OPPOSITION No B 2 528 720

Oase GmbH, Tecklenburger Str. 161, 48477 Hörstel-Riesenbeck, Germany (opponent), represented by Busse & Busse Patent- und Rechtsanwälte Partnerschaft mbB, Grosshandelsring 6, 49084 Osnabrück, Germany (professional representative)

a g a i n s t

Procopi, Les Landes d’Apigné, 35650 Le Rheu, France (applicant), represented by Regimbeau, 20 rue de Chazelles, 75847 Paris Cédex 17, France (professional representative).

On 09/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 528 720 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 750 823, namely against some of the goods in Class 7. The opposition is based on European Union trade mark registration No 2 726 842. 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 the trade mark on which the opposition is based.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 23/02/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 23/02/2010 to 22/02/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 7:        Pumps for water and other liquids, pumps for fountains, swimming pools, aquaria, water treatment installations, irrigation equipment and air-humidifying equipment; wet pit pumps, universal pumps, industrial pumps, pumps for chemicals, in particular acidproof pumps, coolant pumps, aquaria pumps, parts for the aforesaid pumps.

Class 9:        Electronic, hydraulic and/or pneumatic control apparatus for fountains, fountain displays, lighting and/or apparatus for recording, and programmable computers therefor; data carriers containing magnetic, optical or mechanical recordings, video films, in particular for designing garden ponds and fountain installations.

Class 11:        Water pipes, swimming pools and fountains; water treatment apparatus, water filtering apparatus, waste water purifying apparatus, all including control apparatus therefor; pond filters, aquaria filters, fountain filters, and parts for these goods; fountains and water features for public facilities, gardens, balconies and interior spaces; water fountains, nozzles, filtering equipment, fountain basins, basins for plants, fountain linings, fountain consoles and lighting equipment, being parts for water fountains; washing apparatus and high-pressure cleaning apparatus; air-conditioning apparatus and humidifiers; drinking bowls; lighting apparatus for aquaria.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 12/08/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 12/10/2016 to submit evidence of use of the earlier trade mark. After an agreed extension, on 12/12/2016, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• Affidavit: an affidavit signed by the managing director of the opponent’s company on 12/12/2016, indicating a significant turnover of ‘Aquamax’ products in the European Union.
• Catalogues: five catalogues in which the mark is shown in relation to water pumps and filters only. Only one is within the relevant period (2014) and in the language of the proceedings. A second is partly outside the relevant period, as it covers 2009/2010; it is also in the language of the proceedings. The other three are mostly outside the relevant period, as they refer to 2015 and the relevant period finishes on 22/02/2015. None of these is in the language of the proceedings; they are in German, French and Spanish.
• Packaging samples: four master copies of packaging. The mark appears on boxes for water pumps. The first sample is dated within the relevant period (12/12/2013). The second is undated. The remaining samples are dated 06/10/2015 and 20/01/2016 (outside the relevant period).
• Invoices: two invoices dated 26/05/2016 and 27/09/2016; therefore, these invoices were not issued during the relevant period (23/02/2010-22/02/2015). The invoices are not in the language of the proceedings; however, the mark ‘AQUAMAX’, followed by references that can be linked to the catalogues submitted, is visible and the general structure of the invoices is self-explanatory.

Although some of the catalogues and the invoices are not in the language of the proceedings, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

The catalogues, packaging samples and invoices show that the place of use is the European Union. This can be inferred from the languages of the documents, English, French, German and Spanish, and some addresses in Germany and other Member States. Therefore, the evidence relates to the relevant territory.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).

In the case at hand, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. This is because the data contained in the invoices can be linked with the 2014 catalogue, which is the only one that falls entirely within the relevant period.

The documents filed, despite some weaknesses detected in relation to the indications of the extent and time of use, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

The catalogues proved, to the requisite legal standard, that the earlier mark was used for the purposes of creating or preserving an outlet for the goods at issue. Even though those catalogues provide no information on the quantity of goods actually sold by the opponent under the trade mark ‘AQUAMAX’, it is necessary to take into account the fact that a large number of ‘AQUAMAX’ items were offered in the catalogues and that those items were available in several EU Member States for at least part of the relevant period. Those factors support the conclusion that the extent of use of the mark was sufficient.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 7:        Water pumps.

Class 11:        Water filtering apparatus.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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

The goods on which the opposition is based and for which the mark has been put to genuine use are the following:

Class 7:        Water pumps.

Class 11:        Water filtering apparatus.

The contested goods are the following:

Class 7:        Pumping apparatus [machines]; Pumps; Heat pumps [parts of machines]; Water pumps for use in motors and engines; Swimming pool cleaning machines; Robotic swimming pool cleaning machines; Automatic swimming pool sweepers; Sweeping machines for use in swimming pools.

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 7

The contested water pumps for use in motors and engines are included in the broad category of the opponent’s water pumps. Therefore, they are identical.

The contested pumping apparatus [machines]; pumps include, as broader categories, the opponent’s water pumps. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested swimming pool cleaning machines; robotic swimming pool cleaning machines; automatic swimming pool sweepers; sweeping machines for use in swimming pools are (self-driving) vacuum cleaners intended to collect debris and sediment from swimming pools. These devices mainly consist of a water pump that sucks up water and debris and separates them for cleaning purposes. Therefore, they are highly similar to the opponent’s water pumps, despite having different purposes.

