FERTINOVA | Decision 2517103

Date Published: Oct 1, 2017

OPPOSITION No B 2 517 103

Herogra Especiales, S.L., Polígono Juncaril, calle Loja s/n, 18220 Albolote (Granada), Spain (opponent), represented by AB Asesores, Calle Bravo Murillo, 219 - 1º B, 28020 Madrid, Spain (professional representative)

a g a i n s t

Elephant Vert SA, c/o Fondation Antenna Technologies Avenue de la Grenade 24, 1207 Genf, Switzerland (holder), represented by Durán – Corretjer, S.L.P., Còrsega, 329 (Pº de Gracia/Diagonal), 08037 Barcelona, Spain (professional representative).

On 04/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 517 103 is upheld for all the contested goods and services.

2.        International registration No 1 211 797 is entirely refused protection in respect of the European Union.

3.        The holder bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of international registration designating the European Union No 1 211 797. The opposition is based on Spanish trade mark registration No 2 272 846. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period 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 for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

For international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR, that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be six months after the first republication of the international registration, which corresponds to the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at the time of filing of the opposition). The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The holder requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely Spanish registration No 2 272 846.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The relevant date (the first republication of the contested international registration plus six months) is 08/02/2015. 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 08/02/2010 to 07/02/2015 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:        Chemical products, manures and fertilizers.

According to Rule 22(3) EUTMIR, the evidence of use must 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 21/01/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 26/03/2016 to submit evidence of use of the earlier trade mark. This deadline was extended to 26/05/2016, at the opponent’s request, on 18/03/2016. On 26/05/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Attachments 1 and 2: a large number of invoices, dated between 15/02/2011 and 11/03/2016, addressed to different distributors and customers in Spain, Portugal, Poland, Turkey and Chile. The sign  is placed at the top of the invoices near the company name. The invoices concern a large variety of goods, namely chemical products, manures and fertilisers, which can be identified by their names and the explanations given in the enclosed product catalogues.
•     Attachment 3: catalogues containing information about goods produced by the opponent, which are mainly chemical products, manures and fertilisers. The sign  is on the front cover and also at the top of some pages of the catalogues. The corresponding invoices from the supplier for more than 10 000 units of the catalogues are also submitted; however, there is no information about their distribution.
• Attachment 4: a few pages from leaflets containing information about goods produced by the opponent. The sign  is only on the cover page. The corresponding invoices from the supplier for 2 000 units of the catalogues are also submitted.
• Attachment 5: around 70 pages of brochures containing technical information about ingredients of the products. The sign  is placed at the top of the pages.
• Attachment 6: a sample of an envelope including the sign  and the corresponding invoices from the supplier for 3 000 units of envelopes.
• Attachment 7: around 30 copies of labels. The sign  is placed at the bottom of these labels and different signs are placed at the top.  These signs are also indicated in the invoices. The Opposition Division concludes that these signs and the sign ‘fertinova’ appear together on the products.
• Attachment 8: photographs of a bag and a box displaying the sign  and invoices from the suppliers of these items.
• Attachment 9: a few photographs of posters on buildings, which are specified as the warehouse of the opponent’s distributor and the opponent’s facilities.
• Attachment 10: a few undated extracts from the website www.fertinova.es displaying the sign  and giving information about the products and activities of the company.

The holder argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely, invoices, labels, brochures and packaging, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation. Furthermore, there is enough information in English about the relevant goods, ingredients and purpose of the goods in the catalogues.

The holder 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 holder’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.

The invoices show that the place of use is Spain. This can be inferred from the language of the documents and some addresses in Spain. Therefore, the evidence relates to the relevant territory.

According to Article 15(1), second subparagraph, point (b) EUTMR, the following also constitutes use within the meaning of paragraph 1: affixing of the European Union trade mark to goods or to the packaging thereof in the Union solely for export purposes.

The evidence shows that the goods were manufactured in Spain and sold in Spain, Portugal, Poland, Turkey and Chile. This clearly shows that the goods were sold in Spain and exported from the relevant territory.

Consequently, and in accordance with Article 15(1), second subparagraph, point (b) EUTMR, the evidence of use filed by the opponent contains sufficient indications concerning the place of use.

