ECO STAR | Decision 2670803

Date Published: Sep 24, 2017

OPPOSITION No B 2 670 803

MHG Heiztechnik GmbH, Brauerstr. 2, 21244 Buchholz, Germany (opponent), represented by Heissner & Struck Rechtsanwälte Partnerschaft mbB, Hudtwalckerstr. 11, 22299 Hamburg, Germany (professional representative)

a g a i n s t

S.C. Ecoinstal IT Consult S.R.L., Str.Fagarasului, Bloc 12, Scara 2, Ap. 26, Reghin, jud. Mures, Romania (applicant), represented by S.C. Weizmann Ariana & Partners Agentie de Proprietate Intelectuala S.R.L., str. 11 Iunie, nr. 51, sc. A, etaj 1, ap. 4, sector 4, 040171 Bucuresti, Romania (professional representative).

On 24/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 670 803 is partially upheld, namely for the following contested goods and services:

Class 11:        Heat pumps; floor-heating systems; installations for cooling and heating water; installations for cooling and heating air; ceiling-mounted cooling installations; solar energy powered ventilation apparatus; ventilation apparatus with heat recovery; swimming pool heating systems equipped with heat pumps; sanitary installations.

Class 35:        Retailing and wholesaling of heat pumps, installations for heating water, enabling customers to conveniently view and purchase those goods through wholesale or retail stores, via mail order catalogues or via electronic media, via websites.

Class 37:        Consultancy relating to the installation of heating and solar apparatus; Installation and repair of heating and solar apparatus.

2.        European Union trade mark application No 14 881 346 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 14 881 346 , namely against all the goods and services in Classes 11 and 37 and some of the goods and services in Classes 35 and 42. The opposition is based on German trade mark registration No 39 905 509 for the word mark ‘ECOSTAR’. 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 German trade mark registration No 39 905 509 on which the opposition is based.

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 22/01/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 22/01/2011 to 21/01/2016 inclusive.

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

Class 7:        Pumps (machines) and / or pumps for heating systems as well pump units consisting thereof; all the aforesaid goods not for household sector, except: boiler and accessories for central heating systems.

Class 11:        Boilers; gas boilers; burners; oil burners; gas burners as well as boiler-burner units consisting thereof and components thereof, namely control accessories for water or gas appliances; Boiler; hot water tank.

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 03/11/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 08/01/2017 to submit evidence of use of the earlier trade mark. On 04/01/2017, 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:

• Affidavit of the Head of Quality Management at MHG Heiztechnik GmbH: it is stated that ‘ECOSTAR comprises oil-heating as well as gas−heating systems for use in small and large housing units’ and that ‘Since the 1990s, MHG Heiztechnik GmbH uses ECOSTAR in Germany for: boiler, burner, boiler-burner units consisting of boiler, burner, control units, waste gas heat-exchanger (ECOSTAR Series 200-750, gas or oil units) and boiler−burner units consisting of boiler, burner, control units, waste gas heat−exchanger and heating pumps (ECOSTAR Series Hybrid). This document also shows figures related to sales in Germany for 2011-2015 for the following products: ‘ECOSTAR’ Series 700, ‘ECOSTAR’ Series 500 and the burner-boiler units of the ‘ECOSTAR’ Series Hybrid;

• Packaging labels for boilers, burner-boiler units and heating/heat pump systems in German/English;

• Pictures of the specification plate and a translation thereof for the following products as used in Germany: boilers, burner-boiler units and heating/heat pump systems: these plates all bear the mark ‘ECOSTAR’ and are affixed to the boilers ‘ECOSTAR’ or the boiler-burner units / hybrid units ‘ECOSTAR’. As far as boiler-burner units are concerned, these also comprise control accessories as well as pumps for heating systems. These documents are not dated.

• Pictures showing the labelling of the casings bearing the brand ‘EcoStar’ on boiler-burner units: the mark ‘ECOSTAR’ appears together with the mark ‘MHG’ and other words, such as ‘HYBRID’ as follows:  or : These pictures are not dated.

• Instruction and installation manuals, flyers, catalogues, brochures, advertisings, spare part price lists showing the mark ‘ECOSTAR’ and others used in Germany in 2011-2015. In particular the mark ‘ECOSTAR’ appears in those documents as follows: , , , , , , , .

