OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
Opposition Division
OPPOSITION No B 2 067 638
PHP “HYDRO” Eugeniusz & Arkadiusz Dobron, Ul. Gronowska 4 A, 64-100 Leszno,
Poland (opponent), represented by Biuro Techniczno-Patentowe Kancelaria
Rzecznikowska, ul. Niemcewicza 15, 64-000 Kościan, Poland (professional
representative)
against
Hydropath Holdings Ltd, Unit 7b, The Midway, Nottingham, Notts NG9 1HB, United
Kingdom (applicant), represented by Forresters, Rutland House, 148 Edmund Street,
Birmingham B3 2JA, United Kingdom (professional representative)
On 26/08/2013, the Opposition Division takes the following
DECISION:
1.
Opposition No B 2 067 638 is upheld for all the contested goods.
2.
Community trade mark application No 10 923 341 is rejected in its entirety.
3.
The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods of Community trade mark
application No 10 923 341. The opposition is based on Community trade mark
registration No 8 889 041. The opponent invoked Article 8(1)(b) CTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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
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.
Decision on Opposition No B 2 067 638
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The goods on which the opposition is based are the following:
Class 9: Control cabinets, apparatus and instruments for monitoring, measuring,
research, testing, regulating and controlling pumps and systems therefor,
hydrophores and hydrophore systems, sewage pumping stations, sewage
compressors, purification installations for sewage, water treatment plants, nautical
instruments for controlling and monitoring pump systems, software for visualising and
controlling industrial processes.
The contested goods are the following:
Class 9: Control and transducer units all fitted to water pipes for removing and
preventing limescale; for treating biofouling; for flocculation.
The contested control and transducer units all fitted to water pipes for removing and
preventing limescale; for treating biofouling; for flocculation are apparatus and
instruments which are used to remove impurities from water by sending electric
signals through the liquid. As a consequence, flocculation of small dirt particles
occurs and limescale and biofouling are avoided.
The opponent’s goods cover various goods related to the treatment of water
including, among others, control cabinets, apparatus and instruments for cleaning
water, e.g. in water treatment plants.
The comparison of the goods and services must be based on the wording indicated
in the lists of goods and/or services (see judgment of 16/06/2010, T-487/08,
‘Kremezin’, paragraph 71). The wording of the applicant’s specification does not
indicate that its goods are only for small-scale or domestic use. Therefore, it cannot
be ruled out that these goods form a functioning part of the opponent’s water
treatment plants, which are also intended for the removal of impurities from water.
The goods have the same nature and purpose and can be directed at the same
public. Therefore, these goods are considered to be similar to a high degree.
b)
The signs
HYDRO FLOW
Earlier trade mark
Contested sign
The earlier sign is composed of the two words ‘HYDRO’ and ‘FLOW’. It is a word
mark, and, thus, it is the word itself which is protected and not its written form.
Therefore, it is immaterial whether the earlier mark is represented in lower or upper
case letters.
The contested sign is a figurative mark composed of the word ‘Hydro’ followed
without a space by the word ‘FLOW’. The word ‘Hydro’ is presented in Times New
Roman Italic title case letters, while the word ‘FLOW’ is in Arial Black upper case
letters.
Decision on Opposition No B 2 067 638
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The relevant territory is the European Union.
Visually, the signs are similar to the extent that they both contain the words
‘HYDRO’ and ‘FLOW’. They differ in the typeface, which is a specific one in the
contested sign. Furthermore, they differ in that in the earlier mark the two words are
perceived as separate words owing to the space between them, while in the
contested sign they are perceived as independent words on account of their different
typefaces.
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territory, the signs are pronounced identically.
Conceptually, in several languages, such as Czech, German, English, French and
Dutch, the prefix ‘hydro’ of Greek origin indicates water, liquid or fluid. This word will be
understood in several other languages due to its similarity to the equivalent word (e.g.
hüdro in Estonian, idro in Italian, hidro in Lithuanian and Latvian). In some languages,
such as Finnish, Slovenian or Croatian, it will not be understood at all.
In English, and in relation to liquids, the word ‘flow’ means to move or be conveyed in a
stream. In several languages, such as Czech, Estonian, Italian, Lithuanian, Latvian,
Romanian, Slovenian, Slovak or Croatian, this word will not be understood.
In the part of the relevant territory where neither the element ‘hydro’ nor the element
‘flow’ has a meaning, the signs have no concept in common. For the public that only
understands the element ‘HYDRO’, the signs are conceptually identical to this extent,
whereas, for the public that understands the meaning of both elements (e.g. the
English-speaking part), the signs are conceptually identical.
