CANCELLATION No 14 540 C (INVALIDITY)

ROCHEM MARINE S.r.l, Via degli Artigiani, 51, 16162 Genoa, Italy (applicant), represented by PGA S.P.A., Via Mascheroni, 31, 20145 Milan, Italy (professional representative)

a g a i n s t

Rochem Group AG, Bahnhofstrasse 32, 6300 Zug, Switzerland (EUTM proprietor), represented by Balder IP Law, S.L., Paseo de la Castellana 93, 28046 Madrid, Spain (professional representative).

On 04/08/2021, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is partially upheld.

2. European trade mark registration No 12 326 609 is declared invalid for some of the contested goods and services, namely:

Class 11: Separation and filtration installations for liquid and gaseous media, separation and filtration devices for liquid and gaseous media and parts therefor, including pressure pipes, carrier plates, spacer plates and baffle plates and separating and filter elements.

Class 40: Disposal of polluted waste waters and seepage waters or other liquid and gaseous media containing pollutants and/or substances by means of separation and filtration installations and/or devices having separation and/or filter elements and product refinement for liquid and gaseous media by means of separation and filtration installations and/or devices having separation and/or filter elements.

3. The European trade mark registration remains registered for the remaining goods and services, namely:

Class 1: Chemical cleaning preparations for gas turbines and compressors, and for separation and filtration installations for liquid and gaseous media.

Class 2: Anti-corrosion preparations, anti-rust preparations for preservation.

Class 3: Cleaning, polishing, bleaching, scouring and rust-removing preparations; Abraders; Soaps.

Class 37: Cleaning of gas turbines and compressors.

Class 42: Providing of expertise, project planning and creating technical solutions for planned projects.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services, namely those in classes 1, 2, 3, 11, 37, 40 and 42 of European trade mark registration No 12 326 609 (the EUTM) for the figurative sign shown below:

The application is based on Italian trade mark registration No 933 481 for the figurative trade mark:

The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the marks in conflict are highly similar and the goods and services are identical or similar. Therefore, it claims that there is a likelihood of confusion.

The EUTM proprietor requested the applicant to submit evidence of use of the earlier mark on which the application is based.

The applicant submitted evidence to prove the use of the earlier mark which will be listed in detail below. It claims that this evidence is sufficient to prove the use of the earlier mark.

The EUTM proprietor contests the evidence of use and claims that it is insufficient to prove genuine use of the earlier mark. Therefore, it argues that the application for invalidity must be rejected.

PROOF OF USE

According to Article 64(2) and (3) EUTMR if the EUTM proprietor so requests, the applicant must furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, 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 applicant cites as justification for its application, 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. If, on the date of filing or, where applicable, priority of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 47(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity will be rejected.

The EUTM proprietor requested the applicant to submit proof of use of the trade mark on which the application is based, namely, Italian trade mark registration No 933 481.

The request has been filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the date of the application for a declaration of invalidity.

The application for a declaration of invalidity was filed on 24/02/2017. The date of filing of the contested mark is 07/11/2013. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in Italy from 24/02/2012 to 23/02/2017 inclusive. Since the earlier mark was registered more than five years prior to the date of filing of the contested mark, use of the earlier mark had to be shown also for the period from 07/11/2008 to 06/11/2013 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the application is based, namely:

Class 11: Desalination plants; grey water and black water treatment plants.

According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

On 04/07/2017, in accordance with Article 19(2) EUTMDR, the Office gave the applicant until 09/10/2017 to submit evidence of use of the earlier trade mark, which was then extended until09/12/2017.

On 30/11/2017, within the time limit, the applicant submitted evidence as proof of use.

The evidence to be taken into account is the following:

• Exhibit 1: Printout from the applicant’s website www.rochem.de/en/ in English with the options of viewing the website in English, French or German.

• Exhibit 2: 5 invoices and 1 delivery note in Italian and billed by Rochem Marine S.r.l. with an address in Italy issued to clients in Italy. They are dated in 2010, 2011, 2012, 2013 and 2016. They are billed for hundreds of thousands of EUR. At the top of the invoices, the following sign appears:

• Exhibit 3: Photos of trade stands in a number of trade fairs which the applicant claims four of which were held in Rimini, Italy from 2007-2010, two in Genoa, Italy in 2002 and 2004 and one in Abu Dhabi in 2011. In all of the photos the sign below appears on the trade stands:

In some of the photos the following sign also appears:

• Exhibit 4: Undated advertising material written in English or Italian, containing the company name Rochem Marine S.r.l., and their address in Italy. The advertisements also contain the following signs:

• Exhibit 5: An extract of ERSAI 400 Tecnologie & Transporti Mare dated 2008 in Italian which mentions ‘Rochem’ and ‘Rochem Marine’.

