AQUALEAD | Decision 2576695 - FCC AQUALIA, S.A. v. INDUSTRIAL WATER MANAGEMENT
Date Published: Sep 25, 2017
OPPOSITION No B 2 576 695
FCC Aqualia, S.A., C/ Federico Salmón 13, 28016 Madrid, Spain (opponent), represented by Garrigues IP, S.L.P., C/Hermosilla 3, 28001 Madrid, Spain (professional representative)
a g a i n s t
Industrial Water Management, 24 Espace Henry Vallée, Parc de l'Artillerie, 69007, Lyon, France (applicant), represented by Cabinet Fedit-Loriot, 38, avenue Hoche, 75008 Paris, France (professional representative).
On 31/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 576 695 is upheld for all the contested goods and services.
2. European Union trade mark application No 13 921 739 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 921 739. The opposition is based on 1) European Union trade mark registration No 2 788 800 and 2) European Union trade mark registration No 10 530 831 for the word marks ‘AQUALIA’ and 3) Spanish trade mark registration No 2 355 509 for the figurative mark . The opponent invoked Article 8(1)(b) and 8(5) 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 goods and services
The goods and services on which the opposition is based are the following:
Earlier mark 1
Class 7: Machines and machine tools; cranes (lifting and hoisting apparatus).
Class 9: Scientific, surveying, weighing apparatus and instruments.
Class 32: Beers; fruit drinks and fruit juices; syrups and other preparations for making beverages.
Class 35: Representative services for machinery, vehicles and mechanical equipment; services relating to the promotion, management and operation of waste-treatment plants and stations.
Class 36: Collection management services.
Class 37: Installation, assembly and repair of machinery, vehicles and mechanical equipment; construction, installation and repair of waste recovery or disposal treatment stations, plants and equipment.
Class 39: Supply, storage and distribution of machinery, vehicles, mechanical and electric equipment; supply, provision and distribution of fuel gases.
Class 40: Water treatment services, recycling of waste and rubbish, information relating to the treatment of material, treatment of waste, selection of rubbish and raw materials for recovery.
Class 42: Services relating to the drawing up of reports, studies and projects.
Earlier mark 2
Class 35: Meter reading services; Business management and Customer management.
Class 37: Preservation, repair, maintenance and detection of leaks in water and sewage networks; Preservation, repair, maintenance and detection of leaks in water purification plants, sanitisation and cleaning, remediation, disinfecting, fumigation and rat exterminating, in buildings, premises, woodland and gardens, sewage, water networks and purification plants; Maintenance and repair of electric and electronic equipment and installations; Maintenance and repair of plumbing fixtures and equipment and water pipes.
Class 39: Management of the integral cycle of water, namely, Warehouse storage, Transport and distribution of water.
Class 41: Providing sports facilities, swimming pools, sports halls and leisure and recreation centres.
Class 42: Analysis and control of drinking water and sewage.
Earlier mark 3
Class 39: Transport, packaging and storage of goods except baths and bath (bubbles bath), electrical bathroom radiators, shower enclosures, installations of saunas and transportable cabins for Turkish baths, especially water distribution.
After a limitation the contested goods and services are the following:
Class 1: Chemicals for the treatment of water and liquid and/or solid waste, namely flocculants, coagulants, polyelectrolytes, reagents; Chemicals and additives for the conditioning of water, namely biocides, bio detergents, anti-corrosion preparations, softeners, chemical agents for the conditioning of boiler water, tanks of metal, heating equipment and installations, cooling and refrigerating equipment and installations, water supply equipment and installations, thermal condensers and other installations having pipes and pipework; Oxidising preparations for the purification, sterilisation and disinfection of liquids, in particular for the treatment of water and the preservation of foodstuffs; Chemicals used in industry or in industrial manufacturing processes.
Class 5: Chemicals used as biocides for preventing the growth of algae, bacteria and microorganisms in cooling and refrigerating equipment and installations, water supply equipment, thermal condensers and other installations having pipes and pipework.
Class 9: Apparatus for measuring and injecting of chemicals and of biological and physicochemical reagents; Electrical apparatus and instruments for generating oxidisers; Parts for the aforesaid apparatus.
Class 39: Delivery, depositing and storage of chemicals.
Class 40: Treatment of water, treatment of water by the addition of reagents, in particular in water for human or animal consumption and water for industrial use, sanitation and treatment of industrial waste water.
