OPPOSITION No B 2 716 713

Ecolog International Deutschland GmbH, In der Steele 14, 40599 Düsseldorf, Germany (opponent), represented by Unverzagt von Have Rechtsanwälte Partnerschaftsgesellschaft mbB, Heimhuder Straße 71, 20148 Hamburg, Germany (professional representative)

a g a i n s t

Tracey McNally, Quarry Road, Carrickmore BT79 9JX, United Kingdom (applicant), represented by John Philip Hanna, 4th Floor, 58 Howard Street, Belfast BT1 6PJ, United Kingdom (professional representative).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 716 713 is partially upheld, namely for the following contested services:

Class 37:        Machinery installation, maintenance and repair; Installation, maintenance and repair of waste crushing machines and apparatus; Installation, maintenance and repair of waste compacting machines and apparatus; Dismantling of machinery; Repair or maintenance of plastic processing machines and apparatus.

2.        European Union trade mark application No 15 113 335 is rejected for all the above services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 113 335 (word mark 'ECOHOG'), namely against all the services in Classes 37 and 40. The opposition is based on European Union trade mark registration No 13 346 143 (figurative mark ). 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 35:        Advertising; Business management; Marketing services; Market analysis and research services; Planning, organising, arranging and conducting of trade fairs, exhibitions and presentations for business purposes or for advertising purposes; Gathering and collating of data in databases; Gathering of information, texts, drawings, images and data via telecommunications networks; Opinion polling; Business administration and advice; Professional business, economic and organisational consultancy with regard to information technology and communications technology matters; Office functions; Drawing up of statistics; Business auditing; Personnel management consultancy; Temporary personnel services; Arranging commercial transactions, for others; Rental of office machines and equipment, and of apparatus for electronic media, included in class 35; Rental of advertising time on communication media; Rental of advertising space on vehicles and transport devices; Rental of automatic vending machines.

Class 36:        Insurance; Financial affairs; Monetary affairs; Real estate affairs; Customs brokerage.

Class 37:        Building construction; Conducting repairs and installation services in the fields of structural engineering, Underground construction, Civil engineering construction, Urban construction, Construction of railways, Road building, Hydraulic engineering, geotechnical engineering; Constructing information and communications infrastructure for buildings, included in class 37; Installation and maintenance of technical equipment installed in real estate and mobile installations; Cleaning services, included in class 37.

Class 38:        Telecommunications, in particular providing and operation of telecommunications networks and providing internet access from a technical perspective; Online transmission of messages and information of all kinds; Providing access to, and transmission of, information, texts, drawings, images and data via telecommunications networks; Rental of telecommunication equipment; Leasing access time to a computer database.

Class 39:        Transport; Transport of persons and goods by road, rail, sea and air, and by motorcycle, motor scooter and bicycle; Transport of luggage, storage of luggage and porterage; Rental and chartering of motor vehicles, motor homes, railways, ships, aircraft, motorcycles, motor scooters, bicycles and transport support equipment and/or the parking, storage and stopping places therefor, including security containers, intermediate storage containers, dangerous goods containers, containers; Providing information regarding transport and traffic; Packaging and storage of goods; Checking of goods and vehicles and accompanying documents in connection with the import and export of goods and the transport thereof; Road and air rescue services; Planning, organisation, arranging and conducting of traffic services; Planning, organisation, brokerage and conducting of travel, travel arrangement; Escorting of travellers; Providing travel documents, included in class 39; Car sharing, transport sharing and flight sharing centres, included in class 39; Brokerage of new and used transport devices.

Class 40:        Treatment of materials, Namely printing, for others.

Class 41:        Education, teaching and training; Radio, television, video and film productions; Radio, television, video and film performances; Rental of radio, television and video apparatus; Electronic data processing training; Rental of books, periodicals, newspapers; Publication of books, magazines, newspapers and other publications, including in electronic, non-downloadable form via databases and online services; Impresario services; Arranging sporting and cultural activities and reports thereon, by means of radio, television, video or film; Rental of radios, television, film, video and audio tape-playing apparatus, CD players and cameras; Entertainment; Rental of sporting equipment; Planning, organisation, arranging and conducting of training, language and sporting competitions; Planning, organising, arranging and conducting of congresses, conferences, exhibitions and presentations for cultural and/or educational purposes; Photography; Translations.

