OPPOSITION No B 2 687 450

Waterax Inc., 6635 Henri-Bourassa West, Montreal, Quebec H4R 1E1, Canada (opponent), represented by Manitz Finsterwald Patentanwälte PartmbB, Martin-Greif-Str. 1, 80336 München, Germany (professional representative)

a g a i n s t

Aquarden Technologies ApS, Industrivej 17, 3320 Skævinge, Denmark (holder), represented by Plougmann Vingtoft A/S, Rued Langgaards Vej 8, 2300 Copenhagen, Denmark (professional representative).

On 12/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 687 450 is partially upheld, namely for the following contested goods:

Class 11:        Water and waste water purifying apparatus and machines; purification installations for sewage; biological reactors for clarifying industrial effluents; water purification, desalination and conditioning installations; water filtering apparatus; regulating and safety accessories for water purification installations.

2.        International registration No 1 260 445 is refused protection in respect of the European Union for all of the above goods. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of international registration designating the European Union No 1 260 445. The opposition is based on European Union trade mark registration No 12 734 125. 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.

a)        The goods and services

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

Class 7:        Pumps; centrifugal pumps; water pumps.

Class 9:        Firefighting apparatus; fire pumps; fire hoses; fire hose nozzles; firefighting equipment, namely, portable water tanks, portable centrifugal pumps, and self-contained firefighting units comprised primarily of water and fire retardant reservoirs, hoses, nozzles and piping, pumps and pump engines for use as portable operating payloads on land vehicles.

Class 35:         Retail and gross retail services, including those via the internet, with respect to the following goods: Pumps, centrifugal pumps, water pumps, Firefighting apparatus, fire pumps, fire hoses, fire hose nozzles, firefighting equipment, namely, portable water tanks, portable centrifugal pumps, and self-contained firefighting units comprised primarily of water and fire retardant reservoirs, hoses, nozzles and piping, pumps and pump engines for use as portable operating payloads on land vehicles.

The contested goods and services (after limitation) are the following:

Class 11:        Water and waste water purifying apparatus and machines; purification installations for sewage; biological reactors for clarifying industrial effluents; water purification, desalination and conditioning installations; water filtering apparatus; regulating and safety accessories for water purification installations.

Class 37:         Installation, repair and maintenance of water and waste water purifying apparatus and machines as well as purification installations for sewage.

Class 42:        Professional advisory services and consultancy regarding technology, including purification of water and waste water as well as regarding purification installations for sewage; technical consultancy regarding purification of water and waste water as well as purification installations for sewage.

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 holder’s and opponent’s lists of services, indicates that the specific 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).

However, the term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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.

In its observations, the holder argues that ‘the opponent’s clients are wildland firefighters, agencies and governments […] whereas the holder’s clients are companies with organic and xenobiotic wastewater in industries like pharmaceutical, chemical, and biotech industries, landfill operations and hospitals’.

The Opposition Division is of the opinion that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T 487/08, Kremezin, EU:T:2010:237, § 71).

Contested goods in Class 11

The contested water and waste water purifying apparatus and machines; purification installations for sewage; biological reactors for clarifying industrial effluents; water purification, desalination and conditioning installations; water filtering apparatus; regulating and safety accessories for water purification installations coincide with the opponent’s pumps in Class 7 in their distribution channels, producers and relevant publics.

Therefore, the goods under comparison are similar to a low degree.

The holder, in its letter of 22/03/2017, requested to delete the phrase ‘parts and fittings to all the mentioned goods (not included in other classes)’ from Class 11. According to the holder by deleting it from the list of goods in Class 11 ‘we have made it even clearer, that there is no risk of confusion between the two trade marks’. The Opposition Division is of the opinion that this fact does not change the outcome of the above comparison as the opponent’s pumps in Class 7 are similar to a low degree to the holder’s goods in Class 11 due to the aforementioned similarities. It should be highlighted that pumps appear in various classes of the Nice Classification.

Contested services in Class 37

The contested installation, repair and maintenance of water and waste water purifying apparatus and machines as well as purification installations for sewage are dissimilar to the opponent’s goods and services. They differ in their natures, intended purposes, methods of use, distribution channels and consumers. In addition, they are neither complementary nor in competition.

Contested services in Class 42

The contested professional advisory services and consultancy regarding technology, including purification of water and waste water as well as regarding purification installations for sewage; technical consultancy regarding purification of water and waste water as well as purification installations for sewage are also dissimilar to the opponent’s goods and services. They differ in their natures, intended purposes, methods of use, distribution channels and consumers. In addition, they are neither complementary nor in competition.

b)        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.