• Invoices and delivery notes for ‘ECOSTAR’ products delivered to customers in Germany from 2011 to 2015: the products are boiler, burner, boiler-burner units consisting of boiler, burner, control units, waste gas heat−exchanger (ECOSTAR Series 200-750, gas or oil units) and boiler−burner units consisting of boiler, burner, control units, waste gas heat−exchanger and heating pumps (ECOSTAR Series Hybrid) in 2011-2015

The manuals, flyers, catalogues, brochures, advertisings and invoices show that the place of use is Germany. This can be inferred from the language of the documents and some addresses in Germany. Therefore, the evidence relates to the relevant territory.

All of the evidence is dated within the relevant period.

The documents filed, namely the Affidavit, the invoices and the delivery notes, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Taking into account the evidence in its entirety, it is considered that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

The evidence shows that the mark has been used as registered. The applicant argues that in some documents, ‘the denomination ECOSTAR is written in rather small letters, hard to be observed and it is not perceived as a trademark, an indication of the origin of the goods from one undertaking. Rather the depiction of “MHG” is perceived as the “trademark associated with the goods” and the denomination “ECOSTAR” as the type of goods in question’. He also noted that ‘“ECOSTAR” is mentioned on the packaging as the type of products’ and ‘that may lead the consumer to believe that “ECOSTAR” is a type of product and not a trademark in itself’. The Opposition Division does not share this point of view. As argued by the opponent, some pictures of the products show the labelling and those clearly bear the element ‘ECOSTAR’ in an independent manner. Other items of evidence, such as the manuals, flyers, catalogues and brochures show that ‘ECOSTAR’ is used as a mark covering a specific line of products.

It is quite common in some market areas for goods and services to bear not only their individual mark, but also the mark of the business or product group (‘house mark’). In these cases, the registered mark is not used in a different form, but the two independent marks are validly used at the same time. There is no legal precept in the European Union trade mark system that obliges the opponent to provide evidence of the earlier mark alone when genuine use is required within the meaning of Article 42 EUTMR. Two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (T-463/12, MB, EU:T:2014:935, § 43). It is common practice in the trade to depict independent marks in different sizes and typeface, so these clear differences, which emphasise the house mark, indicate that two different marks are used jointly but autonomously (decision of 07/08/2014, R 1880/2013-1, HEALTHPRESSO/PRESSO, § 42). Therefore, it is considered that the fact that the goods bear the marks ‘MHG’ and ‘ECOSTAR’ at the same time, does not alter the distinctive character of the latter. Other terms or numbers, such as ‘Hybrid’, ‘Oil and gas unit’, ‘Oil Heating Unit’, ‘500’, ‘520’, ‘522’, … are also used together, but all will be perceived as purely technical and/or descriptive information that does not alter the distinctive character of the earlier mark as registered.

Furthermore, the use of colours, being merely decorative, plays only a minor role and, therefore, does not affect the distinctive character of the sign as registered. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (judgment of 22/05/2008, T 254/06, ‘RadioCom’, paragraph 43). Therefore, it is also irrelevant whether the sign is represented in lower or upper case letters.

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.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case the evidence shows genuine use of the trade mark for the following goods:

Class 7:        Pumps for heating systems; all the aforesaid goods not for household sector, except: boiler and accessories for central heating systems.

Class 11:        Boilers; gas boilers; burners; oil burners; gas burners as well as boiler-burner units consisting thereof and components thereof, namely control accessories for water or gas appliances.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 7:        Pumps for heating systems; all the aforesaid goods not for household sector, except: boiler and accessories for central heating systems.

Class 11:        Boilers; gas boilers; burners; oil burners; gas burners as well as boiler-burner units consisting thereof and components thereof, namely control accessories for water or gas appliances.

The contested goods and services are the following:

Class 11:        Heat pumps; floor-heating systems; installations for cooling and heating water; installations for cooling and heating air; ceiling-mounted cooling installations; solar energy powered ventilation apparatus; ventilation apparatus with heat recovery; swimming pool heating systems equipped with heat pumps; sanitary installations.

Class 35:        Retailing and wholesaling of solar panels, heat pumps, under-floor heating systems, installations for cooling and heating water, installations for cooling and heating air, ceiling-mounted cooling installations, enabling customers to conveniently view and purchase those goods through wholesale or retail stores, via mail order catalogues or via electronic media, via websites; retailing and wholesaling of solar energy powered ventilation apparatus, ventilation apparatus with heat recovery, swimming pool heating systems equipped with heat pumps, sanitary installations, enabling customers to conveniently view and purchase those goods through wholesale or retail stores, via mail order catalogues or via electronic media, via websites.