All of the evidence is dated within the relevant period.

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.

Use of the mark need not be quantitatively significant for it to be deemed genuine. What has to be evaluated is whether or not the owner has seriously tried to acquire a commercial position in the relevant market. The trade mark has to be used for goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 37).

Moreover, the obligation to produce evidence of genuine use of an earlier trade mark is not designed to monitor the commercial strategy of an undertaking. It may be economically and objectively justified for an undertaking to market a product or a range of products even if their share in the annual turnover of the undertaking in question is minimal (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 49).

In view of the above, the documents filed, namely invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. In most of the invoices submitted, the price of the product is blanked out, as the applicant pointed out. However, the quantities and the total amounts of transactions are still visible and give enough information about the commercial volume of the transactions.

In the context of Rule 22(3) EUTMIR, 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) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union 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, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, 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 purpose of this provision is to allow its proprietor to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, EU:T:2006:65, § 50).

In the present case, the use of the sign  in the evidence submitted is somewhat stylised as regards its typeface and colour; however, this does not alter its distinctive character and shows use of the mark as 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) EUTMR.

The evidence also shows that the mark has been used as registered for all the goods for which the mark is registered.

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.

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 on which the opposition is based are the following:

Class 1:        Chemical products; manures and fertilisers.

The contested goods and services are the following:

Class 1:        Chemical products used in industry, science, photography, as well as in agriculture, horticulture and forestry; fertilizers; fertilizers for agriculture; natural fertilizers and biological fertilizers; fuel-saving products.

Class 5:        Products for destroying vermin; fungicides, herbicides; pesticides and bio-pesticides for agricultural and domestic use.

Class 42:        Research and development relating to chemicals, fertilizers, pesticides and fuels and combustible materials as well as biological products.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to 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

Fertilizers are identically contained in both lists of goods.

The contested chemical products used in industry, science, photography, as well as in agriculture, horticulture and forestry are included in the broad category of the opponent’s chemical products. Therefore, they are identical.

The contested fertilizers for agriculture; natural fertilizers and biological fertilizers include or overlap with, as broader categories, the opponent’s manures and fertilisers. 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 fuel-saving products are chemical additives used to reduce fuel consumption. Since they are a kind of chemical product, they are included in the broad category of the opponent’s chemical products. Therefore, they are identical.

Contested goods in Class 5

Goods such as chemicals used in agriculture, horticulture and forestry require few processing steps to be considered finished products such as fungicides. Such chemicals may be considered to already have the same inherent purpose of fungicides, namely to kill or inhibit fungi or fungal spores, in particular when they consist of the fungicide’s active ingredient. Furthermore, the same (agro-)chemical companies may produce the semi-processed goods, as well as the final product (08/10/2012, R 1631/2012-1, QUALY / QUALIDATE, § 27-28). Therefore, these goods are similar to a low degree.

The same principles may be applied to the contested products for destroying vermin; herbicides; pesticides and bio-pesticides for agricultural and domestic use and the opponent’s chemical products. Therefore, they are similar to a low degree.

Contested services in Class 42

Research and development services are various scientific activities that are concerned with research and experimental development and contribute to the generation, dissemination and application of scientific and technical knowledge. These services mainly include services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities; such services are provided by members of professions such as chemists, physicists, engineers, etc. These services are, in particular, services for chemists, physicists and engineers who undertake evaluations, estimates, research and reports in scientific fields.

The contested research and development relating to chemicals, fertilizers, pesticides and fuels and combustible materials as well as biological products are services related especially to chemistry. They are different in nature from the opponent’s goods but they may have the same producer, end user and distribution channels. Furthermore, they can be complementary. Therefore, they are similar.

2. The signs

FERTINOVA	FERTINOVA
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The signs are identical and some of the contested goods, namely chemical products used in industry, science, photography, as well as in agriculture, horticulture and forestry; fertilizers; fertilizers for agriculture; natural fertilizers and biological fertilizers; fuel-saving products in Class 1, are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods.

Furthermore, the rest of the contested goods and services were found to be similar to various degrees to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these goods and services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the holder 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 Rule 94(3) and (6) and Rule 94(7)(d)(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

Erkki MÜNTER

Bekir GÜVEN

Marianna KONDAS

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.