OPPOSITION Nо B 3 121 979

Fertisac, S.L., Barriada de la Estación, s/n, 18320 Atarfe (Granada), Spain (opponent), represented by Sonia Del Valle Valiente, c/ Miguel Ángel Cantero Oliva, 5, 53, 28660 Boadilla del Monte (Madrid), Spain (professional representative)

a g a i n s t

Fertinagro France, 1935, Route de la Gare, 40290 Misson, France (applicant).

On 31/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 121 979 is upheld for all the contested goods.

2. European Union trade mark application No 18 197 604 is rejected in its entirety.

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

REASONS

On 21/05/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 197 604 ‘FERTINAT’ (word mark). The opposition is based on, inter alia, European Union trade mark registration No 18 179 720, . 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 18 179 720.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 1: Fertilisers, and chemicals for use in agriculture, horticulture and forestry.

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.

Fertilisers and chemicals for use in agriculture, horticulture and forestry (listed twice in the applicant’s list of goods) are identically contained in both lists of goods.

The contested growing media overlaps with the opponent’s fertilisers. 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 (e.g. home gardeners) as well as at business customers (e.g. professional farmers) with specific professional knowledge or expertise.

The relevant goods may contain specialised additives that determine their properties and effect and have a direct effect on the health of plants or may potentially have a hazardous impact on nature or the environment. Therefore, the general public, as well as the specialised public, is considered to show a degree of attention that varies from average to higher than average (25/07/2016, R 1182/2015‑5, HORTY / Horti-Cote et al., § 18–§ 20; 02/07/2015, R 2724/2014‑1, PLANT HEALTH CARE, § 18).

c) The signs

	FERTINAT
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The relevant goods are fertilisers, growing media or chemicals that could be used to fertilise the soil. Therefore, the common beginning of the signs ‘FERTI’ can be associated by part of the public in the relevant territory with the English word ‘fertiliser’, the Spanish and Portuguese word ‘fertilizante’, or the Italian word ‘fertilizzante’, all with the same meaning – a natural or chemical substance that is spread on the land or given to plants, to make plants grow well (information extracted from Cambridge Dictionary on 06/05/2021 at https://dictionary.cambridge.org/dictionary/english/fertiliser). When perceived with this meaning. ‘FERTI’ will be of reduced distinctiveness as it will be seen as referring to the characteristics of the goods.

However, this common element will not be associated with any meaning in certain territories, for example in the Czech Republic, Latvia and Poland. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Czech-, Latvian- and Polish-speaking parts of the public. However, even in relation to these parts of the public, the professional parts might understand the verbal element ‘FERTI’ as referring to fertilisers, especially in the context of the goods in question and focus attention on the last differing parts of the signs’ verbal elements. Given that the general public will be more prone to confusion since it will not understand the common element ‘ferti’, the examination will proceed on this basis.

In view of the foregoing, for the relevant public, the verbal element ‘fertisac’ of the earlier mark is meaningless and has a normal degree of distinctiveness. The figurative device above it may be seen, by a part of the relevant public, as a stylised depiction of a flower or a plant with two green leaves and red blossoms or fruits. It thus would be associated with the goods in question (which are intended to improve the growth and productivity of plants) and be of limited distinctiveness.

In any event, even if the figurative device is not associated with any meaning and also considering that the earlier mark has no clearly dominant element, the figurative device is of secondary impact in the overall impression of the earlier mark This is because 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 earlier sign has no element that could be considered more dominant (visually outstanding) than other elements.

The contested sign is the verbal element ‘FERTINAT’, which is meaningless for the public under consideration and therefore distinctive.

The applicant refers to the word definition from the French Dictionary Larousse with respect to the words ‘sac’ and ‘natural’. However, the focus of the present examination is not on the French-speaking public and therefore the applicant’s arguments are not applicable.

Visually, the verbal elements of the signs are both eight letters long and coincide in the letters ‘FERTI*A*’, which are in identical positions in both signs, five of them at the beginning. In word signs or in signs containing a verbal element, the beginning generally catches the consumer’s attention first and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (15/12/2009, T‑412/08, TRUBION / TriBion Harmonis (fig.), EU:T:2009:507, § 40; 25/03/2009, T‑109/07, Spa Therapy, EU:T:2009:81, § 30). The signs differ in their respective sixth letter, ‘S’ v ‘N’, and in their eighth letter, ‘C’ v ‘T’. They differ also in the figurative elements of the earlier mark, which are, however, as explained above, of reduced distinctiveness and/or secondary impact. Therefore, the signs are visually similar to at least an average degree.

Aurally, the verbal elements of both signs have eight letters. They have an identical phonetic length and coincide in the sounds of the letters ‘FERTI*A*’. Considering the identical beginnings of the signs and that the figurative elements of the earlier mark are not subject to phonetic assessment, despite the differing sounds of the respective letters ‘S’/‘N’ and ‘C’/‘T’, the signs are similar to a higher-than-average degree.

Conceptually, while the verbal elements of the signs will not be associated with a meaning, part of the relevant public may perceive the concept of a flower or a plant in the earlier mark’s figurative element. For this part of the public, the signs are conceptually not similar. For the part of the public that will not associate the earlier sign’s figurative element with a concept, 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 relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of weak elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

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 goods are identical. The signs are visually similar to at least an average degree and aurally similar to a higher-than-average degree. Conceptually, the signs are either not similar or the conceptual aspect does not influence the assessment of the similarity of the signs. The distinctiveness of the earlier mark is normal. The degree of attention of the relevant public varies from average to higher than average. However, 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).

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 verbal elements of the signs have an identical length and coincide in six out of eight letters, all of them placed in the same order and position, which creates significant visual and aural similarity. The two differing letters towards the end of the signs, where the consumers pay less attention, and the figurative element of the earlier mark, which is of secondary impact and of reduced distinctiveness, at least for a part of the public, are not sufficient to overcome the visual and aural similarity of the signs, especially for identical goods. Indeed, it is highly conceivable that when they encounter the contested sign in relation to identical goods, the relevant consumers will make a connection between the conflicting signs and will assume that the goods in question are from the same or economically linked undertakings.

The applicant’s arguments regarding its business model of selling fertilisers, which is different from the opponent’s, or the evidence submitted from the opponent’s website do not alter the findings, since they do not relate to the similarity of the signs. The signs have to be compared in the form in which they are protected, that is, in the form in which they are registered / applied for. Actual or possible use of the registered marks in another form is irrelevant when comparing signs.

In its observations, the applicant refers to its earlier French trade mark registrations with the element ‘ferti’ as part of a ‘product family’, and that the first trade mark was registered thirty years ago. However, the applicant did not explain the relation between the present opposition and those registrations. The Opposition Division understands that the applicant refers to a family of marks all based on the verbal component ‘ferti’. However, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Considering all the above, there is a likelihood of confusion on the part of the Czech-, Latvian- and Polish-speaking parts of the general 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 and there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 18 179 720. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 18 179 720 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Martina GALLE

Claudia SCHLIE

Angela DI BLASIO

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.