OPPOSITION Nо B 3 117 056

 

Syngenta Participations AG, Rosentalstrasse 67, 4058 Basel, Switzerland (opponent), represented by Milojevic, Sekulic & Associates, S.L., C/ Valle De Laciana 65, 28034 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Ascenza Agro, S.A., Av. Rio Tejo, Herdade Das Praias, 2910-440 Setúbal, Portugal (applicant).

On 26/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 117 056 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 165 123 is rejected in its entirety.

 

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

 

REASONS

 

On 27/04/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 165 123 ZOLTEGRO (word mark). The opposition is based on the international trade mark registration designating the European Union No 1 319 900, ZOLTUR (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, inter alia, the following:

 

Class 1: Chemical products for agriculture, horticulture and forestry; seed treatment preparations; soil fertilizers.

Class 5: Fungicides, herbicides, insecticides.

The contested goods are the following:

Class 1: Growing media, fertilizers and chemicals for use in agriculture, horticulture and forestry; fertilisers, and chemicals for use in agriculture, horticulture and forestry.

Class 5: Pest control preparations and articles; fungicides for agricultural use; herbicides; insecticides; agricultural pesticides.

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 growing media, fertilizers and chemicals for use in agriculture, horticulture and forestry; fertilisers, and chemicals for use in agriculture, horticulture and forestry (repeated twice) are identical to the opponent’s soil fertilizers because the opponent’s goods  are included in, or overlap with, the contested goods.

Contested goods in Class 5

Herbicides; insecticides are identically contained in both list of goods.

The contested fungicides for agricultural use are included in the broad category of the opponent’s fungicides. Therefore, they are identical.

The contested pest control preparations and articles include, as broader categories, the opponent’s insecticides. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested agricultural pesticides overlap with the opponent’s fungicides. In particular, fungicides are toxic substances used to kill or inhibit the growth of fungi. Pesticides are toxic substances used to kill animals, fungi, or plants. These categories overlap insofar as both include goods such as fungicides generally used to control parasitic fungi that cause economic damage to crop or ornamental plants or are hazardous to the health of domestic animals. Therefore, these goods 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 business customers with specific professional knowledge or expertise.

  

The degree of attention may vary from average to high, depending on the specialised nature of the goods.

 

c) The signs

 

ZOLTUR	ZOLTEGRO
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 signs are word marks composed of one verbal element, namely ‘ZOLTUR’ in the earlier mark and ‘ZOLTEGRO’ in the contested sign. These verbal elements are meaningless in all European Union languages. Therefore, they are distinctive in relation to the relevant goods.

 

Visually, according to the applicant, the different number of letters in the signs create different elements visually. However, the Opposition Division points out that the signs coincide in five out of eight letters. In particular, they share the letters ‘ZOLT’ placed at the beginning. This is particularly relevant because consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. Indeed, 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. Furthermore, the signs coincide in the letter ‘R’ placed at the end of the earlier mark and as a penultimate letter in the contested sign. However, they differ in the letter ‘U’ of the earlier mark and ‘EG*O’ and of the contested sign.

  

Therefore, the signs are visually similar to an average degree.

Aurally, according to the applicant, the contested sign is composed of three syllables and the earlier mark of two syllables. Furthermore, the identity of the first letters ‘ZOLT’ and the letter “R” is overshadowed by the phonetic differences created by the letters in between, ‘U’ in the earlier mark and ‘EG’ in the contested sign. However, the Opposition Division notes that the signs coincide in the sound of the letters ‘ZOLT’ placed at the beginning. This coincidence has a considerable impact for the public, also bearing in mind that consumers generally tend to focus on the beginning of a sign when being confronted with a trade mark, as shown above. Additionally, the signs coincide in the sound of the letter ‘R’ placed at the end of the earlier mark and as a penultimate letter in the contested sign. It follows that, even though the signs differ in the sound of the letters ‘U’ and ‘EG*O’ of the earlier mark and of the contested sign respectively, the majority of the letters of the earlier mark are included in the contested sign and displayed in an identical position. Therefore, a certain phonetical similarity between the signs exists and it is not excluded by the presence of some different sounds.

  

Therefore, the signs are aurally similar to an average degree.

 

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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.

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.

 

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 in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

 

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabel, EU:C:1997:528, § 22).

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 goods are identical and they target the general and professional public. The degree of attention varies from average to high. Furthermore, the earlier mark has an average degree of inherent distinctiveness.

The conceptual comparison is not possible as the signs have no meaning. The signs are visually and aurally similar to an average degree to the extent that they share the identical beginning ‘ZOLT’ and the letter ‘R’, even though it is placed in a slightly different position in the signs. As previously explained, the coincidence in the initial letters and sounds is a relevant one.

Furthermore, although the signs differ in some of their letters, account must 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).

Considering all the above, taking into account the interdependence principle detailed above, there is a likelihood of confusion for the relevant public in the European Union.

 

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration designating the European Union No 1 319 900. 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, 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

 

 

Claudia ATTINA’

Chiara BORACE

Edith Elisabeth VAN DEN EEDE

 

 

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.