OPPOSITION No B 3 070 990

Envac AB, Fleminggatan 7, 3 tr, 112 26 Stockholm, Sweden (opponent), represented by Aros Patent AB, Dragarbrunnsgatan 45, 751 45 Uppsala, Sweden (professional representative)

a g a i n s t

Enva Ireland Ltd., Clonminam Industrial Estate, Portlaoise, Ireland (applicant), represented by Anne Ryan & Co., 2 Crofton Terrace, Dun Laoghaire Dublin A96 V6P7, Ireland (professional representative).

On 07/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 070 990 is partially upheld, namely for the following contested services:

Class 37: Cleansing of tanks; storage tank cleaning; septic tank cleaning; cleaning of water tanks.

Class 39: Waste removal; waste collection; waste transport; none of the foregoing services involving or being associated with fixed vacuum based waste collection.

Class 40: Chemical treatment of waste products; chemical recycling of waste products; extraction of elements contained in waste residues; extraction of minerals contained in waste residues; processing of waste materials; recycling of waste; services for the recovery of materials from waste; treatment [reclamation] of industrial waste; treatment of waste; treatment of hazardous waste; treatment of chemical waste; treatment of toxic waste; waste management services; consultancy and problem diagnosis and solving in water treatment, effluent systems and treatment, including biological effluent treatment, in the chemical, dairy, fermentation, food, mining, paint manufacturing, paper making, pharmaceutical and textile processing industries; document shredding services; decontamination of hazardous materials; none of the foregoing services involving or being associated with fixed vacuum based waste collection.

2. European Union trade mark application No 17 937 905 is rejected for all the above services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 937 905 for the figurative mark , namely against some of the goods and services in Classes 1, 3, 37, 40 and 42 and all the services in Class 39. The opposition is based on European Union trade mark registration No 10 376 961 for the word mark ‘ENVAC’. 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 and services

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

Class 6: Containers and receptacles of metal for waste; chutes of metal for waste; network of pipes inclusive of bends (of metal).

Class 7: Automated waste collection system for gathering and transport of waste; pneumatic transporters, vacuum pumps (machines), waste disposers (machines); waste compacting machines; control mechanisms for pneumatic transporters, vacuum pumps (machines), waste disposers (machines) and waste compacting machines; machines and machine tools; motors and engines (except of land vehicles); machine coupling and transmission components (except for land vehicles); chutes for waste and other materials (parts of machines); valves (machine parts); separation units; air filters; exhausters; blowers for compressing and suction of waste; silencer; exhaust pipe systems and control systems in addition to shredders.

Class 9: Computers with peripheral equipment and computer programs for control of pneumatic transporters, vacuum pumps (machines), waste disposers (machines) and waste compacting machines.

Class 12: Vehicles for transport; vehicles with device for exhausting of waste; waste collection vehicles; other types of waste and linen handling vehicles.

Class 20: Containers and receptacle not of metal for waste.

Class 37: Installation, maintenance and repair of waste collection and disposal systems and waste collection vehicles; waste removal and trash collection services; repair of machines and apparatus.

Class 39: Transportation and or storage of waste and trash.

Class 40: Handling of waste and trash; waste treatment (transformation), namely services involving or associated with waste or trash which is or has been collected by vacuum based waste collection.

The contested goods and services are (after some limitations during the present proceedings) the following:

Class 1: Chemical compositions; waste treatment chemicals; chemical preparations and substances for use as coagulants, flocculants and anti-bulking agents in industrial processes.

Class 3: Preparations for cleaning waste pipes.

Class 37: Cleansing of tanks; storage tank cleaning; septic tank cleaning; cleaning of water tanks.

Class 39: Waste removal; waste collection; waste transport; none of the foregoing services involving or being associated with fixed vacuum based waste collection.

Class 40: Chemical treatment of waste products; chemical recycling of waste products; extraction of elements contained in waste residues; extraction of minerals contained in waste residues; processing of waste materials; recycling of waste; services for the recovery of materials from waste; treatment [reclamation] of industrial waste; treatment of waste; treatment of hazardous waste; treatment of chemical waste; treatment of toxic waste; waste management services; consultancy and problem diagnosis and solving in water treatment, effluent systems and treatment, including biological effluent treatment, in the chemical, dairy, fermentation, food, mining, paint manufacturing, paper making, pharmaceutical and textile processing industries; document shredding services; decontamination of hazardous materials; none of the foregoing services involving or being associated with fixed vacuum based waste collection.

Class 42: Soil scientific and engineering services, including evaluations, estimates, research, treatment systems, design, construction, operations, and reports; engineering design; chemical analysis; analysis of materials; analysis of waste; environmental surveys; provision of surveys [scientific]; surveying; technical survey services.

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 ‘including’, used in the applicant’s list of services, indicates that the specific services 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

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.

The applicant claims that the opponent’s core business is the design, development and supply of pneumatic or vacuum waste collection systems for cities, hospitals and airports and the operation and maintenance of those waste collection systems whereas the applicant is primarily a processor of commercial and industrial wastes, deploying specialist techniques to recover valuable commodities. Hence, there are fundamental difference between the business activities of the two parties .