Class 42:        Processing apparatus and computers; Technical design of installations and equipment for telecommunications; Technical network planning; Technical consultancy and technical expertise; Technical remote monitoring and remote control of information and communications infrastructure for buildings and for installations and of apparatus for telecommunications, including adapting, maintaining and implementing suitable software; Preparing and updating data, software and information by computer-aided services at the point of sale, included in class 42; Planning of technical equipment installed in real estate and mobile installations; Technical monitoring and inspection of technical equipment installed in real estate and mobile installations; Architectural and construction drafting and consultancy; Material testing; Architecture, physics, chemistry, interior design, landscape design, surveying, engineering and design.

Class 43:        Provision of food, drink and temporary accommodation; Accommodation bureau services.

Class 44:        Medical services; Agriculture, horticulture and forestry services; Hygienic and beauty care for human beings or animals, including rental of sanitation facilities.

Class 45:        Security services for the protection of property and individuals; Missing persons investigations; Reconnaissance and surveillance (security services) for technical equipment installed in real estate and mobile installations.

The contested services are the following:

Class 37:        Machinery installation, maintenance and repair; Installation, maintenance and repair of waste crushing machines and apparatus; Installation, maintenance and repair of waste compacting machines and apparatus; Dismantling of machinery; Rental of construction machines and apparatus; Repair or maintenance of plastic processing machines and apparatus.

Class 40:        Recycling and waste management; Recycling and waste treatment; Recycling of waste and rubbish; Recycling services; Recycling of metals; Recycling of plastics; Recycling of scrap; Recycling of valuable materials; Recycling of waste products; Recycling of waste materials; Waste processing; Waste destruction; Shredding of waste; Treatment of waste materials; Treatment [transformation] of waste; Treatment [recycling] of waste; Reclamation of material from waste; Sorting of waste and recyclable material; Sorting of waste and recyclable material [transformation].

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘in particular’ and ‘including’, used in the opponent’s list of services, indicates that the specific 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 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 services.

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 services in Class 37

The contested machinery installation, maintenance and repair; installation, maintenance and repair of waste crushing machines and apparatus; installation, maintenance and repair of waste compacting machines and apparatus; dismantling of machinery; repair or maintenance of plastic processing machines and apparatus are included in or overlap with the earlier mark's conducting repairs and installation services in the fields of structural engineering. The opponent's services include also, for example, the installation, maintenance and repair of waste crushing machines and apparatus. An engineer is a person who designs, builds, or maintains engines, machines, or structures. Structural engineering is a specialty within Civil Engineering. Structural Engineers create drawings and specifications, perform calculations, review the work of other engineers, write reports and evaluations, and observe construction sites; like of engineers who install, maintain and repair waste crushing machines and apparatus. Therefore the services are identical.

The contested rental of construction machines and apparatus are dissimilar to the opponent's services because they are of a different nature, are directed at different customers, originate from different service providers, are not complementary and neither are they interchangeable.

Contested services in Class 40

The contested recycling and waste management; recycling and waste treatment; recycling of waste and rubbish; recycling services; recycling of metals; recycling of plastics; recycling of scrap; recycling of valuable materials; recycling of waste products; recycling of waste materials; waste processing; waste destruction; shredding of waste; treatment of waste materials; treatment [transformation] of waste; treatment [recycling] of waste; reclamation of material from waste; sorting of waste and recyclable material; sorting of waste and recyclable material [transformation] are, however, dissimilar to the opponent's services because they have a different purpose, are directed at different customers, originate from different service providers, are not complementary and neither are they interchangeable. Waste and recycling services are offered by specialised companies, which either entail all activities required to ensure that waste has the least practicable impact on the environment or convert (waste) into reusable material.

Contrary to the opponent's allegations, the opposition division cannot find any relevant coincidences, not even with the opponent's earlier services regarding the treatment of materials, namely printing for others. First, as explained above, these services cannot be considered similar only because they are in the same class. Second, the opponent does actually not enjoy protection for treatment of materials because the term 'namely' is exclusive and restricts the scope of protection only to the specifically listed services, which are printing for others. These services, however, do not have any relevant coincidences with the contested ones, as explained above.

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 are specialised services directed at business customers with specific professional knowledge or expertise.

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

3. The signs

	ECOHOG
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 common element 'ECO' as well as the earlier mark's 'Intelligent Service Solutions' is meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a figurative mark and the contested one is a word mark. In the case of word marks, the word as such is protected and not its written form. Therefore, any differences in the use of upper or lower case letters is immaterial. Now, the earlier mark's verbal element 'Ecolog' and the contested sign's (only) element 'ECOHOG' will be perceived as a whole and thus no meaning will be attributed to these verbal elements by a part of the relevant public.

