OPPOSITION No B 3 091 111

Cobat Servizi consorzio, Via Vicenza 29, 00185 Roma (RM), Italy (opponent), represented by Barzanò & Zanardo Roma S.P.A., Via Piemonte, 26, 00187 Roma, Italy (professional representative)

a g a i n s t

Cobant Spólka z Ograniczoną Odpowiedzialnością sp.k., Al. Jana Pawla II 27, 00-867 Warszawa, Poland (applicant).

On 30/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 091 111 is upheld for all the contested services, namely

Class 40: Treatment of waste; Recycling of waste and trash; Recycling of waste; Waste disposal [treatment of waste]; Recycling of waste and trash; Treatment [reclamation] of industrial waste; Waste treatment [transformation]; Waste treatment [transformation]; Chemical recycling of waste products; Rental of waste compacting machines; Extraction of elements contained in waste residues; Providing information relating to the recycling of waste; Extraction of minerals contained in waste residues; Treatment [reclamation] of material from waste; Waste management services [recycling]; Consultancy relating to the recycling of waste and trash; Rental of waste compacting machines and apparatus; Treatment of waste materials in the field of environmental pollution control; Processing of fuel materials; Waste incineration; Treatment of waste materials; Treatment of post-mining waste; waste treatment services [environmental remediation services]; Recovery of coal from combustion waste and coal processing; Treatment of waste materials in the field of environmental pollution control.

2. European Union trade mark application No 18 013 010 is rejected for all the contested services. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 013 010 , namely against some of the services in Class 40. The opposition is based on, inter alia, European Union trade mark registration No 16 919 409 . The opponent invoked Article 8(1)(a) EUTMR in respect of this mark.

PRELIMINARY NOTE

Article 8(1)(a) EUTMR provides for oppositions based on identity. It provides that, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) EUTMR, an EUTM application will not be registered if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected.

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application will not be registered: …if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark (emphasis added).

The wording of Article 8(1)(a) EUTMR clearly requires identity between both the signs concerned and the goods/services in question. Although the specific conditions under Article 8(1)(a) and (b) EUTMR differ, they are related. Consequently, in oppositions dealing with Article 8(1) EUTMR, if Article 8(1)(a) EUTMR is the only ground claimed but identity between the signs and/or the goods/services cannot be established, the Office will still examine the case under Article 8(1)(b) EUTMR, which requires at least similarity between signs and goods/services and likelihood of confusion. In the present case the signs indicated above are clearly not identical. Therefore the opposition will be examined under 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.

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 trade mark registration No 16 919 409.

1. The services

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

Class 40: Recycling services; Treatment of waste; Treatment [recycling] of chemicals; Treatment [recycling] of radioactive waste; Information, advice and consultancy services relating to the recycling of waste and trash; Waste disposal [treatment of waste]; Industrial toxic waste disposal; Treatment of waste materials in the field of environmental pollution control; Soil, waste or water treatment services [environmental remediation services]; Treatment of waste; Vulcanization [material treatment]; Treatment of hazardous waste; Treatment of hazardous liquids; Waste water treatment; Consultancy relating to the treatment of chemical pollution; Air regeneration; Regeneration of water; Reprocessing of nuclear fuels; Regeneration of spent catalysts; Water pollution control; Upcycling [waste recycling]; Destruction of waste; Waste incineration; Rental of waste crushing machines; Recycling of scrap; Waste incineration; Destruction of waste; Consultancy relating to the destruction of waste and trash; Sorting of waste and recyclable material [transformation]; Reclamation of material from waste.

