OPPOSITION No B 2 678 020

Trans-Formers Holding Spółka z Ograniczoną Odpowiedzialnością, Al. Wilanowska 89/57, 02-765 Warszawa, Poland (opponent), represented by Katarzyna Popławska, Modrzewiowa 17, 05-074 Hipolitów, Halinów, Poland (professional representative)

a g a i n s t

The Waste Transformers B.V., Antoniestraat 16, 2011 Cr Haarlem, the Netherlands (applicant), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, the Netherlands (professional representative).

On 28/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 678 020 is upheld for all the contested services, namely:

Class 37:        Repair and maintenance services for installations and apparatus for waste treatment by anaerobic digestion and gasification technology.

Class 40:        Recycling and waste treatment; waste management services; waste treatment by anaerobic digestion and gasification technology; production of energy; information, advice and consultancy services relating to the recycling of waste and trash and the production of energy.

Class 42:        Research relating to waste analysis; technical planning and technical project management for the development of installations and apparatus for waste treatment.

2.        European Union trade mark application No 14 895 643 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 14 895 643, namely against all the services in Classes 37, 40 and 42. The opposition is based on European Union trade mark registration No 13 707 963. 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 services

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

Class 37:        Street cleaning, cleaning of buildings, demolition of buildings and preparation of building sites.

Class 40:        Recycling of waste and refuse, destruction of waste, sorting of waste and recyclable material, incineration; of waste and refuse, waste treatment (transformation), purifying and treating of water and air.

Class 42:        Scientific and technological services and research and design relating thereto in the field of protection; of the environment and biotechnology.        

The contested services are the following:

Class 37:        Repair and maintenance services for installations and apparatus for waste treatment by anaerobic digestion and gasification technology.

Class 40:        Recycling and waste treatment; waste management services; waste treatment by anaerobic digestion and gasification technology; production of energy; information, advice and consultancy services relating to the recycling of waste and trash and the production of energy.

Class 42:        Research relating to waste analysis; technical planning and technical project management for the development of installations and apparatus for waste treatment.

        

An interpretation of the wording of the opponent’s list of services is required to determine the scope of protection of these services. In Classes 40 and 42, a semicolon (;) appears just before the word ‘of’. As the wording following this semicolon relates to the services listed before and as this wording cannot stand alone in those classes, the Opposition Division assumes that the semicolon must be interpreted as a comma.

It is also 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 services in Class 37

The contested repair and maintenance services for installations and apparatus for waste treatment by anaerobic digestion and gasification technology are provided by suppliers with specific knowledge in the field of waste treatment. The opponent’s design relating thereto [scientific and technological services] in the field of protection, of the environment and biotechnology in Class 42 includes, inter alia, the design of installations and apparatus for waste treatment. As the field of waste treatment is a specific field that requires specific knowledge, it is reasonable to assume that the services often coincide in relevant public, providers and distribution channels. Therefore, the services are considered similar.

Contested services in Class 40

The contested waste treatment and the opponent’s waste treatment (transformation) refer to the same service and they are therefore identical.

The contested recycling and waste management services include, as broader categories, the opponent’s recycling of waste and refuse. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested waste treatment by anaerobic digestion and gasification technology is included in the broader category of the opponent’s waste treatment (transformation). Therefore, they are identical.

The contested production of energy and information, advice and consultancy services relating to the production of energy include, inter alia, production and information, advice and consultancy of/in relation to biofuel, which is a fuel made from plants and plant-derived resources. The opponent’s scientific and technological services and research and design relating thereto in the field of protection, of the environment and biotechnology in Class 42 include, inter alia, these services relating to the field of biofuel, as biofuel stems from biotechnology and its purpose is to protect the environment. These services have the same nature and purpose, they are provided by the same suppliers through the same distribution channels and they target the same relevant public. Therefore, they are similar to a high degree.

The contested information, advice and consultancy services relating to the recycling of waste and trash and the opponent’s recycling of waste and refuse coincide in providers, distribution channels and relevant public. Therefore, these services are similar.

Contested services in Class 42

As the contested research relating to waste analysis can be for the protection of the environment or in the field of biotechnology, the service is included in, or overlaps with, the broader category of the opponent’s research [relating to scientific and technological services] in the field of protection, of the environment and biotechnology. Therefore, they are identical.

