Gat Microencapsulation v OHMI - BASF (KARIS) (Judgment) [2015] EUECJ T-720/13 (30 September 2015)

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(Community trade mark — Opposition proceedings — Application for the Community word mark KARIS — Earlier Community marks and earlier international mark CARYX — Earlier national marks and earlier Benelux mark AKRIS — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

GAT Microencapsulation GmbH (formerly GAT Microencapsulation AG), established in Ebenfurth (Austria), represented by S. Soler Lerma and C. March Cabrelles, lawyers,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by I. Harrington, acting as Agent,

ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 28 October 2013 (Case R 1862/2012-5) relating to opposition proceedings between BASF SE and GAT Microencapsulation GmbH (formerly GAT Microencapsulation AG),

composed of S. Frimodt Nielsen, President, F. Dehousse (Rapporteur) and A.M. Collins, Judges,

having regard to the application lodged at the Court Registry on 30 December 2013,

1 On 7 April 2011 the applicant, Gat Microencapsulation GmbH (formerly Gat Microencapsulation AG), filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

3 The goods and services in respect of which registration was sought are in Classes 1, 5 and 35 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.

4 In the trade mark application, as adapted by the applicant following letters from OHIM, those goods and services correspond to the following descriptions:

– Class 1: ‘Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fertilisers, plant-enriching substances; fire extinguishing compositions; Tempering and soldering preparations; Chemical substances for preserving foodstuffs; Tanning substances; adhesives used in industry; plant preservation and care preparations’;

– Class 5: ‘Chemical and veterinary products; sanitary preparations for medical purposes; dietetic substances adapted for medical use; disinfectants; preparations for destroying vermin; fungicides, herbicides, and phytosanitary products; plant protection preparations; capsules and micro capsules for medicines and active ingredients’;

– Class 35: ‘Advertising; business management; business administration; import-export of goods, import-export agencies; retail services relating to chemicals used in industry, science and photography, in agriculture, horticulture and forestry, unprocessed artificial resins, unprocessed plastics, manures, fertilisers, plant-enriching substances, fire extinguishing compositions, tempering and soldering preparations, chemical substances for preserving foodstuffs, tanning substances, adhesives used in industry, plant preservation and care preparations, chemical and veterinary products, sanitary preparations for medical purposes, dietetic substances adapted for medical use, disinfectants, preparations for destroying vermin, fungicides, herbicides, and phytosanitary products, plant protection preparations, capsules and micro capsules for medicines and active ingredients of products before said; commercial management of the licensing of goods and services for others; distribution of samples; presentation of goods on any communication media, for retail purposes; sales promotion (for others); procurement of goods and services for others; distribution of goods for advertising purposes; all the aforesaid services relating to chemicals used in industry, science and photography, in agriculture, horticulture and forestry, unprocessed artificial resins, unprocessed plastics, manures, fertilisers, plant-enriching substances, fire extinguishing compositions, tempering and soldering preparations, chemical substances for preserving foodstuffs, tanning substances, adhesives used in industry, plant preservation and care preparations, chemical and veterinary products, sanitary preparations for medical purposes, dietetic substances adapted for medical use, disinfectants, preparations for destroying vermin, fungicides, herbicides, and phytosanitary products, plant protection preparations, capsules and micro capsules for medicines and active ingredients of products before said; all the aforesaid services also provided via global telecommunications networks’.

5 The Community trade mark application was published in Community Trade Marks Bulletin No 2011/121 of 30 June 2011.

6 On 26 September 2011 BASF SE filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for, in respect of all the goods and services referred to in the trade mark application.

– the Community word mark CARYX, filed on 15 June 2010 and registered on 8 October 2010 under No 9211665 for the goods corresponding to the following description:

– the international word mark CARYX, designating Bulgaria, the Czech Republic, Denmark, Estonia, Ireland, Latvia, Lithuania, Hungary, Austria, Romania, Slovakia and the United Kingdom, filed and registered on 16 June 2010 under No 1045954 for goods corresponding to the following description:

– the Hungarian word mark AKRIS, filed on 2 September 2010 and registered on 18 April 2011 under No 202879 for goods corresponding to the following description: ‘herbicides’ in Class 5;

– the Italian word mark AKRIS, filed on 27 August 2010 and registered on 27 August 2010 under reference MI 2010 C 008830 for goods corresponding to the following description: ‘herbicides’ in Class 5;

– the Benelux word mark AKRIS, filed on 6 September 2010 and registered on 10 December 2010 under No 887363 for goods corresponding to the following description: ‘herbicides’ in Class 5.

8 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

9 By letter of 27 April 2012, the applicant amended its trade mark application by inserting certain restrictions in the list of goods and services referred to.

