OPPOSITION No B 2 376 161

Ecowater Systems LLC, 1890 Woodlane Drive, Woodbury, Minnesota 55125, United States of America (opponent), represented by Dla Piper Nederland N.V., Amstelveenseweg 638, 1081 JJ Amsterdam, The Netherlands (professional representative)

a g a i n s t

Combi-Bomba Calor S.L., Pol. Ind. Cintruénigo, Calle I,  13, 31592 Cintruénigo, Spain (applicant), represented by Consultores Urizar & Cia., Gordóniz 22 – 5º, 48012 Bilbao (Vizcaya), Spain (professional representative).

On 10/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 376 161 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 632 121. The opposition is based on European Union trade mark registration No 8 943 771 and on the following trade mark registrations:

• Austrian trade mark registration No 140 002 ECOWATER
• Austrian trade mark registration No 141 242 ECOWATER SYSTEMS
• Benelux trade mark registration No 502 153 ECOWATER
• Benelux trade mark registration No 508 902 ECOWATER SYSTEMS
• Danish trade mark registration No VR1994.01 013 ECOWATER
• Danish trade mark registration No VR1994/08 712 ECOWATER SYSTEMS
• Finnish trade mark registration No 123 789 ECOWATER
• Finnish trade mark registration No 123 791 ECOWATER SYSTEMS
• French trade mark registration No 1 586 813 ECOWATER
• German trade mark registration No 2 023 707 ECOWATER
• Greek trade mark registration No 108 822 ECOWATER
• Greek trade mark registration No 108 821 ECOWATER SYSTEMS
• Hungarian trade mark registration No 134 007 ECOWA TER
• Hungarian trade mark registration No 134 067 ECOWATER SYSTEMS
• Italian trade mark registration No 985 662 ECOWATER
• Italian trade mark registration No 1 463 125 ECOWATER SYSTEMS
• Latvian trade mark registration No M47 157
• Latvian trade mark registration No M44 291 ECOWATER SYSTEMS
• Lithuanian trade mark registration No 37 389 ECOWATER
• Lithuanian trade mark registration No 37 518
• Lithuanian trade mark registration No 37 388 ECOWATER SYSTEMS
• Polish trade mark registration No 77 153 ECOWATER
• Polish trade mark registration No 81 961 ECOWATER SYSTEMS
• Portuguese trade mark registration No 276 358 ECOWATER
• Portuguese trade mark registration No 293 665 ECOWATER SYSTEMS
• Portuguese trade mark registration No 285 908 ECOWATER SYSTEMS
• Romanian trade mark registration No 70 182 ECOWATER
• Spanish trade mark registration No 1 654 040 ECOWATER
• Spanish trade mark registration No 1 704 899 ECOWATER SYSTEMS
• Spanish trade mark registration No 1 704 898 ECOWATER SYSTEMS
• Swedish trade mark registration No 259 387 ECOWATER
• Swedish trade mark registration No 300 288 ECOWATER SYSTEMS
• United Kingdom trade mark registration No 1 420 918 ECOWATER
• United Kingdom trade mark registration No 1 420 916  ECOWATER
• United Kingdom trade mark registration No 1 420 917 ECOWATER
• United Kingdom trade mark registration No 1 417 595 ECOWATER SYSTEMS

The opponent invoked Article 8(1)(b)  EUTMR in respect of all marks.

SUBSTANTIATION

In respect of the following marks:

• Austrian trade mark registration No 140 002 ECOWATER
• Austrian trade mark registration No 141 242 ECOWATER SYSTEMS
• Benelux trade mark registration No 502 153 ECOWATER
• Benelux trade mark registration No 508 902 ECOWATER SYSTEMS
• Danish trade mark registration No VR1994.01 013 ECOWATER
• Danish trade mark registration No VR1994/08 712 ECOWATER SYSTEMS
• Finnish trade mark registration No 123 789 ECOWATER
• Finnish trade mark registration No 123 791 ECOWATER SYSTEMS
• French trade mark registration No 1 586 813 ECOWATER
• German trade mark registration No 2 023 707 ECOWATER
• Greek trade mark registration No 108 822 ECOWATER
• Greek trade mark registration No 108 821 ECOWATER SYSTEMS
• Hungarian trade mark registration No 134 007 ECOWA TER
• Hungarian trade mark registration No 134 067 ECOWATER SYSTEMS
• Italian trade mark registration No 985 662 ECOWATER
• Italian trade mark registration No 1 463 125 ECOWATER SYSTEMS
• Latvian trade mark registration No M47 157
• Latvian trade mark registration No M44 291 ECOWATER SYSTEMS
• Lithuanian trade mark registration No 37 389 ECOWATER
• Lithuanian trade mark registration No 37 518
• Lithuanian trade mark registration No 37 388 ECOWATER SYSTEMS
• Polish trade mark registration No 77 153 ECOWATER
• Polish trade mark registration No 81 961 ECOWATER SYSTEMS
• Portuguese trade mark registration No 276 358 ECOWATER
• Portuguese trade mark registration No 293 665 ECOWATER SYSTEMS
• Portuguese trade mark registration No 285 908 ECOWATER SYSTEMS
• Romanian trade mark registration No 70 182 ECOWATER
• Spanish trade mark registration No 1 654 040 ECOWATER
• Spanish trade mark registration No 1 704 899 ECOWATER SYSTEMS
• Spanish trade mark registration No 1 704 898 ECOWATER SYSTEMS
• Swedish trade mark registration No 259 387 ECOWATER
• Swedish trade mark registration No 300 288 ECOWATER SYSTEMS
• United Kingdom trade mark registration No 1 420 918 ECOWATER
• United Kingdom trade mark registration No 1 420 916  ECOWATER
• United Kingdom trade mark registration No 1 420 917 ECOWATER
• United Kingdom trade mark registration No 1 417 595 ECOWATER SYSTEMS.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the above mentioned earlier national trade marks on which the opposition is based.

