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17 November 2020Big Pharma

UKIPO rejects BASF’s agri-chemical trademark opposition

German chemicals company BASF has failed to persuade the UK Intellectual Property Office (IPO) that an applied-for trademark to cover agricultural chemicals is confusingly similar to its own existing trademark.

The IPO delivered its decision in the opposition proceedings on November 5.

Biont International applied to register a red and green figurative mark depicting the words ‘Growing Success’ and ‘Biont’ in October 2019, in respect of fertilisers and chemicals in class 1.

BASF partially opposed the application, specifically in relation to the applied-for mark seeking to cover “chemicals for use in agriculture, horticulture and forestry”.

BASF referred to its existing EU trademark (number 3,317,617) for the word ‘Beyond’. The mark, registered in 2005, covers various goods in class 5, including herbicides.

In its opposition, BASF claimed that the word ‘Biont’ in the applied-for mark is the dominant element. This is phonetically similar to its own word mark, ‘Beyond’, as well as seeking to cover similar or at least complementary goods to that of the existing mark.

Responding, Biont said there is no commonality between the two marks, and that the applied-for mark seeks to cover goods in an entirely different class to those covered by BASF’s existing mark.

The IPO agreed with Biont on this point: “Whilst there may be some similarity in nature given the chemical composition of both, the intended purpose is different, and the goods do not compete.”

In respect of the average consumer of the goods covered by the existing mark and the intended consumers of the applied-for mark, these people will be members of the general public who will pay a reasonable degree of attention to the products they select, the IPO said.

Comparing the marks, the IPO found that there is some degree of visual similarity based on the letters which make up the word ‘Beyond’ in the existing mark and the word element ‘Biont’ in the applied-for mark.

However, there are also differences, such as the figurative aspects of the applied-for mark, the addition of the words ‘Growing Success’ in the applied-for mark, and the combination of red and green used in the applied-for mark, the IPO said.

The IPO found there to be a medium degree of aural similarity between the marks, before determining that the marks are conceptually different.

Overall, the IPO held that there is no likelihood of confusion between BASF’s ‘Beyond’ mark and Biont’s applied-for figurative mark.

The IPO said: “Although not every conceptual difference would be capable of counteracting the visual and aural similarities, in the present case, when weighing the degree of aural and visual similarity, together with the other factors relevant to the global assessment, there will be no likelihood of direct confusion.”

“I can see no mental process which would result in the average consumer indirectly confusing the marks,” the IPO added.

The IPO ordered BASF to pay Biont £437 towards their costs.

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