OPPOSITION No B 3 005 868

deconta GmbH, Im Geer, 20, 46419 Isselburg, Germany (opponent), represented by Menold Bezler Rechtsanwälte Partnerschaft mbB, Rheinstahlstr. 3, 70469 Stuttgart, Germany (professional representative)

a g a i n s t

Greenden S.r.l.s, Via San Giovanni 2, 33080 Prata di Pordenone (ON), Italy (applicant).

On 14/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 005 868 is partially upheld, namely for the following contested goods and services:

Class 9: Air pollution measuring devices; pollutant sensors; digital sensory devices; sensor controllers; sensors and detectors; information technology and audio-visual, multimedia and photographic devices.

Class 37: Repair or maintenance of water pollution control equipment; installation of environmental control systems; installation of environmental protection systems; installation of environmental engineering systems; advisory services relating to the repair of environmental control systems; advisory services relating to the maintenance of environmental control systems.

Class 40: Soil, waste or water treatment services [environmental remediation services]; treatment of waste materials in the field of environmental pollution control; air and water conditioning and purification.

2. European Union trade mark application No 17 281 304 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.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 281 304, for the figurative mark , namely against some of the goods and services in Classes 9, 37, 40 and 42. The opposition is based on European Union trade mark No 15 704 505 for the word mark ‘green dec’. 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 on which the opposition is based are the following:

Class 7: Decontamination machines, dust removing installations for cleaning purposes, washing installations.

Class 9: Measuring apparatus, differential pressure measuring apparatus and air-sampling apparatus, communication installations (image and sound).

Class 11: Air and water filtering apparatus for pollutant cleanup, dust removing installations for ventilation, decontamination showers, decontamination chambers, stationary/mobile lock systems (passenger transport and material locks), water treatment apparatus, stationary/mobile water filtering apparatus/installations, stationary/mobile air filtering apparatus/installations (dust, odours, gases), air showers/cabins.

The contested goods and services are the following:

Class 9: Air pollution measuring devices; pollutant sensors; digital sensory devices; sensor controllers; sensors and detectors; information technology and audio-visual, multimedia and photographic devices.

Class 37: Repair or maintenance of water pollution control equipment; installation of environmental control systems; installation of environmental protection systems; installation of environmental engineering systems; advisory services relating to the repair of environmental control systems; advisory services relating to the maintenance of environmental control systems; extermination, disinfection and pest control.

Class 40: Soil, waste or water treatment services [environmental remediation services]; treatment of waste materials in the field of environmental pollution control; air and water conditioning and purification.

Class 42: Conducting sampling and analysis services to assess pollution levels; technical consulting in the field of pollution detection; advisory services relating to environmental pollution; advisory services relating to pollution control; environmental testing; compilation of information relating to environmental conditions; environmental testing and inspection services.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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

The contested air pollution measuring devices are included in the broad category of the opponent’s measuring apparatus. Consequently, they are identical.

The contested pollutant sensors; digital sensory devices; sensor controllers; sensors and detectors are all devices designed to detect, measure or record physical phenomena such as pollution. As such, they overlap with the opponent’s measuring apparatus to the extent that all these goods can be sensory measuring devices. Therefore, they are identical.

The contested information technology and audio-visual, multimedia and photographic devices include, as a broad category, the opponent’s communication installations (image and sound). Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, these contested goods are considered identical to the opponent’s goods.

Contested services in Class 37

The contested repair or maintenance of water pollution control equipment; installation of environmental control systems; installation of environmental protection systems; installation of environmental engineering systems; advisory services relating to the repair of environmental control systems; advisory services relating to the maintenance of environmental control systems are all services related to installation, repair, maintenance or consulting on the repair and maintenance of environmental control systems designed to reduce the environmental impact of the potentially deleterious effects of natural and human activities. As such, they can include installation, repair, maintenance or consulting on the repair and maintenance of apparatus such as the opponent’s water treatment apparatus. These contested services are therefore similar to the opponent’s water treatment apparatus in Class 11. It is not exceptional for companies offering such devices also to provide installation services or consultancy on repair and maintenance if needed. Consequently, these services, albeit different in nature, target the same public and are provided by the same producers/providers as the opponent’s goods.

