OPPOSITION Nо B 2 797 960

 

Helen of Troy Limited, The Financial Services Centre Suite 1, Ground Floor, Bishop's Court Hill, BB14004 St. Michael, Barbados (opponent), represented by Società Italiana Brevetti S.P.A., Via Carducci, 8, 20123 Milano, Italy (professional representative) 

 

a g a i n s t

 

Brita GmbH, Heinrich-Hertz-Str. 4, 65232 Taunusstein, Germany (applicant), represented by Balder IP Law, S.L., Paseo De La Castellana 93, 28046 Madrid, Spain (professional representative).

 

On 07/12/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 2 797 960 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 of European Union trade mark application No 15 403 901 ‘mypure’ (word mark), namely against all the goods in Class 11. The opposition is based on, inter alia, European Union trade mark registration No 12 898 623, (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK ON EARLIER RIGHTS

Initially, in the notice of opposition of 04/11/2016, the opponent indicated that the opposition was based on 6 different earlier rights. However, in its submission of 15/04/2020, the opponent expressly limited the earlier rights on which the opposition is based to European Union trade mark registrations No 12 898 623 and No 10 816 692. Consequently, the opposition will continue solely on the basis these two earlier rights.

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.

 

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 12 898 623.

 

a) The goods

 

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

 

Class 11: Apparatus for filtering drinking water; filters for drinking water; faucet mounted filtering devices; water filtration pitchers sold empty; water purification units; antimicrobial water purification units.

The contested goods are the following:

 

Class 11: Apparatus and installations, all for use in the treatment of water; filters and installations for sanitising water and for removing bacteria and viruses, cleaning filters, drinking water filters; membrane filters for microfiltration, ultrafiltration, nanofiltration, reverse osmosis; filter attachments, filter heads, in particular with sensor-based components; water treatment apparatus, water filtering apparatus, water conditioning units, water intake apparatus; water filtering and water filtration apparatus based on membrane technology, reverse osmosis technology, UV technology, ozone technology, carbon technology, in particular with activated carbon, carbon blocks and carbon biscuits; water filter and water filtration equipment for water sterilisation on a microbiological basis; pressure driven filters, filter cartridges with lowering filter mechanisms, filter cartridges with ion exchangers and/or adsorbents (included in class 11); water conducting fittings, in particular for taps with integrated filter systems; fittings for conducting water, namely hoses being parts of water meters and being parts for diluting devices; apparatus for removing water; water treatment apparatus equipped with diluting devices, consumption displays, fittings for conducting water, filters; water treatment installations with the aforesaid apparatus or apparatus modules; the aforesaid goods and accessories, in particular refillable elements, cartridges and spare parts, included in class 11.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

 

b) 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 assumed to be identical are directed partially at the public at large as well as partially at business customers with specific professional knowledge or expertise.

 

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. 

c) The signs

 

	mypure
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).

 

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

 

The earlier mark is a figurative sign consisting of the verbal element ‘PUR’ depicted in a fairly standard typeface as well as a graphical element placed within the letter ‘U’ and consisting of the representation of one dot and three lines, which appear to increase in length from bottom to top. The verbal element ‘PUR’ will be understood by parts of the relevant public as a reference to something clean which does not contain any harmful substances, either because the very same word exists in such language (for example in French and German) or due to the existence of very similar language equivalents with the same meaning (for example ‘pure’ in English, ‘puro’ in Spanish, Portuguese or Italian). Taking into account that the relevant goods are all related to the treatment of water, the verbal element of the contested sign is of weak distinctive character for the above mentioned part of the public, who will perceive this element as a mere reference to a product feature, namely to clean water. However, for other parts of the public the verbal element will be meaningless (for example in the Bulgarian- and Polish-speaking parts) and therefore is of normal distinctive character. The stylisation as well as the figurative element are, in the view of the Opposition Division, of merely decorative nature and of little impact on the perception of the mark by the relevant public.

The contested sign is a word mark consisting of the word ‘mypure’. As regards the distinctive character of the contested sign similar considerations as for the earlier mark apply. The contested sign consists of the words ‘my’ and ‘pure’, which both belong to the English language and which both might be associated with a particular meaning potentially being descriptive and / or allusive with regard to the relevant goods for the part of the public who will understand their meanings. For other parts of the public, for example the Bulgarian- and Polish-speaking public, the contested sign has no particular meaning and is therefore, just like the earlier mark, of normal distinctive character.

For the purposes of this comparison and bearing in mind that similarities between signs are higher where the coincidences reside in distinctive elements, the Opposition Division will assess the signs from the perspective of the public for whom neither of the verbal elements of both signs have a meaning and for whom both of the signs are of normal distinctive character, as it is the case for the Bulgarian- and Polish-speaking part of the public, which, for the opponent, is the most advantageous scenario in which the opposition can be examined.

