OPPOSITION No B 2 655 689

DPG Deutsche Pfandsystem GmbH, Luisenstr. 46, 10117 Berlin, Germany (opponent), represented by K&L Gates LLP, Markgrafenstraße 42, 10117 Berlin,  Germany (professional representative)

a g a i n s t

Viešoji įstaiga Užstato sistemos administratorius, Jogailos g. 4, 01116 Vilnius, Lithuania (applicant), represented by Metida law firm Zaboliene and Partners, Business center Vertas Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).

On 21/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 655 689 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 481 519. The opposition is based on European Union trade mark registration No 4 564 993. 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 goods and services

The goods and services on which the opposition is based are the following:

Class 6:        Packaging of sheet metal, in particular partitioned packaging; beverage cans; bottle caps and bottle closures of metal.

Class 9:        Automatic recycling and sorting machines for packaging, in particular disposable packaging.

Class 16:        Packaging, in particular disposable packaging of paper, cardboard or plastic; drinks packaging, included in class 16; pouches, sacks and bags of paper or plastic and foils for the packaging and storage of waste.

Class 20:        Bottle caps and bottle closures of plastic; packaging containers and packaging material of paper or paper coated         with plastic

Class 21:        Bottles.

Class 35:        Waste management, technical waste consultancy and public relations, advertising.

Class 39:        Transport (removal) and storage of waste and recycling materials; recycling of empty disposable packaging and disposable packaging containers; collection, acquisition, transport and intermediate storage of beverage containers; operating a deposit system (labelling, collection, acquisition, transportation and intermediate storage of drinks containers).

Class 40:        Recycling of waste and rubbish; sorting of drinks containers.

Class 42:        Development and implementation of recycling systems for different types of packaging materials, of different sizes and origins, for different uses and from different sites, with regard to technical matters; engineering with regard to the development and implementation of recycling, treatment, use and waste disposal concepts for materials of all kinds; conducting security procedures to prevent the falsification of disposable packaging; technological services.

The contested services are the following:

Class 35:        Organisation and management of empty bottle collection and recycling; Consultancy relating to collection and recycling of empty bottles and waste; Public relations services; Advertising.

Class 40:        Waste management services [recycling]; Recycling of waste and trash; Sorting of waste and recyclable material [transformation]; Sorting of drinks containers; Treatment of waste materials; Destruction of waste; Treatment and recycling of packaging; Information, advice and consultancy services relating to the recycling of waste and trash.

Class 42:        Technological consultation services; Development and implementation of concepts in the field of technical engineering relating to the recycling, treatment, recovery and disposal of all kinds of materials and waste; Certification of participants involved in deposit systems for disposable beverage packaging; Certification of participants involved in quality standards or testing, implementation of security procedures for preventing the copying of disposable packaging, and identifying users of deposit systems for disposable beverage packaging; Management of disposable beverage packaging tracking systems, namely recording of automated calculations and measurements for beverage containers.

Some of the contested services are identical to services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark.

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 deemed to be identical are directed partly at the public at large but mainly at business customers with specific professional knowledge or expertise in the fields of treatment and waste recycling, advertisement, technological consultation and public relations.

The public’s degree of attentiveness may vary from average to high, depending on the price, terms and conditions and frequency of use of the contracted services.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is 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 earlier mark is a figurative mark consisting of a simple silhouette of a bottle with the top and a can, both depicted in black, whereas the can is placed in the front of the bottle on its left side. These two elements are joined by a curved arrow, which starts at the bottom right side of the bottle and with its straight part underlines the whole composition.

The contested sign is also a figurative mark including a silhouette of a bottle and a half circle shaped arrow, which starts at its bottom and ends just above the top of the bottle, both in black and framed by a black rectangular line.

Both signs include elements which are symbols used throughout the whole European Union to denote the recycling process/services respectively are placed on the items to be recycled such as a bottle (a glass or plastic container with a narrow neck, used for storing drinks or other liquids), a can (a small in general aluminium container in drinks or food is hermetically sealed for storage over long periods), a curved resp. half-circle shaped arrow. Considering that all the goods covered by the earlier mark are different types of packaging and parts thereof and that the relevant services are related to the recycling of packaging products, and that the advertising, public relations services and technological consultation services may focus on recycling activities, it is considered that all these elements are weak for all the goods and services at hand. The rectangular line framing the depiction of the bottle and the half-circled shaped arrow in the contested sign is creating an impression of a label and will be perceived as a purely decorative element.