The contested extermination, disinfection and pest control involve the removal of pests or pathogenic microorganisms (viruses, bacteria and fungi) that live in environments, surfaces or water systems and are harmful to human beings. This is not the specific purpose of the opponent’s goods in Classes 7, 9 and 11. Although it is not excluded that some of the opponent’s goods could be used during the processes of extermination, disinfection and pest control, this does not make them complementary in the sense that they are essential for performing these services. The methods of use of these goods and services are different. They are not in competition with each other and their target publics and suppliers are usually different. Therefore, these contested services are dissimilar to the opponent’s goods.

Contested services in Class 40

The contested soil, waste treatment services [environmental remediation services]; treatment of waste materials in the field of environmental pollution control are specialised services that involve the mechanical or chemical processing or transformation of soil or waste, aimed at removing pollution or contaminants. Such services have a strong technical connection with the opponent’s decontamination machines, since they are rendered using machines such as those offered by the opponent. Therefore, they are complementary. Furthermore, even though they differ in their natures, they have the same purpose, namely cleaning up contaminated sites or waste. Consequently, these services are at least similar to a low degree to the opponent’s decontamination machines in Class 7.

The contested water treatment services [environmental remediation services]; air and water conditioning and purification are specialised services that involve the processing or transformation of water, aimed at removing pollution or contaminants. These services have a strong technical connection with the opponent’s air and water filtering apparatus for pollutant cleanup, since they are rendered using filtering apparatus such as that offered by the opponent. Therefore, they are complementary. Furthermore, even though they differ in their natures, they have the same purpose, namely purifying air or water. Consequently, these services are at least similar to a low degree to the opponent’s air and water filtering apparatus for pollutant cleanup in Class 11.

Contested services in Class 42

The contested conducting sampling and analysis services to assess pollution levels; environmental testing; environmental testing and inspection services are dissimilar to the opponent’s goods in Classes 7, 9 and 11. They are different in nature, given that services are intangible whereas goods are tangible. Furthermore, while some of the opponent’s goods (e.g. measuring apparatus) can be used in the provision of the contested services, this alone is insufficient to find similarity, because they target different consumers through different distribution channels, and they are not provided by the same manufacturers/providers. Furthermore, they are not interchangeable or in competition with one another.

The contested technical consulting in the field of pollution detection; advisory services relating to environmental pollution; advisory services relating to pollution control; compilation of information relating to environmental conditions are all services related to consultancy and compilation of information in the field of environment protection and pollution control. All these contested services are dissimilar to the opponent’s decontamination machines, dust removing installations for cleaning purposes, washing installations in Class 7, measuring apparatus, differential pressure measuring apparatus and air-sampling apparatus in Class 9 and air and water filtering apparatus for pollutant cleanup, dust removing installations for ventilation, decontamination showers, decontamination chambers, water treatment apparatus, stationary/mobile water filtering apparatus/installations, stationary/mobile air filtering apparatus/installations (dust, odours, gases), air showers/cabins in Class 11, all these goods being machines and apparatus for controlling pollution or treating polluted/contaminated soil, air, water or waste.

Although these contested services relate to environmental protection and pollution control, they are not linked to the use (or installation, maintenance or repair) of the opponent’s machines and apparatus. Given this, they are generally provided by companies or institutions with no affiliations to any vendor of apparatus or equipment used to control pollution or to treat polluted air, soil or water. Furthermore, they are different in nature from and are neither complementary to nor in competition with the opponent’s goods. They are also offered through different channels.

In addition, these contested services have no similarity, in terms of their nature, usual origin or target consumers, with the opponent’s remaining goods in Class 9 (communication installations (image and sound)) and Class 11 (stationary/mobile lock systems (passenger transport and material locks)). They are also neither in competition with nor complementary to one another. Therefore, they are dissimilar.

2. Relevant public — degree of attention

The average consumer of the category of products or services 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, some the goods and services found to be identical or similar (to varying degrees) are directed at the public at large (e.g. in the case of information technology and audio-visual, multimedia and photographic devices) and some are directed at business customers with specific professional knowledge or expertise in environmental protection and pollution control (e.g. in the case of installation of environmental protection systems). The degree of attention may vary from average to higher than average, depending on the specialised nature of the goods/services, the frequency of purchase and their price.

3. The signs

green dec
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 earlier mark is the two-word mark ‘green dec’, whereas the contested sign is a figurative mark consisting of the word ‘GREENDEN’ in upper case letters, depicted in a stylised green font in which the left edge of each letter is replaced by a thin vertical line.

The contested sign includes the first element (‘green’) of the earlier mark, ‘green dec’.

