OPPOSITION No B 2 440 462

Meeco Invest AG, Industriestrasse 16, 6304 Zug, Switzerland (opponent), represented by RLS Rechtsanwälte, Wallstrasse 3, 02625 Bautzen, Germany (professional representative)

a g a i n s t

3SUN S.R.L., Contrada Blocco Torrazze Snc, Zona Industriale (Z.I.), 95121 Catania, Italy (applicant), represented by Cantaluppi & Partners S.R.L., Piazzetta Cappellato Pedrocchi, 18, 35122 Padova, Italy (professional representative).

On 22/04/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 440 462 is partially upheld, namely for the following contested goods and services:

Class 11: Water purification systems for the production of drinking water; water supply installations.

Class 37: Construction, repair, installation, management and maintenance of water purification installations for the production of drinking water.

Class 40: Drinking water treatment.

Class 42: Scientific and technological services and research, design and development of water purification installations for the production of drinking water.

2. European Union trade mark application No 13 391 321 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 391 321. The opposition is based on European Union trade mark registration No 9 395 261. The opponent invoked Article 8(1)(b) EUTMR.

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

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

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

Class 11: Water treatment installations and apparatus, in particular for purification, sterilization, filtration, distillation and softening of water.

Class 37: Installation, maintenance and repair of water treatment apparatus and installations.

Class 40: Water treatment services.

The contested goods and services are the following:

Class 9: Signalling and tracking apparatus; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; photovoltaic panel.

Class 11: Water purification systems for the production of drinking water; water supply installations.

Class 37: Construction, repair, installation, management and maintenance of water purification installations for the production of drinking water; building construction, repair, installation work, management and maintenance of equipment for the production of electrical energy from solar sources.

Class 40: Drinking water treatment.

Class 42: Scientific and technological services and research, design and development of water purification installations for the production of drinking water; design and development of equipment for the production of electrical energy from solar sources.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the opponent’s list of goods in Class 11, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, ‘Nu‑Tride’).

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 9

All the opponent’s goods and services relate to water treatment. However, the contested signalling and tracking apparatus; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; photovoltaic panel are goods for the treatment of electricity or for signalling and tracking. These goods have different natures and purposes; they are not usually manufactured by the same producers and they target different consumers and have different distribution channels. Finally, they are neither complementary nor in competition with each other. Therefore, they are dissimilar.

Contested goods in Class 11

The contested water purification systems for the production of drinking water are included in the opponent’s broader category of water treatment installations and apparatus. Therefore, they are identical.

The contested water supply installations and the opponent’s water treatment installations and apparatus have similar natures and purposes, as they relate to the treatment or supply of water. They can be manufactured by the same producers, target the same public and have the same distribution channels. Therefore, these goods are similar.

Contested services in Class 37

The contested repair, installation and maintenance of water purification installations for the production of drinking water are included in the opponent’s broader category of installation, maintenance and repair of water treatment apparatus and installations. Therefore, these services are identical.

The contested construction and management of water purification installations for the production of drinking water are highly similar to the opponent’s installation, maintenance and repair of water treatment apparatus and installations. These services have very similar natures and purposes; they are usually provided by the same traders, have the same distribution channels, target the same public and are complementary to each other.

The contested building construction, repair, installation work, management and maintenance of equipment for the production of electrical energy from solar sources are services with a very specific purpose, namely the production of energy from solar sources. However, the opponent’s installation, maintenance and repair of water treatment apparatus and installations are services with a very different purpose, which is the treatment of water. Their natures are different; they are not provided by the same companies, do not have the same distribution channels, do not target the same users and are neither in competition with nor complementary to each other. The same applies to a comparison between the contested goods and the remaining goods and services of the opponent. Therefore, they are dissimilar.

Contested services in Class 40

The contested drinking water treatment services are included in the opponent’s broader category of water treatment services. Therefore, they are identical.

Contested services in Class 42

As a preliminary remark, it is to be noted that according to Rule 2(4) EUTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.

The contested scientific and technological services and research, design and development of water purification installations for the production of drinking water are similar to the opponent’s water treatment services in Class 40. Although these services have different natures and purposes, they all relate to the treatment of water, and therefore they can be provided by the same companies, can have the same distribution channels and can be complementary. Therefore, they are similar.

The remaining contested services, design and development of equipment for the production of electrical energy from solar sources, are dissimilar to all the opponent’s goods and services. This is because, while the opponent’s goods and services relate to water treatment, these contested services relate to the production of energy from solar sources. Consequently, these services have different natures and purposes, they are not provided by the same companies, they target different consumers and they have different distribution channels. Finally, they are neither complementary nor in competition with each other. Therefore, they are dissimilar.

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 goods and services found to be identical and similar to different degrees are directed at both the public at large and business customers with specific professional knowledge or expertise. The degree of attention varies from average to high, as some of the goods and services are highly specialised.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

Bearing in mind that the relevant goods and services are related to water treatment, the word ‘water’, present in both signs, and the depiction of a drop in the contested sign are considered non‑distinctive for these goods and services. Furthermore, the verbal element ‘TM’ merely indicates that the sign is a trade mark, and therefore it is also considered non-distinctive for the goods and services in question. The public understands the meaning of these verbal and figurative elements and will not pay as much attention to them as to the other, more distinctive, elements of the mark. Consequently, the impact of these non‑distinctive elements is limited when assessing the likelihood of confusion between the marks at issue.