Since all elements in the two signs are considered weak, none of them has elements which could be considered clearly more distinctive than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the raw appearance of one of their figurative elements, namely the bottle. They differ, in the depiction of the arrow, since the one in the contested sign has an irregular shape (wider at the bottom, narrower at the top) and starts at the bottom of the bottle and finishes just over its top, pointing down while creating an impression of a half-circle, whereas the arrow in the earlier mark starts at the right side of the bottle, is curved at first (from right to left) but its biggest part is straight, is underlying the whole composition and pointing left. Moreover, the earlier mark includes also a depiction of a can, and the contested sign includes a rectangular line framing the two above mentioned elements and creating an impression of a label. There are no counterparts of these elements in the other sign respectively. Hence, the visual impression created by all elements in the two signs is quite different.

Therefore, the signs are similar to a very low degree.

Purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.

Conceptually, the public in the relevant territory will perceive the figurative elements of the earlier sign as a can, a bottle and a slightly bended arrow. The figurative elements in the contested sign will be perceived as a bottle and an arrow in a half-circular shape placed within a rectangular black line. As already mentioned above, a bottle, a can and a curved arrow refer in general to ‘recycling’ throughout the whole relevant territory.

To the extent that both marks contain representations of a bottle and arrows that can be perceived as referring to ‘recycling’, the signs are conceptually similar to at least an average degree. However, since all the elements included in both marks have been found weak, the conceptual similarity has a minimal impact in the comparison of the signs at hand.

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 claimed the following ‘…the earlier trademark is especially well known to the public as the sign for non-refillable bottle or cans which can be recycled in Germany…’. Even if this sentence was meant as the claim of an enhanced distinctiveness, the opponent did not file any evidence in order to prove such a claim within the time limit granted to substantiate the opposition, which in the case at hand expired on 28/06/2016. For the sake of completeness, the Opposition Division notes that the opponent furnished proof of use of its trade mark on 21/11/2016. Even if the documents submitted in order to prove that the earlier mark has been used, would include evidence of enhanced distinctiveness, it was presented after the expiry of the abovementioned time limit and as such it cannot be taken into account.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods and services in question, namely in Classes 6, 9, 16, 20, 21, 35, 39, 40 and 42.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Moreover, 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).

In the case at hand, the goods and services were assumed to be identical and are directed at the public at large and professionals whose degree of attention is deemed average to high.

The signs in question coincide in the presence of a bottle and an arrow, but the graphical representation of these elements is quite different. The bottles have a different shape; the one of the earlier mark has a top whereas the one in the contested sign is without. The arrows used in the marks are visually very different as they are in different positions, have different forms and point in different directions. The signs also differ in the depiction of a can in the earlier mark and the graphical stylisation of the contested mark, where the two elements (the bottle and the arrow) are framed by a black rectangular line, creating an impression of a label.

Although it is true that the signs were found to be conceptually similar to the extent that they both contain representations of a bottle and arrows, and that both will evoke a concept of recycling, this similarity is counterbalanced by the fact that all the elements in both marks are considered weak in relation to the goods and services at issue as explained in section c) of this decision. Consequently, the impact of these weak elements is limited when assessing the likelihood of confusion between the marks at issue.

Hence, taking into account the low degree of inherent distinctiveness of the earlier mark, the very low degree of a visual similarity, the different overall impression and the weak character of the coinciding figurative elements, the Opposition Division considers that the relevant consumers who are considered to be reasonably well informed and reasonably observant and circumspect, will be able to safely distinguish between the signs and will not believe that the services at issue, assumed to be identical, come from the same undertaking or economically linked undertakings.

Considering all the above, even assuming that the services at issue are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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

Sigrid DICKMANNS

Renata COTTRELL

Martin EBERL

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.