OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 386 871
Tratamientos de Agua VDF, S.L., C/ Aiguafreda, 8 - Pol. Ind. L'ametlla Park, 08480 L'ametlla Del Valles, Spain (opponent), represented by Ingenias, Av. Diagonal, 421, 2º, 08008 Barcelona, Spain (professional representative)
a g a i n s t
Kostas Athanasiou Kai Sia Ee, Irakleous 97, 17676 Kallithea – Athina, Greece (applicant), represented by Konstantinos Michos, Skoufa str.no. 75, 106 80 Athens, Greece (professional representative).
On 20/10/2015, the Opposition Division takes the following
opponent filed an opposition against all the goods of Community trade
mark application No
PROOF OF USE
In accordance with Article 42(2) and (3) CTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.
According to the same provision, in the absence of such proof the opposition must be rejected.
The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.
The contested application was published on 14/05/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 14/05/2009 to 13/05/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 11: Apparatus for water treatment, softeners, filters.
According to Rule 22(3) CTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
On 02/04/2015, according to Rule 22(2) CTMIR, the Office gave the opponent until 07/06/2015 to submit evidence of use of the earlier trade mark. On 08/06/2015 (Monday), within the time limit, the opponent submitted evidence of use. In addition, the opponent referred to the documents submitted in its earlier observations of 23/12/2014.
The evidence to be taken into account is, in particular, the following:
Invoices: More than 80 invoices dated throughout the period 2008 - 2013 addressed to different customers all over Spain. While there are a couple of invoices dated outside the relevant period and several invoices addressed to clients in Portugal and Angola, the great majority of the invoices are dated within the relevant period and are directed to Spain-based clients. The invoices itemise, inter, alia, various ‘Columbia’ goods such as water treatment devices and dispensers, water filters and other accessories thereof.
Photos from an exhibition where various stands displaying water-related apparatus and systems can be seen, including a stand showing ‘Columbia’ water treatment and dispensing machines. According to the explanation of the opponent the photos are from the attendance of the opponent at the 2011 and 2013 edition of the Aquatech, Amsterdam international event.
A leaflet entitled ‘Aquatech Amsterdam’, 5-8 November 2013, showing photos and business information (such as visits to the stand, potential clients, sales, etc.) regarding the participation of opponent in the Aquatech international event in 2013.
An offer and bill dated February 2013 issued to the opponent in relation to an order for 100 product labels and an example of a label showing the ‘Columbia’ sign.
Product catalogue/tariff dated 2007 (outside the relevant period) showing various ‘Columbia’ goods for sale, such as water dispensers and water treatment devices, accessories for water dispensers and devices, water filters and spare parts.
Product catalogue dated 2010. The catalogue is in French and shows ‘Columbia’ goods, namely water dispensers and water treatment devices, accessories for water dispensers and devices, water filters and spare parts.
Product catalogue dated 2012. The catalogue is in Spanish and shows various ‘Columbia’ goods, namely water dispensers and water treatment devices and accessories thereof.
Photographs showing ‘Columbia’ water dispensers as well as packaging, labels, etc.
Product catalogue in Spanish dated 2013 showing numerous ‘Columbia’ goods such as water dispensers and water treatment devices and accessories thereof. Translation in English is also provided.
Product catalogue in Spanish dated 2012 showing numerous ‘Columbia’ goods such as water dispensers and water treatment devices and accessories thereof. Translation in English is also provided.
Images of various ‘Columbia’ goods from the opponent’s website www.ionfilter.com.
The majority of the invoices and product catalogues show that the place of use is Spain. This can be inferred from the language of the documents (Spanish) and the addresses of customers throughout Spain. Therefore, the evidence relates to the relevant territory.
The evidence shows that the mark has been used as registered.
Taking into account the evidence in its entirety, the Opposition Division finds that the evidence furnished by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.
However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.
According to Article 42(2) CTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
According to case-law, when applying the abovementioned provision the following should be considered:
…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.
Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.
(Judgment of 14/07/2005, T‑126/03 ‘ALADIN’).
In the present case, the evidence proves use only for apparatus for water treatment and water filters. As regards water filters they can be considered to form an objective subcategory of the broad category of filters. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for the goods water filters. There is no evidence for use in relation to softeners.
Consequently, the Opposition Division considers that the evidence shows genuine use of the trade mark only for apparatus for water treatment and water filters.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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 goods on which the opposition is based are the following:
Class 11: Apparatus for water treatment, water filters.