Furthermore, according to the applicant the opponent operates in the UK and is not included in the ‘Alantra Waste Index’ whereas the applicant is ranked tenth (in the UK). To be considered for inclusion in the Index, participant’s revenues are required to be consolidated and to relate to waste management activities undertaken in the UK only. This indicates ,according to the applicant, that the opponent does not operate in the same field.

In that regards, it must be noted that the way the parties are actually using the goods and services bears no relevance for the comparison of the goods and services within the meaning of Article 8(1)(b) EUTMR, since the goods and services as protected by the marks in conflict must be taken into account, and not those actually marketed under those marks (see e.g. 16/06/2010, T‑487/08, KREMEZIN, EU:T:2010:237, § 71; 18/11/2014, T-308/13, Electrolinera, EU:T:2014:965, § 50). It is of importance that the protection granted is sufficiently broad not to undermine the opponent’s legitimate interest in being able, in the future, to extend its range of goods or services while enjoying the protection which the registration of that trade mark confers on it.

Contested goods in Classes 1 and 3

The contested chemical compositions; waste treatment chemicals; chemical preparations and substances for use as coagulants, flocculants and anti-bulking agents in industrial processes in Class 1 and preparations for cleaning waste pipes in Class 3 are dissimilar to the opponent’s goods and services as they have no relevant points in common. These goods are chemical substances and cleaning preparations used in the field of waste management and treatment. The fact that some of these goods can be used together with some of the opponent’s goods, those being mainly waste collection/disposal systems and their parts does not render them similar, as suggested by the opponent. Neither the fact that when rendering the opponent’s services, some of the contested goods could be used, makes them similar. It is not common on the market that the companies which offer services in the waste management, services of maintenance of waste collection and disposal systems produce their own chemical substance and cleaning preparations. These goods are in general produced by specialised companies. In addition, the Opposition Division points out, that complementarity has to be clearly distinguished from use in combination where goods are merely used together whether by choice or convenience. This means that they are not essential for each other (see by analogy decision of 16/12/2013, R 634/2013-4 – ‘ST LAB’ § 20). In the present case, a strict complementarity between the goods and services at issue does not exist. Hence, the goods and services in question have a different nature, purpose and methods of use. They will not be produces/offered by the same companies; they are neither in competition nor are they complementary. Therefore, they are dissimilar.

Contested services in Class 37

The contested services of cleansing of tanks; storage tank cleaning; septic tank cleaning; cleaning of water tanks, the latter including also tanks for waste water, are included in the broad category of the opponent’s maintenance of waste collection and disposal systems. Therefore, they are identical.

Contested services in Class 39

The contested waste removal; waste collection; waste transport; none of the foregoing services involving or being associated with fixed vacuum based waste collection are included in the broad category of, or overlap with, the opponent’s services of transportation of waste and trash. Therefore, they are identical.

The Opposition Division notes that the scope of the protection of the earlier mark comprehends services not limited to a specific technical solution, hence despite the limitation used in relation to the contested services, they still belong to the broad category of the aforementioned opponent services.

Contested services in Class 40

The contested services are all services in the field of waste management. As such they can be offered by the same provider through the same distribution channels and target the same relevant public as the opponent’s services of handling of waste and trash; waste treatment (transformation), namely services involving or associated with waste or trash which is or has been collected by vacuum based waste collection, nevertheless the limitation of the latter. Therefore, they are similar.

Contested services in Class 42

The contested services in this Class are dissimilar to all goods and services covered by the earlier mark as they have no relevant points in common. These contested services are very specific services, mainly scientific, engineering, research and analysis services of which purpose is different to the opponent’s goods and services. Although some of those services may be used e.g. when planning an installation of a waste collection system, those would not be executed by the same provider. The opponent’s services concern mainly maintenance of tanks used for waste, waste collection and transport as well as services in the field of waste treatment and management. Hence, apart from having different purpose and provider, the services at issue do not coincide in their methods of use and distribution channels and they target different consumers. Besides, they are not in competition with or complementary to one another.

Similarly, although some of the opponent’s goods may be used when executing the above services, those goods and services have a different nature and purpose. They are not complementary nor in competition. They have different distribution channels and sales outlets. It is not usual that the same kinds of undertakings are involved in the production or the provision of these goods and services.

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 and services found to be identical or similar (to varying degrees) are directed at the public at large as well as at the business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, or terms and conditions of the goods and services purchased.

c) The signs

ENVAC
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 a word mark, in which case it is the word as such that is protected and not its written form (29/03/2012, T-369/10, Beatle, EU:T:2012:177, § 42). Therefore, it is irrelevant whether the word mark is written in upper- or lower-case letters, or a combination of both.

Although the contested sign is applied for as a figurative mark, it consists in fact of only the verbal element ‘enva’ written in stylized small type letters in colour green.

Neither the earlier mark nor the contested sign has a meaning for the relevant public and are, therefore both, distinctive.