Class 42: Scientific and industrial research services relating to environmental protection; computer programming, information technology services, namely development, design and updating of computer software and computer software packages, providing of websites and servers, technical consultancy and advice relating to research and development of new products in the field of information technology, design of computer systems and telecommunications systems; Engineering in the field of industrial information systems (automation, monitoring, control and centralised technical management, decision-making systems, systems for the management of operational data).
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 ‘in particular’, used in the applicant’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).
However, the term ‘namely’, used in the applicant’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.
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.
Moreover, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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.
Contested goods in Class 1
It is clear from the wording of the contested chemicals for the treatment of water and liquid and/or solid waste, namely flocculants, coagulants, polyelectrolytes, reagents; chemicals and additives for the conditioning of water, namely biocides, bio detergents, anti-corrosion preparations, softeners, chemical agents for the conditioning of boiler water, tanks of metal, heating equipment and installations, cooling and refrigerating equipment and installations, water supply equipment and installations, thermal condensers and other installations having pipes and pipework; oxidising preparations for the purification, sterilisation and disinfection of liquids, in particular for the treatment of water and the preservation of foodstuffs that these are all chemicals used in water and waste treatment. Thus, although the nature of the conflicting goods and services differs, the applicant’s goods in Class 1 are closely linked to the opponent’s water treatment services, recycling of waste and rubbish in Class 40 of earlier mark 1 in so far as these services depend on the use of chemicals in order to be rendered properly. In addition, it is commonplace for undertakings offering such services to use their own chemicals in order to operate on the market. Consequently, there is a functional complementarity between those goods and services, which, by their common purpose, belong to the field of water and waste treatment. In addition, their distribution channels and points of sale may coincide (14/07/2004, R 137/2004-1, METALEX / METALEST). Therefore, these goods and services are similar.
The contested chemicals used in industry or in industrial manufacturing processes of class 1 is a very broad category of goods which includes the more specific chemical goods of Class 1 compared above. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, contrary to the applicant’s arguments, they must be considered similar to the opponent’s services in Class 40 of earlier mark 1 for the same reasons given above in respect of those more specific goods.
Contested goods in Class 5
The contested chemicals used as biocides for preventing the growth of algae, bacteria and microorganisms in cooling and refrigerating equipment and installations, water supply equipment, thermal condensers and other installations having pipes and pipework of Class 5 are all chemicals used for the conditioning of cooling and heating installations and other installations having pipes and pipework. As such they are indispensable for rendering the opponent’s sanitisation and cleaning, remediation, disinfecting, fumigation in sewage, water networks and purification plants in Class 37 of earlier mark 2. Given their highly specialised field of application, these chemicals are marketed by the same companies that offer the opponent’s services. Consequently, the conflicting goods and services may be regarded as complementary. Moreover, these goods and services are aimed at the same public and use the same distribution channels. They are therefore similar.
Contested goods in Class 9
The contested apparatus for measuring and injecting of chemicals and of biological and physicochemical reagents; electrical apparatus and instruments for generating oxidisers overlap with the broad category of the opponent’s scientific apparatus and instruments covered by earlier mark 1 to the extent that they are used for scientific purposes. Therefore, they are identical.
The contested parts for the aforesaid apparatus [apparatus for measuring and injecting of chemicals and of biological and physicochemical reagents; electrical apparatus and instruments for generating oxidisers] are similar to the opponent’s scientific apparatus and instruments covered by earlier mark 1, since the end products are such highly technical goods that their parts are often produced and/or sold by the same undertaking that manufactures the end product. Moreover they target the same purchasing public, namely those consumers using this particular equipment, and will be distributed through the same sales channels.
Contested services in Class 39
The contested delivery, depositing and storage of chemicals are included in the broad category of the opponent’s transport, packaging and storage of goods except baths and bath (bubbles bath), electrical bathroom radiators, shower enclosures, installations of saunas and transportable cabins for Turkish baths, especially water distribution covered by earlier mark 3, since the goods excluded from the opponent’s services are not chemicals. Therefore, they are identical.
Contested services in Class 40
The contested treatment of water, treatment of water by the addition of reagents, in particular in water for human or animal consumption and water for industrial use, sanitation and treatment of industrial waste water are included in the broad category of the opponent’s water treatment services covered by earlier mark 1. Therefore, they are identical.
