OPPOSITION No B 2 592 924

Tratamiento Integral del Agua Hidrosalud, S.L., Avda. Antonio Almela, 33 bajo, 46250 L’Alcudia (Valencia), Spain (opponent), represented by Abril Abogados, C/Amador de los Ríos, 1-1°, 28010 Madrid, Spain (professional representative)

a g a i n s t

Qian Hu Corporation Limited, 71 Jalan Lekar, Singapore 698950, Singapore (applicant), represented by Landmark B.V., Drentsestraat 4, 3812 EH Amersfoort, The Netherlands (professional representative).

On 20/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 592 924 is partially upheld, namely for the following contested goods and services:

Class 11:         Apparatus for purifying water; chlorinating apparatus (water purifying apparatus and machines); water purifying apparatus and machines; aquarium filtration apparatus; installations for purifying water; effluent treatment (purifying) apparatus; protein skimmers being water purification apparatus for aquariums; aeration apparatus; aeration apparatus for use in the filtration of aquaria; apparatus for use in the filtration of aquaria; faucet filters; filtering taps; filtering medium; filtering apparatus for use in aquariums; filters for aquariums; filters for use in aquariums; water filtering apparatus; water filters; apparatus for waste water purification; installations for the purification of waste water; installations for the recycling (purification) of waste water; installations for the treatment of industrial waste water; waste water treatment apparatus; waste water treatment installations; all the aforementioned goods for use in aquaculture.

Class 35:        Retail services in relation to apparatus for purifying water, water purifying apparatus and machines, aquarium filtration apparatus, air filtering apparatus, protein skimmers being water purification apparatus for aquariums; computerized on-line stock ordering featuring general merchandise and general consumer goods in relation to filtration and water purifying apparatus and machines; all the aforementioned services for use in aquaculture

2.        European Union trade mark application No 14 020 515 is rejected for all the above goods and services. It may proceed for the remaining 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 14 020 515, namely against all the goods in Class 11 and some of the services in Class 35. The opposition is based on Spanish trade mark registration No 2 782 968. 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 Spanish trade mark No 2 782 968.

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 24/07/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 24/07/2010 to 23/07/2015 inclusive.

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

Class 11        Reverse osmosis water purifying apparatus.

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 29/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 03/09/2016 to submit evidence of use of the earlier trade mark, which was extended until 03/11/2016. On 02/11/2016, 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:

• Annex 1: technical datasheet in which a type of water purifying apparatus is depicted under the sign as registered (undated document in Spanish without a translation into English). The goods appear as follows: . The purpose of the apparatus, purifying water, is clearly understood from the brochure in which domestic water apparatus is displayed.
• Annex 2: undated promotional brochure in which appears a depiction of the sign as registered (price in euros, document in Spanish).
• Annex 3: advertisements published in the Spanish magazines Saber Vivir (May 2013) and Salud Total (May 2014 and June 2015).
• Annex 4: two promotional videos in which appear goods sold by the opponent.
• Annexes 5-9: several invoices for sales of, inter alia, the product ‘HS HIDROPUR’, in Spanish, issued between 2012 and 2016 by the opponent to different clients in Spain.
• Annexes 10-14: invoices from suppliers addressed to the opponent dated between 2012 and 2016.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, 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 their relevance for the present proceedings, namely, several invoices and a brochure, which are self-explanatory, the Opposition Division considers that there is no need to request a translation. Moreover, the goods on which the opposition is based are included in only one category of goods, which is depicted in the brochure.

The invoices show that the place of use is Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned (euros) and all the addresses on the invoices, which are located in Spain. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period. In particular, most of the sales invoices issued by the opponent (annexes 5 to 9) are dated between 2012 and 2015 and the advertisements shown in annex 3 were published in 2013, 2014 and 2015.

Moreover, the sales invoices along with the other items of evidence, such as the advertisements, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use. The invoices are numerous and refer to significant quantities. Moreover, they are dated regularly within three of the five years that constitute the relevant period. Therefore, they show use of the earlier mark, which can be deemed effective and consistent over time, in addition to being significant (in the light of the figures contained therein).

Along with the other items of evidence, particularly the invoices coming from suppliers (annexes 10 to 14) and the advertisements published in Spanish magazines (annex 3), they show an outward, regular, constant and sufficiently significant use of the mark ‘HIDROPUR’ across a substantial part of the Spanish territory during three years of the five-year period. Therefore, the extent of use is proven.

Finally, the evidence shows that the mark has been used as registered for reverse osmosis water purifying apparatus, that is, for all the goods for which the mark is registered. Therefore, the nature of use has been proven.

