hygiene, laundry supplies, compost accelerators, fragrant preparations, paper, stationery, teaching material, printed forms, office requisites, wrapping and packaging materials, packaging, storage materials, bags, pouches, of umbrellas, parasols, luggage, exchanges, cosmetics and toiletries and bathroom accessories, articles for treating items of clothing and footwear, articles for cleaning purposes, crockery, kitchen utensils and containers, brushes and other articles for cleaning, gardening gloves, garden sprinklers, garden hose sprayers, brushes for connection to garden hose, brush-making materials, garden tools (hand-operated), gardening implements and implements for garden maintenance, unworked and semi-worked glass, menstrual cups, textile material, textiles and substitutes for textiles, textile goods and component pieces for textile goods, bed linen, sheets, table linen, sheets (textile), bags for menstrual cups, bedding, foodstuffs and fodder for animals, bedding and litter for animals, agricultural and aquacultural crops, horticultural and forestry products, of botanical genera other than impatiens and soap nuts for the benefit of others (excluding the transport thereof), enabling customers to conveniently view and purchase those goods.

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

The term ‘namely’ used in the applicant’s list of goods and services 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 and services specifically listed.

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 Classes 3, 10, 16, 18, 24

The contested goods in Classes 3, 10, 16, 18 and 24, which essentially encompass various toiletries; cleaning and fragrancing preparations; menstrual cups; stationery and educational supplies, printed matter, paper and cardboard; luggage, bags, wallets and other carriers, umbrellas and parasols, as well as all sorts of textile goods or substitutes for textiles, do not share any relevant points of contact with the opponent’s goods in Classes 20 and 21, namely garden planters of wood, rain barrels, non-metal water barrels and window boxes. The goods of the earlier mark are essentially gardening articles intended for either growing plants (planters and window boxes) or for collecting (rain) water, which have different natures, purposes and methods of use compared to the contested goods. Additionally, they do not compete nor complement each other and are typically having different channels of distribution, producers/providers, and end users. Therefore, and in the absence of any arguments to prove similarity by the opponent, they are considered to be dissimilar.

Contested goods in Class 21

The contested containers include, as a broader category the opponent’s window boxes, which are essentially containers for holding soil for growing plants at a windowsill. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested gardening gloves, garden syringes, spray nozzles for garden hoses, brushes for connection to garden hose are similar to the opponents window boxes. Although these goods may serve a different purpose, as claimed by the applicant, they are all basic articles used for gardening. These goods usually coincide in their relevant public (gardeners), commercial points of sales (gardening centres and/or home improvement markets) and in producers (for example manufacturers of garden articles).

The contested brushes may include as a broader category brushes for connection with hoses and other brushes for gardening purposes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered to be at least similar to the opponent’s window boxes. As mentioned above, window boxes are basic gardening items just like brushes (for example brushes to be connected with a hose). As such these goods can coincide in their relevant public, commercial points of sales and producers.

The remaining contested goods of Class 21, which are various types of cosmetic and toilet utensils, household utensils for cleaning, brush making materials, tableware, cookware, unworked or semi-worked glass are dissimilar to the opponent’s goods in Classes 20 and 21. The goods in question are of different nature, purpose and methods of use, are neither complementary nor in competition and have different distribution channels, producers and consumers.

Contested goods in Class 31

While it may well be that the contested agricultural and aquacultural crops, horticulture and forestry products from botanical genera other than Impatiens; soap nuts could be planted and grown in the opponent’s garden planters of wood or window boxes, there is no complementary relationship between them as they are not essential for one another. In addition, the goods in question serve completely different purposes, the method of use differs, they are not in competition to each other and the relevant public will not think that they might originate from the same producer. Therefore, they are considered to be dissimilar.

The remaining contested goods of class 31, fodder; litter and bedding materials for animals are also dissimilar to all of the opponent’s goods as they do not have any points of contact. These goods are of clearly different nature, purpose, method of use, distribution channels, commercial origin and are neither complementary nor in competition to each other.

Contested services in Class 35

As regards to the contested services in Class 35 it has to be noted that retail services in general are not similar to any goods that are capable of being sold by retail. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition with, nor necessarily complementary to, each other.

