OPPOSITION No B 2 898 016

FloraPrima GmbH, Didderser Straße 32, 38176 Wendeburg, Germany (opponent), represented by Jurawerk Rechtsanwälte Eisele & Wille PARTG, Frankfurter Str. 2, 38122 Braunschweig, Germany (professional representative)

a g a i n s t

Affort Impex Ltd, 306 Premier Building. Albert Street, Victoria, Seychelles (applicant), represented by Enrico La Malfa, Via Santo Stefano 58, 40125 Bologna, Italy (professional representative).

On 07/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 898 016 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 176 703 . The opposition is based on European Union trade mark registration No 10 875 334 ‘FLORAPRIMA’. 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.

1. The goods and services

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

Class  31: Agricultural, horticultural and forestry products and grains, included in class 31; fresh fruits and vegetables; natural flowers, in particular cut flowers and bouquets and wreaths made therefrom, all the aforesaid goods included in class 31, and natural plants and seeds.

Class 35: Retailing, including via the Internet, relating to grains and agricultural, horticultural and forestry products, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, animal foodstuffs, malt, tools, in particular hand-operated tools and implements for agricultural, horticultural and forestry purposes, leather goods and saddlery, umbrellas and parasols, glass vases, porcelain and earthenware, household or kitchen utensils and containers, games and playthings, in particular soft toys, coffee, tea, cocoa, bread, spices, tarts, chocolate and other confectionery, alcoholic beverages.

Class 39: Delivery of mail-order goods, namely grains and agricultural, horticultural and forestry products, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, animal foodstuffs, malt, tools, in particular handoperated tools and implements for agricultural, horticultural and forestry purposes, leather goods and saddlery, umbrellas and parasols, glass vases, porcelain and earthenware, household or kitchen utensils and containers, games and playthings, in particular soft toys, coffee, tea, coca, bread, spices, tarts, chocolate and other confectionery, alcoholic beverages; packing of and transportation of the aforesaid goods.

The contested goods and services are the following:

Class 31: Plants, other than belonging to the botanical genera beta, brassica, gossypium, impatiens, lens, pisum, solanum and hordeum; live trees, other than belonging to the botanical genera beta, brassica, gossypium, impatiens, lens, pisum, solanum and hordeum; shrubs, other than belonging to the botanical genera beta, brassica, gossypium, impatiens, lens, pisum, solanum and hordeum; seeds, other than belonging to the botanical genera beta, brassica, gossypium, impatiens, lens, pisum, solanum and hordeum; seeds, bulbs and plants for cultivation, other than belonging to the botanical genera beta, brassica, gossypium, impatiens, lens, pisum, solanum and hordeum; flowers; bouquets of fresh flowers; dried flowers; floral decorations [fresh]; floral decorations [natural]; floral decorations [dried]; plant residues (raw materials); hanging basket liners [moss].

Class 39: Transportation of plants; flower delivery; flower delivery; courier services for the delivery of parcels; advisory services relating to the tracking of goods in transit; collection, transport and delivery of goods, documents, parcels and letters; packaging articles for transportation; gift wrapping.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’ ‘including’, used in the opponent’s list indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’ used in the opponent’s list to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

Contested goods in Class 31

All the contested goods in this class listed above belong to the opponent’s broad category of horticultural products and grains, included in class 31. Therefore, these goods in comparison are identical.

Contested services in Class 39

The contested transportation of plants; flower delivery; flower delivery are identical to the opponent’s delivery of mail-order goods, namely horticultural products since the purpose of both is to have the same goods delivered.

The contested courier services for the delivery of parcels; advisory services relating to the tracking of goods in transit; collection, transport and delivery of goods, documents, parcels and letters; are services of a rather broad definition, all with the purpose of providing transportation of goods. Since the Opposition Division cannot dissect ex officio these broad categories, they are considered identical to the opponent’s services in this Class, namely delivery of mail-order goods, namely grains and agricultural, horticultural and forestry products, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, animal foodstuffs, malt, tools, in particular handoperated tools and implements for agricultural, horticultural and forestry purposes, leather goods and saddlery, umbrellas and parasols, glass vases, porcelain and earthenware, household or kitchen utensils and containers, games and playthings, in particular soft toys, coffee, tea, coca, bread, spices, tarts, chocolate and other confectionery, alcoholic beverages; packing of and transportation of the aforesaid goods.

The contested packaging articles for transportation; gift wrapping overlap with the opponent’s packing of the aforesaid goods (grains and agricultural, horticultural and forestry products, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, animal foodstuffs, malt, tools, in particular handoperated tools and implements for agricultural, horticultural and forestry purposes, leather goods and saddlery, umbrellas and parasols, glass vases, porcelain and earthenware, household or kitchen utensils and containers, games and playthings, in particular soft toys, coffee, tea, coca, bread, spices, tarts, chocolate and other confectionery, alcoholic beverages).They are identical.

2. 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 are directed both at the public at large.

The degree of attention is considered to be average.