• Exhibit 6: Technical sheets and the 2015 installation manual with the following sign on the first page:

The document is written in English and Italian, and concerns water desalination and waste water treatment. The document mentions the applicant Rochem Marine S.r.l. and their address in Italy and that it offers black and grey water treatment and desalination plants.

• Exhibit 7: Consists of technical drawings for clients dated in 2008, 2010, 2012, 2014 and 2016. They are in German and contain the following signs:

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Place of use

The Cancellation Division notes that all of the invoices are billed by the applicant company based in Italy and to clients in Italy. The advertising material, instruction manual and technical sheets are in English and Italian and bear an address in Italy. Therefore, there are sufficient indications in relation to the factor of place of use.

Time of use

The invoices supplied by the applicant are dated within the relevant period. The earliest is from December 2010 and the most recent from January 2016.

Exhibit 7 contains an installation manual dated in 2015 in which the earlier mark appears and the extract of ERSAI 400 Tecnologie & Transporti Mare is dated 2008. The technical drawings are dated between 2008 and 2016,

Consequently, there are sufficient indications concerning the factor of time of use.

Nature of use

In the context of Article 10(3) EUTMDR, 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 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a) EUTMR, the following also constitutes 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. When examining the use of an earlier registration for the purposes of Article 64(2) and (3) EUTMR, Article 18 EUTMR may be applied by analogy to assess whether or not use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, most of the evidence shows the sign as registered, namely:

Consequently, the Cancellation Division considers that the evidence filed by the applicant is sufficient to prove the factor of nature of use of the mark as registered.

Extent of use

The sample of invoices provided by the applicant dated within the relevant period shows billing which totals up to approximately 1.5 million EUR. The Cancellation Division considers this to be a considerable sum of money, even spread out over a period of several years from 2010 until 2016. The items manufactured and sold by the applicant are expensive industrial goods, and therefore even a small number of invoices (five and one delivery note) cover large sums and are capable of demonstrating significant commercial operations. Therefore, there are sufficient indications in relation to the factor of extent of use.

Nature of use in relation to the registered goods

The invoices, which bear the earlier mark on the top right hand side, relate to the Class 11 goods covered by the earlier mark. Although the invoices have not been translated from Italian into English, it is clear from the applicant’s submissions, and the short description of goods on the registration certificate of the earlier mark, that the invoices refer to desalination plants, and grey water and black water treatment plants. The invoices, taken together with the other evidence of business activity, particularly the instruction manual, technical sheets and advertising material, provided by the applicant are sufficient to show that the earlier mark has been put to actual and genuine use in relation to the registered goods, namely: desalination plants and grey water and black water treatment plants.

Therefore, the applicant has proven use in relation to all of the goods for which the earlier mark is registered.

Conclusion

Having examined the material listed above the Cancellation Division finds that the evidence is sufficient to establish genuine use of the earlier trade mark in Italy for the goods in question during the relevant period.

LIKELIHOOD OF CONFUSION - ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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 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.

The goods on which the application is based are the following:

Class 11: Desalination plants; grey water and black water treatment plants.

The contested goods and services are the following:

Class 1: Chemical cleaning preparations for gas turbines and compressors, and for separation and filtration installations for liquid and gaseous media.

Class 2: Anti-corrosion preparations, anti-rust preparations for preservation.

Class 3: Cleaning, polishing, bleaching, scouring and rust-removing preparations; Abraders; Soaps.

Class 11: Separation and filtration installations for liquid and gaseous media, separation and filtration devices for liquid and gaseous media and parts therefor, including pressure pipes, carrier plates, spacer plates and baffle plates and separating and filter elements.

Class 37: Cleaning of gas turbines and compressors.

Class 40: Disposal of polluted waste waters and seepage waters or other liquid and gaseous media containing pollutants and/or substances by means of separation and filtration installations and/or devices having separation and/or filter elements and product refinement for liquid and gaseous media by means of separation and filtration installations and/or devices having separation and/or filter elements.