The contested heat pumps [parts of machines] are devices that transfer heat from a colder area to a hotter area by using mechanical energy. The opponent’s water pumps are mechanical devices for raising or moving water. Although both are mechanical devices using suction or pressure to raise or move air (in the case of heat pumps) or liquid (in the case of water pumps), they have different purposes. Their methods of use are also different. They are not in competition with each other or complementary. Moreover, they do not have the same distribution channels and do not target the same users. Therefore, they are dissimilar.

The opponent’s water filtering apparatus are dissimilar to the applicant’s heat pumps [parts of machines], as the opponent’s products are devices through which water is passed to be cleansed or purified. Therefore, these goods have different natures, purposes, distribution channels and publics. They are not in competition or complementary to each other.

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 found to be identical are specialised goods that are not frequently purchased by the public at large, except by gardeners and swimming pool owners. They are mainly directed at business customers (e.g. professional swimming pool cleaners) with specific professional knowledge or expertise. Therefore, the degree of attention may vary from average to high.

3. The signs

Aquamax	AQUAMATIC
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).

Both signs are word marks. In the case of word marks, it is the word as such that is protected, regardless of the way in which it is depicted. Therefore, the fact that the earlier mark is in title case is of no relevance for the purposes of the comparison of the signs.

The element ‘AQUA’, present in both marks, will be associated by the relevant public with ‘water’, as the word ‘AQUA’ is a commonly used Latin word that is also the root of the word for water in several EU languages, such as ‘acqua’ in Italian or ‘agua’ in Spanish. Bearing in mind that the relevant goods are water pumps, filters and water cleaning and purifying apparatus, it is considered that this element is weak for these goods, since it will be seen as referring to the fact that they are for use in relation to and for cleansing water. The public will understand the meaning of the element and will not pay as much attention to this weak element as to the other, more distinctive, elements of the marks. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

Therefore, the earlier mark, ‘AQUAMAX’, would be perceived as a fanciful term composed of the generally known Latin word for water and the word ‘MAX’. The word thereby produced is a pure invention with no recognisable meaning. At most, the element ‘MAX’ could be taken to be an abbreviation for the word ‘maximum’ or understood as an allusion to the forename ‘MAX’, which is widely used throughout the EU, in particular in Germany.

The same applies to the element ‘AQUA’ in the contested sign, ‘AQUAMATIC’. The element ‘MATIC’ is meaningless for the public.

Visually, the signs coincide in their first element, ‘AQUA’, which is weak for the goods in question. The signs also coincide in the letters ‘MA’ of their most distinctive elements. However, they differ in the final letter, ‘X’, of the earlier mark and in the final letters, ‘TIC’, of the contested sign. Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables of the weak element ‛A-QUA’, present identically in both signs, and in the sound of the letters ‘MA’ of their distinctive elements. The pronunciation differs in the sound of the letters ‛X’ of the earlier mark and in the sound of the letters ‘TIC’ of the contested sign, which have no counterparts. The earlier sign has three syllables whereas the contested sign has four, which renders their intonations and rhythms different. Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs are conceptually similar to a low degree.

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 trade mark enjoys a high degree of distinctiveness as a result of its long-standing and intensive use in the European Union. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The Opposition Division has already assessed the evidence submitted to prove the genuine use of the earlier mark in connection with the goods for which it is registered (see ‘Proof of use’ above). Although the evidence was just sufficient to prove the use of the earlier mark, it is clearly insufficient to demonstrate that the earlier trade mark has acquired a high degree of distinctiveness through its use in the European Union as a whole.

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 a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

As is clear from consistent case-law, the global appreciation of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the conflicting signs, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).

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).

The similarity between the signs results from the sequence of letters ‘AQUAMA’. Although generally a consumer normally attaches more importance to the first part of a word, that consideration cannot apply in every case (12/11/2008, T-281/07, Ecoblue, EU:T:2008:489, § 32). In the present case, the public will identify the element ‘AQUA’ within the coinciding sequence of letters; this element is weak for the goods in question and its impact is limited. The remaining verbal elements of the signs enjoy a normal degree of distinctive character; therefore, the public will be capable of perceiving the differences between them and between the signs as a whole.

The different elements are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks, bearing also in mind that the common element, ‘AQUA’, is of limited distinctiveness for the relevant public.

Moreover, the differences between the distinctive elements ‘MAX’ and ‘MATIC’ will be clearly perceived because the relevant public will associate the distinctive element of the earlier sign, ‘MAX’, with the forename ‘Max’ or with the abbreviation for ‘maximum’, while the distinctive element of the contested sign, ‘MATIC’, is meaningless. The differences will be even more easily perceived due to the different numbers of syllables in the signs, which creates different rhythms and intonations.

Account must also be taken of the fact that the goods in question are technical and specialised and the public will pay a high degree of attention when purchasing them. Consequently, even in relation to identical or highly similar goods, the differences between the signs will not be missed due to the high degree of attention of the public.

Therefore, the similarities between the signs concern elements that are weak. The other elements can be differentiated easily on a conceptual level. Consequently, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public.

Considering all the above, even in relation to identical or highly similar goods, there is no likelihood of confusion on the part of the public. 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

Beatrix STELTER

Octavio MONGE GONZALVO

Julia SCHRADER

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.