OPPOSITION Nо B 3 120 677

 

Chanelle Pharmaceuticals Manufacturing Limited, Loughrea, County Galway, Ireland (opponent), represented by Anne Ryan & Co., 2 Crofton Terrace, A96 V6P7 Dun Laoghaire, Ireland (professional representative) 

 

a g a i n s t

 

Probelte, S.A.U, Calle Antonio Belmonte Abellán Nº 3 - 5, 30100 Espinardo (Murcia), Spain (applicant), represented by Ibidem Abogados Estrategas, S.L.P., Juan De La Cierva, 43 Elche Parque Empresarial Planta 2, Local 1.1, 03203 Elche (Alicante), Spain (professional representative).

 

On 14/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 120 677 is partially upheld, namely for the following contested goods:

 

	Class 5: Fungicides; biological fungicides; acaricides; pest control preparations and articles; vermin repelling preparations; agricultural biopesticides.
2.	European Union trade mark application No 18 205 423 is rejected for all the above goods. It may proceed for the remaining goods.

 

3.	Each party bears its own costs.

 

REASONS

 

On 14/05/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 205 423 EXITHUL (word mark). The opposition is based on European Union trade mark registration No 7 591 341, EXITEL (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 5: Veterinary pharmaceutical preparations and substances.

The contested goods are the following:

 

Class 5: Fungicides; biological fungicides; acaricides; pest control preparations and articles; herbicides; vermin repelling preparations; agricultural biopesticides.

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 5

The contested pest control preparations and articles; vermin repelling preparations; acaricides; fungicides; agricultural biopesticides; biological fungicides are similar to a low degree to the opponent's veterinary pharmaceutical preparations and substances as they have the same purpose and usually coincide in distribution channels. These goods may be used in order to prevent the risks to animal health which the species whose elimination is sought represent. In addition, the use of those preparations may be complementary to that of veterinary preparations used to treat ailments caused, directly or indirectly, by the presence of those animal species or contact with them.

The contested herbicides are dissimilar to all the goods covered by the opponent's right because they have nothing in common. Herbicides refer to all phytosanitary formulae designed to protect the environment, and in particular crops, against undesirable plants. Thus, the objective of such a product is entirely separate from the objective of veterinary preparations and substances to protect animal health. Therefore, they have a different intended purpose and nature and there is no competition or complementarity between the goods and they also differ in their distribution channels and relevant public.

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.

 

The degree of attention is average.

 

Given that the general public is more prone to confusion, the examination will proceed on this basis.

 

c) The signs

 

EXITEL	EXITHUL
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.

Both marks are word marks, respectively ‘EXITEL’ (earlier mark) and ‘EXITHUL’ (contested mark). Neither of the signs under comparison has a meaning for at least a part of relevant public, such as a substantial part of the Portuguese and Spanish-speaking public of the European Union. Thus, they are normally distinctive.

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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

 

Visually and aurally, the signs coincide in the sequence of letters/sounds ‘EXIT-’ while they differ in the ending ‘-EL’ of the earlier mark and ‘-HUL’ of the contested sign, where the last letter ‘L’ coincides in both signs. Account must be taken that in the languages taken as reference, that is to say Portuguese and Spanish, the letter ‘H’ contained in the contested sign will be regarded as a mute letter, and therefore not pronounced. Consequently, the signs have an almost identical length and the same number of syllables, namely three, which leads to a similar rhythm and intonation.

 

Therefore, the signs are visually and aurally similar to at least 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 a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign 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, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods covered by the trade marks in dispute have been found partly similar to a low degree and partly dissimilar. They target, inter alia, the public at large, whose degree of attention is expected to be average.

The distinctiveness of the earlier mark must be seen as normal, since it has no meaning in relation to the goods.

The signs are visually and aurally similar to at least an average degree, as they coincide in the sequence of letters/sounds ‘EXIT-’ while they differ in the ending ‘-EL’ of the earlier mark and ‘-HUL’ of the contested sign, where the last letter of both signs coincide in the letter ‘L’. The relevant public will not pronounce the letter ‘H’ and therefore, the signs would have a similar pronunciation and intonation. In addition, the signs have no meaning for which the conceptual aspect does not influence the present assessment.

Account is 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).

 

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.

 

Considering all the above, there is a likelihood of confusion on the part of the Portuguese and Spanish-speaking part 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, there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As the identity or similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

 

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

 

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Andrea VALISA

Inês RIBEIRO DA CUNHA

Philipp HOMANN

 

 

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.