The contested sign has no element that could be considered more dominant (visually eye‑catching) than other elements.

The element ‘sun2water’ and the blue square in the earlier mark are the dominant elements, as they are more eye‑catching than the almost illegible abbreviation ‘TM’ (in the top right corner of the sign), due to their size.

Visually, the signs are similar to the extent that they include the words ‘sun’ and ‘water’. However, they differ in the number ‘2’, the abbreviation ‘TM’ and the blue background of the earlier mark, and in the number ‘4’ and the depictions of a sun and of a drop in the contested sign. The marks also differ in the arrangement of their verbal elements and in the use of title case for the words ‘Sun’ and ‘Water’ in the contested sign (while in the earlier mark the same words are lower case), and they differ very slightly in the typefaces of their verbal elements. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the words ‘sun’ and ‘water’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the numbers ‛2’ of the earlier sign and ‘4’ of the contested mark. The abbreviation ‘TM’ in the earlier mark will not be pronounced. Therefore, the signs are aurally similar to a high degree.

Conceptually, it must be noted that it is common practice in trade marks, at least in English, to use numbers to refer to words. Therefore, the number ‘2’ in the earlier mark will be perceived by the relevant public as the preposition ‘to’, meaning ‘used to indicate a resulting condition’ (extracted from Collins English Dictionary on 16/10/2015 at http://www.collinsdictionary.com/dictionary/english/to). The number ‘4’ in the contested sign will be perceived by the relevant public as the preposition ‘for’, meaning ‘to do or partake of’ (extracted from Collins English Dictionary on 16/10/2015 at http://www.collinsdictionary.com/dictionary/english/for). The letters ‘TM’ will be perceived as an abbreviation of ‘trade mark’. The words that the marks have in common are ‘sun’, meaning ‘the star at the centre of our solar system’ (extracted from Collins English Dictionary on 16/10/2015 at http://www.collinsdictionary.com/dictionary/english/sun), and ‘water’, meaning ‘a clear colourless tasteless odourless liquid that is essential for plant and animal life and constitutes, in impure form, rain, oceans, rivers, lakes, etc.’ (extracted from Collins English Dictionary on 16/10/2015 at http://www.collinsdictionary.com/dictionary/english/water). Finally, the depictions of a sun and of a drop in the contested sign will be perceived as such by the relevant consumer. Consequently, since the signs will be associated with very similar meanings, the signs are conceptually similar to a high degree.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 meaning for any of the goods and services 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 non‑distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods and services are partly identical, partly similar to different degrees and partly dissimilar. The signs are visually similar, and aurally and conceptually similar to a high degree.

Visually, the signs have a similar composition, in that each includes the same two verbal elements, namely ‘sun’ and ‘water’, and a number in between, namely ‘2’ in the earlier mark and ‘4’ in the contested sign. In both marks, the differing verbal element is placed between the two coinciding words. Therefore, this difference will not be particularly perceptible to consumers, since consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the identical first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

In addition, consumers, in general, do not have both signs in front of them at the time of encountering either of them, such as in advertising, or when purchasing certain goods or services. Furthermore, consumers do not clearly recollect all the details of the signs, but rather their more distinctive and dominant components. The sign at hand and the ‘imperfect recollection’ of another sign are the basis on which consumers evaluate whether signs are the same or similar or not (22/06/1999, C‑342/97, Lloyd Schufabrik Meyer, § 26).

Aurally, the signs differ in the sound of the numbers ‘2’ and ‘4’ in the middle of the verbal elements of the signs, but they have identical beginnings and endings, namely ‘sun’, /sʌn/, and ‘water’, /ˈwɔːtə/. The marks are therefore pronounced in highly similar manners. Moreover, the sequence of syllables, the rhythms and intonations of the signs are almost identical. A slight difference in the second syllables of the signs is not sufficient to outweigh the similarities at their beginnings and ends, and thus the overall impressions of the signs have a high degree of aural similarity.

As regards the conceptual comparison, the signs are almost identical, as the only difference lies in the numbers ‘2’ and ‘4’, commonly used in marketing in place of the prepositions ‘to’ and ‘for’, which, in the present case, do not have a strong effect on overall concepts of the signs; this conceptual similarity therefore contributes to the high degree of similarity between the signs as a whole. Furthermore, the figurative elements of the contested sign, namely the depictions of a sun and of a drop, merely reinforce the meaning of the verbal elements ‘sun’ and ‘water’, respectively.

The differences between the marks are not sufficient to counteract their similarities, and, in consequence, the public is likely to believe that the goods and services come from the same undertaking or from economically linked undertakings. Furthermore, the difference in the numbers in the marks, and also the addition of the figurative elements in the contested sign, may lead consumers to assume that the opponent’s sign is a sub-brand or ‘version 2.0’ of the earlier mark, or vice versa.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to different degrees to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness. The same reasoning applies to the opponent’s arguments as regards its family/series of marks featuring the element ‘sun2’.

Likewise, there is no need to assess either the claimed enhanced degree of distinctiveness of the opposing mark or the opponent’s arguments regarding its family/series of marks in relation to dissimilar goods and services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness and regardless of the outcome of an examination of the arguments regarding the family/series of marks.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition 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 Opposition Division

Inés GARCÍA LLEDÓ

Juan Antonio MORALES PAREDES

Vít MAHELKA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal shall be filed in writing at the Office within two months of the date of notification of this decision. It shall 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 shall 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.