On 17/07/2014 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired, after an extension, on 22/09/2016.

The opponent did not submit any evidence concerning the substantiation of the mentioned earlier national trade marks by the deadline given.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these earlier marks.

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 11:         Water treatment equipment, including water conditioners, softeners, deionizers, distillers, filters and related water treatment units and parts thereof.

Class 32:         Bottled drinking water.

Class 35:         Retail outlet services and rental services in the field of domestic and commercial water conditioners and purifiers.

Class 37:        Repair and maintenance services in the field of domestic and commercial water treatment equipment, including water conditioners, softeners, deionizers, distillers, filters and related water treatment units.

The contested goods and services are the following:

Class 7:         Heat pumps (parts of machines); Pumps for heating installations.

Class 11:         Thermal solar panels (heat generators); Electrical storage heaters; Heat pumps; Heat pumps for energy processing.

Class 35:         Representations , import and export agencies; Business management and sale in shops, all the aforesaid relating to thermal solar panels (heat generators), electrical thermal accumulators, heat pumps, heat pumps for energy treatment, heat pumps (parts of machines) and pumps for heating installations.

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 opponent’s list 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).

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 Heat pumps (parts of machines); Pumps for heating installations are heating pumps. The opponent’s goods are water treatment equipment, bottled water, retail services of water conditioners and repair and maintenance of the same. The contested goods have a different nature, purpose and methods of use compared to all the goods and services of the opponent. They have different manufacturers, distribution channels and consumers. The goods are dissimilar.

Contested goods in Class 11

The contested Thermal solar panels (heat generators); Electrical storage heaters; Heat pumps; Heat pumps for energy processing are electrical heaters, energy processing apparatus and solar panels. The opponent’s goods are water treatment equipment, bottled water, retail services of water conditioners and repair and maintenance of the same. The contested goods have a different nature, purpose and methods of use compared to all the goods and services of the opponent. They have different manufacturers, distribution channels and consumers. The goods are dissimilar.

Contested services in Class 35

The contested sale in shops, all the aforesaid relating to thermal solar panels (heat generators), electrical thermal accumulators, heat pumps, heat pumps for energy treatment, heat pumps (parts of machines) and pumps for heating installations are considered similar to the opponent’s Retail outlet services in the field of domestic and commercial water conditioners and purifiers. The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use.

However, the contested Representations, import and export agencies; Business management have a different nature, purpose and target different publics compared to all the goods and services of the opponent. They have different providers or origins, nor do they  coincide in distribution channels. The services are dissimilar.

2. The signs

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The elements ECOWATER SYSTEMS and ECOWATER are commonly used and are understood in part of the EU as English words. This is because ECO- refers to ecological,  WATER refers to clear liquid  and SYSTEMS refers to a set of devices powered by electricity, a set of equipment or parts such as water pipes or electrical wiring, which is used to supply water, heat, or electricity. All these are connected to the goods and services concerned. Therefore these terms are either non-distinctive or weak for this part of the public who understands English, for the relevant goods and services.

However, for the other part of the public, such as the non-English speaking public the terms have no meaning and are distinctive either because the word elements are not understood or because the device elements is stylised and no concept can be clearly attributed to it. The figurative element has only a concept attributed to it in case the words above it are being understood.  The mark is therefore, distinctive.

The Opposition Division will first examine the opposition in relation to the part of the public for which  ECOWATER SYSTEMS and ECOWATER   have no meaning and have a normal degree of distinctiveness.

In the contested sign the element ECOWATER  is less dominant element, due to its smaller size and placement on the second line. The earlier mark, however, does not have any element that is visually more eye-catching than other elements.

Visually, the signs coincide in the word ECOWATER. However, they differ in the stylisation of that word in both marks. The marks further differ in the elements SYSTEMS and CBS, the figurative element of a rippling water puddle in the earlier mark and two rectangles in red and white in the contested mark.

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 earlier sign is pronounced as ECOWATER SYSTEMS and the contested sign as CBC ECOWATER.

The pronunciation of the signs coincides in the pronunciation of the word ECOWATER, present in both signs.  The pronunciation differs in that the common word is pronounced  in a different order in the marks,  and that the pronunciation of the remaining words SYSTEMS and CBC differs.

Therefore, the signs are aurally  similar to a low 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.

3. 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 and 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 for the part of the public that does not understand the meaning of the signs.

4. Global assessment, other arguments and conclusion

The contested goods and services are partially similar and partially dissimilar. The similarities and dissimilarities of the marks have been described in detail above.

The level of attention of the relevant public is higher than average.

The signs are similar only to the extent that they share the word ECOWATER, which is however placed in a different position in the marks.

The signs further differ significantly in the remaining word elements SYSTEMS and CBS, and in their complex and memorable figurative elements and stylisation.

It should be noted that ‘(…) assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components’ (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 41).

These abovementioned differences create visual and aural distance between the signs at issue. The Opposition Division considers that even persons with only an average level of attention will not confuse the marks which in addition to the differences in word elements also lie in the clearly different device elements and overall build up.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally also applies to the part of the public for which the elements ECOWATER and SYSTEMS are non-distinctive or weak. This is because, as a result of the non-distinctive or weak character of these elements, that part of the public will perceive the signs as being even less similar.

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

Cynthia DEN DEKKER

Erkki MÜNTER

Francesca CANGERI SERRANO

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.