OPPOSITION No B 2 765 587

Aqua Viva d.o.o., Preserska cesta 4, 1235 Radomlje, Slovenia (opponent), represented by Marjan Delić, Grajska ulica 3, 3210 Slovenske Konjice, Slovenia (professional representative)

a g a i n s t

S.C. Trading srl, via pietramarina 65, 50059 vinci, Italy (applicant)

 

On 21/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 765 587 is upheld for all the contested goods, namely 

Class 11:         Water purifying apparatus; filters for water purifiers; water purifiers for industrial use; water purifiers for household purposes.

2.        European Union trade mark application No 15 487 879 is rejected for all the contested goods. It may proceed for the remaining 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 15 487 879 namely against all the goods of Class 11. The opposition is based on, inter alia, Slovenian trade mark registration No 201 470 369. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Slovenian trade mark registration No 201 470 369.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 11: Lighting apparatus; steam generators; cooking appliances; cooling apparatus; desiccating apparatus; ventilation [air-conditioning] installations and apparatus; beverage cooling apparatus; cooking utensils, electric; electric lamps; electric coffee percolators; electric fans for personal use; waffle irons, electric; deep fryers, electric; burners; heating installations; cookers; microwave ovens [cooking apparatus]; water softening apparatus; cooling appliances and installations; Ionization apparatus for the treatment of air or water; bread toasters; hot air ovens; ice machines and apparatus; hair dryers; hand drying apparatus for washrooms; plate warmers; ventilation hoods; roasting spits; barbecues; grills [cooking appliances]; water filters; water filtering apparatus; filters for drinking water; filters for water purifiers; water treatment filters; electrostatic filters for water filtration; filters for use with apparatus for water supply; air filters; filters for air conditioning; filters for air extractor hoods; dust cyclone filters; dust filters; filters for industrial installations; reverse osmosis filtration units [water treatment equipment]; steam sterilizers; fabric steamers.

The contested goods are the following:

Class 11: Water purifying apparatus; filters for water purifiers; water purifiers for industrial use; water purifiers for household purposes.

The contested filters for water purifiers are identically contained in both lists.

The contested water purifying apparatus; water purifiers for industrial use; water purifiers for household purposes include, as a broader category, the opponent’s reverse osmosis filtration units [water treatment equipment], which serve to purify water. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

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 directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention varies from average to high depending on the degree of specialisation of the goods in question.

3. The signs

AQUA VIVA
Earlier trade mark	Contested sign

The relevant territory is Slovenia.

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 earlier mark is a word mark composed of the words ‘AQUA’ and ‘VIVA’.

The contested sign is a figurative mark composed of the word elements ‘Aqua Vives’. A green capital letter ‘V’ is placed on the first letter ‘A’. On top of the letter ‘a’ half a circle is depicted and on top of the letter ‘V’ next to it three small circles in different sizes, which – in the context of the goods – may be perceived as water bubbles. The sign is depicted in various shades of blue and green. The sign does not contain elements that are more visually eye-catching than others.

As regards the distinctive character of the verbal elements of the signs, the expressions ‘AQUA VIVA’ of the earlier mark and ‘Aqua Vives’ of the contested sign do not exist as such in the language spoken in the relevant territory. It must, however, be recalled that the relevant public may perceive the contested sign as being composed of different elements, in particular when one of the parts has a clear and evident meaning.

In this regard, the element ‘AQUA’, present in both marks, will be understood as ‘water’ by all the relevant consumers in Slovenia. The element ‘AQUA’ is a common Latin word, ‘which the European Union consumer may be assumed to know’ (see, to that effect, 28/11/2013, T-410/12, vitaminaqua, EU:T:2013:615, § 57, and 28/01/2015, T-123/14, AquaPerfect, EU:T:2015:52, § 34). Bearing in mind that the relevant goods are for water purification, it is considered that this element is weak for both the opponent’s and the applicant’s goods in Class 11 as it describes their characteristics. The public understands 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.

The elements ‘VIVA’ of the earlier mark and ‘Vives’ in the contested sign, which – due to its stylisation and colour in the contested sign – will be seen as an independent element, have no meaning for the relevant public. Therefore, these elements are considered more distinctive than the element ‘AQUA’.

Visually and aurally, the signs are similar to the extent that they coincide in ‘AQUA VIV*(*)’, seven letters out of eight and nine respectively and included in the same order, sequence and rhythm. However, they differ in the last letter ‘A’ of the earlier mark and the last letters ‘ES’ of the contested sign and all its figurative elements on a visual level. It must be noted that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. It follows that the identical beginnings of the marks – even if they are considered weak – are an important factor to be taken into account when assessing the visual similarity between them.

Furthermore, the principle has been established that, 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; 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Considering all the above, it is concluded that the signs are visually and aurally similar to an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘AQUA’, included in both signs, will be associated with ‘water’ by all the relevant consumers in Slovenia. Although the signs are therefore conceptually similar, the significance and weight of the term ´AQUA´ has been already discussed above. The attention of the public will be attracted by the fanciful terms ‘VIVA’ and ‘Vives’.

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 in relation to any of the goods at hand 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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Account must be also 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 with 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).

As concluded above, the contested goods are identical to the opponent’s goods. They target the public at large and professionals with a degree of attention that varies from average to high. Furthermore, the earlier mark as a whole enjoys a normal degree of inherent distinctiveness for the relevant goods.

The signs are visually and aurally similar to an average degree due to the sequence of letters, ‘AQUA VIV*(*)’ that they have in common. The differences between the signs are limited to their last letters ‘A’ and ‘ES’ and to the graphic depiction of the contested sign, which may even reinforce the meaning of ‘AQUA’ (water) due to its colours and water bubbles. While it is true that ‘AQUA’ has been found weak in relation to the goods, both marks are distinctive in their entirety, ‘AQUA VIVA’ versus ‘Aqua Vives’.

Therefore, the Opposition Division is of the opinion that – even taking into account the stylisation of the contested sign – these differences are not sufficient to counteract the similarities between the signs. It is considered that even the public with a higher degree of attention may be confused about the origin of the goods in question.

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

Therefore, the opposition is well founded on the basis of the opponent’s Slovenian trade mark registration No 201 470 369. It follows that the contested mark must be rejected for all the contested goods.

As the aforesaid earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Ioana MOISESCU

Cynthia DEN DEKKER

Jessica LEWIS

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.