OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET

(TRADE MARKS AND DESIGNS)


Opposition Division



OPPOSITION No B 2 506 254


HealthPro Brands Inc., PO Box 867, Mason, Ohio 45040, United States of America (opponent), represented by Heuking Kühn Lüer Wojtek, Neuer Wall 63, 20354 Hamburg, Germany (professional representative)


a g a i n s t


Explotaciones Hermanos Delgado, S.L., Calle Villarrobledo, 37, 13630 Socuellamos (Ciudad Real), Spain (applicant), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative).


On 23/02/2016, the Opposition Division takes the following



DECISION:


1. Opposition No B 2 506 254 is partially upheld, namely for the following contested goods:


Class 5: Organic products and preparations for use in pest control.


2. Community trade mark application No 13 629 514 is rejected for all the above goods. It may proceed for the remaining goods and services.


3. Each party bears its own costs.



REASONS:


The opponent filed an opposition against all the goods and services of Community trade mark application No 13 629 514. The opposition is based on Community trade mark registration No 12 015 103. The opponent invoked Article 8(1)(b) CTMR.



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.



  1. The goods and services


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


Class 3: Organic cleaning preparations for fresh produce and other foods.


Class 5: Organic disinfectant and antibacterial preparations for cleaning fresh produce and other foods.


The contested goods and services are the following:


Class 1: Organic fertilisers and chemicals used in agriculture, horticulture and forestry.


Class 5: Organic products and preparations for use in pest control.


Class 35: Advertising and retailing, wholesaling and sale via global computer networks of organic fertilisers and chemicals used in agriculture, horticulture and forestry, organic products and preparations for use in pest control; import and export of organic fertilisers and chemicals used in agriculture, horticulture and forestry, organic products and preparations for use in pest control.


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 organic fertilisers and chemicals used in agriculture, horticulture and forestry are not related to the opponent’s goods in Classes 3 and 5. The contested goods are products intended primarily to promote the growth of plants whereas the opponent’s goods are hygienic preparations. The nature of the goods is different, as are the distribution channels. The goods have different purposes from the consumer’s point of view and they satisfy different needs. Furthermore, they are not complementary or in competition. The relevant consumer will not regard the goods of the earlier trade mark and those of the contested trade mark as originating from the same undertakings. Consequently, they are dissimilar.



Contested goods in Class 5


The contested organic products and preparations for use in pest control are preparations for the regulation or management of a species defined as a pest – a destructive insect or other animal that attacks crops, food, livestock, etc. The opponent’s organic disinfectant and antibacterial preparations for cleaning fresh produce and other foods are agents that are applied to fresh produce and other food to destroy microorganisms living on these products. The goods may have the same general purpose of destroying, or exerting a controlling effect on, any harmful organism that may affect, for example, fresh produce and other food. They may have the same producers, consumers and distribution channels. Therefore, they are considered similar to a high degree.



Contested services in Class 35


The contested advertising of organic fertilisers and chemicals used in agriculture, horticulture and forestry, organic products and preparations for use in pest control are advertising services, which consist of providing others with assistance in the sale of their goods and services by promoting their launch and sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by specialised companies which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, web sites, videos, the internet, etc. Consequently, even though the applicant’s advertising services may be provided to companies that manufacture the opponent’s goods in Classes 3 and 5 (e.g. these goods may appear in advertisements), this is insufficient for finding similarity between these goods and services. The nature and purpose of the abovementioned services are clearly different from the manufacture of the opponent’s goods. In addition, these applicant’s services in Class 35 and the opponent’s goods will not have the same providers, since the contested services require knowledge that is fundamentally different from the knowledge necessary to manufacture the opponent’s goods. Therefore, the contested advertising of organic fertilisers and chemicals used in agriculture, horticulture and forestry, organic products and preparations for use in pest control is dissimilar to the opponent’s goods in Classes 3 and 5.


The contested retailing, wholesaling and sale via global computer networks of organic fertilisers and chemicals used in agriculture, horticulture and forestry, organic products and preparations for use in pest control consist of different forms of activities around the actual sale of various goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of the opponent’s goods. They are neither in competition nor complementary. Furthermore, the method of use of those goods and services is different, as is their nature, given that services are intangible whereas goods are tangible. Similarity between retail services of specific goods covered by one mark and specific goods covered by the other mark can only be found where the retailed goods and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical. Therefore, the contested retailing, wholesaling and sale via global computer networks of organic fertilisers and chemicals used in agriculture, horticulture and forestry, organic products and preparations for use in pest control and the opponent’s goods in Classes 3 and 5 are dissimilar.


