ICEBREAKER | Decision 2783739
Date Published: Sep 28, 2017
OPPOSITION No B 2 783 739
Certis Europe BV Sucursal España, Parque Industrial Elche C/ Juan de Herrera, 5 Planta Baja Izda, 03203 Elche, Spain (opponent), represented by AB Asesores, Calle Bravo Murillo, 219 - 1º B, 28020 Madrid, Spain (professional representative)
a g a i n s t
Agra Group a.s., Tovární 201, 387 15 Střelské Hoštice, Czech Republic (applicant), represented by Inventia S.R.O., Na Bělidle 3, 150 00 Praha 5, Czech Republic (professional representative).
On 27/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 783 739 is upheld for all the contested goods.
2. European Union trade mark application No 15 558 505 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods (in Class 1) of European Union trade mark application No 15 558 505 (word mark: “ICEBREAKER”). The opposition is based on Spanish trade mark registration No 3 048 357 (word mark: “BREAKER”). 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 goods
The goods in Class 1 on which the opposition is based are the following:
Chemical products for agriculture, horticulture and forestry; manures.
The contested goods in Class 1 are the following:
Fertilisers, and chemicals for use in agriculture, horticulture and forestry; Fertilizers; Manures; Garden feeds [fertilizers]; Products (chemicals) for the protection of plants [other than fungicides, weedkillers, herbicides, insecticides, parasiticides].
Chemicals for use in agriculture, horticulture and forestry; manures are identically contained in both lists of goods.
The remaining contested Fertilizers; Garden feeds [fertilizers]; Products (chemicals) for the protection of plants [other than fungicides, weedkillers, herbicides, insecticides, parasiticides] are included in the broad category of the opponent’s Chemical products for agriculture. Therefore, they are identical.
- 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 are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is considered between average and high, because they will not be purchased on a daily basis and will be selected carefully.
Given that the general public is more prone to confusion, the examination will proceed on this basis.
- The signs
BREAKER | ICEBREAKER |
Earlier trade mark | Contested sign |
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 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).
Both signs are word marks, which are protected in all different typefaces.
The common element ‘BREAKER” of the signs has no meanings for the relevant public and is, therefore, distinctive.
The element “ICE” of the contested sign will be understood as a basic word of the English language with the same meaning. As it is not descriptive, allusive or otherwise weak for the relevant goods it is distinctive.
Visually and aurally, the earlier trade mark is completely included as a second element of the contested sign. The signs differ in the first element of the contested sign “ICE”. As the element “BREAKER” is visually and aurally identical, the signs have a similar rhythm, sound and pronunciation. Therefore, they are visually and aurally similar to an above average degree.
Conceptually, only the element “ICE” has a comprehensible meaning for the Spanish consumers, the rest of the signs are meaningless. Since a part of the contested sign has meaning, and the earlier trade mark has not, 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.
- 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.
- Global assessment, other arguments and conclusion
A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17; and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).
For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 30/06/2004, T-186/02, Dieselit, EU:C:2011:238, § 38).
The contested goods are identical.
Taking into account the visual and aural similarities between the signs, the fact that the earlier trade mark is completely included in the contested sign as its second part and the normal degree of distinctiveness of the earlier trade mark, there is, even taking into account a high degree of attention for a part of the public and the fact, that the signs are conceptually not similar, a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld. This applies all the more when the degree of attention of the public is only average.
Considering all the above, there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.
Contrary to the arguments of the applicant, the differences between the signs are not sufficient, to distinguish them clearly from each other. They will be taken into account as coming from the same or economically linked undertakings.
The opposition is well founded under Article 8(1)(b) EUTMR.
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 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 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
Lars HELBERT
| Peter QUAY | Claudia MARTINI |
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.