OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 443 938
Fertesa Patrimonio, S.L., Pol. Ind. La Paz, s/n, Parc. 185-188, 44195 Teruel, Spain (opponent), represented by Protectia Patentes y Marcas S.L., C/ Arte 21, 2ºA, 28033 Madrid, Spain (professional representative)
a g a i n s t
Ioannis Michailidis Trade and Industrial Businesses Societe Anonyme and Co E.E., Vipeth Sindos, Road A5, 57022 Thessaloniki, Greece (applicant), represented by Marks & Us, Marcas y Patentes, Licenciado Poza 52, 6ºB, 48013 Bilbao (Vizcaya), Spain (professional representative).
Class 1: Chemicals used in agriculture; chemicals used in horticulture; chemicals used in forestry; fertilizer compositions; organic fertilizers; chemical fertilizers; natural fertilizers.
trade mark application No
3. Each party bears its own costs.
opponent filed an opposition against all the goods
Community trade mark application No
PROOF OF USE
In accordance with Article 42(2) and (3) CTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.
According to the same provision, in the absence of such proof the opposition must be rejected.
The applicant requested that the opponent submit proof of use of Spanish trade mark No 1 790 873, on which the opposition is based.
The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.
The contested application was published on 23/09/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 23/09/2009 to 22/09/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 1: Manures.
According to Rule 22(3) CTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
On 16/07/2015, according to Rule 22(2) CTMIR, the Office gave the opponent until 21/09/2015 to submit evidence of use of the earlier trade mark. On 16/09/2015, within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
Annex 1: An undated product catalogue in Spanish issued by ‘Fertinagro Nutrientes, S.L.’, showing the sign ‘AMINOVIT’ used on its own or together with other indications such as ‘TERRABIÓN’, ‘CEREAL’, ‘Zn Mn’, ‘VIGORIÓN’ and ‘FORTIBIÓN’ for various fertilizing substances in the following ways: (used for liquid solutions based on amino acids for root application), (used for bio stimulants in the form of liquid amino acids for foliar application), (used for liquid mixtures of micronutrients), (used for liquid organic growth promoters), (used for manures with amino acids for foliar application), (used for liquid organic growth promoters) and (used for growth promoters with plant origin).
Annex 2: A set of non-consecutive invoices (approximately 25) dated between 18/02/2011 and 27/02/2015 referring to sales of products in Spain and France. The invoices are in Spanish and were issued by Fertinagro Nutrientes S.L., a Spanish company, to entities with addresses throughout Spain and to an entity in France. When they are read together with the product catalogue, it becomes clear that the invoices refer, inter alia, to the same goods shown in the catalogue indicated by the terms ‘AMINOVIT CEREAL’, ‘AMINOVIT’ and ‘AMINOVIT TERRABION’.
The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered. The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.
Place of use
The documents submitted demonstrate that the place of use is Spain. The invoices and product catalogue are in Spanish. The invoices were issued on behalf of the opponent by a Spanish company, and the majority of them refer to sales of goods to various entities with addresses in different Spanish cities.
Furthermore, according to Article 15(1), second subparagraph, point (b) CTMR, the following shall also constitute use within the meaning of paragraph 1: affixing of the Community trade mark to goods or to the packaging thereof in the Community solely for export purposes. This principle also applies to earlier national trade marks. Therefore, as regards the invoices issued to a client in France, these show that the goods were distributed by a Spanish company with an address in Teruel, Spain. This clearly shows that the goods were exported from the relevant territory.
Consequently, and in accordance with Article 15(1), second subparagraph, point (b) CTMR, the evidence of use filed by the opponent contains sufficient indications concerning the place of use, namely Spain.
Time of use
Most of the invoices (18 out of 25 invoices) are dated within the relevant period. Furthermore, the opponent also submitted undated product catalogues demonstrating the nature of use of the earlier mark. These documents have to be viewed in conjunction with the evidence that is dated; they may, therefore, still be taken into consideration. Moreover, it is common for such documents not to carry any indication of the time of use. Therefore, it is obviously not appropriate to disregard such evidence if indications of the time of use can be found in the other evidence submitted.
Extent of use
As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.
The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.
The documents filed, in particular the invoices, supported by the product catalogue, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use. The invoices are non-consecutive and cover a continuous and extensive period of three and a half years, which fall within the relevant period. The use need not have been made throughout the period of five years; any time within the five years is sufficient. The provisions on the use requirement do not require continuous use (16/12/2008, T‑86/07, Deitech, EU:T:2008:577, § 52). Therefore, these documents prove the duration and frequency of use of the mark. The amounts that the invoices refer to concerning goods with the signs ‘AMINOVIT CEREAL’, ‘AMINOVIT’ and ‘AMINOVIT TERRABION’ range from around EUR 2 700 in some invoices to EUR 28 000 in other cases. They show quite a substantial amount of sales and provide sufficient information concerning the commercial volume of use. It is clear from the evidence that the opponent distributed or provided goods bearing the earlier mark on the Spanish market. The Opposition Division therefore has sufficient information regarding the commercial activities of the opponent during the relevant period. The invoices prove that use of the sign in Spain has been more than mere token use.
Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.
Nature of use
In the context of Rule 22(3) CTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) CTMR, and of its use for the goods and services for which it is registered.
According to Article 15(1), second subparagraph, point (a) CTMR, the following shall also constitute use within the meaning of paragraph 1: use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) CTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.
The proof of use must establish a clear link between the use of the mark and the relevant goods or services. As indicated in Rule 22(4) CTMIR, it is not necessary for the mark to be affixed to the goods themselves (judgment of 12/12/2014, T-105/13 TrinkFix, EU:T:2014:1070, § 28-38). A representation of the mark on packaging, catalogues, advertising material or invoices relating to the goods and services in question constitutes direct evidence that the mark has been put to genuine use.
In the present case, earlier Spanish trade mark registration No 1 790 873 is registered as the word mark ‘AMINOVIT’. The invoices refer to goods indicated by, inter alia, the signs ‘AMINOVIT’, ‘AMINOVIT CEREAL’ and ‘AMINOVIT TERRABION’. In the product catalogue, the mark appears as, for example, , and .
The use of a slightly stylised typescript in green for the word ‘AMINOVIT’ constitutes an acceptable means of bringing the mark in question to the public’s attention and consequently does not affect the distinctiveness of the earlier mark, ‘AMINOVIT’, which has been registered as a word mark.
The additional indications, such as ‘CEREAL’ and ‘TERRABION’, used together with the word ‘AMINOVIT’ in some cases, designate the various kinds of products offered by the opponent. It is quite common in some market areas for goods to bear an individual mark as well as the mark of a business or product group (‘house mark’). In these cases, the registered mark is not used in a different form, but rather the two independent marks are used validly at the same time. Several signs may be used simultaneously without altering the distinctive character of the registered sign (judgment of 08/12/2005, T-29/04, Cristal Castellblanch, EU:T:2005:438, § 34). It follows that the sign ‘AMINOVIT’, although used with other verbal indications in some cases, functions as a trade mark identifying the goods sold by the opponent.
Therefore, the use of the earlier mark in the way described above constitutes use of the sign as a trade mark in the course of trade and in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered.
In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) CTMR.
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).
Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.
The evidence filed by the opponent shows use of the trade mark for various manures in the form of liquid solutions, bio stimulants and growth promoters. As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier mark is registered and as the goods for which use has been proven do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark for manures in Class 1.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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 goods on which the opposition is based are the following:
Class 1: Manures.
After a limitation in the specification of the list of goods made by the applicant on 20/02/2015, the contested goods are the following:
Class 1: Chemicals used in industry; chemicals used in agriculture; chemicals used in horticulture; chemicals used in forestry; fertilizer compositions; organic fertilizers; chemical fertilizers; natural fertilizers.
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.
As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.
Manure is ‘animal dung used for fertilizing land; any compost or artificial fertilizer’ (Oxford English Dictionary online, at http://www.oxforddictionaries.com).
The contested fertilizer compositions; organic fertilizers; chemical fertilizers; natural fertilizers include, as broader categories, or overlap with, the opponent’s manures. 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 chemicals used in agriculture; chemicals used in horticulture; chemicals used in forestry and the opponent’s manures share certain points of contact. Although the contested goods are products in their unfinished state and not yet mixed with other chemicals and inert carriers into a final product, the specific chemicals used in agriculture, horticulture and forestry require few processing steps to be considered a finished product. They may already be considered to share the inherent purpose of the opponent’s manures, as both sets of goods are to be used for agriculture, horticulture or forestry purposes. Furthermore, the same agro-chemical companies may produce the semi-processed goods as well as the final product, and the goods may share the same consumers. Therefore, they are similar.
However, the same does not apply to the contested chemicals used in industry when compared with the opponent’s manures. Although major chemical companies are usually involved in the production of all kinds of basic and speciality chemicals (such as the contested chemicals used in industry) and life science and consumer products, including pharmaceuticals, synthetic manures and pesticides, the mere fact that their nature coincides – as all of them can be broadly classified as chemical products – is not sufficient to find them similar. Special attention must be drawn to the specific purpose of these goods as well as to their public and distribution channel. In the present case, the goods under comparison have different purposes (use in the field of industry for the manufacture of other goods, on one hand, and use as a finished product in agriculture with the purpose to fertilize land, on the other). The goods under comparison are not complementary or in competition, and their relevant public and distribution channels are quite distinct, since the contested goods are in general intended for use in industry rather than for direct purchase by the final consumer, as is the case with the earlier manures. Therefore, these goods are dissimilar.
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 or similar are directed at the public at large and at business customers with specific professional knowledge or expertise in, inter alia, the agricultural field. The degree of attention varies from average to higher than average, depending on the exact nature and purpose of the goods.
Earlier trade mark
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 bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).
The earlier mark is a word mark, ‘AMINOVIT’. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.
The contested sign is a figurative mark, consisting of the verbal element ‘AminoDrip’, in which the letters ‘A’ and ‘D’ are in upper case, whereas the remaining letters are in lower case. The sequence of letters ‘Amino’ is depicted in bold, rather standard black letters, and the sequence of letters ‘Drip’ is depicted in slightly stylised italic letters in blue with a black outline.