The contested import and export of organic fertilisers and chemicals used in agriculture, horticulture and forestry, organic products and preparations for use in pest control relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. As they are classified in Class 35, they are considered to relate to business administration. These services do not relate to the actual retail or wholesale of the goods; they would be preparatory or ancillary to the commercialisation of such goods. For these reasons, goods are to be considered dissimilar to import and export services of goods. Their nature and intended purposes are clearly different. Furthermore, they are neither in competition with each other nor complementary. In addition, the applicant’s services in Class 35 and the opponent’s goods will not have the same providers, since the contested services require knowledge that is fundamentally different from the knowledge necessary to manufacture the opponent’s goods. Therefore, the contested import and export of organic fertilisers and chemicals used in agriculture, horticulture and forestry, organic products and preparations for use in pest control and the opponent’s goods in Classes 3 and 5 are dissimilar.



  1. 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 are directed at the public at large and at customers or business establishments specialised in the elimination of vermin, insects, etc., with specific professional knowledge or expertise in the controlled application of chemical preparations for use in pest control. The degree of attention varies from average to higher than average, depending on the exact nature and purpose of the goods.



  1. The signs



FIT ORGANIC




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 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, ‘FIT ORGANIC’. 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 ‘FITORGANIC’, written in rather standard upper case letters in white with a black outline. The letters ‘FIT’ and ‘RGANIC’ are on different levels. The first part of the sign, ‘FIT,’ is at a higher level than the last part of the sign, ‘RGANIC’. The two parts are connected by the letter ‘O’, which is twice the size of the other letters. A figurative element consisting of two curved lines forming an irregular shape is depicted around part of the element ‘ORGANIC’, intersecting with the letter ‘O’.


The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Therefore, it is reasonable to assume that the relevant consumers will perceive the conjoined verbal element of the contested sign, ‘FITORGANIC’, as the mere sum of its parts, thus splitting it into the words ‘FIT’ and ‘ORGANIC’, because at least the word ‘ORGANIC’ will be recognised by the majority of the public. The fact that the words are depicted at different levels, with the letter ‘O’ appearing to be the upper case first letter of the word ‘ORGANIC’, will further facilitate this immediate perception.


The word ‘FIT’, contained in both signs, is not descriptive of any of the relevant goods and does not lack distinctiveness.


Considering the nature of the relevant goods, the word ‘ORGANIC’, contained in both signs, is an English word that will be perceived by the English-speaking part of the relevant public as an adjective meaning ‘of, relating to, derived from, or characteristic of living plants and animals’ or ‘of or relating to animal or plant constituents or products having a carbon basis’, or as a noun meaning ‘any substance, such as a fertilizer or pesticide, that is derived from animal or vegetable matter’ (information extracted from Collins English Dictionary online, at http://www.collinsdictionary.com/). This term will also be understood by the majority of the relevant public in the European Union, as most of the relevant languages have very similar equivalents to that word (e.g. ‘organisch’ in German, ‘organique’ in French, ‘organico’ in Spanish and Portuguese, ‘orgaaninen’ in Finnish, ‘organiskt’ in Swedish, ‘organinės’ in Lithuanian, etc.). Bearing in mind that all the relevant goods are organic products, it is considered that this element is non-distinctive in relation to all the goods at issue, as it directly informs the public about their nature. Consequently, the majority of 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 non-distinctive element is limited when assessing the similarity between the marks at issue.


Part of the public, for example the Hungarian-speaking public, will not attribute any meaning to the verbal elements of the marks. For this part of the public, the marks have no elements that could be considered more distinctive than other elements.


The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.


Visually, the signs coincide in their verbal elements, ‘FIT( )ORGANIC’, which are written as two separate words in the earlier mark and are visually differentiated as separate words in the contested sign by being depicted on different levels, with the letter ‘O’ appearing to be the upper case first letter of the word ‘ORGANIC’. Although, as seen above, the word ‘ORGANIC’ of the signs is non-distinctive for the majority of the public in relation to the relevant goods, it is identically contained in both signs.


The signs differ in the figurative element 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.


Moreover, where a trade mark is composed of verbal and figurative elements, the principle has been established that the verbal component of the sign usually has a stronger impact on the consumer than the figurative one. This is justified by the fact that consumers will more readily remember and refer to the goods in question by name, rather than by describing the figurative elements of the trade mark in question.


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


Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of their verbal elements, ‘FIT( )ORGANIC’, present identically in both signs.