The contested goods are the following:
Class 11: Water filters; air filters.
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 11
The contested air filters are similar to the opponent’s water filters. These sets of goods have the same nature and the same general purpose (filtering). The relevant public coincides and these goods may coincide in distribution channels. Therefore, these goods are considered similar.
Earlier trade mark
Visually, both signs are figurative. The earlier sign consists of the verbal element ‘Columbia’ written in rather standard blue letters in title case. The contested sign consists of a representation of a globe with the letter ‘C’ superimposed on it. Below the globe is the smaller verbal element ‘Columbia’ written in rather standard letters in title case. A small dot appears behind the last letter ‘a’ in the contested sign, which resembles the registered trade mark symbol. The signs are similar to the extent that they coincide in the verbal element ‘Columbia’, which is written in very similar font in both signs. The signs differ in the colour of the letters of the earlier sign and in the rest of the elements of the contested sign, which have no counterparts in the earlier sign, namely the relatively big device of a globe with the letter ‘C’ and the small dot resembling the symbol ®.
Aurally, the pronunciation of the signs coincides in the sound of the verbal element ‘Columbia’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letter ‛C’ of the contested mark, which has no counterpart in the earlier sign. However, due to the fact that the letter ‘C’ is superimposed on the globe device element and may not be immediately recognised, or, if noticed, it might be seen as referring to the verbal element ‘Columbia’, it is likely that at least part of the public will not pronounce it. In that case, the signs will be aurally identical.
Conceptually, the verbal element ‘Columbia’ contained in both signs will be associated with the same meaning, such as ‘a river in north-western North America’, ‘a name of a city in the USA’ (see http://www.collinsdictionary.com/dictionary/english-spanish) or ‘the name of the country Colombia’ (since ‘Columbia’ is a frequent mistaken spelling of ‘Colombia’), etc. The contested sign contains the concept of a globe, of the letter ‘C’ and of the registered trade mark symbol (if noticed), which have no counterparts in the earlier sign. Therefore, the signs are conceptually similar to the extent that both refer to the same concept of ‘Columbia’.
Distinctive and dominant elements of the signs
In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.
The marks under comparison have no elements which could be considered clearly more distinctive than other elements. The only exception to this is the small dot resembling the symbol ® in the contested sign, which, if noticed and perceived as such, is non-distinctive for any goods, as it simply indicates that the sign is registered.
The earlier mark has no elements which could be considered clearly more dominant (visually eye‑catching) than other elements. The globe device element with the superimposed letter and the verbal element ‘Columbia’ are the dominant elements in the contested sign, as the small dot resembling the symbol ® is hardly noticeable.
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.
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. Therefore, the distinctiveness of the earlier mark must be seen as normal.
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 identical or similar are directed at the public at large and at a professional public dealing in the field of water/air filter apparatus. The degree of attention will vary from average to high.
Global assessment, other arguments and conclusion
The trade marks are visually, aurally and conceptually similar for the relevant public on account of the common element ‘Columbia’ present in the signs. It is true that the signs differ in several aspects such as the colour of the letters of the earlier mark and the specific figurative arrangement of the contested sign, which contains an additional and noticeable device element with the letter ‘C’ superimposed on it.
However, it is considered that these differences are not overwhelming. In relation to the figurative device element in the contested sign, it should be born in mind that 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 (judgment of 14/07/2005, T-312/03 ‘Selenium-Ace’, paragraph 37). In addition, as it was explained above, the letter ‘C’ contained in the contested sign may not be immediately noticed and may not be pronounced in view of its positioning. It may as well be seen as referring to the verbal element ‘Columbia’. Therefore, it will be paid much less attention than the verbal element ‘Columbia’. The small dot resembling the symbol ® is hardly noticeable and non-distinctive. Consequently, it is considered that in the present case, consumers will tend to focus on the verbal element ‘Columbia’ of the contested sign as a main indicator of origin, when faced with the sign in question.
Although the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect, 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 must place trust in the imperfect picture of them that he or she has kept in mind. In the present case, it is very likely that the differences in the marks are deemed by the public to be different commercial representations originating from the same or economically related undertakings.
Consequently, in view of the above-mentioned coincidences in the signs, it is considered that there is likelihood that a significant part of the consumers may confuse the marks. 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 Spanish trade mark registration No 2 710 913. It follows that the contested trade mark must be rejected for all the contested goods.
According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
According to Rule 94(3), (6) and (7)(d)(i) CTMIR, 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.
According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.