10 Accordingly, the goods referred to in the trade mark application now correspond to the following descriptions:

– Class 1: ‘Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry excluding manures, growth regulator for plants and fertilizers; unprocessed artificial resins, unprocessed plastics; fire extinguishing compositions; Tempering and soldering preparations; Chemical substances for preserving foodstuffs; Tanning substances; adhesives used in industry; plant preservation and care preparations, excluding manures, growth regulator for plants and fertilizers; all the aforesaid goods not relating to dietetic substances adapted for medical use, food supplements for medical purposes, food supplement substances; dietetic food for medical purposes; dietetic beverages adapted for medical purposes’;

– Class 5: ‘Chemical and veterinary products; sanitary preparations for medical purposes; disinfectants; preparations for destroying vermin; phytosanitary products, excluding fungicides and herbicides; plant protection preparations; capsules and micro capsules for medicines and active ingredients; all the aforesaid goods not relating to dietetic substances adapted for medical use, food supplements for medical purposes, food supplement substances; dietetic food for medical purposes; dietetic beverages adapted for medical purposes’;

– Class 35: ‘Advertising; business management; business administration; import-export of goods, import-export agencies; retail services relating to chemicals used in industry, science and photography, in agriculture, horticulture and forestry excluding manures, growth regulator for plants and fertilizers, unprocessed artificial resins, unprocessed plastics, fire extinguishing compositions, tempering and soldering preparations, chemical substances for preserving foodstuffs, tanning substances, adhesives used in industry, plant preservation and care preparations excluding manures, growth regulator for plants and fertilizers, chemical and veterinary products, sanitary preparations for medical purposes, disinfectants, preparations for destroying vermin, phytosanitary products, excluding fungicides, growth regulator for plants and herbicides, plant protection preparations, capsules and micro capsules for medicines and active ingredients of products before said; commercial management of the licensing of goods and services for others; distribution of samples; presentation of goods on any communication media, for retail purposes; sales promotion (for others); procurement of goods and services for others; distribution of goods for advertising purposes; all the aforesaid services relating to chemicals used in industry, science and photography, in agriculture, horticulture and forestry, excluding manures, growth regulator for plants and fertilizers, unprocessed artificial resins, unprocessed plastics, fire extinguishing compositions, tempering and soldering preparations, chemical substances for preserving foodstuffs, tanning substances, adhesives used in industry, plant preservation and care preparations excluding manures, growth regulator for plants and fertilizers, chemical and veterinary products, sanitary preparations for medical purposes, disinfectants, preparations for destroying vermin, phytosanitary products, excluding fungicides, growth regulator for plants and herbicides; plant protection preparations, capsules and micro capsules for medicines and active ingredients of products before said; all the aforesaid services also provided via global telecommunications networks; all the aforesaid goods not relating to dietetic substances adapted for medical use, food supplements for medical purposes, food supplement substances; dietetic food for medical purposes; dietetic beverages adapted for medical purposes’.

11 In its observations of 23 July 2012, BASF pointed out that, despite the restrictions made by the applicant in the list of goods and services referred to in its trade mark application, the remaining goods and services were still at the very least similar to the goods in question, and that the likelihood of confusion persisted.

12 By decision of 9 August 2012, the Opposition Division upheld the opposition in part and rejected the trade mark application in part, on the ground that there was a likelihood of confusion between, inter alia, the mark applied for and the earlier Community word mark CARYX, in respect of the following goods:

– Class 1: ‘Chemicals used in industry, science, as well as in agriculture, horticulture and forestry excluding manures, growth regulator for plants and fertilizers; plant preservation and care preparations, excluding manures, growth regulator for plants and fertilizers; all the aforesaid goods not relating to dietetic substances adapted for medical use, food supplements for medical purposes, food supplement substances; dietetic food for medical purposes; dietetic beverages adapted for medical purposes’;

13 On 8 October 2012 the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, by which it requested OHIM to reject the opposition and to register the mark applied for.

14 By decision of 28 October 2013 (‘the contested decision’), the Fifth Board of Appeal of OHIM allowed the appeal in part and annulled the Opposition Division’s decision to the extent that it upheld the opposition in respect of the following goods in Class 5: ‘capsules and micro capsules for medicines’, ‘sanitary preparations for medical purposes’ and ‘veterinary products’, which the Board of Appeal found to be dissimilar to the goods covered by BASF’s marks. It therefore rejected the opposition in respect of those goods. On the other hand, having upheld the existence of a likelihood of confusion between the mark applied for and the earlier mark CARYX for the other goods applied for, it dismissed the appeal as to the remainder. For reasons of procedural economy, the Board of Appeal did not examine the other opposing earlier rights, namely the registrations of the word mark AKRIS in certain Member States and in Benelux.

17 In its reply, the applicant requested that Mr G, an employee of the applicant responsible for research and development and intellectual property, be examined as a witness.

18 The applicant essentially raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

19 As a preliminary point, it should, first, be noted that, for reasons of procedural economy, the examination by the Board of Appeal only concerned the comparison between the mark applied for KARIS and the earlier word sign CARYX, registered by BASF as a Community trade mark and an international trade mark for ‘plant growth regulating preparations’ and ‘fungicides’.

20 Secondly, it should be noted that the goods covered by the mark applied for still at issue at the stage of the action before the General Court are, essentially, the following:

– Class 5: ‘Chemical products; disinfectants; preparations for destroying vermin; phytosanitary products, excluding fungicides and herbicides; plant-protection preparations; capsules and micro capsules for active ingredients’.

21 It should be added that, despite certain statements in the application which may suggest a possible intention to limit the product claims to insecticides only, the applicant did not restrict the list of goods after the restriction made on 27 April 2012.

22 Thus, even after OHIM’s comment in its response, the applicant took no steps to amend the list of goods covered by the mark applied for, which continues to include all the headings listed following the restriction of 27 April 2012, before OHIM or before the Court in order to withdraw its application in part. The applicant, moreover, continues in its reply to maintain its claims in respect of that list. Accordingly, it is on that basis that the action should be examined.

23 However, it should be borne in mind that Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

24 According to established case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally according to the relevant public’s perception of the signs and the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services concerned (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

25 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and the case-law cited).