The contested services are the following:

Class 40: Treatment of waste; Recycling of waste and trash; Recycling of waste; Waste disposal [treatment of waste]; Recycling of waste and trash; Treatment [reclamation] of industrial waste; Waste treatment [transformation]; Waste treatment [transformation]; Chemical recycling of waste products; Rental of waste compacting machines; Extraction of elements contained in waste residues; Providing information relating to the recycling of waste; Extraction of minerals contained in waste residues; Treatment [reclamation] of material from waste; Waste management services [recycling]; Consultancy relating to the recycling of waste and trash; Rental of waste compacting machines and apparatus; Treatment of waste materials in the field of environmental pollution control; Processing of fuel materials; Waste incineration; Treatment of waste materials; Treatment of post-mining waste; waste treatment services [environmental remediation services]; Recovery of coal from combustion waste and coal processing; Treatment of waste materials in the field of environmental pollution control.

The contested treatment of waste; recycling of waste and trash; recycling of waste; waste disposal [treatment of waste]; recycling of waste and trash; treatment [reclamation] of industrial waste; waste treatment [transformation]; waste treatment [transformation]; chemical recycling of waste products; extraction of elements contained in waste residues; extraction of minerals contained in waste residues; treatment [reclamation] of material from waste; waste management services [recycling]; consultancy relating to the recycling of waste and trash; treatment of waste materials in the field of environmental pollution control; waste incineration; treatment of waste materials; treatment of post-mining waste; waste treatment services [environmental remediation services]; recovery of coal from combustion waste and coal processing; treatment of waste materials in the field of environmental pollution control; providing information relating to the recycling of waste; rental of waste compacting machines; rental of waste compacting machines and apparatus; processing of fuel materials are identical to the opponent’s recycling services; treatment of waste; information, advice and consultancy services relating to the recycling of waste and trash; reclamation of material from waste; rental of waste crushing machines; reprocessing of nuclear fuels either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

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 services found to be identical are directed at the public at large and business customers with specific professional knowledge or expertise.

The degree of attention varies from average to high, depending on the exact nature, technical processes, dangerous materials treated and environmental impact of the services.

3. 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).

The element COBAT of the earlier figurative mark, written in rather standard lower case blue typeface, has no meaning for the relevant public and is, therefore, distinctive.

The element COBANT of the contested sign has no meaning for the relevant public and is, therefore, distinctive. The mark is written in upper case black standard typeface, and the letter O is depicted as a hexagon and has two small green lines on its left. The element is perceived clearly only as letter O.

The contested sign is composed of a distinctive verbal element and less distinctive figurative elements of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative elements.

The marks have no element that could be considered clearly more dominant than other elements.

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).

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 letters COBA_T, albeit stylised in different manners as explained above, in particular the earlier mark being depicted in lower case letters which contrasts with the contested sign’s upper case letters. The contested sign differs on account of the additional letter N. Taking into account the above considerations regarding the low impact of the differences resulting from the figurative aspects of the signs and that the additional letter in the contested sign appears in the penultimate position, 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 COBA_T, present identically in both signs and differs only in the sound of the letter N of the contested sign.

Therefore, the signs are aurally highly similar.

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.

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 claimed its mark enjoys high intrinsic distinctiveness since it consists of a term which has no relation to the services. It is Office practice that, when an earlier mark is not descriptive (or is not otherwise non-distinctive), it is considered as having no more than a normal degree of inherent distinctiveness. It is recalled that a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71).

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 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

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). The services are identical.

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 or economically linked undertakings.

The earlier mark and the contested sign have been found to be aurally and visually similar to various degrees due to the coincidence in the sequence of their letters. The only differing letter is the letter N in the ending of the contested mark. The main visual differences in the marks originate from their use of lower and upper case letters, which would, however, go unnoticed to the consumer when referring to the marks. These differences can be easily overlooked, and, in any event cannot outweigh the prevailing coinciding letters perceived by the public. The similarities between the signs are thus sufficient to cause at least part of the public to believe that the conflicting services which are identical come from the same or economically linked undertakings.

Account is taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and the consumers may be easily confused because they will have to rely on the imperfect picture of the marks that they have kept in their mind (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).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European trade mark registration No 16 919 409. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier right, European trade mark registration No 16 919 409, leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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, 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

Solveiga BIEZA

Erkki Münter

Christophe DU JARDIN

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.