OPPOSITION Nо B 3 125 834

 

Bionutricion Vegetal SA, Calle Imperio 7, Mazarron, Murcia, 30870 Mazarron, Spain (opponent) 

 

a g a i n s t

 

Planeta Eko Dariusz Wierzbowski, Ul.Lubelska 65, 26-600 Radom, Poland (applicant).

 

On 05/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 125 834 is rejected in its entirety.

 

2.	The opponent bears the costs.

 

REASONS

 

On 10/07/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 224 505 ‘PROBIOPLANET’ (word mark), namely against all the goods and services in Classes 1, 31, 42 and 44. The opposition is based on Spanish trade mark registration No 3 564 023, ‘PROBION’ (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 and services

 

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

 

Class 1: Ecological inputs (fertilizers) for agriculture, horticulture and forestry; fertilizers for the land, especially ecological fertilizers.

The contested goods and services are the following:

 

Class 1: Detergents for use in manufacture and industry; putties, and fillers and pastes for use in industry; filtering materials [chemical, mineral, vegetable and other unprocessed materials]; chemical and organic compositions for use in the manufacture of food and beverages; growing media, fertilizers and chemicals for use in agriculture, horticulture and forestry; chemical preparations and materials for film, photography and printing; starches for use in manufacturing and industry; salts for industrial purposes; chemical substances, chemical materials and chemical preparations, and natural elements; unprocessed plastics; unprocessed artificial and synthetic resins; fertilisers, and chemicals for use in agriculture, horticulture and forestry; unprocessed and synthetic resins.

Class 31: Fodder; bait, not artificial; agricultural and aquacultural crops, horticulture and forestry products; litter peat; live animals, organisms for breeding.

Class 42: Testing, authentication and quality control; science and technology services; design services.

Class 44: Human hygiene and beauty care; human healthcare services; animal grooming services; agriculture, aquaculture, horticulture and forestry services; animal healthcare services.

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.

 

Contested goods in Class 1

The contested fertilisers, and chemicals for use in agriculture, horticulture and forestry; growing media, fertilizers and chemicals for use in agriculture, horticulture and forestry include, as a broader category, the opponent's ecological inputs (fertilizers) for agriculture, horticulture and forestry. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested salts for industrial purposes, chemical substances, chemical materials and chemical preparations, and natural elements, which include, as broader category, chemical and salts used in agriculture, overlap to the opponent's fertilizers for the land, especially ecological fertilizers. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested detergents for use in manufacture and industry; putties, and fillers and pastes for use in industry; filtering materials [chemical, mineral, vegetable and other unprocessed materials]; chemical preparations and materials for film, photography and printing; starches for use in manufacturing and industry; unprocessed plastics; unprocessed artificial and synthetic resins; unprocessed and synthetic resins; chemical and organic compositions for use in the manufacture of food and beverages are dissimilar to all goods covered by the opponent's right because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

Contested goods in Class 31

The contested agricultural and aquacultural crops, horticulture and forestry products are primarily crops and horticulture and forestry products. There is no complementarity with the opponent’s goods, the mere fact that the opponent’s fertilizers in Class 1 may indirectly improve the growth and quality of contested goods will not be sufficient in itself to show that the goods are similar. The nature, purpose and method of use of the goods are distinct. Moreover, the goods are sold in different stores. They are not marketed alongside each other. Therefore, they are dissimilar.

The contested fodder; bait, not artificial; litter peat; live animals, organisms for breeding are clearly dissimilar to all goods covered by the opponent's right because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

Contested services in Class 42

The contested testing, authentication and quality control; science and technology services; design services are specific services offered by scientists or designers, while the opponent’s goods are fertilizers used in agriculture. The contested services are dissimilar to all goods covered by the opponent's right because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

Contested services in Class 44

The contested agriculture, aquaculture, horticulture and forestry services are similar to the opponent's fertilizers for the land, especially ecological fertilizers because are aimed at the same consumers, namely both professionals and the general public, and they pursue the same aim of doing agriculture, aquaculture, horticulture and forestry. In these industries, farmers’ work often includes the administration of fertilizers. Thus, these goods and services may share the same distribution channels. Finally, these goods and services may be complementary insofar as the services are important or even indispensable for use of the goods. In particular, the provision of agriculture, aquaculture, horticulture and forestry services may require the administration of fertilizers. For this reason, the relevant public may believe that the same undertaking is responsible for both manufacturing the goods and providing the services. Therefore, the goods and services are similar.

The contested human hygiene and beauty care; human healthcare services; animal grooming services; animal healthcare services are dissimilar to all goods covered by the opponent's right because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

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 and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise from agriculture, aquaculture, horticulture and forestry industries.

 

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

 

c) The signs

 

PROBION	PROBIOPLANET
Earlier trade mark	Contested sign

 

The relevant territory is Spain.

 

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).

 

Although both signs are composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). Therefore, the earlier mark will be broken in ‘PRO’ and ‘BION’ and the contested sign in ‘PRO’, ‘BIO’ and ‘PLANET’.

