OPPOSITION No B 3 084 845

Kverneland Group Mechatronics B.V., Hoofdweg 1278, 2153 LR Nieuw-Vennep, Netherlands (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Famosa, Via della Lirica 61, 48124 Ravenna, Italy (applicant).

On 25/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 084 845 is upheld for all the contested services.

2. European Union trade mark application No 18 024 416 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services (Class 44) of European Union trade mark application No 18 024 416 for the figurative mark . The opposition is based on international trade mark registration No 1 082 525, designating European Union, for the word mark ‘IM FARMING’. 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.

a) The services

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

Class 44: Services in the field of agriculture, horticulture and forestry; information and consultancy relating to the aforesaid services.

The contested services are the following:

Class 44: Agriculture services; information services relating to farming; agricultural advice; agriculture, horticulture and forestry services.

The contested services are identical to the opponent’s services, either because they are identically contained in both lists (agriculture services; agriculture, horticulture and forestry services) or because the opponent’s services (information and consultancy relating to the aforesaid services i.e. services in the field of agriculture, horticulture and forestry) include the contested services (information services relating to farming; agricultural advice).

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 services found to be identical are directed at the public at large as well as professionals, particularly from the agriculture and horticulture sectors.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the services purchased.

c) The signs

IM FARMING
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the English‑speaking public will perceive the verbal element ‘Farming’ as ‘the business or activity of raising animals, growing crops, etc. on a farm’, see e.g. https://dictionary.cambridge.org/dictionary/english/farming. Consequently, this element will be regarded as describing one of the characteristics of the services at issue, and so has no distinctive character. As it may be more difficult to establish that the public may be confused about the origin due to similarities that pertain solely to non-distinctive elements, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public such as the Spanish- and French-speaking public, who will not understand the meaning of this verbal element.

Bearing in mind the foregoing the common verbal element ‘Farming’ has no meaning for the relevant public and is, therefore, distinctive.

Neither has the verbal element ‘IM’ of the earlier mark a meaning for the relevant public. It is, therefore, distinctive.

The use of the lower case letter ‘i’ in order to indicate that something is internet-related has become very common throughout the whole European Union. Therefore it is very likely that the relevant public, when being confronted with the contested mark, will perceive this element as indicating that the relevant services are somehow internet-related, e.g. that they are provided online. Moreover, the depiction of a dot with curved lines radiating from it (placed above the picture of a grape), which is a common symbol for Wi-Fi, reinforces the said perception of the letter ‘i’. This perception applies especially to the information services relating to farming and agricultural advice. As to the remaining services, although they cannot be provided/performed online, the information which may affect their providing/performing may be given online. Hence, this element has a non-distinctive character.

The same reasoning applies to the above described symbol of the Wi-Fi.

Considering the scope and characteristics of the contested services, the depictions of a part of an apple and a grape are considered weak at best, in addition of being of a decorative nature.

In any case, 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).

The contested sign has no element that could be considered clearly more dominant (visually more eye catching) than other elements.

As regards the earlier mark, it is noted that the protection offered by the registration of a word mark applies to the word as such. Therefore, it is irrelevant, if a mark is written in lower-case or in upper-case letters.

Visually and aurally, the signs coincide in the distinctive verbal element ‘Farming’ and differ in the remaining elements, namely the first two letters ‘IM;’ of the earlier mark, the letter ‘i’ of the contested sign as well as its figurative elements (from the visual point of view).

Bearing in mind the above consideration about the distinctiveness of the signs’ elements, the two signs are visually and aurally similar to at least an average degree.

Conceptually, neither of the signs has a meaning as a whole. Although the verbal element ‘i’, as well as the WI-FI symbol of the contested sign will evoke the concepts as mentioned above, this does not particularly influence the comparison of the signs, as these elements are non-distinctive and cannot indicate the commercial origin. Nevertheless, the depiction of a part of an apple and the grape, albeit weak, will be perceived with the corresponding meanings.

Hence, 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.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 services 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

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Moreover, 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 services at issue are identical and are directed at the public at large and professionals. The degree of attentiveness of the relevant public may vary from average to high while the degree of inherent distinctiveness of the earlier trade mark is normal.

The earlier trade mark and the contested sign are similar on the account of the common distinctive verbal element ‘Farming’. As already stated above, the remaining elements of the contested sign are either non-distinctive or at most weak and their contribution to the differentiation of that sign from the earlier mark is minimal (if at all). Although the differing letters ‘IM’ of the earlier mark are at the marks’ beginning, it must be noted that according to case-law, the fact that the public generally pays greater attention to the beginning of a mark than to the end does not apply in all cases and may not, in any circumstances, call into question the principle that the examination of the similarity of the marks must take account of the overall impression given by those marks, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see e.g. judgment of 10/12/2008, T‑228/06, Giorgio Beverly Hills, EU:T:2008:558, § 28 and the case-law cited).

Bearing in mind all the above, the differences between the signs are not sufficient to counteract the similarity between the two marks, and as such do not allow the consumers to distinguish between them safely.

Besides, it is noted that it is a common practice for manufacturers to make variations of their trade marks, for example by altering the typeface or colors, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, modernized image.

Accordingly, it is very likely in this case that the relevant consumer may perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (see by analogy 23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Consequently, the relevant public may attribute the same (or an economically linked) commercial origin to the services at issue.

Considering all the above, and also taking into account the interdependence principle, there is a likelihood of confusion on the part of the Spanish and French-speaking parts of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 082 525, designating European Union. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of this mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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, 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

Manuela RUSEVA

Renata COTTRELL

Valeria ANCHINI

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.