Class 37:        Consultancy relating to the installation of heating, cooling and solar apparatus; Installation and repair of heating, cooling and solar apparatus; water plumbing supplies; maintenance, servicing and repair of apparatus and installations for generating electrical energy.

Class 42:        Technical design relating to sanitary apparatus and installations; technical consultancy services.

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 ‘namely’, used in the opponent’s list of goods in Class 11 to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

As a preliminary remark, 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.

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 installations for […] heating water include, as a broader category, or overlap with, the opponent’s boiler-burner units consisting thereof [gas burners]. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested heat pumps are for example part of air conditioners and freezers but also apply to many HVAC (heating, ventilating, and air conditioning) devices used for space heating or space cooling. These goods are similar to the opponent’s burners as they may coincide in producers, end users and distribution channels.

A similar reasoning applies to the contested floor-heating systems; installations for cooling […] water; installations for cooling and heating air; ceiling-mounted cooling installations; solar energy powered ventilation apparatus; ventilation apparatus with heat recovery; swimming pool heating systems equipped with heat pumps as these goods are also HVAC devices. These goods are similar to the opponent’s burners as they may coincide in producers, end users and distribution channels.

The contested sanitary installations have some connections with the opponent’s pumps for heating systems; all the aforesaid goods not for household sector, except: boiler and accessories for central heating systems in Class 7. Indeed, these goods coincide in producers, end users and distribution channels. Therefore, they are similar to a low degree.

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 retailing and wholesaling of heat pumps, enabling customers to conveniently view and purchase those goods through wholesale or retail stores, via mail order catalogues or via electronic media, via websites are similar to a low degree to the opponent’s pumps for heating systems; all the aforesaid goods not for household sector, except: boiler and accessories for central heating systems of Class 7. It must be noted that the heat pumps involved in the contested retail and wholesale services can be classified in Class 11 but also in Class 7 when they are parts of machines. Therefore, it is considered that heat pumps overlap with pumps for heating systems of Class 7. A low degree of similarity is found because the goods involved in the retail or wholesale services and the specific goods covered by the other mark are identical.

The contested retailing and wholesaling of installations for […] heating water, enabling customers to conveniently view and purchase those goods through wholesale or retail stores, via mail order catalogues or via electronic media, via websites are similar to a low degree to the opponent’s boiler-burner units consisting thereof of Class 11.

However, the remaining contested services and the opponent’s goods in Classes 7 and 11 are dissimilar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Sales 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 or wholesale 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 not identical.

Contested services in Class 37

Advisory, consultancy and information services are in principle always similar, or even identical, to the goods to which they relate when it is common in the market for the manufacturer of the relevant goods to provide such information services.

The contested consultancy relating to the installation of heating apparatus is similar to the opponent’s boilers in Class 11 because the public will perceive that they may coincide in the commercial origin, the end users and the distribution channels.

Since goods and services have a different nature, similarity between goods and their installation, maintenance and repair can only be established when it is common in the relevant market sector for the manufacturer of the goods to also provide such services, when the relevant public coincides and when the installation, maintenance and repair of these goods are provided independently of the purchase of the goods (not aftersales services). These conditions apply as regards the contested installation and repair of heating […] and solar apparatus when compared to the opponent’s boilers of Class 11. These goods may coincide at least in the commercial origin, in the end users and in the distribution channels. These goods and services are similar.

A similar reasoning applies to consultancy services in a relevant market when a manufacturer may also provide such services independently of the purchase of the goods. In this case, the contested consultancy relating to the installation of solar apparatus is considered similar to the opponent’s boilers in Class 11 taking into account also that some boilers are solar apparatus. These goods and services may coincide in the commercial origins, end users and distribution channels.

At the contrary, the contested installation and repair of cooling apparatus; water plumbing supplies; maintenance, servicing and repair of apparatus and installations for generating electrical energy are not related to heating and, therefore, have no sufficient connection with the opponent’s goods in Classes 7 and 11. They do not coincide in nature, purpose and method of use. They also differ in the commercial origin, the end users and the distribution channels. They are neither complementary nor in competition. These goods and services are dissimilar.

The contested consultancy relating to the installation of cooling apparatus is also dissimilar to the opponent’s goods in Classes 7 and 11 because none of the latter is related to cooling apparatus. They do not coincide in nature, purpose and method of use. They also differ in the commercial origin, the end users and the distribution channels. They are neither complementary nor in competition.