According to the case law and current Office practice, however, retail services concerning the sale of specific goods are similar to an average degree to these specific goods (20/03/2018, T-390/16, DONTORO dog friendship (fig.)/TORO et al., EU:T:2018:156, § 33; 07/10/2015, T-365/14, TRECOLORE / FRECCE TRICOLORI et al., EU:T:2015:763, § 34; Guidelines of the Office, Part C, Opposition, Section 2, 5.7, page 804 ff.). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

The goods covered by the retail services and the specific goods covered by the other

mark have to be identical in order to find an average degree of similarity between the

retail services of those goods and the goods themselves, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

There is a low degree of similarity between the retail services concerning specific goods and other specific similar or highly similar goods, because of the close connection between them on the market from the perspective of the consumer. Consumers are accustomed to the practice that a variety of similar or highly similar goods are brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumer.

A low degree of similarity between the goods sold at retail and the goods themselves may also be sufficient to lead to a finding of a low degree of similarity with the retail services provided that the goods involved are commonly offered for sale in the same specialised shops or in the same sections of department stores or supermarkets, belong to the same market sector and, therefore, are of interest to the same consumer. Such goods and services are dissimilar, when the goods at issue are not offered in the

same places, do not belong to the same market sector and target a different consumer.

The principles set out above in relation to retail services apply to the various services rendered that revolve exclusively around the actual sale of goods, such as retail store services, wholesale services, internet shopping, catalogue or mail order services, etc. (to the extent that these fall into Class 35).

It follows from the above that the contested retailing of containers; wholesaling relating to containers; operating an online shop specialised in containers; the bringing together of containers for the benefit of others (excluding the transport thereof), enabling customers to conveniently view and purchase those goods are similar to the opponent’s window boxes in Class 21 since the goods at issue have been found to be identical (see above).

The contested retailing of brushes, gardening gloves, garden sprinklers, garden hose sprayers, brushes for connection to garden hose, wholesaling relating to brushes, gardening gloves, garden sprinklers, garden hose sprayers, brushes for connection to garden hose; operating an online shop specialised in brushes, gardening gloves, garden sprinklers, garden hose sprayers, brushes for connection to garden hose; the bringing together of brushes, gardening gloves, garden sprinklers, garden hose sprayers, brushes for connection to garden hose for the benefit of others (excluding the transport thereof), enabling customers to conveniently view and purchase those goods are similar to a low degree to the opponent’s window boxes in Class 21. This is because the goods at issue have been found to be similar (see above).

The same arguments apply as regards to the contested retailing of garden tools (hand-operated), gardening implements and implements for garden maintenance; wholesaling relating to garden tools (hand-operated), gardening implements and implements for garden maintenance; operating an online shop specialised in garden tools (hand-operated), gardening implements and implements for garden maintenance; the bringing together of garden tools (hand-operated), gardening implements and implements for garden maintenance for the benefit of others (excluding the transport thereof), enabling customers to conveniently view and purchase those goods. The contested services are essentially referring to garden tools and implements, which are gardening articles just like the opponent’s window boxes. These articles may very well coincide in their relevant public (gardeners), commercial points of sales (gardening centres and/or home improvement markets) and might originate from the same producers (manufacturers of garden articles). Therefore, the above mentioned services are considered similar to a low degree to the opponent’s window boxes in Class 21.

The remaining services relating to retailing, wholesaling, operating an online shop, the bringing together of [..] for the benefit of others (excluding the transport thereof), enabling customers to conveniently view and purchase those goods, of the contested Class 35 do not involve any goods that are, or can be considered, identical or similar to the opponent’s goods in Classes 20 and 21, and are therefore dissimilar.

The contested commercial trading and consumer information services are not referring to any particular goods and are therefore considered to be dissimilar to the opponent’s goods in Classes 20 and 21. As mentioned above, services and goods are in general different in nature, serve different needs, have different methods of use and are neither in competition nor necessarily complementary to each other.

2. 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 varying degrees are directed at the public at large. The degree of attention is considered to be average.