26 The applicant complains, in essence, that the Board of Appeal took the view that the relevant public displayed merely an average level of attention. However, in the applicant’s view, the goods at issue are not everyday consumer goods. Some of the goods require certain safety measures and, consequently, the consumer displays a higher level of attention than for ordinary goods. The goods compared are of interest primarily to professionals, or, in the case of certain goods, only to professionals. If an ordinary consumer were none the less interested, his level of attention would be very high on account of the nature of those goods.

28 It should be noted that the Board of Appeal took the view that the relevant public, in the EU, with regard to the earlier Community trade mark, and in certain Member States, with regard to the earlier international trade mark (Bulgaria, the Czech Republic, Denmark, Estonia, Ireland, Latvia, Lithuania, Hungary, Austria, Romania, Slovakia and the United Kingdom) was made up of the general public and professionals.

29 The Board of Appeal noted that, in any event, the relevant public was deemed to be reasonably well informed, observant and circumspect and added that it should be borne in mind that the average consumer’s level of attention was likely to vary according to the category of goods in question.

30 The Board of Appeal added that, in the present case, the relevant public’s level of attention was at least average and went on to conclude that, even assuming an enhanced level of attention on the part of the relevant public, there is a likelihood of confusion.

31 It follows that the contested decision is ultimately based on the Board of Appeal’s view of a relevant public — made up of professionals and consumers — with a level of attention that is at least average or may be enhanced. That assessment of the relevant public is correct.

32 It should be added that, contrary to what the applicant appears to suggest, the Board of Appeal’s analysis in no way excluded the possibility that a product could, if required, be marketed in a form intended solely for professionals. The Board of Appeal’s examination of the goods in question, applies, ultimately, both to goods whose packaging or method of sale is aimed at professionals only and to the same products when packaged or marketed on a wider basis.

33 The applicant is therefore wrong to suggest that the Board of Appeal did not duly take into account professionals and that it restricted itself, in its examination of the likelihood of confusion, to a relevant public with a merely average level of attention.

34 The applicant contests the Board of Appeal’s findings that the goods in question are similar or identical.

35 OHIM submits that the Board of Appeal correctly examined whether the products are similar and that it did not err in its assessments.

36 According to settled case-law, in assessing the similarity of the goods concerned, all the relevant factors relating to those goods should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgments of 4 November 2003 in Díaz v OHMI - Granjas Castelló (CASTILLO), T‑85/02, ECR, EU:T:2003:288, paragraph 32, and 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited).

37 The various product headings covered by the mark applied for still at issue in the present action should be examined.

‘Chemicals used in industry, science, as well as in agriculture, horticulture and forestry excluding manures, growth regulator for plants and fertilizers’ and ‘plant preservation and care preparations, excluding manures, growth regulator for plants and fertilizers’

38 As regards the abovementioned goods in Class 1, which appear in the trade mark application, the Board of Appeal considered that they were similar to the ‘plant growth regulating preparations’ in Class 1 covered by the earlier marks.

40 Although the fact that during the administrative procedure (see paragraph 9 above) the applicant expressly excluded ‘growth regulator for plants and fertilizers’ from the heading ‘chemicals used in industry, science, as well as in agriculture, horticulture and forestry’ meant that that heading, which is very broad, was not considered identical to the more specific heading ‘plant growth regulating preparations’ of the earlier marks, that exclusion did not preclude a finding that the goods were similar.

41 As the Board of Appeal essentially found, the ‘chemicals used in industry, science, as well as in agriculture, horticulture and forestry excluding ... growth regulator for plants and fertilizers’ of the mark applied for and the ‘plant growth regulating preparations’ of the earlier marks clearly designate chemicals, which, while certainly not identical (because of the exclusion), may none the less share the same general purpose (the care of plants) and methods of use, be distributed through the same channels and be produced by the same companies.

42 Contrary to what the applicant suggests, taking into account the shared purpose concerning the care of plants does not in any way lead to a finding of identity. There is merely a finding, in the contested decision, because of the exclusion made by the applicant, of similarity on account of, inter alia, a shared purpose, which in the present case is the care of plants.

43 Furthermore and contrary to what the applicant suggests, the reference to ‘industry’ and ‘science’ in the product heading referred to by the mark applied for is consistent with that finding of similarity. Indeed, as OHIM notes, science includes the study of plants. For its part,, industry covers, inter alia, the genetically modified cultures sector and agro-industrial activities such as agrofuel production. Accordingly, ‘chemicals used in industry, science, as well as in agriculture, horticulture and forestry excluding ... growth regulator for plants and fertilizers’ cover goods which, while certainly not identical (because of the exclusion) are similar to the ‘plant growth regulating preparations’ of the earlier marks.

44 As regards the applicant’s reference to the classification tool for goods and services TMclass, it should be noted that, as OHIM asserts and as indicated moreover in the specifications for that tool, it is not part of the Nice classification system and has no legal effect on trade mark examination or the comparison of goods and services. Furthermore, it should be noted that the classification of goods and services under the Nice Agreement is intended to serve exclusively administrative purposes (see, to that effect, judgment of 25 October 2012 in riha v OHIM– Lidl Stiftung (VITAL&FIT), T‑552/10, EU:T:2012:576, paragraph 39). The scope of protection under trade mark law is therefore not determined by a term’s inclusion in a taxonomic information structure but by the usual meaning of that term. The purpose of the Nice classification is only to facilitate the drafting and processing of trade mark applications by suggesting certain classes and categories of goods and services. By contrast, the headings of the classes do not constitute a system in which goods or services included in one class or category are precluded from also forming part of another class or category, as is apparent, in particular, from Rule 2(4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) (judgment of 21 October 2014 in Szajner v OHIM — Forge de Laguiole (LAGUIOLE), T‑453/11, ECR, EU:T:2014:901, paragraph 88).