In the case of word marks, it is the word as such that is protected as long as its depiction does not depart from the usual way of writing (standard rules of capitalisation), as is the case of the contested mark. Furthermore, the Opposition Division recalls that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. The Court has held that consumers will only break a mark into elements when these suggest a specific meaning for them or resemble words known to them (judgement of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, §57). In the view of the Opposition Division neither ‘my’ nor ‘pure’ constitute clearly recognisable elements for the public under analysis, but will be rather perceived as one single unit. There are in fact no reasons for the public under analysis to artificially dissect the contested sign into various elements. Consequently, and as mentioned above already, the contested sign is of normal distinctive character.

Being a word mark, the contested sign, by means of definition, does not have any dominant elements. Moreover, the earlier mark has no element that could be considered clearly more dominant than other elements.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

 

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

 

Visually, the signs coincide in the letters ‘*-*P-U-R-*’. Although the letters of the earlier mark are entirely included in the contested sign, they are positioned in different locations. Furthermore the signs differ in the additional letters ‘M-Y‘ being placed at the beginning of the contested sign and ‘E’ being the last letter thereof. In addition, the signs are of different lengths (3 versus 6 letters) and differ on account of the stylisation and the figurative element of the earlier mark, albeit these elements are of limited impact on the perception of the mark. Taking into account the fact that the earlier mark is a very short sign (consisting of only three letters) as well as the different beginnings and endings of the signs, they are considered to be visually similar to a low degree only.

 

Aurally, similar considerations as to the visual comparison apply. The sings coincide, irrespective of the different pronunciation rules in different parts of the relevant territory under analysis, in the sound of the letters ‘*/*P/U/R/*’, which however are placed in different positions of the signs. The signs differ on account of the sound of the additional letters ‘M/Y’ as well as ‘E’, which are only present in the contested sign. The signs are of different lengths and as mentioned above, the earlier mark is a very short sign with the result that even small differences will be more easily identified by the relevant public. The Opposition Division is therefore of the view that the signs are aurally similar to a low degree, too.

 

Conceptually, neither of the signs has a meaning for the public in the relevant territory under analysis (the Bulgarian- and Polish-speaking public). Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

 

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

 

d) 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 in question from the perspective of the public in the relevant territory under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

 

e) Global assessment, other arguments and conclusion

 

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods have been assumed to be identical and target the public at large as well as professionals, whose degree of attention will vary from average to high depending on the goods in question. The degree of inherent distinctiveness of the earlier mark is normal. The signs are visually and aurally only similar to a low degree whereas the conceptual aspect does not influence the assessment of the similarity of the signs.

While the signs are similar to some extent, it has to be recalled that the earlier mark is a very short sign consisting of three letters only. In principle, the shorter a sign, the more easily the public is able to perceive all its single elements. Due to such shortness the earlier mark will be seen immediately as noticeably different overall to the contested sign. As mentioned before, the signs only coincide in three letters, which however are placed at different positions (at the beginning of the earlier mark and in the middle of the contested sign). The signs differ on account of their beginnings and endings, which in the view of the Opposition Division leads to a different overall impression of the signs. Additionally, the sings differ on account of the type-font and figurative element of the earlier mark. Although, these elements are of reduced impact on the perception of the contested sign, such elements cannot be ignored completely. In the view of the Opposition Division the differences of the signs therefore outbalance the existing similarities.

Considering all the above, even assuming that the goods are identical there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for which the elements ‘PUR’, ‘my’ and ‘pure’ are of weak distinctiveness. This is because, as a result of the weak distinctive character of these elements, that part of the public will perceive the signs as being even less similar. For the parts of the public who will understand the meaning of the verbal element of the earlier mark and who will identify and understand the meaning of the element ‘pure’ in the contested sign, the Opposition Division recalls that for such public, and in the context of the relevant goods, such elements are of little distinctive character, if any at all. Even if for such public there might be some conceptual similarities between the signs, such similarities would be, due to its low distinctive character, of very limited impact and not sufficient to conclude a likelihood of confusion. The overall impression produced by the signs remains to be sufficiently different for such public, too.

 

The opponent has also based its opposition on earlier European Union trade mark registration No 10 816 692  (figurative mark).

 

Since the sole verbal element of this mark is identical to the one of the earlier mark that has been compared, for which moreover the goods have been assumed to be identical to the goods of the contested sign, the outcome cannot be different with respect to the goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods, either.

 

COSTS

 

According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) 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

 

 

Boyana NAYDENOVA

Holger Peter KUNZ

Anna ZIÓŁKOWSKA

 

 

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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.