OPPOSITION No B 2 448 895

Productos QP, S.A., C/ Salamanca 62 bajo, 46005 Valencia, Spain (opponent), represented by Abogados Daudén, S.L.P., Avenida Maisonnave, 11, 2º, 03003 Alicante, Spain (professional representative)

a g a i n s t

Bestway Inflatables & Material Corp., 3065 Cao An Road, Shanghai 201812, People’s Republic of China (applicant), represented by Marietti, Gislon e Trupiano S.R.L., Via Larga, 16, 20122 Milano, Italy (professional representative).

On 20/10/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 448 895 is upheld for all the contested goods.

2. Community trade mark application No 13 294 707 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all of the goods of Community trade mark application No 13 294 707. The opposition is based on Community trade mark registration No 101 774. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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

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

Class 1: Preparations for filtering and purifying water and beverages, filtering materials (unprocessed plastics), carbon and ceramic materials for filters; chemicals for water treatment, especially chlorinated products, flocculants, disincrustants, pH-controlling products and in general chemical additives for water.

Class 5: Disinfectants; preparations for destroying vermin; sanitary preparations for use exclusively in swimming pools, such as disinfectants, antiseptics, antiparasite preparations and skin protection products.

Class 11: Apparatus for filtering, softening, sterilizing and purifying water; filters (parts of household or industrial installations); water supply installations and tanks; air purifying apparatus and accessories, not included in other classes; hydrants.

The contested goods are the following:

Class 1: Chemically impregnated strips of test paper for use in measuring pH, free chlorine level, total chlorine level, free total alkalinity levels and total hardness of swimming pool, spa and hot tub water; Chemical reagents, namely test kits containing reagent solutions for measuring chlorine, pH and temperature of swimming pool, spa and hot tub.

Class 9: Electronic water tester for measuring chlorine, pH and temperature of swimming pool, spa and hot tub water.

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.

Contested goods in Class 1

Before proceeding with the comparison, an interpretation of the wording of the list of the opponent’s goods is required to determine the scope of protection of these goods.

The term ‘especially’, used in the opponent’s specification chemicals for water treatment, especially chlorinated products, flocculants, disincrustants, pH-controlling products and in general chemical additives for water in Class 1, indicates that the specific goods (i.e. chlorinated products, flocculants, disincrustants, pH-controlling products and in general chemical additives for water) are only examples of items included in the category of chemicals for water treatment and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (judgment of 09/04/2003, T‑224/01, ‘Nu‑Tride’).

The opponent’s chemicals for water treatment, especially chlorinated products, flocculants, disincrustants, pH-controlling products and in general chemical additives for water in Class 1 can be used for the purposes of treating water, for example by disinfecting with chlorine, enhancing aggregation of suspended particles, preventing or removing incrustation, checking pH levels (the acidity or alkalinity of the water) etc. Such disinfectants and sanitizers can be used with water in swimming pools, hot tubs and spa baths.

The contested goods refer to a specific combination of various chemicals in strips of test paper and test kits for checking water quality (hardness, chlorine, pH levels) and temperature.

In relation to the applicant’s specification chemical reagents, namely test kits containing reagent solutions for measuring chlorine, pH and temperature of swimming pool, spa and hot tub, it is noted that the term ‘namely’ shows that the relationship of the individual goods (i.e. test kits) with the broader category (i.e. chemical reagents) is exclusive and restricts the scope of protection only to the specifically listed goods.

Whilst the form of the contested goods can differ from that of the opponent’s goods implying different methods of use, the purpose of these goods, insofar as they are specifically intended or could possibly be used in relation to servicing of swimming pools, spa baths and hot tubs, is the same. Such goods are directed at the same consumer circles, for example households with pools and professionals dealing with the maintenance of public or private swimming pools. It cannot be excluded that the opponent’s chemicals for water treatment require few manufacturing steps to become a test kit/strip for example. Furthermore, the same chemical companies may produce the goods at issue and they can move through the same commercial channels, for example swimming pool maintenance supplies stores.

Therefore, the contested chemically impregnated strips of test paper for use in measuring pH, free chlorine level, total chlorine level, free total alkalinity levels and total hardness of swimming pool, spa and hot tub water; chemical reagents, namely test kits containing reagent solutions for measuring chlorine, pH and temperature of swimming pool, spa and hot tub are similar to the opponent’s chemicals for water treatment, especially chlorinated products, flocculants, disincrustants, pH-controlling products and in general chemical additives for water in Class 1.

Contested goods in Class 9

The opponent’s apparatus for filtering, softening, sterilizing and purifying water in Class 11 are a broad category of goods, some of which can be used with water supply installations of swimming pools, spa baths and hot tubs.

The contested goods in this class are electronic testing instruments for checking water quality and temperature in swimming pools, spa baths and hot tubs. Notwithstanding the difference arising from distinct natures of the goods, the purpose of these goods, insofar as the equipment is specifically intended or could possibly be used in relation to servicing of swimming pools, spa baths and hot tubs, is the same. The goods are of interest to the same consumers who seek for them in the same sales outlets, for example swimming pool maintenance supplies stores.

Therefore, the contested electronic water tester for measuring chlorine, pH and temperature of swimming pool, spa and hot tub water are similar to the opponent’s apparatus for filtering, softening, sterilizing and purifying water in Class 11.

2. The signs

	SWIM DOCTOR
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The earlier mark is a composite sign comprising the word ‘SWIM’, depicted in standard typeface, and a figurative element featuring a stylised image of a swimming person in water.

The contested sign is composed of the words ‘SWIM DOCTOR’.

Visually, the signs are similar to the extent that they coincide in the word ‘SWIM’. However, they differ in the figurative element of the earlier mark, the earlier mark’s overall graphical representation and the word ‘DOCTOR’ in the contested sign.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciations of the signs coincide in the sound of the word ‛SWIM’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciations differ in the sound of the word ‛DOCTOR’ of the contested sign, which has no counterpart.

