OPPOSITION No B 3 055 838

Clariant AG, Rothausstr. 61, 4132, Muttenz, Switzerland (opponent), represented by Best Rechtsanwälte Partmbb, Hostatostr. 26, 65929, Frankfurt, Germany (professional representative)

a g a i n s t

Serviecologia y Tratamiento De Aguas S.L., Ctra. Castellon-Alcora KM. 19,8, 12110 Alcora (Castellon), Spain (applicant), represented by Gestimarcas, Calle Dr. Sirvent 4 - Entlo. Dcha., 03160 Almoradí (Alicante) Spain (professional representative).

On 20/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 055 838 is upheld for all the contested goods.

2. European Union trade mark application No 17 898 312 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 898 312 for the figurative mark . The opposition is based on international trade mark registration No 1 258 334 designating the European Union for the figurative mark . 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.

a) The goods

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

Class 1: Chemical products for use in industry, science, photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; soil fertilizers; fire-extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning materials; adhesives for use in industry.

The contested goods are the following:

Class 1: Chemical compositions for water treatment; industrial chemicals.

The applicant, in its observations from 03/04/2019, proposed a limitation of the goods above in Class 1 by indicating that ‘we expressly waive the generic part of the protection that my client applied for initially, requesting that this is accepted and that my client’s trade mark is granted according to the following product specification, expressly excluding other goods within the same class.

Activity applied for, after the partial renunciation of activity:

Class 1: Chemical compositions for water treatment.’

However, this statement was merged into the applicant’s observations and not filed on a separate sheet. In accordance with Article 8(8) EUTMDR, where the applicant wishes to withdraw or restrict the contested application, it must do so by way of a separate document. Therefore, said limitation cannot be accepted.

In relation to the applicant’s arguments about the actual use in the market of the trade marks in conflict for different goods (i.e. natural cosmetic products for the earlier mark and chemical substances for treating water as regards the contested mark), it should be noted that the examination of the likelihood of confusion carried out by the Office is a prospective examination. The particular circumstances in which the goods or services covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C-171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C-354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T-276/09, Yakut, EU:T:2012:313, § 58). Moreover, it must be noted that, according to Article 47(2) EUTMR, actual use of the earlier mark needs be shown - and only be shown - if the opponent’s mark is subject to use requirement and the applicant requests proof of use. Since the opponent’s mark is still within the five years grace period, the issue of genuine use is not at issue in the present proceedings. Therefore, when considering whether or not the contested EUTM application falls under any of the relative grounds for refusal, it is the opponent’s right and its scope of protection as registered that are relevant.

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.

Industrial chemicals are identically contained in both lists of goods (being the applicant’s goods a synonym of the opponent’s chemical products for use in industry).

The contested chemical compositions for water treatment are included in the broad category of, or overlap with, the opponent’s chemical products for use in industry, science, photography, as well as in agriculture, horticulture and forestry. Therefore, they are identical.

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 found to be identical are directed at the public at large (like for example chemicals for the purification of water used in swimming pools) and at the professional public working in the industrial and/or water treatment sector. Since the relevant goods may potentially have a hazardous impact on nature or the environment, the general public, as well as the specialised public, is considered to show a degree of attention that is higher than average (26/09/2018, R 2284/2017-2, Reeflowers / flower, § 23-24).

c) 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).

While it is true that consumers would not normally break down verbal elements, in cases where verbal elements are composed of parts that suggest a specific meaning to consumers, they will identify them. In this regard, the Court has already established that ‘eco’ is a commonly used abbreviation in English for ‘ecology’, ‘ecological’ or ‘environmentally friendly’ (13/07/2017, T-150/16, ECOLAB, EU:T:2017:490, § 33). In fact, it is a well-known fact that ‘eco’ is widely used throughout the European Union to mean ‘ecological’ (10/09/2018, R-188/2018-2, EcoAqua, § 21). Accordingly, it is likely that the relevant consumers will identify ‘ECO’ at the beginning of the verbal elements of both signs and attribute to it the abovementioned connotations of something ecological or environmentally friendly. The second part of the contested mark, namely ‘TAN’ would suggest a meaning for some of the consumers, such as those speaking English, namely ‘a yellowish-brown colour’ or ‘a golden-brown shade of skin developed by pale-skinned people after exposure to the sun’ (information extracted from Oxford Dictionary at https://www.lexico.com/en/definition/tan on 14/08/2019). Likewise the element ‘TAIN’ in the earlier mark could be perceived by the same part of the relevant public as ‘tinfoil used in backing mirrors’ (information extracted from Collins Dictionary at https://www.collinsdictionary.com/dictionary/english/tain on 14/08/2019). Both ‘TAN’ and ‘TAIN’ are however meaningless for another part of the public, for example the Italian- and Spanish-speaking part of the public.

