OPPOSITION No B 2 456 211

Innoclean S.A., 19, rue Léon Laval, 3372 Leudelange, Luxembourg (opponent), represented by Office Freylinger S.A., 234, route d'Arlon B.P. 48, 8001 Strassen

Luxembourg (professional representative)

a g a i n s t

Immoclean Facility Management GmbH, Frauenstiftgasse 10, Top 2, 1210 Wien, Austria (applicant), represented by Timotej Braxator, Zámocká 30, 811 01 Bratislava

Slovakia (professional representative).

On 06/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 456 211 is upheld for all the contested services.

2. Community trade mark application No 13 290 614 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the services of Community trade mark application No 13 290 614. The opposition is based on, inter alia, Community trade mark registration No 4 178 968. The opponent invoked Article 8(1)(b) CTMR.

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 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 Community trade mark registration No 4 178 968.

1. The services

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

Class 35: Business management; business management and organisation consultancy; business management consultancy; business management assistance; procurement for others (purchasing of goods and services for other businesses); business administration; business administration of companies, premises and buildings; office functions; employment agencies; temporary employment agencies; outdoor advertising; office machines and equipment rental; rental of photocopiers; business relocation services.

Class 36: Real-estate affairs; estate management; real-estate management; real estate appraisal; leasing of real estate; lease purchase transactions; real estate leasing; rental of offices (real estate).

Class 37: Repair; installation services; air conditioning apparatus installation and repair; cleaning and repair of installations and apparatus for heating, refrigerating, boilers, burners; shielding of electric installations; chimney sweeping; building sanitation; vermin exterminating (other than for agriculture);lift installation and repair; assistance in maintaining of buildings and office buildings; cleaning of buildings [interior];cleaning of industrial buildings; cleaning of buildings [exterior surface];cleaning of window and glass; road cleaning; cleaning of vehicles and of cars; scaffolding; glazing; cleaning of clothing; washing of linen; laundering; linen ironing; dry cleaning; clothing repair; pressing of clothing; office machines and equipment installation, maintenance and repair; electric appliance installation and repair; warehouse construction and repair; machinery installation, maintenance and repair; installation and repair of fire alarm devices; information on the repairing, fitting, maintaining of buildings and industrial buildings and the equipment contained therein; furniture maintenance; installation, maintenance and repair of computers.

Class 39: Transport; transportation information; packaging and storage of goods; freighting; bus transport; car transport; packaging of goods; packaging of goods; wrapping of goods; warehousing; warehousing; storage information; warehousing; rental of warehouses; rental of storage containers; courier services [messages or merchandise]; mail delivery; delivery of goods; parcel delivery; mail delivery; transport and storage of trash; waste collection and collection of archives and confidential documents.

Class 40: Material processing; material treatment information; waste treatment (transformation); destruction of waste and trash; incineration of waste and trash; sorting of waste and secondary raw materials (transformation); recycling of waste and trash; destruction of archives and confidential documents; dyeing services; applying finishes to textiles; textile treating; clothing alteration.

Class 44: Agriculture, horticulture and forestry services; gardening; landscape gardening services; weed killing; applying of fertilizer and other chemicals; lawn care; plant nurseries; maintenance of green spaces.

The contested services are the following:

Class 35: Commercial trading and consumer information services; Business project management; Provision of business assistance; Commercial management; Maintenance of registers [for others]; Computerised file management; Administration of business affairs.

Class 36: Management of land; Property portfolio management; Property portfolio management; Management of commercial properties; Building management; Real estate administration; Estate management services relating to horticulture.

