OPPOSITION No B 3 073 589

Wolf-Peter Korth, Rathausstr. 8, 41372 Niederkrüchten, Germany (opponent), represented by Verspohl Goj Dahm Arcari Rechtsanwälte PartG mbB, Düsseldorfer Str. 50, 47051 Duisburg, Germany (professional representative)

a g a i n s t

Nauticrab, s.l., Carrer Galileu, 224 Local 6, 08028 Barcelona, Spain (applicant)

On 21/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 073 589 is upheld for all the contested goods.

2. European Union trade mark application No 17 972 908 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 972 908 (figurative mark). The opposition is based on European Union trade mark registration No 17 881 315 (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.

1. The goods and services

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

Class 1: Oil binding agents; Chemicals and organic substances for use in photography, as well as in agriculture, horticulture and forestry, in particular oil-separating chemicals, oil-absorbing agents, oil-binding agents; Aerated concrete granules for use as binders for oil; Oil (Synthetic materials for absorbing -); Oil-separating chemicals; Oil dispersants; Oil-dispersing substances; Organic substances and agents for protecting the environment and for decontamination purposes; Chemicals for the control of environmental pollution; Fibres of organic material for separation purposes; None of the aforesaid goods relating to chemicals, additives and stabilisers for protecting plastics.

Class 17: Mica; Packing, stopping and insulating materials; Flexible pipes, not of metal; Barrier curtains and barrier hoses in the form of floating protective booms or oil booms for containing pollutants; Barriers (Floating anti-pollution -); Compositions for repairing leaks; Caulking materials for stopping leaks; Oil-absorbing cushions; Waterabsorbing cushions.

Class 21: Containers for storing oil binding agents; Brooms for cleaning areas treated with oil binding agents; Dustpans for cleaning areas treated with oil-binding agent.

Class 35: Wholesaling and retailing, including via the internet, in relation to chemicals and organic substances for use in photography, as well as in agriculture, horticulture and forestry, in particular oil-separating chemicals, oilabsorbing agents, oil-binding agents; Wholesaling and retailing, including via the Internet, of oil binding agents; Wholesaling and retailing, including via the internet, in relation to water-binding agents; Presentation of goods on communications media for wholesale and retail purposes; Advertising, marketing and promotional services; Business consultancy and advisory services; Business management; company organisation consulting; None of the aforesaid services relating to chemicals, additives and stabilisers for protecting plastics.

The contested goods are the following:

Class 1: Absorption agents.

Class 31: Agricultural and aquacultural crops, horticulture and forestry products.

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 terms ‘in particular’ and ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 absorption agents overlap with the opponent’s chemicals and organic substances for use in photography, as well as in agriculture, horticulture and forestry, in particular oil-absorbing agents; none of the aforesaid goods relating to chemicals, additives and stabilisers for protecting plastics. 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 goods in Class 31

The contested agricultural and aquacultural crops, horticulture and forestry products are similar to a low degree to the opponent’s chemicals and organic substances for use in photography, as well as in agriculture, horticulture and forestry, in particular oil-separating chemicals, oil-absorbing agents, oil-binding agents; none of the aforesaid goods relating to chemicals, additives and stabilisers for protecting plastics, in Class 1, which includes chemical substances and organic substances such as fertilizers and soil improvers for plants nutrition and growth. Although the conflicting goods differ in their nature (natural vs. chemical), they are complementary in the sense that one is indispensable or important for the use of the other so that consumers may think that the same company is responsible for producing those goods. Chemical and organic substances for agriculture, horticulture and forestry are destined to contribute to the growth, health and strength of offspring, grains, seeds, natural plants and flowers; they improve the fertility of the soil or the water in which offspring, grains, seeds and natural plants and flowers are cultivated. Consequently, they are an essential and significant good for the contested agricultural and aquacultural crops, horticulture and forestry products. Moreover, the conflicting goods may share the same distribution channels and points of sale as the contested goods in Class 31 are all products that may be used by professional and non-professional agriculturists, horticulturists and foresters alongside the earlier plant growth regulators, fertilizers, manures and agricultural chemicals; they can be sold in the same specialized stores (see decision of 6/08/2012, R 1972/2011-4, WOLF / wolf trax, § 5; of 05/02/2010, R 287/2009-1, Aquadrop / aquatop; and of 4 March 2008, R 1338/2007-1, UNIPOND / ÚNIPOX).

2. 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).

Both signs are figurative marks consisting of the same verbal element, ‘SORB’, stylised the same way with the ‘O’ replaced with, or highly stylised as, a beige drop-shape with a yellow drop inside. They are in the same colour scheme, namely black, white, beige and yellow. The marks only differ in the colour of the letters ‘S’, ‘R’ and ‘B’, in the additional, smaller white letters ‘XT’ (meaningless for the relevant public, therefore distinctive) and in the black rectangular background of the contested sign, which is in any way non-distinctive as purely decorative.

‘SORB’ has a meaning in for example Romanian, where it means, inter alia, ‘I drink, I sip’ in present tense first person or ‘whirlpool’ (information extracted from Glosbe dictionary on 21/11/2019 at https://en.glosbe.com/ro/en/sorb). For another part of the public, it has no meaning.

Assessing the distinctiveness of the coinciding verbal elements is unnecessary, as these are identical and the fact that the coinciding verbal elements can have a low degree of distinction is irrelevant since it cannot affect the likelihood of confusion, given that the low degree of distinctiveness applies to both marks. In both marks, the verbal element ‘SORB’ is the dominant element.

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.

Visually and aurally, the signs coincide in the (sound of the) dominant verbal element ‘SORB’. However, they differ in the colours of the letters, a black rectangular background of the contested sign and in the (sound of the) additional letters ‘XT’, which are distinctive but secondary in the contested sign.

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; 19/12/2011, R 233/2011-4, BEST TONE (FIG MARK) / BETSTONE, § 24; And 13/12/2011, R 53/2011-5, JUMBO (FIG. MARK) / DEVICE OF AN ELEPHANT (FIG. MARK), § 59).

Therefore, the signs are visually and aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Part of the public may associate the word ‘SORB’ with a meaning as described above, and in that case they are conceptually identical.

For another part of the public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.

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

3. 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).

As seen above in the comparison of signs, they are visually similar to a high degree and the aural and conceptual identity - albeit the latter for only a part of the public – imply that the relevant consumer will perceive the signs as different versions of the same mark. Due to the quasi-identity feature of the marks, consumers will believe that the goods found identical and similar to a low degree under the signs in dispute originate from the same or economically linked undertakings.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

This conclusion would hold true regardless of the distinctiveness of the earlier mark as a whole and the degree of attention or sophistication of the relevant public.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar, even to only a low degree, to those of the earlier trade mark. The high similarity of the marks outweighs the low similarity between these goods.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 881 315. It follows that the contested trade mark must be rejected for all the contested 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.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Benoit VLEMINCQ

Lena FRANKENBERG GLANTZ

Anna BAKALARZ

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.