OPPOSITION No B 2 546 821

Societe des Eaux de Marseille, Société Anonyme, 25, rue Edouard Delanglade, 13006 Marseille, France (opponent), represented by Cabinet Beau de Lomenie 232, avenue du Prado, 13008 Marseille, France (professional representative)

a g a i n s t

Seahorse Manufacturing LLC, 6203 East Hwy 90, New Iberia Louisiana 70560, United States of America (applicant), represented by Katarzyna Binder-Sony, 3 More London Riverside, London SE1 2RE, United Kingdom (professional representative).

On 29/04/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 546 821 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 820 411, namely against all the goods and services in Classes 1, 7, 11 and 40. The opposition is based on French trade mark registration No 07 3 500 281. 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 softening apparatus and installations; water purifying apparatus and machines; installation for the purification of water; water sterilizers; filters for drinking water; water filtering apparatus.

Class 37: Repair of water distribution and treatment equipment; installation services of water treatment and distribution equipment; disinfecting.

Class 40: Water treating; water purification; water filtering.

The contested goods and services are the following:

Class 1: Biodegradable waste digestant for use in septic systems.

Class 7: Diffusers used in machines for wastewater and clean water treatment.

Class 11: Filtering units for sewage waste water.

Class 40: Biological waste water treatment 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.

Contested goods in Class 1

As for biodegradable waste digestant for use in septic systems, these are substances used to treat septic systems, notably they are products used to break up complex waste molecules and thus help the waste biodegradation process. These goods are used in septic tanks, which are waste water purifying systems belonging to the broad category of installations for the purification of water covered by the earlier trade mark in class 11. Although the nature of the goods is not the same, they are complementary. They also share the purpose of cleaning waste water, they are distributed through specialized channels focusing on waste water treatment and thus the goods can be expected to come from the same or economically linked undertakings. The goods are therefore similar.

Contested goods in Class 7

The contested diffusers used in machines for wastewater and clean water treatment are similar to the opponent’s water purifying apparatus and machines in class 11. The goods are complementary since the diffusers at hand are built-in components of water treatment machines, in other words of the water purifying machines of the opponent. The goods coincide in their purpose, i.e. cleaning water, their distribution channels and the relevant public.

Contested goods in Class 11

The contested filtering units for sewage waste water fall into the broad category of water filtering apparatus covered by the earlier sign and thus the goods at hand are identical.

Contested services in Class 40

The contested biological waste water treatment services fall into the broad category of the opponent’s water treating services in class 40. Hence the services are identical.

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 found to be identical or similar are products used for the treatment of waste water, sewage, septic tanks; moreover the identical services also involve waste water treatment. The goods and services have largely industrial use and mainly target professionals with specific knowledge in waste water technology; given their expertise as well as the necessary public health considerations in this sector, the degree of attention of these specialists will be high.

Moreover, it cannot be excluded that some of the goods like the diffusers in class 7 may also have household application, moreover that waste water treatment services may also be provided for individual households. Nevertheless, the general public attaches great importance to the cleanliness of water and proper disposal of waste water; therefore, given the potential health risks involved, the average consumer will also scrutinize these goods and services with a rather high degree of attentiveness.

3. The signs

	SEA HORSE
Earlier trade mark	Contested sign

The relevant territory is France.

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 earlier mark is a figurative mark consisting of the letters “S” and “E” written in standard slightly tilted capital letters, followed by an element which is likely to be identified as a stylized letter “A” being crossed by a blue figurative element which may be seen to depict a splash of water. The letters “S”, “E” and “A” are underlined in blue, and the expression “SOCIETE DES EAUX D’ARLES” is written beneath in standard black capital letters.

The contested sign is a word mark “SEA HORSE.”

As regards the earlier mark, the letters “SEA” are visually more dominant than the other verbal elements of the mark, by virtue of their central position and size. The final letter “A” of this element is highly embellished and disguised by virtue of the blue water torrent which crosses it from left to right so as to obscure its central bar and its left-hand base. Even though this water-themed element is associated with the purpose of the goods and services, i.e. water treatment, the effect created by its integration into the letter A is distinctive and immediately noticeable.