Contested services in Class 42

The contested technical design relating to sanitary apparatus and installations; technical consultancy services are dissimilar to the opponent’s goods in Classes 7 and 11. They do not coincide in nature, purpose and method of use. They also differ in the commercial origin, in the end users and in the distribution channels. They are neither complementary nor in competition between each other.

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 to different degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, or terms and conditions of the purchased goods and services.

3. The signs

ECOSTAR
Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

As regards the earlier mark, although it is composed of one verbal element, it must be recalled that the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58).

Even though consumers normally perceive a mark as a whole and do not proceed to analyse its various details, it can be reasonably assumed that the relevant public will perceive the earlier mark as being composed of two meaningful verbal elements, namely ‘ECO’ and ‘STAR’.

In fact, the inherent distinctiveness of these elements is weak in both signs insofar as they both refer to certain characteristics of the relevant goods and/or services; more specifically ‘eco’ provides information on their ecological and environmental friendly nature and ‘star’ is a laudatory term that emphasises their excellent quality.

The General Court has already held that ‘STAR’, common to both marks, is part of the basic English vocabulary generally known by a large part of the public in the European Union, including the German public. Accordingly, the General Court has held that the English word ‘STAR’ is generally understood as a laudatory term which emphasises the quality or as a reference to a star or a famous person (07/07/2015, T521/13, A ASTER / A-STARS, EU:T:2015:474, § 45, 48 and the case law cited therein). However, it does not precisely describe the goods and services, but it is only allusive giving the goods and services a positive connotation. Thus, this element is not considered entirely as lacking distinctive character, (10/09/2014, T-0199/13, STAR (Fig.) / STAR LODI (Fig.), § 68).

As regards the word ‘ECO’ included in both signs, it must be added that it does not exist as such in German: its German equivalent is ‘ÖKO’ and not ‘ECO’. However, the word ‘ECO’ still has a low degree of distinctiveness because it is an internationally well-known prefix referring to ‘ecological’.

Although the font size of the word ‘ECO’ in the contested sign is larger than that of the word ‘STAR’, the latter is still very visible. It is considered that the contested sign has no elements that could be considered clearly more dominant (eye-catching) than other elements.

The figurative elements placed at the left of the contested sign consist of three spheres of different colours connected between them with a circular arrow. Part of the relevant public will perceive three different planets following an orbit symbolised by the arrow. Part of the public will not associate the spheres with a clear concept. In such cases, these elements are distinctive because they do not indicate any characteristics or qualities of the goods and services. Nevertheless, some consumers could also grasp these figurative elements as a symbolic representation of the global warming of the planet Earth. For those consumers, these elements are weak because they evoke that the contested goods and services include technical solutions for this ecological problem.

In any case, 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).

Visually, the signs coincide in all their letters, namely ‘ECO()STAR’. However, they differ as regards the contested sign in the figurative elements as well as in the colour and the layout in two lines of its verbal elements.

Therefore, even though ‘ECO’ and ‘STAR’ are weak, the coincidences between the signs are so important that the signs must be considered visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables /E−CO−STAR/, present identically in both signs.

Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The conceptual differences between the signs are only due to the possible concepts associated to the figurative elements of the contested sign.

Therefore, the signs are conceptually highly similar.

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 mark, taken as a whole, has no clear meaning for any of the goods in question in the relevant territory and thus will be seen as an invented word with an average degree of distinctiveness. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of weak components in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services are partly identical or similar to different degrees and partly dissimilar. The relevant goods and services are directed at the public at large and at business customers with specific professional knowledge or expertise and the public’s degree of attentiveness may vary from average to high.

The signs are visually similar to an average degree, aurally identical and conceptually similar to a high degree. The earlier mark, taken as a whole, has an average degree of distinctiveness, despite the presence of weak components in the mark. As regards the low distinctiveness of the elements of the signs, it is pointed out that it is only one of the factors relevant to the circumstances of the case. In fact the weak distinctive character of an element of a mark does not necessarily imply that that element will not be taken into account by the relevant public, if it has a significant impact to its dimension or position (see 10/07/2012, T-135/11, Cloralex, EU:T:2012:356, § 35 and 36, confirmed by 30/01/2014, C 422/12 P, Cloralex, EU:C:2014:57).

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).

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). Consequently, the low degree of similarity between some goods and services is offset by a greater degree of similarity between the marks.

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 German trade mark registration No 39 905 509 ‘ECOSTAR’.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to different degrees to those of the earlier trade mark.

Some 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 services 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

Boyana NAYDENOVA

Benoit VLEMINCQ

Adriana VAN ROODEN

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.