Taking into account the abovementioned visual, aural and, for a part of the public,
also conceptual coincidences, it is considered that the signs under comparison are
similar to a very high degree.
c)
Distinctive and dominant elements of the signs
In determining the existence of likelihood of confusion, the comparison of the
conflicting signs must be based on the overall impression given by the marks,
bearing in mind, in particular, their distinctive and dominant components.
The marks under comparison have no elements which could be considered clearly
more distinctive than other elements.
The element ‘hydro’, contained in both marks, will be associated by a part of the
relevant public with water or a liquid. A part of the relevant public will understand the
word ‘flow’ in connection with liquids as their movement. Bearing in mind that the
relevant goods are apparatus and instruments which deal with water and, thus,
facilitate its flow, it is considered that these elements, when understood, are weak for
these goods.
For the part of the relevant public (e.g. the English-speaking part) that understands
the meaning of both elements, they are both weak. The part of the public (e.g. the
Czech-, French-, Latvian- or Lithuanian-speaking part) that only understands the
element ‘HYDRO’ will not pay as much attention to this weak element as to the other,
more distinctive, element, ‘FLOW’, of the mark. Consequently, for this part of the
public, the impact of the weak element is limited when assessing the likelihood of
Decision on Opposition No B 2 067 638
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confusion between the marks at issue. For a part of the public (e.g. Finnish-,
Slovenian- or Croatian-speaking part), neither of these two words has a meaning and
the signs have no weak elements.
The marks under comparison have no elements which could be considered clearly
more dominant (visually eye-catching) than other elements.
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 claimed that the earlier trade mark enjoys enhanced
distinctiveness/reputation in Poland but did not file any evidence in order to prove
such a claim.
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 in question
for a part of the relevant public, namely the English-speaking part. The mark has a
normal degree of distinctiveness for another part of the relevant territory (such as
Finland, Slovenia and Croatia), where it has no meaning in relation to the goods in
question.
e)
Relevant public – level 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 level of attention is likely to vary
according to the category of goods or services in question.
In the present case, the opponent’s goods are directed at professionals in the water
treatment sector and purchased infrequently. The applicant’s goods are directed at
the general public and the professional public in the water treatment sector. The level
of attention of the professional public at the moment of purchase is deemed to be
high.
f)
Global assessment, other arguments and conclusion
The contested goods are similar to a high degree to goods of the opponent.
The signs are aurally identical. They are visually similar to a very high degree, as
they are made up of the same verbal elements and differ only in their graphical
representation.
Indeed, for part of the relevant public, the common identical elements of the marks,
‘HYDRO’ and ‘FLOW’, are weak, but for another part of the public (such as the
Finnish-, Slovenian- and Croatian-speaking part) they will be normally distinctive. In
this respect, it should be noted that it is a result of the unitary character of the
Community trade mark, laid down in Article 1(2) CTMR, that an earlier Community
Decision on Opposition No B 2 067 638
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trade mark has identical protection in all Member States. Earlier Community trade
marks may therefore be relied upon to challenge any subsequent application for a
trade mark which would prejudice their protection, even if this is only in relation to the
perception of consumers in part of the European Community. It follows that the
principle laid down in Article 7(2) CTMR, which provides that it is sufficient that an
absolute ground for refusal exists in only part of the Community for a trade mark
application to be refused, applies, by analogy, to a relative ground for refusal under
Article 8(1)(b) CTMR.
Considering all the above, the Opposition Division finds that even for a professional
public that displays a high level of attention when confronted with the goods, there is
a likelihood of confusion on the part of the public, since the minor differences of the
signs, which lie in the graphical representation of the contested mark, are not
sufficient to outweigh the strong similarities that they present.
Therefore, the opposition is well founded on the basis of the opponent’s Community
trade mark No 8 889 041. It follows that the contested trade mark must be rejected
for all the contested goods.
COSTS
According to Article 85(1) CTMR, 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), (6) and (7)(d)(i) CTMIR, 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
Jessica LEWIS
Julia SCHRADER
BIRGIT FILTENBORG
According to Article 59 CTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 60 CTMR, notice of appeal
must be filed in writing at the Office within two months of the date of notification of
this decision. 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 800 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) CTMIR, such
a request must be filed within one month from the date of notification of this fixation
of costs and shall be deemed to be filed only when the review fee of EUR 100
(Article 2(30) CTMFR) has been paid.