OPPOSITION Nо B 3 119 376

Ascenza Agro, S.A., Av. Rio Tejo, Herdade das Praias, 2910‑440 Setúbal, Portugal (opponent), represented by Natacha Alves Batista, Av. Rio Tejo, Herdade das Praias, 2910‑440 Setúbal, Portugal (professional representative)

a g a i n s t

Gaiago, Société par actions simplifiée, ZA de la Sortoire, 35560 Saint-Rémy-du-Plain, France (applicant), represented by Fidal, 2 rue de la Mabilais CS 24227, 35042 Rennes, France (professional representative).

On 25/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 119 376 is upheld for all the contested goods.

2. European Union trade mark application No 18 088 519 is rejected in its entirety.

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

REASONS

On 12/05/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 088 519 (figurative mark). The opposition is based on Portuguese trade mark registration No 541 831 ‘STIMULUS’ (word mark). The opponent invoked Article 8(1)(a) and (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 goods

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

Class 1: Chemicals used in agriculture, horticulture and forestry; fertilizers.

The contested goods are the following:

Class 5: Fungicides; weedicides; bactericides.

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.

The contested fungicides; weedicides; bactericides are similar to a low degree to the opponent’s chemicals used in agriculture of Class 1. Fungicides and weedicides are chemical substances, or agents, that destroy, or are capable of destroying fungi and weeds respectively. Bactericides are chemical substances commonly used to control, for example, bacterial plant diseases by specifically inhibiting or killing the bacteria causing them. Consequently, the contested goods are chemicals with a specific use (e.g. in the agricultural industry). Therefore, when compared to the abovementioned opponent’s goods, even if the purpose is not the same, as pointed out by the opponent, they are of the same nature. Furthermore, these goods commonly originate from the same producers, satisfy the needs of the same public and coincide in the distribution channels.

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 similar to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise.

Given that the relevant goods are chemicals and may have an impact on one’s health as well as the environment, it is expected that the degree of attention of the relevant public when purchasing these goods will be higher than average.

c) The signs and the distinctiveness of the earlier mark

STIMULUS
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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).

In addition, the distinctiveness of the earlier mark, which in the present case is comprised of a single word, is one of the factors to be taken into account in the global assessment of likelihood of confusion. Since the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation, the present assessment will rest on the earlier mark’s inherent distinctiveness.

Both signs are the word ‘STIMULUS’. The only difference between them is that the earlier mark is protected as a word mark, whilst the contested sign is slightly stylised. However, the stylisation of the contested sign is not of such a nature as to make the word illegible or to draw attention away from it (22/04/2009, R 252/2008‑1, THOMSON / THOMSON (fig. mark), § 35). Consequently, the stylisation of the verbal element is, as pointed out by the opponent, of a purely decorative nature.

The word ‘STIMULUS’ is meaningless in the language of the relevant territory. However, as pointed out by the opponent, it resembles the equivalent in Portuguese ‘estímulo’, which, as a noun, refers to something that stimulates or acts as an incentive. Therefore, the word ‘STIMULUS’ could convey the message that the goods offered under the signs stimulate plant growth by preventing conditions that could inhibit it. However, since this association is rather vague and the concept carried by the word is several mental steps removed from the goods, it is considered that the allusiveness does not materially affect its distinctive character. It follows that the distinctiveness of the earlier mark must be seen as normal for the relevant goods.

Contrary to the opponent’s argument, neither of the signs has a dominant element, as they are both composed of a single word, albeit slightly stylised in the contested sign.

Visually, the signs only differ in the contested sign’s stylisation and colour combination, which, as outlined above, is of a purely decorative nature. Therefore, the signs are visually highly similar.

Aurally, the signs are identical.

Conceptually, as the signs evoke the same concept, they are identical.

d) Global assessment, other arguments and conclusion

The contested goods are similar to a low degree to the opponent’s goods and they target the public at large, as well as business customers, whose degree of attentiveness is higher than average. The earlier mark has a normal degree of inherent distinctiveness in relation to the goods at issue.

Account should 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). 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).

The signs are aurally and conceptually identical and visually highly similar. Although the contested sign differs in its slight stylisation and colour combination, these are purely decorative. Therefore, the Opposition Division considers that these minor differences are clearly insufficient to safely distinguish the marks given the coincidence in the element ‘STIMULUS’, which constitutes their sole element, including where the relevant public’s degree of attention in relation to the purchases in question is high.

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). In the present case, the aural and conceptual identity and high visual similarity between the signs clearly offset the low degree of similarity between the goods.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Portuguese trade mark registration No 541 831. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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

Solveiga BIEZA

Agnieszka PRZYGODA

Sylvie ALBRECHT

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.