OPPOSITION No B 2 606 906

Waterax Inc., 6635 Henri-Bourassa West, Montreal, Quebec H4R 1E1, Canada (opponent), represented by Manitz, Finsterwald & Partner GbR, Martin-Greif-Str. 1, 80336 München, Germany (professional representative)

a g a i n s t

Aquarden Technologies ApS, Industrivej 17, 3320 Skævinge, Denmark (applicant), represented by Plougmann Vingtoft A/S, Rued Langgaards Vej 8, 2300 Copenhagen, Denmark (professional representative).

On 09/12/2016, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 606 906 is partially upheld, namely for the following contested goods:

Class 11:         Water and waste water purifying apparatus and machines; purification installations for sewage; biological reactors for clarifying industrial effluents; water purification, desalination and conditioning installations; water filtering apparatus; regulating and safety accessories for water purification installations; parts and fittings to all the mentioned goods (not included in other classes).

2.        European Union trade mark application No 14 363 063 is rejected for all the above goods. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 363 063. The opposition is based on European Union trade mark registration No 12 734 125. 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.

1. The goods and services

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

Class 7:        Pumps; centrifugal pumps; water pumps.

Class 9:        Firefighting apparatus; fire pumps; fire hoses; fire hose nozzles; firefighting equipment, namely, portable water tanks, portable centrifugal pumps, and self-contained firefighting units comprised primarily of water and fire retardant reservoirs, hoses, nozzles and piping, pumps and pump engines for use as portable operating payloads on land vehicles.

Class 35:         Retail and gross retail services, including those via the internet, with respect to the following goods: Pumps, centrifugal pumps, water pumps, Firefighting apparatus, fire pumps, fire hoses, fire hose nozzles, firefighting equipment, namely, portable water tanks, portable centrifugal pumps, and self-contained firefighting units comprised primarily of water and fire retardant reservoirs, hoses, nozzles and piping, pumps and pump engines for use as portable operating payloads on land vehicles.

The contested goods and services are the following:

Class 11:        Water and waste water purifying apparatus and machines; purification installations for sewage; biological reactors for clarifying industrial effluents; water purification, desalination and conditioning installations; water filtering apparatus; regulating and safety accessories for water purification installations; parts and fittings to all the mentioned goods (not included in other classes).

Class 37:         Installation, repair and maintenance of water and waste water purifying apparatus and machines as well as purification installations for sewage.

Class 42:        Professional advisory services and consultancy regarding technology, including regarding purification of water and waste water as well as regarding purification installations for sewage; technical consultancy regarding purification of water and waste water as well as purification installations for sewage.

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 and opponent’s lists of goods and services, indicates that the specific goods and 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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.

In its observations, the applicant argued that ‘the opponent’s clients are wildland firefighters, agencies and governments […] whereas the applicant’s clients are companies with organic and xenobiotic wastewater in industries like pharmaceutical, chemical, and biotech industries, landfill operations and hospitals’.

The Opposition Division is of the opinion that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

Contested goods in Class 11

The contested water and waste water purifying apparatus and machines; purification installations for sewage; biological reactors for clarifying industrial effluents; water purification, desalination and conditioning installations; water filtering apparatus; regulating and safety accessories for water purification installations; parts and fittings to all the mentioned goods (not included in other classes) coincide with the opponent’s pumps in Class 7 in their distribution channels, producers and relevant publics.

Therefore, the Opposition Division finds that the goods under comparison are similar to a low degree.

Contested services in Class 37

The contested installation, repair and maintenance of water and waste water purifying apparatus and machines as well as purification installations for sewage are dissimilar to the opponent’s goods and services. They differ in their natures, intended purposes, methods of use, distribution channels and consumers. In addition, they are neither complementary nor in competition.

Contested services in Class 42

The contested professional advisory services and consultancy regarding technology, including regarding purification of water and waste water as well as regarding purification installations for sewage; technical consultancy regarding purification of water and waste water as well as purification installations for sewage are also dissimilar to the opponent’s goods and services. They differ in their natures, intended purposes, methods of use, distribution channels and consumers. In addition, they are neither complementary nor in competition.

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.

The goods found to be similar to a low degree are highly specialised products and are directed at customers with specific professional knowledge or expertise, and also at the general public (e.g. for pumps). The degree of attention may vary from average to high, because some of the goods are technical, rather expensive and purchased infrequently (and would therefore receive a higher-than-average degree of attention).

c) The signs

WATERAX
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union 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 (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 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 English-speaking part of the relevant public.

The earlier mark is the word mark ‘WATERAX’.