Contested services in Class 42
The contested scientific and industrial research services relating to environmental protection and the opponent’s services relating to the drawing up of reports, studies and projects covered by earlier mark 1, overlap to the extent that the latter provision of reports, studies and projects is part of scientific and industrial research relating to environmental protection. Therefore, these services are identical.
The contested computer programming, information technology services, namely development, design and updating of computer software and computer software packages, providing of websites and servers, technical consultancy and advice relating to research and development of new products in the field of information technology, design of computer systems and telecommunications systems; engineering in the field of industrial information systems (automation, monitoring, control and centralised technical management, decision-making systems, systems for the management of operational data) and the opponent’s services relating to the drawing up of reports, studies and projects covered by earlier mark 1 can coincide in origin, since the applicant’s programming, engineering and IT consultancy services may be offered by the same undertakings that offer the opponent’s reports, studies and projects. For example, computer programmers or IT consultants commonly offer feasibility studies or projects and report on the development of certain software or hardware. As a consequence, they can have the same purpose and insofar as the contested services do not form an integral part of the opponent’s services, they are at least complementary since computer programming or consulting usually goes hand in hand with research and/or reporting. Moreover, they target the same public and will be offered through the same distribution channels. Therefore, these services are at least similar.
- 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 mainly targeting professionals working in the field of water and waste treatment but to some extent also target the general public, since water-treating services and chemicals used for that purpose may be aimed at anyone who, for example, wishes to improve the quality of water in his own home. In any case, whether the public is a professional one or not, the level of attention will be high considering that the goods and services either have an impact on the environment and the consumers’ health, or as far as the services in class 42 are concerned, they are costly and of a highly specialised nature.
- The signs
AQUALIA Earlier marks 1 and 2 Earlier mark 3 | AQUALEAD |
Earlier trade marks | Contested sign |
The relevant territories are the European Union (earlier marks 1 and 2) and Spain (earlier mark 3).
As regards earlier marks 1 and 2 it should be noted that 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). Since this means that 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, for reasons of economy of proceedings, the Opposition Division will focus on the Spanish-speaking part of the public only, considering that it can examine all earlier marks at once with regard to one territory.
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).
Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory under analysis, they all have the element ‘AQUA’ at their beginning which means ‘water’ in Latin and will be understood by the Spanish-speaking public due to its close equivalent in Spanish, ‘agua’. Therefore, ‘AQUA’ will be perceived by the Spanish (speaking part of the) public as indicating that the goods and services are somehow related to water. Although this term may not be directly descriptive of the characteristics of all goods and services at hand, as is the case for the goods and services used for the purification of water, it must be considered at least allusive of their field of application and, consequently, has no distinctive character, or a limited distinctive character.
The applicant argues that the marks’ endings differentiate the marks conceptually. However, this argument cannot succeed. The English word ‘LEAD’ will not be understood by a significant part of the Spanish(-speaking part of the) public and ‘Lia’ cannot be considered a common or popular feminine first name in Spain. Therefore, it is unlikely that this ending will be perceived as a name. Hence, only the common word ‘AQUA’ will evoke a concept. However, this common concept can result, at most, in a low degree of similarity in so far as it has some distinctive character. To the extent that it is fully descriptive of the goods and services, it has no impact conceptually considering that the relevant public will mainly perceive it as a reference to one of their characteristics and not as an indication of the commercial origin in any of the marks.
Visually, the signs coincide in the letter sequence ‘AQUAL*A*’. They differ in their sixth letter being an ‘I’ in the earlier marks and an ‘E’ in the contested sign, as well as the additional last letter of the contested sign, i.e. the letter ‘D’. With respect to earlier mark 3, they also differ in this mark’s additional figurative element. Although the element ‘AQUA’ is non-distinctive or weak and, therefore, has less impact than the endings, it must be observed that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23), and generally pays more attention to the beginning of marks. Therefore, considering that the word element is the more outstanding and, consequently, the dominant element of earlier mark 3, and that the differences in the marks’ verbal elements are few and are located at the least noticeable part of the signs, the differences between the signs are not enough to counteract the similarities in respect of all the other letters that make up the larger parts of the signs at issue. Hence, overall, the marks are visually similar to an average degree.