Therefore, the signs are aurally identical.


Conceptually, the word ‘FIT’, contained in both signs, will be perceived by the English-speaking part of the public as, inter alia, a verb meaning ‘to be appropriate or suitable for (a situation, etc.)’, ‘to be of the correct size or shape for (a connection, container, etc.)’, or as an adjective meaning ‘suitable to a purpose or design; appropriate’, ‘having the right qualifications; qualifying’ (Collins English Dictionary online, at http://www.collinsdictionary.com/). The word ‘FIT’ will also be perceived as an adjective with the same meaning (‘suitable; appropriate’) by the German-speaking part of the public (Duden Wörterbuch online, at http://www.duden.de/).


Other parts of the relevant public, for example the French-, Hungarian- and Spanish-speaking parts, will not attribute any meaning to the word ‘FIT’.


The word ‘ORGANIC’, contained in both signs, is an English adjective meaning ‘of, relating to, derived from, or characteristic of living plants and animals’ or ‘of or relating to animal or plant constituents or products having a carbon basis’ and a noun meaning ‘any substance, such as a fertilizer or pesticide, that is derived from animal or vegetable matter’ (Collins English Dictionary online, at http://www.collinsdictionary.com/). As seen above, this word will be understood by the majority of the relevant public in the European Union, as most of the relevant languages contain very similar equivalents of that term.


Part of the relevant public, for example the Hungarian-speaking part, will not attribute any meaning to the word ‘ORGANIC’.


Consequently, to the extent that both marks refer to the concepts of ‘FIT’ and ‘ORGANIC’ for a part of the public (e.g. the English- and German-speaking parts), or to only the concept of ‘ORGANIC’ for another part of the public (e.g. the French and Spanish-speaking parts), the marks under comparison are conceptually identical for those parts of the public.


For part of the public (e.g. the Hungarian-speaking part), neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for that part of the public.


As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.



  1. 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 non‑distinctive element in the mark as stated above in section c) of this decision.



  1. Global assessment, other arguments and conclusion


The goods and services under comparison are partly similar to a high degree and partly dissimilar.


The signs under comparison are visually similar to a high degree, as well as aurally and, for a part of the public, conceptually identical. Although the verbal element ‘ORGANIC’ is, for a significant part of the public, non-distinctive in relation to the goods in question, it cannot be overlooked that this element is part of the verbal elements that the signs have in common, ‘FIT( )ORGANIC’, which constitute the earlier mark in its entirety and are fully included and clearly perceptible as the only verbal elements of the contested sign. For the part of the public for which the verbal elements will not convey any meaning, all verbal elements are fully distinctive in relation to the goods at issue.


The aforementioned principle is fully applicable to the present case, since the figurative elements and stylisation of the contested mark are mostly decorative and are not sufficient to obscure or camouflage the verbal elements ‘FIT( )ORGANIC’, which the relevant consumer will be able to read and pronounce and will readily use to refer to the mark.


All the aforementioned findings lead to the conclusion that the marks under comparison, regardless of which parts of the territory are concerned, convey highly similar overall impressions.


Therefore, considering that average consumers rarely have the chance to make a direct comparison between different marks, but must place their trust in their imperfect recollection of them, the Opposition Division considers that the similarity between the signs is sufficient to lead to a likelihood of confusion between the marks for the public in the relevant territory.


Article 8(1)(b) CTMR states that, upon opposition, a CTM application shall not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. Indeed, in the present case, consumers may legitimately believe that the contested figurative mark is a new stylised version or a brand variation of the earlier mark, ‘FIT ORGANIC’, originating from the same undertaking or an economically-linked undertaking. Accordingly, consumers may confuse the origins of the conflicting goods.


Considering all the above, the Opposition Division finds that the differences between the signs are not capable of counteracting the similarity resulting from their coinciding verbal elements, ‘FIT( )ORGANIC’, and that, for highly similar goods, there is a likelihood of confusion, including a likelihood of association, on the part of the public, even considering the fact that the degree of attention for some of the relevant goods may vary from average to higher than average.


Therefore, the opposition is partially well founded on the basis of the opponent’s Community trade mark registration No 12 015 103.


It follows from the above that the contested trade mark must be rejected for the goods in Class 5 found to be similar to a high degree to the goods of the earlier trade mark.


The rest of the contested goods and services in Classes 1 and 35 are dissimilar to the opponent’s goods. 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.



COSTS


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 and services, 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

Alexandra APOSTOLAKIS

Solveiga BIEZA



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.


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