Class 42: Providing of expertise, project planning and creating technical solutions for planned projects.

Comparison of the goods and services

The earlier goods

Desalination plants perform an industrial process that extracts salt and mineral components from sea water in order to make it fit for human consumption or irrigation. Water treatment plants remove any contaminants that may be in the water.

Contested goods in Class 1 and contested services in Class 37

Desalination and water treatment plants, like all industrial plants, require large amounts of energy. Gas turbines and compressors are an indispensable part of the industrial equipment used in industrial plants, and they require chemical cleaning solutions in order to function properly. However, the nature and purpose of the cleaning solutions is to enable gas turbines and compressors to work effectively in any industrial plant for any process, whereas the nature and purpose of the earlier goods is to make sea water and sewage fit for human use. Therefore, the Cancellation Division cannot see any direct connection between the contested goods in Class 1 and the earlier goods. The same considerations apply in relation to the contested services in Class 37, which are services which concern the use of the goods in Class 1.

The Cancellation Division considers that there is no similarity between the earlier goods and services and the contested services in Class 37, since they have a different purpose and are directed at different end-consumers. There is also no evidence in this case to show that desalination and water treatment businesses are also involved in the manufacture of chemical cleaning solutions for gas turbines and compressors, or providing the service of cleaning gas turbines and compressors.

Contested goods in classes 2 and 3

The contested goods in classes 2 and 3 have a general industrial application, which is to prevent rust (Class 2) and polish, bleach, clean and degrease plant equipment (Class 3). Any industrial plant is likely to need to use such products, including desalination and water treatment plants. This vague connection does not establish any specific commercial features common to companies manufacturing desalination and water treatment plants and companies producing anti-rust and cleaning products. There is no reason to assume that a business that does the former is also likely to do the latter, or vice versa. The goods are only complementary in the broadest sense, and the fact that desalination plants employ anti-rust and cleaning products does not create a special relationship, since the contested goods can be used on operations as far apart as oil rigs, biscuit factories and car manufacture. Therefore, the Cancellation Division considers that there is no similarity between the goods concerned.

Contested goods in Class 11 and contested services in Class 40

The specifications of the contested goods in Class 11 and contested services in Class 40 describe the processing of liquids and gases via separation and filtration. The earlier goods cover water treatment plants and, in addition, desalination plants. Desalination and water treatment are two separate processes, but it is common for desalination plants to also carry out water treatment operations on the same industrial site. The earlier goods cover desalination and water treatment which will most likely include filtration as part of its processing. The contested goods in Class 11 are for filtration and separation. It is clear that all of these goods could be produced by the same manufacturers and aimed at the same consumers. They share a very similar purpose too. For all of these reasons, the goods are at least similar to one another.

Furthermore, there is a link between the contested services in Class 40 and the earlier goods since the services may well use the earlier goods in order to carry out the process described, bearing in mind that water treatment and desalination involve, to a certain extent, the removal of contaminated waters, waste waters and other contaminated gaseous or liquid materials and finishing and treatment of liquid and gaseous materials by means of separation and filtration installations. So the goods and services are complementary and serve a similar purpose making them at least similar to a low degree.

Contested services in Class 42

The contested services in Class 42 concern expert advice, planning and creating technical solutions in relation to ‘planned projects’. The specification makes no mention of desalination and water treatment installations. The term ‘planned projects’ is non-specific and could conceivably refer to any project. The expert services are generic ones that could relate to setting up buildings, IT systems, communications networks and general infrastructure. However, it is reasonable to assume they do not extend to the very specific technical requirements of building and operating a desalination and water treatment, otherwise the specification ought to indicate that. In the absence of any description connected with the earlier goods, the Cancellation Division cannot infer any connection, and considers that the services in question are not similar.

2. 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 services found similar to varying degrees are directed at business consumers with specific professional knowledge and expertise. Given the nature of the services, which may have important financial consequences for their users, the relevant consumers are likely to display a relatively high degree of attention.