45 The same considerations as those set out in paragraph 41 above apply to the heading ‘plant preservation and care preparation’ in the trade mark application, in respect of which the applicant inserted the same exclusion of ‘growth regulator for plants and fertilizers’. That heading also covers goods which are certainly not identical — on account of the exclusion — but none the less similar to ‘growth regulator for plants and fertilizers’ in Class 1 covered by the earlier marks.

46 When criticising the Board of Appeal’s finding of similarity, the applicant fails to demonstrate how the nature and purpose of the goods that it and BASF actually offer for sale differ.

47 It should be borne in mind that, within the context of opposition proceedings initiated on the basis of Article 8(1)(b) of Regulation No 207/2009 by the proprietor of an earlier trade mark, the examination of a possible similarity between the goods and services covered by the mark applied for and by the earlier mark must be carried out by reference to the list of goods and services covered by those two marks and not to the goods or services actually marketed under those marks (see judgment of 4 April 2014 in Golam v OHIM — Derby Cycle Werke (FOCUS extreme), T‑568/12, EU:T:2014:180, paragraph 30 and the case-law cited.

48 It follows that, in general, all the applicant’s arguments relying, in the present action, on a specific comparison of the goods alleged to be offered for sale by the applicant and BASF respectively under the trade marks at issue (namely an insecticide for the applicant and a fungicide for colza for BASF) are not relevant for the purposes of the comparison of the goods.

49 Finally, as regards the argument that BASF cannot block, on the basis of a trade mark registered for ‘plant growth regulating preparations’, the registration of all chemicals used in agriculture, first, it should be noted that it is not a question at this stage of ‘blocking a trade mark registration’ but merely of examining whether the goods are similar. Secondly and in particular, it should be observed that it is the applicant who, by means of the very broad product claims included in its trade mark application, seeks the wider protection and therefore is more likely to be faced with a finding of similarity with the goods covered by BASF’s marks.

50 Before examining the other categories of goods still at issue under the mark applied for, it should be noted that, given the statements made in paragraph 44 above, which, moreover, appear, essentially, in the second and third sentences of paragraph 18 of the contested decision, the Board of Appeal, logically, should have compared not only the goods in a single class of the Nice Classification but also goods between classes, to the extent that they were relevant. Therefore, given the purely administrative nature of the Nice classification, there is no explanation as to why the Board of Appeal did not compare the applicant’s ‘chemicals used in industry, science, as well as in agriculture, horticulture and forestry excluding manures, growth regulator for plants and fertilizers’ (Class 1) with BASF’s ‘fungicides’ (Class 5). However, both before the Opposition Division and the Board of Appeal, BASF claimed that those goods at issue in different classes were similar or identical.

51 Such a comparison should have led to a finding of not only similarity but identity, since ‘fungicides’ are ‘chemicals used in industry, science, as well as in agriculture, horticulture and forestry’ according to the usual meaning of those product headings, which is the only meaning relevant to the comparison of goods. The fact that the Nice Classification provides that Class 1 does not include, inter alia, fungicides, meaning that those chemical products are classified elsewhere in that classification is a purely administrative issue.

52 As regards the ‘chemical products’ covered by the mark applied for, the Board of Appeal found that those goods were identical to the ‘fungicides’ of the earlier marks.

53 That assessment, which the applicant does not seriously contest, must be upheld. The very broad heading ‘chemical products’ of the mark applied for includes chemicals such as the ‘fungicides’ of the earlier marks.

54 The Board of Appeal found that those goods, which include agents used for destroying the germs of infectious diseases in plants, may have a similar nature (chemical products) to BASF’s ‘fungicides’. The Board considered that they shared a similar purpose (curing plant diseases), could have a similar method of use (for example, they can be sold in liquid form to be sprayed), and could be produced by the same type of undertaking and sold via the same channels. The Board of Appeal therefore concluded that the goods are highly similar.

55 That assessment, which the applicant has not specifically disputed, is correct.

56 The Board found that those goods, which are pesticides, may share with BASF’s fungicides a similar nature (chemical products) and a similar purpose (treating plant diseases); they may have a similar method of use (for example, they can be sold in liquid form to be sprayed), and be produced by the same type of undertaking and sold via the same channels. The Board of Appeal therefore concluded that the goods are highly similar.

57 The applicant claims that the ‘preparations for destroying vermin’ covered by the mark applied for are intended to kill vermin (rodents, insects and disease vectors) while the ‘fungicides’ of the earlier mark are intended to destroy fungus that may attack crops. The applicant accordingly argues that the method of use and the aims of those goods are different.

58 It should be noted that those considerations do not call into question the Board of Appeal’s finding of similarity. It is certainly the case that ‘preparations for destroying vermin’ target animals while ‘fungicides’ target fungi. However, the fact remains that the shared purpose of the goods concerned is to care for plants by protecting them from harm and the methods of sale and use and production origins may be the same.

59 The Board found that the applicant’s ‘phytosanitary products, excluding fungicides and herbicides’ and BASF’s ‘fungicides’ were highly similar on account of their similar nature (chemical products), their similar purpose (treating plant diseases), the fact that they may have a similar method of use (for example, they can be sold in liquid form to be sprayed) and may be produced by the same type of undertaking and sold via the same channels.