Class 37: Cleaning services; Cleaning services; Domestic cleaning; Dry cleaning; Polishing (cleaning); Waste removal [cleaning]; Janitorial cleaning services; Cleaning of site roads; Cleaning of residential houses; Contract cleaning of offices; Contract cleaning of leisure centres; Cleaning of property; Cleaning of floor coverings; Cleaning of water supply plumbing; Cleaning of industrial premises; Waste removal [cleaning]; Cleaning of culverts; Ceiling cleaning services; Cleaning of building sites; Cleaning of cargo holds; Industrial cleaning of buildings; Cleaning of ceiling surfaces; Cleaning of commercial premises; Loft cleaning; Cleaning of floor surfaces; Cleaning of furnishings; Window cleaning; Carpet and rug cleaning; Buildings (Cleaning of -) [exterior surface]; Cleaning of hotels; Cleaning of monuments; Cleaning of shops; Contract cleaning of clubs; Cleaning of wall surfaces; Cleaning of industrial plant; Air duct cleaning services; Air duct cleaning services; Cleaning by water jetting (Services for -); Cleaning of boilers; Cleaning of buildings; Cleaning of exterior wall surfaces; Cleaning of domestic premises; Chimney sweeping; Construction consultation; Building construction supervision; On-site construction supervision of civil engineering works; Consultation in building construction supervision; Disinfecting; Masonry; Rat exterminating; Pest control; Pest control; Pest control; Pest control; Pest control relating to buildings; Fumigation of buildings against vermin activity; Fumigation of commodities against vermin activity; Pest control relating to birds; Fumigation of buildings against vermin activity; Treatment of surfaces with pest control formulations; Vermin exterminating [other than for agriculture, forestry or horticulture]; Proofing of premises against pest and vermin access; Proofing of buildings against pest and vermin access; Extermination, disinfection and pest control; Construction consultation; Repair information; Buildings (Cleaning of -) [exterior surface]; Buildings (Cleaning of -) [exterior surface]; Interior and exterior cleaning of buildings; Street cleaning; Construction consultation.

Class 39: Dumping [transportation] of waste; Storage of waste; Refuse collection services; Transportation of waste; Transportation of waste; Transportation of waste; Transport and storage of waste.

Class 40: Air purification; Applying finishes to textiles; Whitening of laundry; Fabric bleaching; Fabric bleaching; Fabric bleaching; Destruction of waste and trash; Destruction of waste and trash; Detoxification of hazardous materials; Sorting of waste and recyclable material [transformation]; Sorting of waste and recyclable material.

Class 44: Lawn care.

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 services in Class 35

Business project management; Provision of business assistance; Commercial management; Administration of business affairs are identically contained in both lists of goods and services (including synonyms).

The contested Commercial trading and consumer information services are included in the broad category of the opponent’s procurement for others (purchasing of goods and services for other businesses). Therefore, they are considered identical.

The contested Maintenance of registers [for others]; Computerised file management are included in the broad category of the opponent’s office functions. Therefore, they are considered identical.

Contested services in Class 36

The contested services are identically contained in both lists of goods and services (including synonyms).

Contested services in Class 37

Dry cleaning; Cleaning of site roads; Cleaning of industrial premises; Cleaning of industrial plant; Industrial cleaning of buildings; Window cleaning; Buildings (Cleaning of -) [exterior surface]; Interior and exterior cleaning of buildings; Cleaning of exterior wall surfaces; Cleaning of buildings; Street cleaning; Chimney sweeping; Air duct cleaning services; Vermin exterminating [other than for agriculture, forestry or horticulture]; Proofing of premises against pest and vermin access; Proofing of buildings against pest and vermin access; Fumigation of buildings against vermin activity; Fumigation of commodities against vermin activity; Repair information are identically contained in both lists of goods and services (including synonyms).

The contested Cleaning services include, as a broader category, the opponent’s cleaning of industrial buildings. It is impossible for the Opposition Division to filter these services from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s services, they are considered identical to the opponent’s services.

The contested Domestic cleaning; Janitorial cleaning services; Cleaning of residential houses; Contract cleaning of offices; Contract cleaning of leisure centres; Cleaning of property; Cleaning of floor coverings; Cleaning of floor surfaces; Cleaning of culverts; Ceiling cleaning services; Cleaning of building sites; Cleaning of cargo holds; Cleaning of ceiling surfaces; Cleaning of commercial premises; Loft cleaning; Cleaning of furnishings; Carpet and rug cleaning; Cleaning of hotels; Cleaning of shops; Contract cleaning of clubs; Cleaning of wall surfaces; Cleaning by water jetting (Services for -); Cleaning of domestic premises are included in the broad categories of the opponent’s cleaning of buildings [interior]; cleaning of industrial buildings; cleaning of buildings [exterior surface]; cleaning of window and glass. Therefore, they are considered identical.

The contested Polishing (cleaning); Cleaning of water supply plumbing; Waste removal [cleaning]; Cleaning of monuments; Cleaning of boilers have similar nature, purpose and methods of use as the opponent’s cleaning of buildings [interior]; cleaning of industrial buildings; cleaning of buildings [exterior surface]. The services may have the same origins and distribution channels. The services are similar.

