OPPOSITION No B 2 693 532

Schoeller Allibert GmbH, Sacktannen 1, 19057 Schwerin, Germany (opponent), represented by Winter, Brandl, Fürniss, Hübner, Röss, Kaiser, Polte Partnerschaft Patent- und Rechtsanwaltskanzlei mbB, Alois-Steinecker-Str. 22, 85354 Freising, Germany (professional representative)

a g a i n s t

IL Recycling AB, Box 5388, 102 49 Stockholm, Sweden (applicant), represented by Advokatbyrån Gulliksson AB, Carlsgatan 3, 211 20 Malmö, Sweden (professional representative).

On 11/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 693 532 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 142 581. The opposition is based on European Union trade mark registration No 9 960 469. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period 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 for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of European Union trade mark No 9 960 469.

In the present case, the date of filing of the contested trade mark is 24/02/2016.

Earlier EUTM No 9 960 469 was registered on 17/10/2011. Therefore, the request for proof of use is inadmissible.

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.

1. The goods and services

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

Class 39: Transport, in particular logistical services in the transport sector, in particular for reusable transport systems, the recovery, providing and delivery of reusable packaging, reusable containers and reusable pallets between manufacturer and dealer, rental of reusable transport packaging, in particular reusable containers and reusable pallets, including in groups, administration of shared transport systems and containers (sharing, pooling), software-assisted consignment tracking (tracking and tracing), analysis of logistics costs, comparative analysis of packaging systems, transport (removal) of waste and recycling materials; packaging and storage of goods, in particular services relating to the packaging, parcelling, wrapping, storage, transport and delivery of goods and products, storage of waste and recycling materials, rental of warehouses.

Class 40: Treatment of materials, in particular recycling of materials, in particular materials and products for packaging; sorting of recyclable materials.

Class 42: Scientific and technological services, in particular graphic arts designing and packaging design in relation to packaging and containers, industrial design, custom design of containers and packaging, design consultancy with regard to packaging and containers, information and consultancy with regard to the aforesaid services, technical development of containers, carriers, pallets, in particular of plastic; Industrial analysis and research services ;engineering, in particular technical process analysis, assessment, planning and optimisation, construction drafting, quality checking, quality control; design and development of computer hardware and software, in particular computer software consultancy and computer hardware consultancy, in particular analysis, assessment, planning and optimisation of business hardware and software and customisation of software, and customer services.

The contested goods and services are the following:

Class 16: Printed matter; bookbinding material; photographs [printed]; paper stationery; Gums [adhesives] for stationery or household purposes; artists’ materials; painters’ brushes; teaching materials [except apparatus]; plastic materials for packaging (not included in other classes); printing type; printing blocks; office requisites, except furniture; paper; paper bags; cardboard containers; packaging materials; wrapping materials made of paper; packaging materials made of recycled paper.

Class 39: Collection of recyclable goods [transport]; paper and cardboard collection for recycling; packaging services.

Class 40: Destruction of waste; recycling of waste; waste management services [recycling]; recycling services; recycling and waste treatment; consultancy relating to the recycling of waste and trash; information, advice and consultancy services relating to the recycling of waste and trash; destruction of waste and trash.

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 terms ‘in particular’ and ‘including’, used in the opponent’s list of services, indicate that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to 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.

Contested goods in Class 16

The contested plastic materials for packaging (not included in other classes); paper; paper bags; cardboard containers; packaging materials; wrapping materials made of paper; packaging materials made of recycled paper are similar to a low degree to the opponent’s packaging and storage of goods, in particular services relating to the packaging, parcelling, wrapping, storage, transport and delivery of goods and products, storage of waste and recycling materials in Class 39. Even though these goods and services do not have the same nature – as goods and services are different, with goods being tangible and services intangible – they are clearly complementary, as the contested goods are essential for the services provided by the opponent. Moreover, it is usual to find on the market enterprises that offer both the goods and the services in question.