Conceptually, a part of the public in the relevant territory, for example the English-speaking consumers will understand the word ‘SWIM’ as referring to, inter alia, the act of swimming which is moving along in water by means of movements of the body. For that part of the relevant public, the signs are conceptually similar on account of the word ‘SWIM’ present in both of them.

The figurative element in the earlier mark is a typical symbol (pictogram) denoting a swimming pool.

For another part of the relevant public, for example, those consumers who are not sufficiently familiar with the English language, the word ‘SWIM’ will be meaningless whilst the semantic content of the earlier mark’s pictogram will be perceived.

The word ‘DOCTOR’ in the contested sign will be associated by a substantial part of the relevant public with the concepts of, inter alia, a person licensed to practice medicine, and/or a person who has been awarded a higher academic degree in any field of knowledge. This is either because the word exists as such in several languages in the European Union, for example in English, Spanish, Romanian, or the equivalent in the respective language is rather close, for example ‘Doktor’ in German, ‘dottore’ in Italian, ‘docteur’ in French, ‘dokter’ in Dutch, ‘doktor’ in Slovak and ‘doktors’ in Latvian. Where the relevant public understands the meaning of both words, ‘SWIM’ and ‘DOCTOR’, the combination of those concepts will not convey any semantic content that would go beyond the mere sum of its parts. For another part of the relevant public, the word ‘DOCTOR’ might be meaningless.

For the part of the public which does not attribute any meaning to the word ‘SWIM’ and only understands the pictogram in the earlier mark which is conceptually different from the notion conveyed by ‘DOCTOR’ in the contested sign (where the latter is understood), the signs are not conceptually similar.

Taking into account the abovementioned visual, aural and for a part of the public, conceptual coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

For a part of the relevant public the word ‘SWIM’ present in both signs is meaningless and enjoys an average degree of distinctiveness. Another part of the relevant public will attribute to the word ‘SWIM’ the concept of ‘moving along in water’. In that regard it is noted that the relevant goods are chemicals for water treatment (insofar as the earlier mark is concerned) and testing strips, kits and electronic equipment for checking water quality and temperature (insofar as the contested sign is concerned). The concept conveyed by the word is several mental steps removed from any other objective or even desirable characteristics of the goods at issue. It does not highlight positive aspects of the goods and it is not banal. At most, it could be seen as vaguely pointing to the idea of water that is fit or safe for swimming. However, the allusive semantic content of the word is sufficiently imaginative that it does not materially affect the elements’ distinctiveness. Therefore, it is considered that the word ‘SWIM’—even when understood—has an average degree of inherent distinctiveness in both signs.

Irrespective of whether the element ‘DOCTOR’ in the contested sign is understood or not, it is fanciful in the context of the goods at issue and its degree of distinctiveness is average. Therefore, the contested sign has no element that could be clearly considered more distinctive than other elements.

On the other hand, the earlier mark’s figurative element is a pictogram for swimming pools. In the context of chemicals for water treatment at issue, the element’s distinctiveness is low as consumers might perceive it as alluding to their intended purpose. The public understands the meaning of the element and will not pay as much attention to this weak element as to the mark’s other more distinctive element, ‘SWIM’. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no clear meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. 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 relevant goods are directed at the public at large and at business customers with specific professional knowledge or expertise in the field of water quality management. The degree of attention is considered to be, on the whole, average.

6. Global assessment, other arguments and conclusion

The contested goods are similar to the opponent’s goods.

The signs are similar on account of the word that the signs have in common, ‘SWIM’. It is included in both signs as a readily identifiable component. Furthermore, it is the sole verbal element of the earlier mark. For reasons stated in section c) of this decision, the element’s distinctiveness is not diminished in either of the signs even for the part of the public which understands its meaning. Concerning the difference resulting from the element ‘DOCTOR’ in the contested sign, it is noted that although for a substantial part of the relevant public it conveys some concept, the addition of that word, ‘DOCTOR’, to the first word, ‘SWIM’, does not form an expression with a meaning of its own. That is a relevant factor which needs to be weighed up in the global assessment of likelihood of confusion.

Concerning the visual difference residing in the figurative element of the earlier mark it is noted 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 (judgment of 14/07/2005, T-312/03 ‘Selenium-Ace’, paragraph 37; decision of 19/12/2011, R 0233/2011-4, ‘Best Tone’ paragraph 24; decision of 13/12/2011, R 0053/2011-5 ‘Jumbo’, paragraph 59). Moreover, the distinctiveness of the pictogram is weak and, therefore, its role in the overall impression of the earlier mark is not as strong as that of the word, ‘SWIM’.

Likelihood of confusion includes likelihood of association, in the sense that the public may, if not confuse the two signs directly believe that they come from the same undertaking or from economically related ones. Given the independent and distinctive role of the element ‘SWIM’ in both signs, it is likely that when encountering the trade marks at issue the average consumer, be it the public at large or business customers, will think that the contested sign is a variation of the earlier mark. Consequently, consumers could be misled into attributing a common trade origin to the goods concerned.

On an overall assessment, it is considered that the differences between the signs do not outweigh the similarities established in the foregoing assessment. Given the average degree of inherent distinctiveness of the earlier mark as a whole, the difference in the additional word ‘DOCTOR’ included in the contested sign does not enable the relevant public to safely distinguish between the signs.

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 Community trade mark registration No 101 774.

It follows that the contested trade mark must be rejected for all of the contested goods.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3), (6) and (7)(d)(i) CTMIR, 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

Carmen SANCHEZ PALOMARES

Solveiga BIEZA

Alexandra APOSTOLAKIS

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.