60 The applicant argues that by excluding ‘fungicides and herbicides’ from ‘phytosanitary products’, it restricted its claim to insecticides. According to the applicant, each phytosanitary product is prepared in order to remedy a single specific problem and there is therefore no competition between BASF’s ‘fungicides’ and insecticides. The methods and timings for application and the security measures are different.

61 Once again, it should be noted that, while it is true that fungicides, herbicides and insecticides target different plant aggressors (fungus, undesirable plants and insects respectively), those differences, while meaning that the goods are not identical, do not preclude the Board of Appeal’s finding that they are highly similar.

62 The goods in question share a similar purpose, namely the care of plants, which is moreover reflected in the fact that they are all phytosanitary products, which may be used in a similar manner and are usually produced by the same type of undertaking and sold via the same channels.

63 The fact that there may be technical differences between certain goods, which, in some cases, are significant and which the applicant seeks to establish by relying on two products actually marketed by itself and BASF, does not affect the validity of the finding of similarity.

64 It should be added that the applicant’s allegation that there is no ‘likelihood of confusion’ between the goods in question does not take into account the relevant criterion for comparing goods for the purposes of examining the relative ground set out in Article 8(1)(b) of Regulation No 209/2007. The ‘likelihood of confusion’ does not refer to the goods but to the marks at issue and a finding of such likelihood is made following an overall examination comparing the similarity or identity of the goods and similarity or identity of the signs. Accordingly, it is entirely conceivable that goods which are not likely to be confused may be sufficiently similar for the purposes of a possible finding that there is a likelihood of confusion between two marks which are also similar or identical (see, in respect of a finding of similarity between ‘headgear’ and ‘footwear’, judgment of 16 December 2009 in Giordano Enterprises v OHIM — Dias Magalhães & Filhos (GIORDANO), T‑483/08, EU:T:2009:515, paragraph 20, and in respect of a finding of similarity between ‘clothing’ and ‘footwear and boots’, judgment of 13 July 2004 in AVEX v OHIM — Ahlers (a), T‑115/02, ECR, EU:T:2004:234, paragraph 26). Furthermore, according to the case-law, goods or services do not necessarily have to fall within the same class, or in the same category within a given class, in order reasonably to be the subject of a comparison and give rise to a finding of similarity or of lack of similarity between those goods or services (judgment of 14 December 2006 in Gagliardi v OHMI - Norma Lebensmittelfilialbetrieb (MANŪ MANU MANU), T‑392/04, EU:T:2006:400, paragraph 77).

65 As regards the applicant’s claim that the criterion of the goods’ purpose was not duly taken into consideration by the Board of Appeal and the applicant’s reference in that context to the judgments in RESPICUR, cited in paragraph 25 above (EU:T:2007:46), and 15 December 2010 in Novartis v OHIM — Sanochemia Pharmazeutika (TOLPOSAN) (T‑331/09, ECR, EU:T:2010:520), it should be noted that the fact that specific features of sub-categories of goods may differ (namely, in the present case, by the fact that fungicides relate to fungus, while ‘phytosanitary products, excluding fungicides and herbicides’ relate to vermin) does not affect other relevant elements of similarity (in the present case, the fact that the goods in question are all chemicals with the same phytosanitary purpose of plant care, which may be used in a similar way, and are generally produced by the same types of undertakings and sold via the same channels).

66 The EU courts have moreover had the opportunity to consider, with reference to medicines with different therapeutic indications, whether those goods were similar on the grounds that they were ‘of the same nature (pharmaceutical preparations), [had] the same function or intended purpose (treatment of human health problems), [were] directed at the same consumers (professionals in the health sector and patients), use[d] the same distribution channels (typically pharmacies) and [could] be complementary’ (judgment of 17 October 2006 in Armour Pharmaceutical v OHIM — Teva Pharmaceutical Industries (GALZIN), T‑483/04, ECR, EU:T:2006:323, paragraphs 70 and 71; see also, to that effect, in respect of ‘pharmaceutical preparations; pharmaceutical preparations for use in the fields of immunology and oncology’ and ‘dietetic preparations for medical use’, judgment of 15 December 2009 in Trubion Pharmaceuticals v OHIM — Merck (TRUBION), T‑412/08, EU:T:2009:507, paragraph 32). Those considerations, which were expressed in the context of medicines for the protection of human health and led to a finding of similarity despite the therapeutic indications being different are even more relevant in the context of phytosanitary products for plant health.

67 It follows from the above that, contrary to the applicant’s view, the Board of Appeal did not err in finding that ‘phytosanitary products, excluding fungicides and herbicides’ and ‘fungicides’ are highly similar.

68 The Board of Appeal took the view, with regard to the ‘plant-protection preparations’ of the mark applied for that such broad wording could include BASF’s fungicides, the main purpose of which is to protect plants from fungus. The Board of Appeal therefore concluded that the goods in question are identical.

69 That assessment, which the applicant has not specifically contested, is correct.

70 As regards those products, it should be noted from the outset that, contrary to what the applicant claims, the Board of Appeal gave reasons for its assessment. The Board of Appeal considered that ‘capsules and micro capsules for active ingredients’ may in principle contain any sort of active ingredient, including for phytosanitary use. The Board states that one of the types of product packaging submitted by the applicant concerned an insecticide with a particular active ingredient the formulation of which was in ‘capsule suspension’. Given the extremely broad nature of the heading ‘capsules and micro capsules for active ingredients’ and the fact that ‘fungicides’ may also come in the form of a capsule suspension, the Board of Appeal found that the goods in question were similar.