The applicant argues that in the opponent mark the element ‘vac’ will be clearly perceived and that this element alludes to the fact that the opponent’s mark is used in connection with the vacuum-based waste disposal. However, considering that the average consumer normally perceives a trade mark as a whole and does not proceed to analyse its various details and the fact that this element is not separated from the first two letters of the signs, the Opposition Division cannot follow this argument. In addition, the applicant did not prove that the letter combination ‘vac’ will be indeed perceived as referring to the word vacuum, respectively to the vacuum-based waste disposal. Therefore, in the absence of convincing arguments and evidence thereof, the applicant’s arguments must put aside.

The applicant, furthermore, argues that the colour and script add to the distinctiveness of the contested sign as the script renders it into an ambigram (thus when the sign is inverted or turned upside down it reads the same). Although it is a clever way to play with the sign, it is noted that it is quite common for business to ‘play’ with the appearance of their signs whereby some of the letters could be in a bigger font, stylized or even transferred into a simple logo, and the consumers are accustomed to that and will therefore not perceive it as an element which contributes significantly to the differences between the two signs. Hence the Opposition Division finds that the verbal element of the contested sign is more distinctive than its stylisation.

In any case, it is noted that when signs consist of both verbal and figurative components, respectively they are stylised, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component, stylisation. 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).

Furthermore, 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.

Visually, the signs coincide in the sequence of the letters ‘enva’. They differ in the letter ‘C’, placed at the end of the earlier mark, and the stylisation of the contested mark.

Bearing in mind all the foregoing, the signs 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 the letters ‘ENVA’, present identically in both signs. The pronunciation differs in the sound of the letter ‛C’ of the earlier mark, which has no counterpart in the contested sign. This letter is placed at the end of the said mark and will be pronounced either as ‘K’ e.g. in English or German, as ‘TS’ e.g. in Czech or Slovak or as ‘S’ e.g. in Spanish, the latter two being rather softer sounds, likely not being properly noticed.

Therefore, the signs are aurally similar to at least an average degree, for the public which will pronounce the letter ‘C’ as ‘K’ or to a high degree for the remaining public.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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 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.

e) 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’ (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Furthermore, 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).

As concluded above, the goods and services at issue are partly identical, partly similar and partly dissimilar. The relevant services target the public at large and business consumer whose degree of attention varies from average to high.

The marks are similar to the extent that they coincide in the letters ‘ENVA’, differing only in the last letter of the earlier mark ‘C’ and the stylisation of the contested mark. In addition, the two signs do not convey any meanings that would help the relevant public in their differentiation.

The fact that the signs have identical beginnings is particularly relevant, since consumers generally pay more attention to the beginnings of marks than to their endings (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, §§ 64, 65).

Besides, it is noted 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)

In view of the foregoing, the Opposition Division considers that the differences between the signs are not sufficient to enable the consumers to safely distinguish between the marks at issue and therefore they are likely to believe that the identical and similar services originate from the same undertaking or from economically related undertakings.

The applicant claims that the mark applied for is in use since 2018 and provides some evidence thereof. In addition, the applicant states that it trades under the name ‘ENVA’ since 2006 and is the proprietor of the EU trade mark registration No 7 172 174 for the figurative mark , dated 20/08/2008 and further two national registration for the same figurative mark and both from 2008. It further adds that the parties at the current proceedings entered into a co-existence agreement as of 29/04/2014, in relation to the said applicant’s earlier EU trade mark and the opponent’s earlier mark ‘ENVAC’.

The possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that the applicant did not provide the co-existence agreement which would allow the Opposition Division to analyse it. In any case, from the applicant statements it is understood that the co-existence agreement is in relation to the figurative mark and the word mark ‘ENVAC’. The Opposition Division notes that the Office is in principle restricted in its examination to the trade marks in conflict.

It is pointed out that for the EUTM applicant to prove that the coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public, it must be proven that the earlier (‘coexisting’) marks and the marks at issue are identical to those involved in the opposition before the Office (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86; 18/09/2012, T-460/11, Bürger, EU:T:2012:432, § 60-61) and cover the same goods or services as those in conflict (30/03/2010, R 1021/2009-1, ECLIPSE / ECLIPSE (fig.), § 14). Furthermore, if the earlier trade mark is an EUTM, the EUTM applicant must show coexistence in the entire EU.

Hence, the applicant needs to provide evidence that the identical marks to the marks which are in conflict coexist in the market (the whole EU), which could actually indicate that consumers are used to seeing the marks without confusing them.

However, the applicant did not provide any evidence thereof, since the one extract from the opponent’s website does not demonstrate the foregoing. None of the evidence provided show that these two marks are in the same market. Therefore, in the absence of convincing arguments and evidence thereof, the applicant’s arguments must be rejected as unfounded.

Furthermore, regarding the fact that the applicant owns trade marks registered in the EUIPO, Ireland and the UK, it has to be considered that the right to an EUTM begins on the date when the EUTM is filed and not before, and it is only from this date that the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Bearing in mind 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 aforementioned opponent’s European Union trade mark registration. It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar 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.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Astrid Victoria WÄBER

Renata COTTRELL

Beatrix STELTER

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.