3. The signs

Earlier Italian trade mark	Contested trade mark

The relevant territory is Italy.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Both marks are figurative. The contested mark consists of the elements ‘R.T.S. ROCHEM Technical Services’, written in standard black letters, apart from the element ROCHEM, which is written in stylised black letters. The word ‘ROCHEM’ has no meaning for the relevant goods and services and is therefore distinctive and the typeface is stylised. The term ‘Technical Services’ does not have an exact meaning in Italian but will be understood by the relevant consumer in Italy due to its similarity with the corresponding term in Italian, namely, ‘servizio tecnico’, which is weak in relation to the goods and services, since they are of a technical nature. Therefore, this element is non-distinctive in relation to the contested goods and services. Furthermore, the element ‘R.T.S’ will be clearly recognised by the relevant consumer as being the abbreviation of the term ‘ROCHEM Technical Services’ as it appears before said term. Therefore, this element will be of less importance and play more of a secondary role in the overall impression of the sign. The most distinctive part of the contested sign therefore is the element ‘ROCHEM’. The earlier mark also contains the word ROCHEM along with the word MARINE, both depicted in the same typeface as the word ROCHEM in the contested sign but in blue, and a small device element resembling a drop of water (see above). The word ROCHEM as mentioned above, has no meaning in Italian and is therefore inherently distinctive and as mentioned previously the fanciful typeface of this word is also rather original. The generic English adjective MARINE, which refers to the sea, will be understood by many Italians. The Italian equivalent is MARINO, and MARINA when used as a noun. In relation to desalination and water treatment the word MARINE is non-distinctive. The figurative element of the water drop included in the earlier mark is a basic decorative motif, with little inherent trade mark value, particularly considering that the goods and services at issue are water-related. Therefore, it is the word element ROCHEM that is the most distinctive part of the earlier mark.

Neither sign has any element that can be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the distinctive element ‘ROCHEM’. The fanciful stylization of the word is also identical in both of the marks. The marks differ in that the earlier mark contains an additional word and a device element, as described above, both of which are non-distinctive in relation to the goods. They also differ in relation to the non-distinctive phrase ‘Technical Services’ in the contested mark, and the acronym R.T.S., referring to ‘ROCHEM Technical Services’.

Therefore, the signs are visually similar to an average degree.

Aurally, the signs coincide in the distinctive element ‘ROCHEM’. The earlier mark contains the word MARINE which, as stated above, is non-distinctive. The device element of the earlier mark plays no part in the aural comparison. They also differ in relation to the non-distinctive phrase ‘Technical Services’ in the contested mark, and the acronym R.T.S., referring to ‘ROCHEM Technical Services’ which may not even be pronounced by the relevant consumer.

Therefore, the signs are aurally similar to an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the word MARINE in the earlier mark will be perceived as a reference to the sea and will be considered to be non-distinctive The water drop makes a clear allusion to water, which is also non-distinctive. ‘Technical Services’ in the contested mark will be understood due to its similarity with the equivalent Italian words and will also be seen as non-distinctive, while the abbreviation ‘R.T.S.’ will play a less important or secondary role in the overall impression of the sign. Therefore, the signs are not conceptually similar

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, 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 from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non-distinctive or weak elements as mentioned in part c) of the present decision.

5. Global assessment, other arguments and conclusion

The contested goods in Class 11 and contested services in Class 40 cover the goods and services involved in the process of water treatment, and therefore are at least similar to the earlier grey water and black water treatment plants for which the earlier mark has protection. These contested goods and services are also closely connected to the earlier desalination plants and are similar to a low degree. Since the marks in question have been found to be visually and aurally similar to varying degrees, due to the fact that the most inherently distinctive part of the contested mark replicates the most distinctive element of the earlier mark in the same fanciful typeface, without material alteration, the Cancellation Division considers that there is a likelihood of confusion within the meaning of Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR. This finding applies even in relation to the services found to be only lowly similar due to the high similarities between the signs.

In the view of the Cancellation Division, there is no similarity between the contested goods and services in classes 1, 2, 3, 37 and 42, and the earlier goods, for the reasons explained above. Since a similarity between the goods and services in question is an essential requirement under Article 8(1)(b) EUTMR, there is no likelihood of confusion in relation to the contested goods and services in classes 1, 2, 3, 37 and 42.

Considering all the above, the Cancellation Division finds that there a likelihood of confusion on the part of the Italian public for the contested goods in Class 11 and contested services in Class 40. Therefore, the cancellation application is upheld in relation to these contested goods and services. The application must, however, be rejected in relation to the contested goods and services in classes 1, 2, 3, 37 and 42.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Lucinda CARNEY

Rhys MORGAN

Nicole CLARKE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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.