3. The signs

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark contains the word ‘tierraverde’ which, although written as one word, will be perceived as containing two components given the use of different colours for ‘tierra’ and ‘verde’, i.e. black and white, respectively, whereas the contested sign contains the clearly legible expression ‘tierra verde’.

The components/words ‘tierra verde’ are, as correctly stated by the applicant, meaningful in certain territories of the European Union, for example in Spain and Portugal. To the extent that the applicant claims that these components/words are highly suggestive and therefore weak in relation to the goods of the opponent’s mark, it has to be recalled that these terms are not meaningful in many other territories of the European Union where neither Spanish nor Portuguese are understood, for instance in Germany, the Czech Republic, Finland, Denmark and Greece. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the above mentioned part of the public, where the components/words ‘tierra verde’ have no meaning and are, therefore, distinctive to a normal degree.

The applicant claims that the signs in dispute are clearly dissimilar and refers to the decision of the Boards of Appeal of 21 March 2016 – R431/2015-5 - vitaminas (fig.) / vitaminas (fig.). In this regard it has to be recalled that the Boards of Appeal found the signs in dispute to be visually and conceptually different, because the verbal element ‘vitaminas’ was found to be non-distinctive for the goods and services at issue (see point 34 of the decision). This, however, does not apply in the present case in which the verbal components/words ‘tierra verde’ have been found to be distinctive (see above). For similar reasons the previous opposition decision B 2 274 457, as referred to by the applicant, does not apply. In this decision, unlike in the present case, the verbal elements of the signs have been found to be weak.

The earlier mark is a figurative mark. Its verbal element ‘tierraverde’ is depicted in a fairly standard typeface, ‘tierra’ being written in white and ‘verde’ in black lower case letters. The whole is placed against a rectangular, olive green coloured background which the Opposition Division considers to be of purely decorative nature and has, as such, little impact on consumers’ perception of the mark overall.

As regards to the contested sign, which is a figurative mark, too, its verbal element ‘TIERRA VERDE’ is depicted in stylized, capital letters. Furthermore, the sign consists of the graphical representation of a tree as well as a bird in flight. The sign is framed in a circle and all elements, including the letters, are depicted in a turquoise color. Even though the figurative elements of the contested sign have a rather fanciful character and no direct relation to the goods and services in question, it must be recalled 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, the figurative elements of the contested sign as well as its stylisation and colour, will have little impact on consumers’ overall perception of the sign.

Visually, the signs coincide in the letters ‘tierra( )verde’ with the difference that they form a single word in the earlier mark and are spread over two words in the contested sign. They differ further in the remaining elements described above. Taking into account the degree of distinctiveness of the different elements composing the signs as well as their impact on consumers, as detailed above, the signs are similar to an average degree, at least.

Aurally, irrespective of the different pronunciation rules in the different languages of the public under analysis, the pronunciation of the signs coincides in the sound of the letters ‘T-I-E-R-R-A-(*)-V-E-R-D-E’. Therefore, they are phonetically identical.

Conceptually, although the public in the relevant territory will perceive the meanings of the figurative elements of the contested sign (tree and a bird in flight) 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.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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).

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.

In the present case, the goods and services have been found to be partly identical, partly similar to varying degrees and partly dissimilar and they are directed at the public at large who will pay an average degree of attention. The degree of inherent distinctiveness of the earlier trade mark is normal. Moreover, the signs have been found to be visually similar to an average degree, phonetically identical and not conceptually similar.

The similarities between the signs lay in the shared and distinctive verbal elements ‘tierraverde’/‘tierra verde’. On the other hand, the dissimilarities are in the graphical elements of the signs, which have been found to be of less importance due to the fact that figurative elements are generally perceived to be of lower impact compared to verbal elements. As regards to the differences, account has to be 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). Taking into account all the circumstances of the case, the Opposition Division concludes that the differences between the signs are clearly outweighed by their visual similarities and the phonetic identity between them.

Considering all the above, there is a likelihood of confusion at least on the German-, Czech-, Finnish-, Danish- and Greek- speaking parts of the public for the goods and services which have been found to be identical, similar or similar to a low degree and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 16 421 521. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

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

The rest of the contested goods and 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 goods and 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

Martina GALLE

Holger Peter KUNZ

Christian STEUDTNER

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.