The contested sign is a figurative mark containing the letters ‘ATEROX’, written in a fairly standard upper case black font. The contested sign also includes a figurative element resembling a blue and yellow medieval Viking helmet. Therefore, for a part of the English-speaking public, the contested sign will be perceived as comprising a helmet followed by the meaningless word ‘ATEROX’, both of which have a normal degree of distinctiveness.

However, taking into account the goods at issue (which are all related in some way to water) and how the helmet is depicted, the Opposition Division is of the opinion that a substantial part of the relevant public will perceive the blue and yellow medieval Viking helmet as the letter ‘W’. This is because consumers tend to look for a meaning in trade marks, and marks often distort letters or replace them with figurative elements with a shape similar to that of a letter for effect or impact. Therefore, the contested mark would be perceived by that part of the relevant public as ‘WATEROX’. For reasons of procedural economy, the Opposition Division will now focus on the part of the public that will interpret the blue and yellow medieval Viking helmet as the letter ‘W’.

Therefore, for this part of the public, the conflicting signs may be seen as containing the word ‘WATER’ (meaning ‘a transparent, odorless, tasteless liquid’; information extracted from Dictionary.com on 11/11/2016 at www.dictionary.com/browse/water), which will be perceived as allusive to the goods concerned.

Both signs contain the verbal elements ‘AX’ and ‘OX’. These elements have meanings in English, as described by the applicant: ‘AX’ is ‘a tool that has a heavy metal blade and a long handle and that is used for chopping wood’ (information extracted from Merriam Webster on 11/11/2016 at www.dictionary.com/browse/ax) and ‘OX’ is ‘a cow or bull’ (information extracted from Merriam Webster on 11/11/2016 at www.merriam-webster.com/dictionary/ox). However, in the present case, taking into account the relevant goods, the Opposition Division finds it unlikely that the relevant public will associate these verbal elements with the meanings described above and finds that they will rather be seen as fanciful suffixes.

The figurative element of the contested trade mark, that is, the blue and yellow medieval Viking helmet, does not overshadow the verbal elements of the mark.

In its observations, the applicant argues that ‘in the EUIPO’s register there are currently 836 registrations using the word WATER either in class 7, class 9 or class 35’. In the applicant’s opinion, the earlier trade mark therefore has a low degree of distinctiveness. In support of its argument, the applicant refers to several trade mark registrations for European Union trade marks and international trade marks.

The Opposition Division notes that the existence of trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘WATER’. Under these circumstances, the applicant’s claims must be set aside.

Visually, the signs coincide in the letters ‘*ATER*X’. In addition, the signs are the same length (i.e. seven letters). The figurative element of the contested sign, moreover, resembles the initial letter ‘W’ of the earlier mark. However, the conflicting signs differ in their second-last letters, namely ‘A’ in the earlier mark and ‘O’ in the contested sign.

Therefore, the signs are similar to an average degree.

Aurally, taking into account the fact that the Viking helmet in the contested mark will be interpreted as the letter ‘W’, the pronunciation will be very similar. The signs will differ only in the sound of the letters ‘A’ of the earlier mark and ‘O’ of the contested sign, which have no counterparts in the opposing sign. Furthermore, the signs will have similar rhythms and intonations.

Therefore, the signs are highly similar.

Conceptually, although both signs may be associated with water, the contested sign also contains the figurative element of the Viking helmet and, therefore, the signs are similar to a below average degree.

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of an allusive element in the mark as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

As has been concluded above, all the goods are similar to a low degree, and the signs are similar from all three aspects of the comparison. Furthermore, the earlier mark as a whole is of normal distinctiveness in relation to the relevant goods.

In addition, account is taken of the fact 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).

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. Even when the attention of the relevant public is higher, the Opposition Division finds that the differing vowels, ‘a’ and ‘o’, and the figurative element of the contested sign, the depiction of the Viking helmet and the different colours, cannot outweigh the similarities between the signs. Bearing in mind that the earlier mark is a word mark and can be reproduced in various typefaces, it cannot be safely excluded that the relevant public will consider that the contested mark is a new, more attractive and fanciful version of the earlier mark.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public described above and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 12 734 125. As stated above in section c) 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to a low degree to those of the earlier trade mark. The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these services cannot be successful.

The Opposition Division notes that the applicant refers to a previous decision of the Office to support its arguments (16/09/2015, B 2 435 876). However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous case referred to by the applicant is not relevant to the present proceeding. In the decision of 16/09/2015, B 2 435 876, the factual circumstances were different from those of the present case, namely different goods and services were compared.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Lynn BURTCHAELL

Michal KRUK

Denitza STOYANOVA-VALCHANOVA

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.