The common component ‘PRO’ of both signs will be understood by the relevant public as a common abbreviation for ‘professional’ (11/09/2014, T‑127/13, Pro outdoor, EU:T:2014:767, § 58), but it may also be understood in the sense of ‘advantage, benefit; in favour of’ (30/04/2020, R 1798/2019‑1, -Vpro (fig.) / B PRO by Boomerang (fig.) et al., § 33). The element ‘PRO’ has a weak distinctive character as it will either be perceived as being a laudatory claim referring to the positive, or best, qualities associated with the relevant goods and services, or otherwise associated with the meaning of a positive, affirmative adverb.

The component ‘BIO’ of the contested sign is a well-known abbreviation for the term ‘biological’ and is understood as such throughout the European Union as ‘biological’ or ‘organic’ (10/10/2019, R 418/2019‑5, BIOPLAST BIOPLASTICS FOR A BETTER LIFE (fig.) / Bioplak, § 48; confirmed by the General Court in 15/10/2020, T‑2/20, BIOPLAST BIOPLASTICS FOR A BETTER LIFE (fig.) / Bioplak, EU:T:2020:493). In the present case, the relevant public will see ‘BIO*’ as part of the word ‘biología’ in Spanish (information extracted from Real Academia Diccionario on 05/07/2021 at https://dle.rae.es/bio-?m=form). It is very likely that the component ‘BION’ of the earlier mark to allude to ‘BIO’. Therefore, the term ‘BIO’ is non-distinctive in the contested sign in relation to the goods and services at issue and weak in the earlier mark in relation to the relevant goods, as it indicates that they are of a biological origin or made with biological ingredients.

The component ‘PLANET’ of the contested sign will be perceived as ‘celestial body without its own light that rotates in an elliptical orbit around a star, particularly those that revolve around the Sun: Mercury, Venus, Earth, Mars, Jupiter, Saturn, Uranus, Neptune and Pluto’ as it is close to the Spanish equivalent, ‘planeta’ (information extracted from Real Academia Diccionario on 05/07/2021 at https://dle.rae.es/planeta?m=form). As it is not descriptive, allusive or otherwise weak in respect of the relevant goods and services, it is distinctive.

Contrary to the opponent’s opinion, the signs have no element that could be considered clearly more dominant than other elements since they are word marks. 

Visually, the signs coincide in the letters ‘PRO’ and ‘BIO’, found to be weak, respectively non-distinctive. However, they differ in the letter ‘N’ of the earlier mark and the component ‘PLANET’ of the contested sign.

 

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘PRO’ and ‘BIO’, found to be weak, respectively non-distinctive. Contrary to the opponent’s opinion, the signs have different rhythm and intonation, due to the different letters, ‘N’ of the earlier mark and ‘PLANET’ of the contested sign.

Therefore, the signs are aurally similar to a low degree.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Considering that weak character of the components ‘PRO’ of both signs, respectively the weak character of ‘BION’ in the earlier mark and non-distinctive character of ‘BIO’ in the contested sign, associated with a similar meaning, and a differing, distinctive concept of ‘PLANET’ conveyed by the contested sign, the signs are conceptually similar to a low degree. 

 

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 claimed that the earlier trade mark enjoys enhanced distinctiveness, but it did not file any further evidence in order to demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use, except a short history of Bionutricion Vegetal SA and its products,.

 

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as below-average for all the goods.

 

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 and services are partly identical and similar and partly dissimilar to the opponent’s goods. They target the general public and professional customers, who possess an attentiveness that may vary from average to high. The distinctiveness of the earlier mark must be seen as below-average.

The signs are visually, aurally and conceptually similar to a low degree. The reasons for that have already been provided in section c) above.

When the marks coincide in an element with a low degree of distinctiveness, the assessment of likelihood of confusion will focus on the impact of the non-coinciding elements on the overall impression of the marks. That assessment takes into account the similarities/differences and distinctiveness of the non-coinciding components. A coincidence in an element with a low degree of distinctiveness will not normally on its own lead to likelihood of confusion when the overall impression created by the signs is sufficiently to exclude any likelihood of confusion.

The Opposition Division considers that confusion will not arise on the part of the relevant public, as the coincidence lies in non-distinctive and weak components. Therefore, the additional letter ‘N’ of the earlier mark and ‘PLANET’ of the contested sign, even placed at the end of the signs, are sufficient to counterbalance the similarity between them. This is also the case for identical goods, since the dissimilarities of the signs are so significant in the present case that even the identity of the goods cannot compensate it. This is especially important for the relevant public which pay a high degree of attention regarding the goods and services concerned.

The opponent refers to a previous decision of the Office to support its arguments, namely 27/07/2017, B 2 712 247. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

 

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

 

The previous case referred to by the opponent is not relevant to the present proceedings since the compared signs were meaningless, including the coinciding letters/sequence, while in the present case the common letters are associated with non-distinctive, respectively weak meanings, the the overall impression created by the signs being sufficient to to exclude any likelihood of confusion.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

 

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs and the goods and services found dissimilar are obviously not identical.

 

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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

 

 

 

The Opposition Division

 

 

Vít MAHELKA

Francesca DRAGOSTIN

Anna ZIÓŁKOWSKA

 

 

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.