The contested technical planning and technical project management for the development of installations and apparatus for waste treatment are included in, or overlap with, the opponent’s scientific and technological services and research and design relating thereto in the field of protection, of the environment and biotechnology. Therefore, they are identical.        

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 or similar to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise within the field of waste treatment or energy production.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the purchased services.

3. The signs

TRANS-FORMERS
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.

The coinciding element ‘TRANSFORMERS’ is meaningful in certain territories. For example, in English, this word is used to indicate a person or thing that transforms something, and this meaning affects the distinctiveness of this element for this part of the public. However, in other territories, this word lacks any clear meaning. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Greek-speaking part of the public, for which this element is meaningless, as the verb ‘to transform’ in Greek is ‘μεταμορφώνω’, with the transliteration ‘metamorfono’ (WordReference.com).

The earlier mark is a word mark. It consists of the elements ‘TRANS’ and ‘FORMERS’ separated by a hyphen. Neither of these verbal elements has any meaning in Greek and they have an average degree of distinctiveness in relation to the services in question. The hyphen is a common punctuation mark and will have little or no impact on the consumer. The fact that the earlier mark is written in upper case letters is immaterial. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43).

The contested sign is a figurative sign consisting of the verbal elements ‘The’, ‘Waste’ and ‘Transformers’ in blue, slightly stylised title case letters, above which is a figurative element depicting three circular segments in blue, green and yellow, solid in the centre and made up of small dots in the same colours towards their edges.

The relevant public will perceive all the verbal elements ‘The’, ‘Waste’ and ‘Transformers’ as fanciful, with no meaning in relation to the services, and therefore as having an average degree of distinctiveness. The figurative device will not convey any specific semantic meaning and in relation to the services in question it will have an average degree of distinctive character.

The contested sign has no elements 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).

Visually, the signs coincide in the letters ‘TRANS(*)FORMERS’, which constitute almost the entire earlier mark and the longest element of the contested sign. They differ in the hyphen in the earlier mark, which, however, will have a very limited impact on the consumer. Furthermore, they differ in the first two verbal elements, ‘The’ and ‘Waste’, and the figurative elements of the contested sign.

Therefore, and taking into consideration the stronger impact of the verbal elements in comparison with the figurative elements, the signs are visually similar to between a low and an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛TRANS(*)FORMERS’, which will be pronounced identically in both signs, even though the earlier mark contains a hyphen, as this hyphen is placed between two syllables and therefore divides the word in a natural way. The signs differ in the sound of the letters ‛THE WASTE’ in the contested sign.

Therefore, and taking into account that the earlier mark and the longest element of the contested sign are pronounced identically, the signs are aurally similar to an average degree.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

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 covered are from the same or economically linked undertakings.

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).

For the purposes of the global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks, but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). This is also true for consumers with a high degree of attention, since these customers would also need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

The services are identical or similar to various degrees. The distinctiveness of the earlier mark is assumed normal and the relevant public’s degree of attention varies from average to high.

Taking the above into consideration, although the signs differ in some elements, they coincide in almost the entire earlier mark and the longest element of the contested sign. In the light of the foregoing, and also taking into account the interdependence principle mentioned above, the degree of similarity between the signs at issue is sufficient for it to be considered that a substantial part of the relevant public could reasonably believe that services bearing the word mark ‘TRANS-FORMERS’ came from the same undertaking, or from economically linked undertakings, as those bearing the contested composite sign, ‘The Waste Transformers’, even where the public’s degree of attention is higher than average.

In this regard, it should be pointed out that it is common practice, in the relevant market, for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade marks with a new, fashionable image. Moreover, consumers are well accustomed to word marks being stylised and embellished with logotypes and other devices. Therefore, when encountering the conflicting signs, the relevant consumers, who rarely have the chance to directly compare two trade marks and must rely on their imperfect recollection, are likely to mentally register the fact that the signs have in common the element ‘TRANS(-)FORMERS’ and perceive the contested sign as a variation of the earlier mark, or vice versa. Consequently, the public may attribute the same (or an economically linked) commercial origin to the services in question.

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 707 963. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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 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) and (6) and Rule 94(7)(d)(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

Birgit FILTENBORG

Cecilie Leth BOCKHOFF

Michele M. BENEDETTI-ALOISI

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.