The rest of the contested goods consist of printed matter, bookbinding material, office products, and artists’ and teaching materials; whereas the opponent’s services are transport, the packaging of goods, the treatment of materials and IT services, in general. These contested goods belong to a different field from the opponent’s services in Classes 39, 40 and 42. These goods and services are plainly different as regards their nature, purpose and method of use and they are usually produced/provided by different manufacturers/providers. Therefore, these goods are dissimilar to all the opponent’s services.

The Opposition Division cannot agree with the opponent’s claim that there is a degree of similarity between the remaining contested goods and the opponent’s services in Classes 39 and 40. The nature of the contested goods is specialised, covering artists’ materials, bookbinding and printing material, and stationery. The opponent will not need to use any of these goods when providing its services, so there is no complementarity between them. Furthermore, goods and services by their very natures are different. To conclude, the contested goods will not be produced by the same company that provides the opponent’s services and there is no other link between them.

Contested services in Class 39

The contested collection of recyclable goods [transport]; paper and cardboard collection for recycling are included in the opponent’s broader category of transport. Therefore, they are identical.

Packaging services are identically included in both lists of services.

Contested services in Class 40

The contested destruction of waste; recycling of waste; recycling services; recycling and waste treatment; destruction of waste and trash are included in the broader category of the opponent’s treatment of materials, as the latter consists in the treatment of different types of waste (whether organic or inorganic) after it has been collected. Therefore, they are considered identical.

When comparing the contested waste management services [recycling]; consultancy relating to the recycling of waste and trash; information, advice and consultancy services relating to the recycling of waste and trash with the opponent’s treatment of materials, in particular recycling of materials, in particular materials and products for packaging; sorting of recyclable materials, the Office considers that they are identical, as the contested services are included in the opponent’s treatment of materials, which is a process applied to materials to make them better in some way.

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 goods and services found to be identical or similar to varying degrees are directed at business customers with specific professional knowledge or expertise, while some, such as paper bags, are directed at the public at large.

The degree of attention displayed with regard to the conflicting goods and services may vary from average, for instance in the case of cardboard containers, to higher than average, as is the case for recycling and waste treatment, as the latter are highly specialised services that will not be commissioned on a frequent basis and will be costly.

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 coinciding element ‘360º’ will be understood by consumers throughout the European Union as referring to the mathematical concept of ‘360º’, meaning the total number of degrees of a circle, a circle’s full circumference and something that is completed. This element will therefore be associated with the adjective‘360-degree’, which is commonly used in trade to refer to a product or service that, is all-encompassing or comprehensive. This element is considered descriptive and, therefore, non-distinctive in all languages and for all of the relevant goods and services.

The opponent’s main argument is that ‘360º’ enjoys distinctiveness and occupies a dominant position within the earlier mark. Regarding the distinctiveness of the element ‘360º’, it is worth noting what has already been pointed out by the General Court in its judgment of 10/12/2013, T-467/11, 360º SONIC ENERGY/ SONIC POWER, §58, in which it is stated that ‘the Board of Appeal acted correctly in taking the view that the “360°” element, which is a mathematical concept, will be perceived by the relevant public more as a technical specification for the goods concerned, evoking the idea of a complete and quality dental cleaning’. This finding that the element ‘360º’ has a descriptive meaning is, moreover, confirmed by several Boards of Appeal decisions, such as 14/04/2016, R 2287/2015-4, 360º (fig), and 28/07/2016, R 2309/2015-5, 360º DIAMOND FILTRATED (fig).

For all the above reasons, in the present case, the element ‘360º’ is likely to be perceived as having a clear and specific meaning (relating to the concept of recycling and the whole process of the transformation of waste); therefore, the relevant public is capable of grasping it immediately (14/10/2003, T-292/01, Bass, EU:T:2003:264, § 54; 17/03/2004, T-183/02 & T-184/02, Mundicor, EU:T:2004:79, § 93; 06/03/2015, T-257/14, BLACK JACK TM, EU:T:2015:141,§ 44).

In the earlier sign, the element ‘360º’ is surrounded by a circle made up of several stylised green arrows. The use of arrows and of the colour green are customary ways of symbolising recycling and environmentally friendly goods and services. Bearing in mind that the relevant goods and services are related to recycling and the treatment of waste, the impact of these weak elements is limited when assessing the likelihood of confusion between the marks at issue.