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).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

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 on which the opposition is based are the following:

Class 11        Reverse osmosis water purifying apparatus.

The contested goods and services, after a limitation, are the following:

Class 11:         Apparatus for purifying water; chlorinating apparatus (water purifying apparatus and machines); water purifying apparatus and machines; aquarium filtration apparatus; installations for purifying water; effluent treatment (purifying) apparatus; protein skimmers being water purification apparatus for aquariums; aeration apparatus; aeration apparatus for use in the filtration of aquaria; apparatus for use in the filtration of aquaria; faucet filters; filtering taps; filtering medium; filtering apparatus for use in aquariums; filters for aquariums; filters for use in aquariums; water filtering apparatus; water filters; apparatus for waste water purification; installations for the purification of waste water; installations for the recycling (purification) of waste water; installations for the treatment of industrial waste water; waste water treatment apparatus; waste water treatment installations; all the aforementioned goods for use in aquaculture.

Class 35:         Retail services in relation to apparatus for purifying water, water purifying apparatus and machines, aquarium filtration apparatus, filter aids for liquid purification, filtering materials [chemical preparations], chemical preparations (pharmaceutical) for the treatment of fish in aquarium water, food and medicinal supplements for animals, water filters, air filtering apparatus, protein skimmers being water purification apparatus for aquariums, aquarium tanks and hoods; the bringing together, for the benefit of others, a variety of goods, namely aquarium and pet products (excluding the transport thereof), enabling customers to conveniently view and purchase those goods in a retail store, a general merchandise web site in the global communications network or from a general merchandise catalogue by mail order or by means of telecommunications or through online shopping services via a global computer network; computerized on-line stock ordering featuring general merchandise and general consumer goods in relation to filtration and water purifying apparatus and machines, food and medicinal supplements for fish and animals, aquarium tanks and hood; all the aforementioned services for use in aquaculture.

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 11

The contested apparatus for purifying water, chlorinating apparatus (water purifying apparatus and machines); water purifying apparatus and machines; effluent treatment (purifying) apparatus; protein skimmers being water purification apparatus for aquariums; apparatus for waste water purification; waste water treatment apparatus; all the aforementioned goods for use in aquaculture overlap with the opponent’s reverse osmosis water purifying apparatus. Therefore, they are identical.

The contested installations for purifying water; installations for the purification of waste water; installations for the recycling (purification) of waste water; installations for the treatment of industrial waste water; waste water treatment installations; all the aforementioned goods for use in aquaculture include, as broader categories, the opponent’s goods or overlap with them. Therefore, they are identical.

The contested aquarium filtration apparatus; apparatus for use in the filtration of aquaria; filtering apparatus for use in aquariums; water filtering apparatus; aeration apparatus; aeration apparatus for use in the filtration of aquaria; all the aforementioned goods for use in aquaculture and the opponent’s goods are manufactured by the same manufacturers and have the same distribution channels. They also have the same nature (apparatus for use in water treatment). Therefore, they are similar.

The contested faucet filters; filtering taps; filtering medium; filters for aquariums; filters for use in aquariums; water filters are similar to the opponent’s reverse osmosis water purifying apparatus. These goods are complementary. Furthermore, they can be manufactured by the same companies and have the same distribution channels. Therefore, they are similar.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retail services in relation to apparatus for purifying water, water purifying apparatus and machines, aquarium filtration apparatus, air filtering apparatus, protein skimmers being water purification apparatus for aquariums; computerized on-line stock ordering featuring general merchandise and general consumer goods in relation to filtration and water purifying apparatus and machines; all the aforementioned services for use in aquaculture are similar to a low degree to the opponent’s reverse osmosis water purifying apparatus.

The contested retail services in relation to filter aids for liquid purification, filtering materials [chemical preparations], chemical preparations (pharmaceutical) for the treatment of fish in aquarium water, food and medicinal supplements for animals, water filters, aquarium tanks and hoods; the bringing together, for the benefit of others, a variety of goods, namely aquarium and pet products (excluding the transport thereof), enabling customers to conveniently view and purchase those goods in a retail store, a general merchandise web site in the global communications network or from a general merchandise catalogue by mail order or by means of telecommunications or through online shopping services via a global computer network; computerized on-line stock ordering featuring general merchandise and general consumer goods in relation to food and medicinal supplements for fish and animals, aquarium tanks and hood; all the aforementioned services for use in aquaculture and reverse osmosis water purifying apparatus are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are only similar or are dissimilar.

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 and services found to be identical or similar are specialised goods and services directed at business customers with specific professional knowledge or expertise. The contested goods and services are technical and specialised, while the opponent’s goods target the general public. Therefore, the relevant public for the contested goods, made up of specialist professionals who are extremely well informed, will pay close attention to the supplier and the brand in question when selecting the goods and services in question.

