OPPOSITION No B 2 920 034

Hilliges Gipswerk GmbH & Co. KG, Hüttenweg 1, 37520, Osterode am Harz, Germany (opponent), represented by Gramm, Lins & Partner Patent- und Rechtsanwälte partGmbB, Theodor-Heuss-Str. 1, 38122, Braunschweig, Germany (professional representative)

a g a i n s t

Bionov, 755 chemin des Meinajaries Site Agroparc Bâtiment Orion, 84000 Avignon, France (applicant), represented by Regimbeau, 20 rue de Chazelles, 75847 Paris Cédex 17, France (professional representative).

On 08/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 920 034 is upheld for all the contested goods, namely:

Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; manures; chemical substances for preserving foodstuffs.

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use; fungicides; chemical compounds for medical or pharmaceutical purposes.

2. European Union trade mark application No 16 501 918 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 501 918 (fig.), namely against all the goods in Classes 1 and 5. The opposition is based on, inter alia, German trade mark registration No 302 016 104 969 for the word mark ‘PrimoFutura’. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 302 016 104 969.

1. The goods

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

Class 1: Binders for plasters and adhesives for cement; sulphates, hydrates, anhydrides and curing agents for gypsum and cement.

Class 5: Dietary preparations and food supplements; dental preparations and articles, in particular gypsum and cement for dentistry; medical and veterinary preparations and articles, in particular cements for surgical purposes and materials for surgical plaster bandages.

Class 19: Plaster [building materials], cement and grout.

The contested goods are the following:

Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; manures; chemical substances for preserving foodstuffs.

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use; fungicides; chemical compounds for medical or pharmaceutical purposes.

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

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods 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).

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 chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; chemical substances for preserving foodstuffs have the same nature as the opponent’s binders for plasters and adhesives for cement as all of them are chemicals. Even if they belong to different market sectors, they all originate from chemical companies. Consequently, their commercial origin overlaps. These goods are therefore, if not identical, at least similar to the opponent’s goods.

The contested manures and the opponent’s sulphates are or may include fertilisers. These goods are considered similar as they have the same purpose. They target the same public via the same distribution channels.

Contested goods in Class 5

The contested veterinary preparations are identically contained in both lists of goods (including synonyms).

The contested dietetic substances adapted for medical use are included in the broad category of the opponent’s dietary preparations. Therefore, they are identical.

The contested pharmaceutical preparations overlap with the opponent’s medical and veterinary preparations and articles, in particular cements for surgical purposes and materials for surgical plaster bandages. Therefore, they are identical.

The contested sanitary preparations for medical purposes are similar to a high degree to the opponent’s medical and veterinary preparations and articles, in particular cements for surgical purposes and materials for surgical plaster bandages. These goods have the same purpose, target the same public through the same distribution channels and their commercial origin also overlaps.

The contested fungicides are similar to a low degree to the opponent’s medical and veterinary preparations and articles, in particular cements for surgical purposes and materials for surgical plaster bandages. These goods have the same purpose and they are complementary. They also have the same distribution channels.

The contested chemical compounds for medical or pharmaceutical purposes are at least similar to the opponent’s medical and veterinary preparations and articles, in particular cements for surgical purposes and materials for surgical plaster bandages. These goods have at least the same distribution channels and target the same public. They also come from the same or economically linked undertakings.

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 found to be identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

The degree of attention with respect to the remaining goods will vary from average to high, depending on their specialised nature and price.

3. The signs

PrimoFutura
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 the marks 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).

The applicant claims that the word ‘PRIMO’ is weak as it means first. However, the Opposition Division does not agree with this statement as ‘PRIMO’ is not used in contemporary German with this meaning. The word ‘PRIMO’, even if it is meaningful in music, will not be associated with any meaning in relation to the relevant goods and therefore is distinctive.

The word ‘FUTURA’ in the earlier sign is similar to German words related to the meaning ‘future’, such as Futur (noun) futurist (adjective) and, moreover, ‘FUTURA’ is similar to its English equivalent ‘future’, which is generally understood by the German-speaking public as it is quite a basic English word. This word does not describe any characteristics of the goods in question and therefore is distinctive.

The element ‘ANTIOXIDANT’ in the contested sign is very similar to its German equivalent antioxidans and will be associated with a ‘substance that retards deterioration by oxidation, esp of fats, oils, foods, petroleum products, or rubber’ (information extracted from Collins English Dictionary on 05/06/2020 at https://www.collinsdictionary.com/dictionary/english/antioxidant). Bearing in mind that the relevant goods are chemicals and pharmaceutical preparations, this element is at most weak for these goods.

The figurative element of the contested sign, part of which resembles a sun, will be perceived as such. As it has no clear meaning in relation to the relevant goods, it is distinctive.

The contested sign has no element that could be considered clearly dominant.

Visually, the signs coincide in the letters ‘PRIMO’, which constitute the beginning of both signs. The signs differ in the ending ‘FUTURA’ of the earlier sign and ‘ANTIOXIDANT’ of the contested sign, which is, however, weak. 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.

The signs also differ in the figurative element and depiction of the contested mark. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛PRIMO’, present identically in both signs. The pronunciation differs in the sound of the letters ‛FUTURA’ of the earlier sign and ‘ANTIOXIDANT’ of the contested sign, which is weak.

Therefore, the signs are 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 words ‘FUTURA’ of the earlier sign and ‘ANTIOXIDANT’ of the contested sign will be associated with the abovementioned meanings. As the signs will be associated with dissimilar meanings (even though this difference lies in the weak element of the contested sign), the signs are conceptually not similar.

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 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.

5. Global assessment, other arguments and conclusion

The goods are partly identical and partly similar to varying degrees. They target the general and professional public. The level of attention varies from average to high.

The signs are visually and aurally similar to an average degree. Conceptually, they are not similar. The distinctiveness of the earlier mark is normal.

The signs coincide in the element ‘PRIMO’, which constitutes the beginning of both signs and plays a distinctive and independent role in the signs.

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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 016 104 969. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier German trade mark registration No 302 016 104 969 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Anna BAKALARZ

Katarzyna ZANIECKA

Christian STEUDTNER

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.