Similarly, the design of the numeral ‘0’ in the earlier mark, using an arrow, will be identified as a simple recycling symbol. The distinctiveness of this element is weak.

The background upon which both the circle made up of arrows and the element ‘360º’ are depicted has a merely decorative function and will be attributed very little trade mark significance.

The word ‘recycling’ of the contested sign is directly understandable throughout the vast majority of the relevant territory, as it is identical in German (‘recycling’) and is very similar in several relevant languages (e.g. ‘reciclaje’ in Spanish, ‘recyclage’ in French, ‘recykling’ in Polish and ‘reciclagem’ in Portuguese). For this reason, it is non-distinctive, as it indicates either the origin or the nature of the goods and services offered/provided. Moreover, the verbal elements of the contested sign are surrounded by a circle. Given the merely decorative nature and commonplace character of a circle, it is considered that it has almost no capacity to indicate commercial origin and therefore the distinctiveness of this figurative element is weak. The circle in the contested sign is encircled by several arrows in different shades of blue, with barely perceptible words inside. The Opposition Division believes that, at a glance, consumers will perceive the presence of these additional words but will not identify the exact words because of their very small size and their secondary position in the sign.

Neither of the signs has any element that could be considered clearly more dominant (eye-catching) than other elements.

Visually, the signs are similar to the extent that they both contain the non-distinctive element ‘360º’. However, they differ in the depictions of the numeral ‘0’ in the earlier sign and of the arrows surrounding the coinciding element ‘360º’ in both signs. Moreover, the signs differ in the colours used and in the presence of the descriptive word ‘RECYCLING’ in the contested mark, as well as in the border containing barely perceptible words in the contested mark.

Therefore, taking into account all the above considerations regarding distinctiveness, the signs are visually similar to only a very low degree.

Aurally, irrespective of the different pronunciation rules in the different parts of the relevant territory, the pronunciation of the sign coincides in the element ‘360º’ and differs in the additional word of the contested sign, ‘RECYCLING’, which is non-distinctive.

Considering that the coinciding element lacks distinctiveness, it will have little impact aurally. Therefore, the signs are aurally similar to a below average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs coincide conceptually in a non-distinctive element, which will not be viewed as an indicator of origin, the signs are similar to, at most, a low degree because the conceptual impact of the coinciding element is very low.

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 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. Considering what has been stated above in section c) of this decision, the earlier mark has a below average degree of distinctiveness, because of the presence of weak and non-distinctive elements.

5. Global assessment, other arguments and conclusion

Some of the contested goods are similar to a low degree, whereas the contested services are identical to the opponent’s services. The signs are visually similar to a low degree, aurally similar to a below average degree and conceptually similar to only a low degree.

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).

According to the same line of case-law, 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).

In the present case, the elements that the signs have in common are the non-distinctive element ‘360º’ and the depiction of arrows surrounding that element. As noted above, the figurative elements depicting arrows have obvious differences in their set-up, stylisation and aesthetic expression (e.g. the different shades of colour, the different arrow shapes and the different number and direction of the arrows). The degree of visual similarity is only low and will not prevent consumers who are reasonably attentive from safely distinguishing between the signs due to the additional elements in the signs. The relevant consumer, when faced with two signs containing such a commonplace and banal element as ‘360º’ and arrows indicating recycling, especially for goods and services related to recycling, will not view these similar elements as possessing any trade mark value at all. This is all the more true of a consumer displaying a higher degree of attention. Consequently, all of the other elements in the signs, such as the colours used, additional words such as ‘recycling’ and different borders and backgrounds, acquire greater weight. It is the view of the Opposition Division that the relevant consumer will focus on all the other elements and will be able to easily distinguish between the signs.

Therefore, considering all of the above, there is no likelihood of confusion.

Therefore, the opposition must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marta GARCÍA COLLADO

Alexandra APOSTOLAKIS

Lucinda CARNEY

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 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) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.