Aurally, the marks are similar to the extent that they are pronounced in four syllables, namely ‘A-QUA-LI-A’ and ‘A-QUA-LE-AD’, the first two of which sound identical, and the two last sound similar due to the shared letters ‘L’ and ‘A’ at the beginning of these syllables. Although they differ in the letters ‘I’ versus ‘E’ respectively and the last letter ‘D’ of the contested sign, it must be noted that these differences have very little impact, the ‘I’ and ‘E’ both being vowels following an identical consonant (L) and the ‘D’ being a soft consonant which, due to its location at the end of the mark, is not stressed and hardly audible. Therefore, overall, the marks produce a highly similar rhythm and intonation in the Spanish language.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier marks
The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.
According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory under analysis. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of a non-distinctive or weak element in the marks as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The risk that the relevant public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion. The existence thereof must be appreciated globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22), in particular the degree of similarity between the trade marks and between the goods or services covered, the distinctiveness of the earlier mark (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19-20), and also the likelihood of association between the signs (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods or services may be offset by a lower degree of similarity between the marks, and vice versa (see to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528§ 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).
As has been concluded above, the earlier marks as a whole have a normal degree of inherent distinctiveness. Furthermore, the contested goods and services were found identical or similar to those of the earlier marks and are directed at a public whose level of attention is high. The marks in dispute have been found to be visually similar to an average degree and aurally similar to a high degree. Conceptually, they show a low degree of similarity in so far as the common element ‘AQUA’ is merely allusive of the goods and services and, in so far as it describes their characteristics, it has no impact conceptually.
The applicant argues that the element ‘AQUA’ is weak and, therefore, has little impact. Although the Opposition Division agrees that the distinctive character of the different elements of a mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others in that assessment and, in any event, cannot undermine the principle that the examination of the similarity of the marks must take into account the overall impression produced by those marks, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C-251/95, ‘Puma/Sabèl’, EU:C:1997:528, § 23). In the case at issue, it is of particular relevance that the marks’ beginnings are identical and the endings similar, especially when taking into account that, in general, consumers pay greater attention to the beginnings of a mark.
Moreover, although the distinctive character of the earlier marks must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving earlier marks containing an element of weak distinctive character on the one hand, and a trade mark applied for which is not a complete reproduction of it, on the other, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T-112/03, ‘Flexi Air’, EU:T:2005:102, § 61).
In light of all the foregoing considerations, and also taking into account that also highly attentive consumers need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54), it must be held that the small differences in the second and, therefore, lesser noticeable part of the signs, are not sufficient to rule out a likelihood of confusion considering that these are less prominent or eye-catching than the more striking and more numerous similarities and considering that
Therefore, it must be concluded that the Spanish(-speaking part of the) public is likely to confuse the marks or believe that the goods or services in question come from the same undertaking or, as the case may be, economically linked undertakings. 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.
Therefore, the opposition is well founded on the basis of 1) European Union trade mark registration No 2 788 800, 2) European Union trade mark registration No 10 530 831 and 3) Spanish trade mark registration No 2 355 509. It follows that the contested trade mark must be rejected for all the contested goods and services.
The applicant refers to a previous decision of the Office to support its arguments, namely decision B 2 030 552 of 17/12/2013 concerning the marks AQUALUZ / AQUALIA. However, this case has no bearing on the current proceedings. Firstly, the Office is not bound by its previous decisions. Each case has to be dealt with separately and with regard to its particularities on the basis of the EUTMR and not on the basis of the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Secondly, the previous case referred to by the applicant is not comparable with the present case, since the endings of the marks in the cased referred to, i.e. ‘LUZ’ versus ‘LIA’, were far more different than those in the present proceedings, ‘LUZ’ ending with the rare consonant ‘Z’ and not with two common vowels like the ending ‘LIA’. As a consequence, ‘A-QUA-LUZ’ is pronounced in three and ‘A-QUA-LI-A’ in four syllables. However, in the current proceedings the marks in dispute end with a combination of two vowels ‘-LEA*’ versus ‘-LIA’, and merely differ in the additional ‘D’ of the contested mark which, due to its soft pronunciation and location at the end of the mark, is hardly audible and not that noticeable. Moreover, in the case referred to, the marks were found conceptually not similar - ‘LUZ’ having a clear meaning in Spanish - while in the present case, for the reasons explained above, neither of the signs has a meaning as a whole.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their reputation as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.
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
Sam GYLLING | Adriana VAN ROODEN | Frédérique SULPICE |
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.