In the light of the foregoing considerations, the Opposition Division will focus in the below analysis on the Italian and Spanish-speaking part of the public.

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Considering the above, the Opposition Division finds that while the public may easily identify the ‘eco’ prefix with the above-mentioned allusive connotations in both signs, the signs taken as a whole will be seen by consumers as invented words, which do not evoke a specific meaning. Therefore the verbal elements of the marks, taken as a whole, will have a normal degree of distinctiveness in relation to the goods at issue (similarly in 13/02/2007, T256/04, Respicur, EU:T:2007:46, § 72 – 73).

The contested sign is a figurative mark made up of the element ‘ECOTAN’ written in green bold capital letters next to a green figurative element consisting of a leaf placed above some waves resembling water or grass, put inside a circle. The device is weak in relation to the relevant goods as it may indicate that they are of a biological nature or associated with natural ingredients or processes.

The earlier trade mark is also a figurative mark made up of the word ‘ECOTAIN’ written in standard black capital letters below a figurative device consisting of four identical black irregular shapes which form a loop, one end of each shape being folded over at 90 degrees. Albeit rather simple, the device has a certain degree of distinctiveness.

Contrary to the applicant’s claim, the earlier mark has no elements which could be considered clearly more dominant (visually eye-catching) than other elements. Although the figurative element is bigger than the verbal element ‘ECOTAIN’, the latter is clearly legible and occupies a larger space horizontally. The same holds true for the contested sign, in which the word element ‘ECOTAN’ is readily perceptible and occupies a prominent position within the sign, next to the figurative element.

Visually, the signs coincide almost totally in their verbal elements, namely in the string of letters, ‘ECOTA*N’. The signs’ verbal elements merely differ in the sixth letter of the earlier mark, ‘I’, which has no counterpart in the contested sign, but may easily go unnoticed due to its intermediate position.

The signs also differ in their figurative elements. However, 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 (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Given the above, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs is almost identical since they only differ in the additional letter ‘I’ of the earlier mark (i.e. /E/CO/TAIN). This divergence does not produce any syllabic or rhythmic difference.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although as noted above the signs as a whole do not have any meaning for the public in the relevant territory, the ‘eco’ part in both of them will be associated with the meaning explained above. Given the allusive connotations of the latter, the signs taken as a whole are conceptually similar to a low degree.

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 will be seen as invented word, which does not evoke a specific meaning 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.

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 case at hand it has been established that the goods are identical and that the relevant public is composed of professionals and the general public, whose attention is higher than average. The earlier mark has a normal degree of distinctiveness with respect to the goods in question.

The marks are visually similar to an average degree and phonetically highly similar on account of the coincidence in six out of seven letters of their verbal elements, positioned in the same order. Conceptually they are similar to a low degree. Although both signs have additional figurative elements, they are clearly not sufficient to outweigh the overall similar impressions conveyed by the signs due to their shared string of letters ‘ECOTA*N’. As already said, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component and in the present case, the figurative device in the contested sign is weak and the figurative elements of the signs are not dominant.

Furthermore, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). 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 concept of likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same undertaking or economically linked undertakings. It is common practice in the relevant market for manufacturers to make variations in their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines or to endow a trade mark with a new, fashionable image.

In the present case, although the relevant public may detect certain differences between the conflicting signs, the likelihood that the public may associate the signs with each other is very real. It is highly probable that the public may think that the slightly different stylisation and the variation of the figurative element is merely a restyling, or a variation of the earlier mark configured in a different way according to the type of goods that it designates.

Lastly, the applicant's argument concerning the need to leave the component ‘ECO’ free also cannot affect the conclusions drawn above on the perception of the opposing mark. The finding that there is a similarity between the opposing mark taken as a whole cannot be regarded as leading to a monopolisation of the component ‘ECO-’ (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 61; 10/12/2014, T 605/11, BIOCERT, EU:T:2014:1050, § 58).

Considering all the above, there is a likelihood of confusion on the part of the Italian-and Spanish-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 258 334 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Irena LYUDMILOVA LECHEVA

Riccardo RAPONI

Michele M. BENEDETTI-ALOISI

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.