The contested Construction consultation; Building construction supervision; On-site construction supervision of civil engineering works; Consultation in building construction supervision; Masonry overlap with the opponent’s warehouse construction and repair; information on the repairing, fitting, maintaining of buildings and industrial buildings and the equipment contained therein because they are all construction and related services of different fields. Therefore, they are considered identical.

The contested Disinfecting; Rat exterminating; Pest control; Pest control relating to buildings; Pest control relating to birds; Treatment of surfaces with pest control formulations; Extermination, disinfection and pest control are included in the broad category of the opponent’s building sanitation. Therefore, they are considered identical.

Contested services in Class 39

Refuse collection services; are identically contained in both lists of goods and services (including synonyms).

The contested Dumping [transportation] of waste; Storage of waste; Transportation of waste; Transport and storage of waste are included in the broad categories of the opponent’s Transport; waste collection, or overlap with these. Therefore, they are considered identical.

Contested services in Class 40

Sorting of waste and recyclable material [transformation]; Sorting of waste and recyclable material; Destruction of waste and trash; Applying finishes to textiles; Whitening of laundry; Fabric bleaching are identically contained in both lists of goods and services (including synonyms).

The contested Air purification are included in the broad category of the opponent’s Material processing. Therefore, they are considered identical.

The contested Detoxification of hazardous materials are included in the broad category of the opponent’s waste treatment (transformation);. Therefore, they are considered identical.

Contested services in Class 44

Lawn care services are identically contained in both lists of goods and services (including synonyms).

2. The signs

INNOCLEAN
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 (judgment of 08/09/2008, C‑514/06 P ‘Armacell’, paragraph 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public.

The earlier mark is a word mark, the contested mark is a figurative mark.

Visually, the signs are similar to the extent that they coincide in the letter sequence

I _ _ OCLEAN. However, they differ in in the letters NN/ MM in the second and third position and in the slightly stylised typeface and colour used in the contested sign.

Aurally, the marks are pronounced as I-NO-CLE-AN/ I-MO-CLE-AN. The pronunciation of the signs coincides in the first syllable I, in parts of the second syllable _O and in the third and fourth syllables CLE-AN. The pronunciation differs in the sound of the letters NN/ MM in the second syllables of the marks. However, the pronunciation of INNO and IMMO are fairly close to one another in speech because both N and M are voiced nasal consonants.

Conceptually, neither of the signs has a meaning for the Spanish speaking 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.

Taking into account the abovementioned coincidences, the signs under comparison are similar.

3. 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 marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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 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 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. 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 or similar are directed at the public at large and at customers with specific professional knowledge or expertise. The degree of attention is average.

6. Global assessment, other arguments and conclusion

The services are identical and similar. The similarities and dissimilarities between the marks have been established.

It is considered that, when a sign consists of both word and figurative components, as is the case with the contested mark, the word component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public will most readily refer to a sign by its verbal component rather than by describing the elements of stylisation.

The signs have been found to be identical visually to the extent that they share the letters I _ _ OCLEAN. On the aural level, it can not be excluded that the phonetically close letters NN/MM will be confused or misspelled having been heard. The marks have the same first letters I, they have the same ending OCLEAN. The simple stylisation in the contested mark, comprising a slight stylisation of the letters and the use of coloured lettering , will tend to be overlooked and do not deflect attention from the word elements upon which attention will be concentrated. The two word elements have a phonetically similar rhythm and are confusingly similar for the consumer aurally and visually. In the case of word marks, such as the earlier mark in the present case, it is the word that is protected, and not its written form.

The visually and, aurally differentiating letters NN/MM are placed in a non-prominent, secondary position in the middle of the signs and will not catch the consumer’s initial attention. Neither of the signs has a meaning for the public in the relevant territory. The public will focus on the similar aspects of the marks.

It should be noted that consumers tend to remember the similarities rather than the dissimilarities between signs. In addition, account should also be 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 his trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C‑342/97, ‘Lloyd’).

Based on the principle of imperfect recollection, as well as the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services and vice versa, given the identity and similarity between the services in question, it is considered that the established similarities between the signs are sufficient to cause at least part of the public to believe that the conflicting identical and similar services come from the same undertaking or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. As stated above in section b) 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 Community trade mark registration No 4 178 968. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier right CTM No 4 178 968 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 (judgment of 16/09/2004, T-342/02, ‘Moser Grupo Media’).

COSTS

According to Article 85(1) CTMR, 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 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.

The Opposition Division

Richard THEWLIS

Erkki Münter

Liina PUU

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.