71 The applicant contests that finding of similarity. It claims that microencapsulation is a manufacturing process in which tiny particles or droplets are surrounded by a coating in order to make small capsules with diameters measured in micrometres or millimetres. Micro capsules must be handled using highly specialised equipment in a laboratory and the person responsible for their handling must be highly qualified for that role. Those products are therefore intended for laboratories and not for the average consumer. Consequently, there is no correlation between the nature of the product, the target consumer, the distribution channels and the method of use.

72 In the first place, it is apparent from the explanations put forward by the applicant in its pleadings that microencapsulation is not a procedure whereby an empty container is filled with an active ingredient but a procedure whereby a coating is applied to a tiny particle or droplet of a size measured in micrometres or millimetres.

73 It follows logically that the micro capsules and the active ingredients that they contain are inextricably linked.

74 In the second place, it should be noted that in its pleadings before OHIM — and before the Court — the applicant does not specifically expand on the term ‘capsules’, although it appears as the first word of its claim in respect of ‘capsules and micro capsules’, and even though the usual meaning of the word ‘capsule’ refers to a small container filled with an active ingredient (medicine or other ingredient), which could therefore, unlike a micro capsule, be taken into consideration as an ‘empty’ element, separately from the active ingredient.

75 In particular, the applicant did not restrict its trade mark application to ‘empty capsules’, that is to say, the container alone.

76 The Board of Appeal was therefore correct, having observed that ‘capsules and micro capsules for active ingredients’ could in principle contain any sort of active ingredients, including phytosanitary ingredients, in concluding that the goods covered by the mark applied for by the applicant and the ‘fungicides’ covered by the earlier mark should be regarded as similar.

78 Accordingly, as regards the argument that the micro-encapsulation procedure is a very technical procedure reserved for specialised industrial workers, it should be noted that trade mark protection is not sought in the present case for a service relating to microencapsulation of an active ingredient but for the product itself.

79 Furthermore, as regards the applicant’s argument that micro capsules are not a finished product but a raw material sold to professionals to incorporate in a finished product, it should, first, be noted that the relevant public defined by the Board of Appeal includes professionals and, accordingly, the industrial workers and laboratories referred to by the applicant. Secondly, BASF’s category ‘fungicides’ must, on account of its general nature, also include the raw materials of phytosanitary goods sold by the same professionals, where relevant, in the form of micro capsules.

80 Contrary to the applicant’s suggestion, it is therefore by no means impossible that the headings ‘capsules and micro capsules for active ingredients’ of the mark applied for, on the one hand, and the ‘fungicides’ of the earlier marks, on the other hand, should designate goods which are not only similar, as the Board of Appeal restricted itself to finding, but even identical.

81 It follows that the Board of Appeal’s finding relating to similarity is certainly not called into question by the applicant’s arguments.

82 It follows from all the above considerations that the applicant has not succeeded in calling into question the Board of Appeal’s assessments concerning the comparison of the goods.

83 It should be noted that, according to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspect (judgments of 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN) in T‑6/01, ECR, EU:T:2002:261, paragraph 30, and 8 September 2010, Quinta do Portal v OHIM — Vallegre (PORTO ALEGRE), T‑369/09, EU:T:2010:362, paragraph 21). The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by those signs, bearing in mind, in particular, their distinctive and dominant elements (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).

84 From a visual perspective, the Board of Appeal noted that the marks were similar to the extent that they were the same length and two of the five letters were the same, namely ‘a’ and ‘r’, which appeared in the same position in both signs.

85 From a phonetic perspective, the Board of Appeal noted that, according to the most commonly applied pronunciation rules, the marks at issue were both pronounced as two syllables, ‘ca-ryx’ and ‘ka-ris’, and the sounds of the sequences of letters ‘c’, ‘a’, ‘r’, ‘y’ and ‘k’, ‘a’, ‘r’, ‘i’ were identical . The marks also shared a final ‘s’ sound, given that the last letter of the earlier mark, ‘x’, would be pronounced as ‘ks’ in most of the relevant languages. Therefore, phonetically, the marks are almost identical, since the only difference is the ‘k’ sound in the last syllable of the earlier mark.

86 From a conceptual perspective, the Board of Appeal observed that a large majority of the relevant public would not be aware of the existence of the Finnish town Karis and that, given that the earlier mark CARYX had no conceptual content, both marks would be perceived as fanciful by the public, with the consequence that the conceptual comparison was not relevant for a large majority of consumers. The Board noted that since the earlier sign has no meaning in connection with the goods in question, it should be deemed averagely distinctive.

87 The applicant challenges those assessments. From a conceptual perspective, the Board of Appeal did not take into account the weak distinctive character of the sign CARYX in respect of the ‘plant care preparations’ covered by BASF’s mark. The applicant argues that Carex is a plant genus including more than 2000 grassy plants which is well known in the horticulture sector and a well-informed consumer would immediately associate the sign CARYX with Carex. Visually and phonetically, the signs at issue include several differences involving the first and last letters. The level of attention of consumers is high because those consumers are specialised, irrespective of whether they are professionals, and the goods in question are not everyday consumer goods.

88 OHIM contests the applicant’s position and submits that the argument that CARYX has weak distinctive character is a new argument. The evidence adduced by the applicant, assuming that it is admissible, is inconclusive and the argument is unfounded. OHIM contends that the findings of the Board of Appeal relating to the visual, phonetic and conceptual comparisons are correct.

