novagenetics | Decision 2726985
Date Published: Sep 24, 2017
OPPOSITION No B 2 726 985
Nova Siri Genetics SRL, Via Vico Trento Nº 11, 75020 Nova Siri, Italy (opponent), represented by Sonia Del Valle Valiente, c/ Miguel Angel Cantero Oliva, 5, 53, 28660 Boadilla del Monte, Madrid, Spain (professional representative)
a g a i n s t
G.G.Global Genetics LTD, Democratias 42 Agios Dometios, 2365 Nicosia, Cyprus (holder)
On 17/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 726 985 is upheld for all the contested goods.
2. International registration No 1 278 639 is entirely refused protection in respect of the European Union.
3. The holder bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of international registration designating the European Union No 1 278 639 (figurative). The opposition is based on, European Union trade mark registration No 9 647 819
(figurative). 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 on which the opposition is based are, inter alia, the following:
Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals; malt.
The contested goods are the following:
Class 31: Seeds.
Seeds are identically contained in both lists of goods.
- 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 in the agricultural field whose level of attention will be, on the whole, average.
- The signs
Earlier trade mark | Contested sign |
The relevant territory is 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 element ‘NOVA’ which is the first verbal element of both signs might be associated by some consumers with ‘a star showing a sudden large increase in brightness and then slowly returning to its original state over a few months’. However, as this term is more scientific, it is less likely that it will come to the mind of the consumers of the relevant goods. The word ‘NOVA’ is more likely to be understood by most of the relevant public as referring to something new since it is either part of a vocabulary (in Slovenian, Croatian, Portuguese, Bulgarian (‘нова’ in Bulgarian, transliterated as ‘nova’), has a similar equivalent word (for example Czech ‘nový’ and Slovak, ‘nieuw’ in Dutch, ‘nowy’ in Polish, etc.) or will be associated with the meaning ‘new’ since it is a Latin-origin prefix derived from the word “novus”. Nevertheless, since the word ‘NOVA’ does not exist in most of the languages of the European Union, it is possible that part of the public in these territories perceive the word as meaningless. For this part of the public the word is distinctive. Accordingly, the degree of distinctiveness of this element will vary from average to below average.
The term ‘GENETICS’ placed at the end of both marks will be clearly understood by the relevant public as meaning ‘relating to genes, or the origin of something’, not only because of its high resemblance with its equivalent terms in the different European Union languages but also because it is commonly used in commerce nowadays, especially in the field of medicine and agriculture. Genetics can study among others the heredity and variation in similar or related plants. Moreover, in the seeds industry, there are a lot of seed and plant structures that have been changed by genetic engineering. Since seeds can be GMOs (i.e. ‘genetically modified organisms’), ’GENETICS’ creates a direct link with the characteristics of the goods at stake and is therefore non-distinctive.
The connotations created by ‘GENETICS’ further reinforce the concept of novelty that ‘NOVA’ can evoke for most of the relevant public.
The element ‘SIRI’ placed in the middle of the earlier mark has no meaning for most of the relevant public and is therefore distinctive for this part of the public. However, it is possible that a part of the professional public understands this element since ‘siri’ and ‘sirih’ are other names for betel which is an Asian piperaceous climbing plant, Piper betle, the leaves of which are chewed, with the betel nut, by the peoples of South East Asia as indicated in the Collins English Dictionary (available at https://www.collinsdictionary.com/dictionary/english/siri). In this case, the word ‘SIRI’ will be descriptive and non-distinctive since it will indicate the kind of the relevant goods, which are seeds.
The marks have no elements that could be considered clearly more dominant than other elements.
It is important to mention that 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). This premise fully applies to the earlier sign and to the contested sign. In the contested mark, the relevant public will more remember the verbal elements ‘NOVA GENETICS’ rather than the blue and green circle device placed at the beginning of the sign. Therefore, the device will have less weight in the comparison of the signs. Moreover, the stylisation of the letters of the signs is not really fanciful and the letter ‘O’ of the earlier mark would be seen as a strawberry, which diminishes even more its relevance since the goods are related to seeds.