The word ‘AMINOVIT’, constituting the earlier mark, does not have a meaning as a whole for the public in the relevant territory. However, the element ‘AMINO’, included in its beginning, may be associated by the relevant public with ‘amino acid’ (‘aminoácido’ in Spanish) – ‘a simple organic compound containing both a carboxyl and an amino group’ (see, for example, Real Academia Española, Spanish dictionary online, at http://dle.rae.es/). It is known that amino acids form the basic constituents of proteins and are essential components in nutrition.
The same reasoning applies for the verbal element ‘AminoDrip’ of the contested sign, which does not have a meaning as a whole for the public in the relevant territory. However, the element ‘Amino’, included in its beginning, may be associated with ‘amino acid’. The fact that the elements ‘Amino’ and ‘Drip’ are depicted in different colours and fonts will further facilitate this perception.
Bearing in mind that part of the relevant goods are or may contain organic matter with nutritional properties, it is considered that this element is less distinctive in relation to these goods, namely in relation to the opponent’s manures and to the contested fertilizer compositions; organic fertilizers; chemical fertilizers; natural fertilizers in Class 1, as it may be perceived as a reference to their ingredients. Consequently, the relevant public will not pay as much attention to this element as to the other, more distinctive, elements of the marks. As a result, the impact of this less distinctive element is limited when assessing the similarity between the marks at issue.
The marks under comparison have no elements that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the sequence of letters ‘A-M-I-N-O-*-I-*’. Although, as seen above, the element ‘AMINO’ of the signs is less distinctive in relation to some of the relevant goods, this element is identically contained in the beginning of both signs, which is the part that consumers generally tend to focus on when being confronted with a trade mark. This is justified by the fact that 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.
The signs differ in the sixth letter, ‘V’, and the last letter, ‘T’, of the earlier mark, and in the sixth and seventh letters, ‘D-R’, and the last letter, ‘P’, of the contested sign. They also differ in the colours and overall stylisation of the contested sign, which is not particularly striking and will be perceived as an ordinary graphical means of bringing the verbal elements to the attention of the public.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the first three syllables of their verbal elements, ‘A-MI-NO’, and partially in their last syllables, ‘VIT’ versus ‘DRIP’ insofar as they contain the same vowel, ‘I’. The pronunciation differs in the sound of the consonants in these last syllables, namely ‘V’ and ‘T’ in the earlier mark and ‘D’, ‘R’ and ‘P’ in the contested mark. The marks are composed of the same number of syllables (four) and, therefore, they have the same rhythm.
Therefore, the signs are aurally similar to an average degree.
Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘AMINO’, contained at the beginning of both signs, may be associated by the relevant public with ‘amino acid’. As seen above, this element is less distinctive for part of the goods at issue. Nevertheless, this common element will establish a conceptual link between the marks.
To that extent, the signs are conceptually similar to an average degree.
As the signs have been found similar in all three aspects of the comparison, the examination of likelihood of confusion will proceed.
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, despite the presence of a less distinctive element in the mark as stated above in section c) of this decision.
Global assessment, other arguments and conclusion
The appreciation of the 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 (eighth recital of the CTMR). 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).
As seen above, the goods under comparison are partly identical, partly similar and partly dissimilar. The signs are similar to an average degree on account of their common letters ‘A-M-I-N-O-*-I-*’ and their similar overall structure and aural rhythm. The different letters of the marks are placed in the last part of the signs where they are more likely to go unnoticed by consumers, who only rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. The colours and stylisation of the contested sign are mostly decorative, and are not sufficient to obscure or camouflage the verbal element ‘AminoDrip’, which the relevant consumer will be able to read and pronounce and will readily use to refer to the mark.
Although the common element ‘AMINO’ may be perceived as an element with a limited distinctiveness in relation to part of the goods in question, it cannot be overlooked that this element is clearly perceptible as the beginning of the signs, which is the part that first catches the attention of the reader. Therefore, despite the higher level of attention that part of the relevant public might display and the fact that the element ‘AMINO’ of the marks is weak for some of the goods in question, the differences between the signs are not sufficient to offset the similar overall impression created by the marks in the minds of the consumers.
Account must also be taken of the principle that a likelihood of confusion implies some interdependence among the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. In the present case, the coincidence in a weak element of the marks is offset by the fact that all the contested goods for which this element is weak (fertilizer compositions; organic fertilizers; chemical fertilizers; natural fertilizers) are identical to the goods covered by the earlier mark.
Furthermore, the likelihood of confusion for the relevant public cannot safely be excluded for the contested goods (chemicals used in agriculture; chemicals used in horticulture; chemicals used in forestry) that were found to be similar to an average degree to those of the earlier mark either, due to the considerable visual and aural similarities of the signs, as mentioned above, and the fact that the common element ‘AMINO’ has a normal degree of distinctiveness for these contested goods.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion, including a likelihood of association, for the relevant consumers in relation to identical and similar goods. Therefore, the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registration No 1 790 873.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these goods cannot be successful.
According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.
Since the opposition is successful only for part 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
Begoña URIARTE VALIENTE
According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.