The goods found to be similar to a low degree are highly specialised products and are directed at customers with specific professional knowledge or expertise, and also at the general public (e.g. for pumps). The degree of attention may vary from average to high, because some of the goods are technical, rather expensive and purchased infrequently (and would therefore receive a higher than average degree of attention).

c) The signs

WATERAX	WATEROX
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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

Both signs are word marks, namely ‘WATERAX’ (earlier mark) and ‘WATEROX’ (contested sign).

The relevant public can break these verbal elements down into separate words, namely ‘water’ and ‘ax’ /‘ox’.

The word ‘water’ would mean ‘an odorless, tasteless, very slightly compressible liquid’ (information extracted from Merriam Webster on 06/06/2017 at www.merriam-webster.com/dictionary/water), which will be perceived as allusive to the goods concerned. The remaining elements have meanings in English, as described by the holder: ‘AX’ is ‘a tool that has a heavy metal blade and a long handle and that is used for chopping wood’ (information extracted from Merriam Webster on 06/06/2017 at www.dictionary.com/browse/ax) and ‘OX’ is ‘a cow or bull’ (information extracted from Merriam Webster on 06/06/2017 at www.merriam-webster.com/dictionary/ox). However, in the present case, taking into account the relevant goods, the Opposition Division finds it unlikely that the relevant public will associate these verbal elements with the meanings described above and finds that they will rather be seen as fanciful suffixes.

In its observations, the holder argues that ‘in the EUIPO’s register there are currently 871 applications or registrations containing the word WATER in either class 7, class 9 or class 35’. In the holder’s opinion, the earlier trade mark therefore has a low degree of distinctiveness. In support of its argument, the holder refers to several trade mark registrations for European Union trade marks and international trade marks.

The Opposition Division notes that the existence of trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘WATER’. Under these circumstances, the holder’s claims must be set aside. Even if the consumer had been exposed to many marks that contain the word WATER, this does not lead to the conclusion that ‘WATERAX’ has a low degree of distinctive character.

Visually, the signs coincide in the letters ‘WATER*X’. In addition, the signs are the same length (i.e. seven letters). However, the conflicting signs differ in their second-last letters, namely ‘A’ in the earlier mark and ‘O’ in the contested sign.

Therefore, the signs are visually highly similar.

Aurally, the signs coincide in the letters ‘WATER*X’ and the only difference concerns their second-last letters, namely ‘A’ in the earlier mark and ‘O’ in the contested sign.

The pronunciation of both marks will be very similar (i.e. length, rhythm and intonation).

Therefore, the signs are aurally highly similar.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘water’, included in both signs, will be associated with the meaning explained above. To that extent, the signs are conceptually similar below average.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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 normal, despite the presence of an allusive element in the mark as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

As has been concluded above, all the goods are similar to a low degree, and the signs are similar from all three aspects of the comparison (i.e. visually and aurally highly similar and conceptually similar below average). Furthermore, the earlier mark as a whole is of normal distinctiveness in relation to the relevant goods.

In addition, account is 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 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Even if the attention of the relevant public is higher, the Opposition Division finds that the differing vowels, ‘a’ and ‘o’, cannot outweigh the similarities between the signs.

The first element ‘water’ of the earlier mark is identically included in the contested sign (also as its first part), and their suffixes are almost identical, that is, ‘AX’ in the earlier mark and ‘OX’ in the contested sign which means that the overall impression of the signs is highly similar.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public described above and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 12 734 125. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to a low degree to those 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)(b) EUTMR, the opposition based on this article and directed at these services cannot be successful.

The Opposition Division notes that the holder refers to a previous decision of the Office to support its arguments (i.e. 16/09/2015, B 2 435 876). However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T 281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous case referred to by the holder is not relevant to the present proceeding. In the decision of 16/09/2015, B 2 435 876, the factual circumstances were different from those of the present case, namely different goods and services were compared.

Also the opponent refers to some previous decisions of the Office (e.g. 03/01/2011, B 1 610 347 and 15/04/2011, B 1 592 347) to support its arguments. The rules and practice of the Office presented in the latter paragraphs shall apply accordingly. Therefore, the above arguments of the opponent have to be set aside.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Lynn BURTCHAELL

Michal KRUK

Ana MUÑIZ RODRÍGUEZ

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.