89 It should be noted that, as laid down in Article 188 of the Rules of Procedure, the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal. It is for the Court to review the legality of decisions taken by the Boards of Appeal. Consequently, the Court’s review cannot go beyond the factual and legal context of the dispute as it was brought before the Board of Appeal (judgment of 22 June 2004 in ‘Drie Mollen sinds 1818’ v OHIM — Nabeiro Silveria (Galáxia), T‑66/03, ECR, EU:T:2004:190, paragraph 45). Similarly, an applicant does not have the power to alter before the Court the terms of the dispute as delimited in the respective claims and allegations submitted by itself and by the intervener (judgment of 26 April 2007 in Alcon v OHIM, C‑412/05 P, ECR, EU:C:2007:252, paragraph 43). Furthermore, the purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009, with the result that the role of the Court is not to re-evaluate the factual circumstances in the light of evidence which has been produced for the first time before it (see, to that effect, judgment of 24 November 2005 in Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, ECR, EU:T:2005:420, paragraph 19 and the case-law cited).

90 As regards, in the first place, the conceptual comparison of the signs and the argument alleging a conceptual link between CARYX and the plant genus Carex, it should be noted that this argument has been raised for the first time before the Court: by contrast, both before the Opposition Division and before the Board of Appeal, the applicant — and BASF — consistently maintained that the signs at issue were fanciful and had no meaning.

91 It is in that context of an uncontested fact that the Board of Appeal in accordance with its obligation to examine, if necessary of its own motion, the inherent distinctiveness of the earlier mark, ruled on that point. In paragraphs 31 and 32 of the contested decision, the Board found that the mark CARYX had no meaning in respect of the goods at issue and should therefore be deemed to have an average level of distinctiveness.

92 Clearly, faced with the word ‘caryx’, which does not appear in dictionaries, the Board of Appeal had no reason to contradict the unanimous views of the parties to the dispute before it, parties which must be assumed to be well acquainted with the sectors covered by the categories of goods of their respective marks and agreed that those marks, and in particular, the mark CARYX, had no specific meaning.

93 Furthermore, it is in no way established that the fact adduced for the first time before the Court, namely the existence of the plant species Carex, is a well-known fact of which OHIM accordingly should have been aware. The applicant, despite being an expert in the plant goods sector, did not use the word ‘carex’ before OHIM.

94 It follows that, not only does the applicant fail to establish an infringement by the Board of Appeal of its obligation to examine of its own motion the inherent distinctiveness of the earlier mark, but also that reliance, for the first time before the Court, on a fact that is not well known (the existence of a plant species known as Carex) and the claim that the relevant public would immediately perceive a meaning in the sign CARYX associated with the plant genus Carex, neither of which claims is admitted before the Court, change the terms of the proceedings pursuant to Article 188 of the Rules of Procedure. Those claims and the evidence adduced in support thereof must therefore be rejected as being inadmissible and there is no need to assess their probative value.

95 The applicant moreover claims before the Court that CARYX could also bring to mind the word ‘care’ in relation to plant care.

96 The argument fails to convince. First, the establishment of a spontaneous link without any further thought between the word ‘caryx’ and the word ‘care’ by the relevant English-speaking public is doubtful since only the three letters ‘c’, ‘a’ and ‘r’ are common to both words and the pronunciation of the two words in English is different. Secondly, the relevant public is not made up solely of the English-speaking public of the EU but the public of the EU as a whole.

97 It follows from the above that the applicant fails to establish that the Board of Appeal erred in its assessment of the conceptual similarity of the signs at issue.

98 As regards, in the second place, the visual comparison of the signs, it should be noted that, while the signs CARYX and KARIS are naturally different in some respects, the fact remains that they are similar to the extent that they are the same length and two of the five letters (‘a’ and ‘r’) are the same and appear in the same position. Contrary to what the applicant suggests, the ending of CARYX, ‘yx’, although it is certainly different from the ending ‘is’ of the mark applied for, does not constitute a dominant element.

99 In the third place, as regards the phonetic comparison of the signs, it should be noted that, as the Board of Appeal observed, the sequences of letters ‘c’, ‘a’, ‘r’, ‘y’ and ‘k’, ‘a’, ‘r’, ‘i’ are usually pronounced in the same way and the endings ‘x’ and ‘s’ share a final ‘s’ sound since the letter ‘x’ is usually pronounced as ‘ks’. Since the only difference in pronunciation of the signs is therefore the ‘k’ sound in the last syllable of ‘caryx’, the Board of Appeal was correct to conclude that the marks at issue were phonetically almost identical.

100 Finally, the claim that the Board of Appeal compared the signs from the point of view of the public at large without taking the relevant professional public into account is incorrect. The Board of Appeal’s assessments in paragraphs 27 to 31 of the contested decision apply to the whole of the relevant public as defined by the Board of Appeal, which accordingly includes the professional public. Furthermore, those assessments are indisputably correct in respect of both the general public and the professional public.

101 It follows from the above that the applicant does not call into question the Board of Appeal’s assessment concerning the similarity of the signs.

102 The Board of Appeal, having referred to the Court’s case-law, noted that the scant evidence submitted by the applicant in support of the coexistence of the marks at issue concerned two countries and that it was clearly insufficient to demonstrate that those marks actually coexisted in any single territory. The Board of Appeal added that that evidence gave no indication of the way in which the relevant public encountered the marks at issue on the (same) market and the goods for which they were used.