Notwithstanding, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, 'the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him' (06/10/2004, T-356/02, VITAKRAFT, EU:T:2004,ECR II-3445, § 51). Consequently, the previously mentioned earlier mark's elements will be understood as follows by at least a part of the relevant public: 'ECO' – the short form for 'ecology' or 'ecological' (see also 13/07/2017, T-150/6, ECOLAB, EU:T:2017, § 13) and means something is made, operates or is rendered in an environmentally friendly – and 'Intelligent Service Solutions – meaning that the provider offers intelligent/good service solutions for clients. Bearing in mind that nowadays it is more and more important that something is made, operates or is rendered in an environmentally friendly way, this element is non-distinctive for all the services. Consequently, the red figurative element with three corners and the white letter 'E' inside is clearly more distinctive. A part of the relevant public might also associate '***log' with 'a part of the trunk or a large branch of a tree that has fallen or been cut off'. As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive, too.

The element ‘***HOG’ of the contested sign will be understood as ‘a domesticated pig’ by this part of the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.

The contested sign, being a word mark, has per definition no elements that could be considered clearly more dominant than other elements.

The element ‘Ecolog’ along with the red figurative element with three corners and the white letter 'E' inside, preceding the mentioned verbal element, are the dominant elements as it is they are due to their seize the most eye-catching ones in the earlier mark.

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).

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Neither of the signs has a meaning as a whole. Although the coinciding word ‘ECO’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive for a part of the relevant public and cannot indicate the commercial origin of any of the marks. The attention of the relevant public will be attracted by the additional verbal (and in case of the earlier mark also figurative) elements, which are distinctive (except for the non-distinctive 'Integrated Service Solutions' of the earlier mark) and have different meanings, as described above.

Therefore, the signs are not conceptually similar.

Visually, the signs coincide in ‘ECO*OG’, which forms one of the two dominant elements of the earlier mark. This is a considerable coincidence in five out of six letters, even though 'ECO' is non-distinctive at least for a part of the public as explained above. However, they differ in their respective fourth character ‘L/H’ and in the additional elements of the earlier mark, namely the red figurative element with three corners and the white letter 'E' inside and the additional non-distinctive verbal elements 'Integrated Service Solutions', depicted in a considerably smaller typeface.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ECO*OG’, present identically in both signs, even though 'ECO' is non-distinctive at least for a part of the public as explained above. The pronunciation differs in the sound of the respective fourth letter ‘L/H’. The pronunciation differs also in the sound of the letters 'Integrated Service Solutions' of the earlier mark, which have no counterparts in the contested mark. However, it has to be noted these additional verbal elements are not only non/distinctive but will most probably not be pronounced due to their considerably small size. Similarly, the initial letter 'E' of the figurative element of the earlier mark will most probably also not be pronounced when referring to the mark.

Therefore, the signs are similar to a degree higher than average.

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. 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, despite the presence of some non-distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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).

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.

In the present case, there is a likelihood of confusion for the similar and identical services because the differences between the signs are confined to non-distinctive or secondary elements and aspects. This applies especially to the part of the relevant public that will not dissect the verbal elements 'Ecolog' and 'ECOHOG' and will thus not attribute any meaning to these verbal elements. Considerable weight has to be given to the fact that the signs coincide in ‘ECO*OG’ which is one of the two dominant elements of the earlier mark. Thus the signs do not only coincide in the, for at least part of the public non-distinctive, 'ECO' but also in the distinctive ending '*OG'.

Although it is true that the earlier mark does contain additional and differentiating verbal and figurative elements, they cannot help to clearly distinguish the marks. The additional verbal elements are non-distinctive, as explained in section c) of this decision, and the figurative elements are of less weight than the coinciding verbal element because consumers most readily refer to a sign by its verbal component rather then describing the figurative elements.

Moreover, 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54). Thus, a difference of only one letter in the less observed middle of the coinciding verbal element and the other non-distinctive or secondary elements, can easily be forgotten or not remembered properly.

Furthermore, the applicant’s argument that the services should be deemed different merely on the basis of what is the current or future use of the marks or with attention to the different public targeted, or because of the difference in price, quality or other characteristics of the services bearing one or other mark, must be refuted as irrelevant. Indeed, the comparison between the services should be made with regard only to the actual list of goods for which the respective signs are protected and not with regard to the way in which those goods could be sold in the marketplace.

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 and therefore the opposition is partly wellfounded on the basis of the opponent’s European Union trade mark registration. 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 services found to be identical or similar 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) EUTMR, the opposition based on this article and directed at these services cannot be successful.

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 will decide a different apportionment of costs.

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

The Opposition Division

Martin EBERL

Swetlana BRAUN

Claudia MARTINI

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.