The expression “SOCIETE DES EAUX D’ARLES” will be understood by the relevant public as a meaningful expression referring to “the water company of Arles”. Bearing in mind that the goods and services are linked to water treatment, this element will have less impact on the relevant French public as it will be seen as a reference to the water company operating in the French city and commune of Arles, and as such the presumed origin and provider of the goods and services at hand.

The word “SEA”, as the opponent rightly argues, has no meaning as such in French. Nevertheless, when read in conjunction with the expression “SOCIETE DES EAUX D’ARLES”, it is likely that the relevant public will perceive the term “SEA” as an abbreviation of the latter expression.

The contested mark “SEA HORSE” has no meaning in French and no elements that could be considered clearly more distinctive than other elements.

Visually, the signs resemble each other as far as the earlier sign’s dominant element, i.e. the term “SEA” is concerned.

The signs differ in the additional word “HORSE” of the contested sign.

Moreover, the signs also differ in the image of a blue water torrent appearing across the letter “A” in the earlier sign as well as in the expression “SOCIETE DES EAUX D’ARLES”, while it should be noted, as the opponent argues, that this word element is in a less prominent position.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters “S”, “E” and “A”, which are likely to be spelt out separately in both signs, especially in the earlier sign where it is likely to be perceived as an abbreviation. The pronunciation differs in the syllables “(H)OR-SE” of the contested sign, as well as in the syllables ” SO-CI-E-TE-DES-EAUX-D’ARLES” of the earlier sign, while due consideration is given to the opponent’s argument that this latter element is in a less prominent position.

Therefore, the signs are similar to an average degree.

Conceptually, the public in the relevant territory will perceive the term “SOCIETE DES EAUX D’ARLES” in the earlier mark as a reference to the name of the water company of the French town/commune of Arles, and is subsequently likely to identify the term “SEA” as the abbreviation of the company’s name. Moreover the earlier sign’s figurative element refers to the concept of a torrent of water. The contested sign lacks any meaning in French. Since one of the signs will not be associated with any meaning, 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 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 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.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (see judgment of 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22 et seq.).

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see judgment of 20/09/1998, C-39/97, ‘Canon’,

EU:C:1998:442, § 17 et seq.).

The signs are similar in so far as they both contain the element “SEA”, which is in dominant position in the earlier sign. Nevertheless, it should be noted that the element “SOCIETE DES EAUX D’ARLES”, while in a less prominent position, is not completely negligible. In fact, it has an important role in the sense that when the relevant public is confronted with the earlier sign in its entirety, it is likely to recognise this element “SEA” as an abbreviation of that verbal element, i.e. the name of the water company operating in the French city and commune of Arles, a company which would be seen as the origin and provider of the goods and services at hand. At the same time, “SEA” in the contested sign does not evoke any concept; moreover it is paired with another term having no meaning in the French language, “HORSE”. A further difference between the marks is created by the fact that the letter “A” (of SEA) in the earlier mark is embellished and disguised to a high degree by way of the water torrent feature which traverses it.

As for the goods and services at hand, while they have been found to be identical or similar, at the same time it was also established that when dealing with the purification of waste water, the relevant, mainly professional public is attentive to a high degree, and given the obvious health considerations either for the public or for one’s household, they will examine the signs with particular scrutiny. In fact, when examining both signs, a highly attentive consumer will immediately identify the earlier sign as a company providing water treatment services in the Arles commune, a message that is unlikely to be perceived in the contested mark.

Considering all the above, it is found that notwithstanding the established similarities between the dominant element of the earlier sign and the first word of the contested sign, there are additional elements in both signs which distinguish the marks to the extent that the highly attentive relevant public would not be likely to assume that the specialised goods and services at hand originate from the same or economically linked undertakings.

The Opposition Division notes that opponent’s arguments brought forward concerning the judgment of 4/5/2005, T-22/04, ‘Westlife' regarding the entire reproduction of the earlier mark are not valid in the present case, given that the case at hand does not concern the partial reproduction of the entire earlier mark and there are additional visual and verbal differences in the earlier mark. Moreover, there is a significant difference in the attentiveness of the relevant public in the present case and that of the mass consumption goods concerned in that earlier judgment.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

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

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

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Richard THEWLIS

Marianna KONDAS

Julie GOUTARD

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 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.

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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.