OPPOSITION Nо B 3 105 771

BASF SE., Carl-Bosch-Str. 38, 67056 Ludwigshafen am Rhein, Germany (opponent), represented by Ute Jäkel, Carl-Bosch-Str. 38, 67056 Ludwigshafen am Rhein, Germany (employee representative)

a g a i n s t

Italpollina S.P.A., Località Casalmenini 10, 37010 Rivoli Veronese (VR), Italy (applicant), represented by Ing. C. Corradini & C. S.R.L., Piazza Luigi Di Savoia, 24, 20124 Milano, Italy (professional representative).

On 23/11/2020, the Opposition Division takes the following

DECISION:

1.	Opposition No B 3 105 771 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 18 117 804 ‘CANOVA’ (word mark). The opposition is based on European Union trade mark registration No 15 023 104 ‘PAMOVA’ (word 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.

a) The goods

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

Class 1: Chemicals used in agriculture, horticulture and forestry, in particular preparations for fortifying plants, chemical and/or biological preparations for combating stress in plants, preparations for regulating plant growth, preparations for treating seeds, wetting preparations, natural or synthetic chemical substances for use as sexual attractants or for confusing insects.

Class 5: Preparations for destroying and controlling vermin, insecticides, fungicides, herbicides, pesticides.

The contested goods, further to a limitation by the applicant, are the following:

Class 1: Chemicals used in agriculture, horticulture and forestry; manures; manures; root-stimulating, growth-promoting and protective preparations for plants; biostimulators; root stimulants for plants; all the aforesaid goods do not contain biomolecule and are not involved in the field of biomolecular pharmaceuticals.

Class 5: Preparations for destroying vermin; fungicides; herbicides; herbicides for the treatment of seeds; antiparasitic preparations; all the aforesaid goods do not contain biomolecule and are not involved in the field of biomolecular pharmaceuticals.

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

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods 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).

Contested goods in Class 1

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

Contested goods in Class 5

The contested preparations for destroying vermin; fungicides; herbicides; herbicides for the treatment of seeds; antiparasitic preparations; all the aforesaid goods do not contain biomolecule and are not involved in the field of biomolecular pharmaceuticals are included in the broad category of the opponent’s preparations for destroying and controlling vermin, fungicides, herbicides. Therefore, they are identical.

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 at business with specific professional knowledge or expertise in the chemical/biological field (i.e. contested chemicals used in agriculture, horticulture and forestry; manures; manures; root-stimulating, growth-promoting and protective preparations for plants; biostimulators; root stimulants for plants; all the aforesaid goods do not contain biomolecule and are not involved in the field of biomolecular pharmaceuticals).

The degree of attention will be high in view of the specialised nature of the goods.

c) The distinctive of the earlier mark and the comparison of signs

PAMOVA	CANOVA
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 contested mark consists of the verbal element ‘CANOVA’ which, as applicant states, will be understood by the Italian-speaking part of the public as, inter alia, ‘a shop where wine is sold, sometimes also bread and other edibles’ (information extracted from Treccani Dictionary on 17/11/2020 at https://www.treccani.it/vocabolario/canova/; translation by the examiner). As it has no relation to the relevant goods, it is distinctive. For the rest of the relevant public, this verbal element is meaningless and therefore, also distinctive.

The earlier mark consists of the verbal element ‘PAMOVA’ which is meaningless for the relevant public. Taking into account that the earlier mark merely consists of one element, the Opposition Division finds it appropriate to examine its distinctive character within the comparison of signs, given that the distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion. It is relevant to note that the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation and, 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 has no meaning directly related to any of the goods in question from the perspective of the public under assessment and, therefore, the distinctiveness of the earlier mark must be seen as normal.

Visually and aurally, the signs coincide in the letters ‘*A*OVA’ and the sound thereof. They differ in the additional letters of the earlier mark ‘P’ and ‘M’ and the additional letters of the contested sign ‘C’ and ‘N’ placed in their first and third position, respectively, as well as in the sounds thereof.

It is important to point out that 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 or from top to bottom, which makes the part placed at the left or on top of the sign (the initial part) the one that first catches the attention of the reader. In the present case, the fact that the first and third letters of the signs, which fall rather at the beginning of the marks, are entirely different, is relevant for the comparison.

The letters that the signs have in common do not constitute independent elements in the signs and the differing letters will clearly be noticed by the relevant consumers. Although the signs have some sounds in common, the sounds produced by the letter ‘C’ and the letter ‘P’, placed at their beginning, are quite striking.

Therefore, the signs are visually and aurally similar to a low degree,

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the relevant public who will perceive the meaning of the contested mark, as the other sign has no meaning, the signs are not conceptually similar. For the rest of the relevant public, neither of the signs has a meaning and therefore, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

e) 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).

The goods were found to be identical. They target the public at large and a professional public whose degree of attention will be high. The earlier mark enjoys a normal degree of distinctiveness.

The signs are found visually and aurally similar to a low degree and conceptually not similar for part of the public, while a conceptual comparison is not possible for another part. In this regard, it is to be noted that the beginnings of the signs and their pronunciation are different. As mentioned above, consumers normally attach more importance to the beginning of the signs. Therefore, despite the fact that the ending part of the signs is identical, the difference in the beginning parts is striking and directly catches the consumer’s attention.

Therefore, the difference between the signs enable the relevant public to safely distinguish them, especially as the relevant public will display a high degree of attention upon purchase. As a consequence, a likelihood of confusion between the signs under comparison can safely be ruled out.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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, 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

Inés GARCIA LLEDO

Claudia SCHLIE

Helen Louise MOSBACK

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.