3. The signs

FLORAPRIMA
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 earlier mark consists of the verbal element ‘FLORAPRIMA’ in capital letters while the contested sign is made up of the verbal elements ‘Flora’ in purple, with a fanciful initial letter, and ‘EXPRESS’ in pink letters. To the left of the letter ‘F’, there are three horizontal stripes: two in yellow and one in pink. It is to be noted that while the signs’ verbal elements as a whole lack any meaning, consumers tend to recognize parts which are meaningful to them (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57). In the present case, the signs’ verbal element is likely to be perceived as the combination of two words: ‘Flora’ and ‘Prima’ in the earlier mark and ‘Flora’ and ‘EXPRESS’ in the contested sign.

‘Flora’ is a basic Latin term that either exists as such or has close equivalents in the relevant languages. While the opponent argues that consumers do not speak Latin and would not understand ‘FLORA’, the fact remains that this word exists as such (for example, in English, Spanish, Swedish, Danish, Dutch, Romanian or German) or in very similar variations, such as ‘flore’ in French. Accordingly, ‘Flora’ will be understood by the relevant public as meaning ‘plants, flowers, plant life’ (12/06/2014, R 1189/2013-5, § 22). Consequently, this word is non-distinctive for all the goods and services which are directly related to flowers and plants (all goods in Class 31 and most of the services in Class 39) while it is weak with regard to the remaining services in question since it cannot be excluded that flora is the subject matter of these services.

With regard to ‘PRIMA’, it will either be understood as referring to good quality or high importance (‘prima’ in German and Dutch, ‘príma’ in Hungarian, ‘prime’ in English, for example), or as first of something (in Italian, for example) or even with both of these meanings (in Romanian for example), in which cases it will be viewed as a strong allusion to good quality, and its distinctiveness will be below average.

The contested sign’s other word, ‘EXPRESS’ will be understood as a common term referring to goods or services delivered or provided fast. This word, therefore, lacks distinctiveness for the relevant services while it is somehow allusive with regard to the contested goods. The three stripes will be viewed as a decorative element.

Visually, the signs coincide in the word ‘FLORA’ and differ in their second word elements ‘PRIMA’ and ‘EXPRESS’ as well in the colours, typeface and additional device of the contested sign. Reference is made to the preceding paragraphs concerning the distinctiveness of these word elements. Accordingly, the coinciding verbal element ‘FLORA’ is non-distinctive/weak, therefore, it has limited role in the visual impression produced thereby, and consumers will seek other elements to visually identify the signs. Since the signs’ second elements, ‘PRIMA’ and ‘EXPRESS’ are different in the number of letters and structure of consonants and vowels, it can be concluded that these differences, in combination with the impact of the fanciful lettering and the colours of the contested sign, are capable of counteracting to a significant extent the impact of signs’ coinciding verbal element. Therefore, the signs must be considered to be similar, at most, to a low 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 the letters ‛FLORA’, present identically in both signs. The pronunciation differs in the sound of the letters of their second verbal elements ‘PRIMA’ vs ‘EXPRESS’. Since the coinciding verbal element is non-distinctive/weak, consumers will also pay attention to the signs’ second, differing words ‘PRIMA’ and ‘EXPRESS’. While these elements are not of particularly high distinctiveness either, consumers will perceive and read the whole of both signs, in which case these, differing verbal elements make the signs sound overall in a rather different way. Consequently, these additional verbal elements play an important aural role and the differences in the number of letters and, in particular, the rather strong aural impact of the letter combination ‘XPR’ in the contested sign have a counteracting effect on the overall impression produced by the signs. Therefore, the signs are considered to be similar, at most, to a low degree.

Conceptually, while neither of the signs has a meaning as a whole, consumers are likely to recognize and understand the verbal elements of which they are composed. Accordingly, the coinciding word ‘FLORA’ will evoke a concept, however, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive/weak and cannot in itself indicate the commercial origin of the goods and services. The attention of the public will be attracted by the additional verbal elements which have different meanings. Therefore, the signs are conceptually dissimilar or, at most, similar to a low degree, also for the reasons explained in the preceding paragraphs.

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

4. 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 is likely to be perceived as a whole and, as such, it has no meaning for any of the goods and services 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 some non-distinctive/weak elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods and services have been found to be identical while the signs are, at best, similar to a low degree visually, aurally and conceptually.

The only coincidence between the signs lies in a word which is non-distinctive or weak. As explained above, the signs’ second, differing verbal, figurative and colour elements will have a sufficiently important visual, aural and conceptual role to counteract the coincidence in one word. All the differences identified in the preceding paragraphs, if combined, would make it unlikely for consumers to confuse the signs. It is also to be noted that figurative or stylistic elements of a composite sign cannot summarily be dismissed for the purposes of the comparison of the signs to the extent to which they can add to the differentiation between them or even contribute to a different overall impression (see, to that effect, 18/10/2011, T-304/10, ‘Caldea’, § 39, EU:T:2011:602 and further case-law cited therein). This is relevant for the present case since the contested sign’s fonts and colours are capable of contributing to the different overall impression of the sign in comparison with the simple word mark invoked by the opponent. Furthermore, the relevant goods are fairly ordinary consumer products that are purchased in shops where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T 488/07, Egléfruit, EU:T:2010:145). As to the services, whether these are ordered on a visual or aural basis will not alter the fact that the similarities are still low and the coincidence in an element of limited distinctiveness combined with additional, differing elements is sufficient to rule out any risk of confusion.

Considering all the above, even though the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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.

The Opposition Division

Ioana MOISESCU

Ferenc GAZDA

Rasa BARAKAUSKIENÉ

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.