‘GREEN’ is a basic term in English, commonly used in commerce in the whole of the European Union. It does not only describe a colour, but also refers to environmentally-friendly products or services (see by analogy 27/02/2018, R 8/2017‑4, GREEN FLUTE (fig.) / AMBAR-GREEN, § 29; 12/07/2018, R 288/2018‑5, GREENIC (fig.) / GREENICE (fig.), § 25).

The basic word ‘GREEN’ will be easily perceived both in the earlier mark, where it constitutes a separate word element, and in the contested sign, where it is included in the word ‘GREENDEN’.

Although marks are perceived as a whole, consumers tends to break down verbal elements when, as in the present case, they suggest clear meanings to them (see 13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

Considering that the goods and services at issue are aimed at pollution control and treatment of polluted/contaminated environments, the coinciding element, ‘GREEN’, is weak.

The additional elements of the signs, ‘dec’ (in the earlier mark) and ‘DEN’ (in the contested sign), do not have any meaning related to the goods and services at issue. Therefore, they are distinctive.

Visually, the marks are similar to the extent that seven out of eight letters of the earlier mark, ‘GREENDE*’, are entirely reproduced, in the same order, in the contested sign, albeit split into two words in the earlier mark but depicted as a single verbal element in the contested sign.

However, the signs differ in their last letters, which are ‘C’ (in the earlier mark) and ‘N’ (in the contested sign), and in the stylisation of the contested sign.

When signs consist of both verbal and figurative components, as the contested sign does, 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 (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011‑4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

In the present case, the relevant public will perceive the verbal element ‘GREENDEN’ in the contested sign as the indicator of commercial origin and will pay more attention to it than to the stylisation of the sign, which will be perceived as having an essentially ornamental role.

The signs also differ in the space that splits the earlier mark into two elements, ‘green’ and ‘dec’, which has no counterpart in the contested sign.

Despite these differences, since the signs coincide in seven out of eight letters appearing in the same order, they are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of their first seven letters, ‘GREENDE*’. The space that splits the earlier mark into two elements will not have a significant aural impact. Consequently, the signs differ essentially in the sound of their last letters, ‘C’ (in the earlier mark) and ‘N’ (in the contested sign).

The signs are therefore aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs include the basic English word ‘GREEN’, which will be understood by the relevant public as referring to the colour and to the idea that the goods and services are environmentally friendly. This concept is reinforced in the contested sign by its depiction in green. Despite the weakness of this coinciding element, in the absence of any other elements that might convey any additional meaning for most of the public, the signs are conceptually similar to an average 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 weak element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, §22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the contested goods and services are partly identical, partly similar to varying degrees and partly dissimilar to the opponent’s goods.

The degree of attention of the relevant public varies from average to higher than average. However, even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

The earlier mark is distinctive to an average degree. The marks in question are visually and conceptually similar to an average degree and aurally similar to a high degree.

Moreover, the differences between the signs, namely their last letters, ‘C’ (in the earlier mark) and ‘N’ (in the contested sign), the stylisation of the contested sign and the space that splits the earlier mark into two word elements (which will not have a significant aural impact), will not enable consumers to safely distinguish between the earlier mark and the contested sign, even when their degree of attention is higher than average.

Furthermore, despite the differing space that splits the earlier mark into two elements, as the coinciding element ‘GREEN’ has a clear meaning, at least part of the relevant public will dissect the contested sign into the elements ‘GREEN’ and ‘DEN’, thus resulting in the signs having similar rhythms (‘green dec’ versus ‘GREEN-DEN’).

Considering all the above, the Opposition Division finds that the signs create similar overall impressions and that there is a likelihood of confusion on the part of the public. Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 15 704 505.

Applying the aforementioned principle of interdependence and taking into account the degree of attention of the relevant public, it is considered that the high degree of aural similarity and the average degree of conceptual and visual similarity between the signs are sufficient to offset the low degree of similarity between some of the services. Therefore, there is a likelihood of confusion, including for the services that are similar to a low degree.

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

Some of the contested 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 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 extensive use as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, even assuming that the earlier mark enjoys enhanced distinctiveness due to its extensive use and/or reputation, the outcome of no likelihood of confusion remains the same as regards the dissimilar services in Classes 37 and 42, because the dissimilarity of the services cannot be overcome by the highly distinctive character of the earlier trade mark. Therefore, it is not necessary to examine the evidence submitted by the opponent in this respect, as it would not alter the outcome reached above.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some 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

Gueorgui IVANOV

Rosario GURRIERI

Manuela RUSEVA

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.