103 The applicant criticises the Board of Appeal for finding that the evidence that the marks at issue had coexisted on the European market was insufficient, without giving a detailed explanation. The applicant claims that the evidence was sufficient and that the Board should consequently have found that there was no likelihood of confusion.

105 The case-law does not entirely exclude the possibility that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before OHIM concerning the relative grounds for refusal, the applicant for the Community trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (judgments of 11 May 2005 in Grupo Sada v OHIM — Sadia (GRUPO SADA), T‑31/03, ECR, EU:T:2005:169, paragraph 86; 20 January 2010 in Nokia v OHIM — Medion (LIFE BLOG), T‑460/07, ECR, EU:T:2010:18, paragraph 68, and 2 October 2013 in Cartoon Network v OHIM — Boomerang TV (BOOMERANG, T‑285/12, EU:T:2013:520, paragraph 55).

106 The applicant submitted before OHIM, with regard to the earlier mark, a copy of the website www.agro.basf.fr concerning a colza fungicide known as Caryx and a copy of a website www.e-phy.agriculture.gouv.fr concerning an authorisation granted by the French authorities. As regards the mark applied for, the applicant submitted two copies of packaging indications in German relating to an insecticide known as Karis 10 CS and a list issued by the German authorities referring to that product among those authorised in Germany.

107 It should be noted that those few documents, which concern two Member States and are purely descriptive and administrative, without therefore including any information on the marketing of the goods referred to and the specific use of the marks on the market, are clearly not sufficient to prove actual coexistence of the marks at issue and certainly not, consequently, to prove that such alleged coexistence was based on the absence of a likelihood of confusion from the perspective of the relevant public.

108 The Board of Appeal was therefore correct to conclude that the coexistence alleged by the applicant was not established.

109 As regards the evidence submitted for the first time before the Court in an addendum to the application on 5 February 2014, it must be noted that the purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly and independently of the fact that they were not submitted in the application, those elements must be rejected as inadmissible, without it being necessary to assess their probative value (see, to that effect, judgment in ARTHUR ET FELICIE, cited in paragraph 89 above, EU:T:2005:420, paragraph 19 and the case-law cited).

110 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).

111 In the light of its analysis and, in particular, the identity and similarity of the goods in question, as well as the visual and, especially, the phonetic similarities found between the marks at issue, the Board of Appeal considered that, even assuming an enhanced level of attention on the part of the relevant public, there was a likelihood of confusion between those marks. The Board of Appeal considered that the consumers targeted were likely to believe that identical or similar goods marketed under the marks at issue came from the same undertaking or from economically linked undertakings.

112 The applicant considers that the Board of Appeal did not take account of the perception of the average consumer of the specific goods marketed under the marks at issue. The applicant refers to case-law under which the purpose or intended use of a product is vital in directing consumers’ choices and argues that a sub-category should have been added to the definition of the goods covered by the sign at issue, since that sign claimed protection only for insecticides and expressly excluded fungicides while the product covered by BASF’s mark was a fungicide. The applicant reiterates that CARYX has weak distinctive character and ends in ‘yx’ — an eye-catching feature which does not appear in the mark applied for.

114 It should be noted that the arguments put forward by the applicant in its criticism of the Board of Appeal’s overall assessment of the likelihood of confusion had already been put forward and rejected at earlier stages of the procedure.

115 In particular, therefore, as regards the relevant public, it has already been stated that the contested decision is based, ultimately, on a perception of a relevant public — including professionals and consumers — which displays a high level of attention. As regards the argument that the purpose is a vital part of the consumer’s choice and that a sub-category of goods should have been established, it should be noted that the fact that the specific features of a product sub-category may differ — in the present case, ‘fungicides’ relate to fungus and ‘phytosanitary products, excluding fungicides and herbicides’ relate to vermin — does not affect other relevant elements of similarity. Moreover, it should be noted that the applicant, in its criticism of the Board of Appeal’s overall assessment of the likelihood of confusion, does not consider the goods as they appear on the lists of goods covered by the marks at issue, although those are the only goods relevant in the present case, but the goods allegedly offered for sale in practice by the parties. However, as observed, the examination of the likelihood of confusion is made in relation to the goods and services as covered by those marks at issue and not in relation to the goods or services actually offered for sale under those marks.

116 The Board of Appeal was right to conclude that there is a likelihood of confusion, given both the degrees of similarity found between the goods at issue and the similarity found between the signs at issue. It should be added that an enhanced level of attention on the part of the relevant public is not sufficient, given the similarities found to exclude the possibility that the public might believe that the goods at issue come from the same undertaking or from economically-linked undertakings (see, to that effect, in respect of pharmaceutical goods with different therapeutic indications and the signs GALZIN and CALSYN, judgment in GALZIN, cited in paragraph 66 above, EU:T:2006:323, paragraphs 80 and 81).

117 In the light of all of the above considerations, from which it is clear that the applicant has failed to demonstrate that the Board of Appeal erred in confirming that there was a likelihood of confusion between the signs CARYX and KARIS, in respect of the goods referred to in paragraph 20 above, the action should be dismissed.

118 There is no need to take witness evidence from Mr G, an employee of the applicant.

119 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

120 Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by OHIM, in accordance with the form of order sought by OHIM.

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	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Gat Microencapsulation v OHMI - BASF (KARIS) (Judgment) [2015] EUECJ T-720/13 (30 September 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T72013.html Cite as: EU:T:2015:735, [2015] EUECJ T-720/13, ECLI:EU:T:2015:735

Court of Justice of the European Communities (including Court of First Instance Decisions)