Visually, the signs coincide in their first verbal element ‘NOVA’ whose degree of distinctiveness varies between average and below average. They coincide as well in the non-distinctive word ‘GENETICS’. The signs share also the same green colour of most of the letters (all but one) of the earlier mark and the word ‘GENETICS’ of the contested mark. The signs differ in the second element of the earlier mark ‘SIRI’, which has no counterpart in the contested sign and is distinctive for most of the relevant public and non-distinctive for part of the professional public. The signs further differ in the strawberry-resembling stylisation of the letter ‘O’ in ‘NOVA’, in the additional circle device in the contested sign, which has less weight in the comparison, as well as in the font of the word elements. Therefore, overall, considering the above coincidences and regardless of the differing degree of distinctiveness of the elements ‘NOVA’ and ‘SIRI’ for the different parts of the public, the signs are similar to an average 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 words ‘NOVA’ and ‘GENETICS’ present identically in both signs. The pronunciation differs in the sound of the word ‘SIRI’ in the earlier mark. Therefore, overall, regardless of the differing degree of distinctiveness of the elements ‘NOVA’ and ‘SIRI’ for the different parts of the public, the signs are similar to an average degree.
Conceptually, the signs coincide to the extent that they both refer to ‘genetics’ (for the whole public) and for a large part of the public also to something ‘new, novel’. Indeed, these concepts are of low or no distinctiveness and therefore conceptual similarity is certainly not higher than average. However, at least for a part of the public, especially the one that associates all the words with a meaning (including ‘SIRI’ as being descriptive word), the similarity is of an average degree. For another part of the public the degree of similarity is lower as, due to the presence of other meaningless and distinctive elements, the relevance of the coinciding weak ones is diminished.
Considering the impact of concepts of the elements or lack thereof of both signs the conceptual similarity between the signs varies between average and lower than average, depending on the 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.
- 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all goods in question, for the part of the relevant public who understand all the elements of the earlier mark.
For the rest of the public who sees a meaning in only part of the sign, the combination of the elements in the mark renders the mark as a whole an average degree of distinctiveness.
- Global assessment, other arguments and conclusion
The goods have been found identical and the signs are visually and aurally similar to an average degree and conceptually similar at least to a low degree. Even though the perception of the signs by the relevant public can vary, they will still be similar since due to the coincidences in the word elements ‘NOVA’ and ‘GENETICS’, which constitute all the word elements of the contested sign and represent two out of three word elements in the earlier mark, their visual and aural impression is overall similar.
It should be noted that it is the settled case law, that the finding that the earlier mark has a weak distinctive character does not, in itself, preclude a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Accordingly, even in a case involving an earlier mark of a weak distinctive character, and a trade mark applied for which is not a complete reproduction of it, there may be a likelihood of confusion on account, in particular, of a similarity between the marks and between the goods or services covered (27/04/2006, C-235/05 P, L’Oréal v OHIM, , EU:C:2006:271, § 53).
The Opposition Division would like also to underline the fact that the differences between the signs namely the absence of the word ‘SIRI’ and the letter ‘O’ stylised in a way of a strawberry in the contested sign and the additional figurative device in the contested sign are not enough to outweigh the visual, aural and conceptual similarities to exclude likelihood of confusion.
In this regard, account is taken of the fact that 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
Moreover, from the wording of Article 8(1)(b) EUTMR, ‘the likelihood of confusion includes the likelihood of association with the earlier trade mark’, it follows that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope. In the present case, the main difference between the signs is the absence of the word ‘SIRI’ in contested sign, while it is present in the middle of the earlier mark. It is therefore, conceivable that the relevant public will make a connection between the conflicting signs and assume that the goods covered are from the same or economically linked undertakings.
Consequently, in relation to identical goods, consumers may legitimately believe that the contested trade mark, is a new version or a brand variation of the earlier mark, originating from the same undertaking as the earlier mark or from an economically linked undertaking. In other words, consumers may confuse the origins of the conflicting goods.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 647 819. It follows that the contested mark must be rejected for all the contested goods.
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
Teodora TSENOVA-PETROVA | Vita VORONECKAITE | Vít MAHELKA |
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.