The degree of attention is considered above average, given the highly complex nature of the goods and services and their health-related purpose.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 figurative mark containing the word ‘HIDROPUR’ written in white upper case letters. The letters ‘HIDRO’ are bold whereas the letters ‘PUR’ are much thinner. The verbal element is depicted against an oval orange background.

The contested sign is a figurative mark containing the words ‘HYDRO’ and ‘PURE’ linked with a hyphen. Underneath, the word ‘TECHNOLOGY’ is written in smaller and thinner letters. The words are in the centre of a dark circle of various shades with three clockwise-pointing arrows around the circle.

‘Hidro’ means ‘water’ in Spanish (information extracted from online dictionary at http://dle.rae.es/) and is commonly used as a prefix to denote a relationship with water; therefore, the elements ‘HIDRO’ and ‘HYDRO’ of the marks will be perceived as meaningful by the Spanish public. The goods and services in question are all related to water. Therefore, the distinctiveness of these elements is low.

The element ‘PUR’/‘PURE’, present in the signs, will be understood as corresponding to the Spanish word ‘puro’ (equivalent to the English ‘pure’) and also has a limited distinctiveness for the relevant goods and services, since they all have the purpose of purification or relate to goods that have such a purpose.

The combination of the elements ‘HY(I)DRO’ and ‘PUR(E)’ will be associated with the idea of pure water. Bearing in mind that the goods are apparatus for filtering and purifying water, and that the retail services relate thereto, it is considered that the combination of those elements has a limited distinctive character, that is, below average.

The element ‘TECHNOLOGY’ in the contested sign is also weak because it will be associated with the Spanish word ‘tecnología’, which suggests that a certain technology has been applied in the manufacturing process.

Moreover, the element ‘TECHNOLOGY’ is written in small letters and has a secondary position. Furthermore, 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. Consequently, the element ‘HYDRO-PURE’ is the element that has the most impact and is the most eye-catching.

The earlier mark has no element that could be considered clearly more dominant than other elements, even though the string of letters ‘HIDRO’ is written in bold and may be slightly more eye-catching.

Visually, the signs coincide in the sequence of the seven letters ‘H*DRO/PUR’, present in both signs. However, they differ in the second letters of this sequence, ‘I’ versus ‘Y’, and in the last letter, ‘E’, of this sequence in the contested sign. Moreover, they differ in the additional word, ‘TECHNOLOGY’, of the contested sign, which is seen as weak and secondary.

They also differ in their figurative elements. However, 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). Therefore, the public will pay more attention to the verbal elements ‘HIDROPUR’, in the earlier mark, and ‘HYDRO-PURE’, in the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘HI/YDROPUR’, since the difference in the second letters, ‘Y’ in the earlier mark and ‘I’ in the contested sign, has no aural significance according to Spanish pronunciation rules. The pronunciation of the coinciding element differs in the additional letter, ‘E’, of the contested sign, which has no counterpart in the earlier mark. However, given that this difference is situated at the end of the signs, its relevance is limited. Finally, bearing in mind the secondary position of the word ‘TECHNOLOGY’, it is more than likely that the public will not pronounce it. Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as the combination of the elements ‘HY/IDRO’ and ‘PUR(E)’ and bearing in mind the secondary position of the element ‘TECHNOLOGY’ in the contested sign, the signs are conceptually similar to a high 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.

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as below average, despite the presence of weak 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).

In the present case, the signs are similar to an average degree from the visual perspective and to a high degree from the aural and conceptual perspectives. Although they differ in their graphical depictions, including the figurative elements, as explained above, in principle, the verbal components of signs have a stronger impact on the consumer than the figurative elements. Therefore, the elements ‘HIDROPUR’ and ‘HYDRO-PURE’ will have a stronger impact on the consumer than the figurative elements of the signs. Moreover, the verbal element ‘TECHNOLOGY’ is less eye-catching, as it is depicted in smaller letters and is of weak distinctiveness.

Account is taken of the fact that 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). Therefore, it is considered likely that consumers will confuse the contested sign with their imperfection recollection of the earlier mark. This holds true even for the services that are similar to a low degree to the opponent’s goods: in accordance with the interdependence principle, it has to be considered that the degree of similarity between the signs is sufficient to offset the low degree of similarity between the goods and services.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registration.

It follows that the contested trade mark must be rejected for the goods and services found to be identical and similar (including to a low degree) to the goods 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 goods 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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Marine DARTEYRE

Julie GOUTARD

Loreto URRACA LUQUE

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.