DECISION

of the Fourth Board of Appeal

of 4 May 2016

In Case R 1379/2015-4

Grohe AG
Hemer Germany	Applicant  / Appellant

represented by Angela Erwin, Düsseldorf, Germany

v

SYSTHERM s.r.o.
Plzeň Czech Republic	Opponent  / Respondent

represented by Irena Langrová, Plzeň, Czech Republic

APPEAL relating to Opposition Proceedings No B 2 387 630 (European Union trade mark application No 12 711 107)

The Fourth Board of Appeal

composed of D. Schennen (Chairperson), S. Martin (Rapporteur) and C. Bartos (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 20 March 2014, the appellant sought to register the word mark

GROHTHERM

as a European Union trade mark.

2. On 1 August 2014, the respondent filed a notice of opposition. The opposition was based on earlier Czech trade mark application No 508 590 (‘earlier mark’)

GREENTHERM

applied for on 24 October 2013 and registered on 5 August 2015. The opposition was based on the following goods of the earlier mark:

Class 9 – Apparatus and instruments for measuring, regulating and remote transmission of data, equipment for measuring and controlling flow, level, pressure, temperature and other variable characteristics of liquids and gas, automatic regulating and checking (supervision) apparatus and instruments;

Class 11 – Heating equipment, pressure equipment, boilers, parts and accessories therefor for burning solid and liquid fuels, gas generators (installations), equipment for producing warm and hot water and steam, refrigerating, drying, ventilating, air conditioning, convector and tank heaters, heat accumulation containers.

3. The opposition was directed against all the goods applied for. The opponent invoked Article 8(1)(b) EUTMR.

4. By a decision of 19 June 2015 (‘the contested decision’), the Opposition Division partly upheld the opposition, namely for the following goods,

Class 11 – Plumbing fixtures and fittings, namely water valves, water pressure balance valves; shower valves; water mixing valves; bath mixers; basin mixers; shower mixers; thermostat-bath mixers; thermostat-shower mixers; water faucets and showers; self-closing basin mixers with mixing device; self-closing taps without mixing device; self-closing shower valves; hand shower; shower set consisting of shower rail, hand shower and shower hose; head shower;

reasoning as follows:

– The goods in Class 11 for which the opposition was upheld are similar to the opponent’s goods in Class 11. They share the same purpose and the same channels of distribution. Furthermore, they target the same end consumers, and they are complementary to each other.

• The signs are visually and aurally similar due to their common beginnings ‘GR’ and their common endings ‘THERM’. The first parts of the signs, ‘GREEN’ and ‘GROH’ have no meaning in Czech. The ending ‘THERM’ might be understood by the Czech-speaking public as referring to something related to, or caused by, heat. Since parts of the signs will be associated with similar meanings, the signs are conceptually similar.

• Although the ending ‘THERM’ is descriptive in relation to the goods in question, a likelihood of confusion exists since the marks share the same beginnings ‘GR’ and the same endings ‘THERM’.

Submissions and arguments of the parties

5. On 14 July 2015 the appellant filed a notice of appeal, followed by a statement of grounds. It requests that the Board annul the contested decision and allow the European Union trade mark applied for to proceed to registration in its entirety.

6. The appellant claims that no likelihood of confusion, within the meaning of Article 8(1)(b) EUTMR, exists because the conflicting signs are dissimilar.

7. In reply, the respondent submitted observations wherein it endorses the Opposition Division’s analysis and requests that the appeal be dismissed and the appellant ordered to bear the costs.

Reasons

8. The appeal is admissible and well founded. The common element ‘THERM’ in the conflicting signs is descriptive and non-distinctive with respect to the goods in question. The differences arising from the other elements ‘GROH’ and ‘GREEN’ are sufficient to avoid any likelihood of confusion.

Preliminary remark

9. The Opposition Division did not take into account that the earlier mark had not yet been registered when the contested decision was issued. However, the mark has been duly registered since then and hence the issue has become moot.

Article 8(1)(b) EUTMR

10. According to Article 8(1)(b) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. The risk that the 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 (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

11. As the earlier mark is a Czech trade mark, the relevant territory for analysing the likelihood of confusion is that of the Czech Republic.

Comparison of the goods

12. The Board concurs with the Opposition Division’s finding that the contested goods in Class 11 are similar to the earlier goods in the same class. This finding was not disputed by the parties. The Board explicitly refers to the reasoning of the contested decision in this respect.

Comparison of the signs

13. The signs to be compared are:

contested mark	earlier Czech mark
GROHTHERM	GREENTHERM

14. The comparison of the conflicting signs in relation to their visual, aural and conceptual similarities has to take into account the overall impression given by them, bearing in mind, in particular, their distinctive and dominant components (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 28).

15. The beginnings of the conflicting signs, ‘GROH’ and ‘GREEN’, are clearly different because of their different letters ‘OH’ and ‘EEN’, respectively. In particular, due to their difference in the vowels and their difference in length they are visually and aurally similar only to a low degree.

16. The endings of the conflicting signs are identical and consist in the common verbal element ‘THERM’ which will be understood by Czech-speaking consumers as meaning ‘heat’ or ‘related to heat’. For the public targeted by the goods in issue, such as the contested ‘thermostat-bath mixers’, the English word ‘THERM’ is easily recognizable because of its similarity to the Czech word ‘term’. For instance, the English word ‘thermostat’ translates to the Czech word ‘termostat’. Therefore, the relevant public will consider the verbal element ‘THERM’ at the ends of the conflicting signs as being descriptive for the goods in issue which are plumbing fixtures and fittings. In contrast, the verbal elements ‘GROH’ and ‘GREEN’ at the beginnings of the conflicting signs have no meaning for the relevant public. ‘GREEN’ is not part of the basic English vocabulary which would be understood by an average consumer in the Czech Republic. ‘GROH’ is not a word, neither in English nor in Czech.

17. In conclusion, the Board finds that the conflicting signs are visually and aurally similar to a low degree. Conceptually, a comparison is not possible because neither of the signs has a meaning.

Global assessment of likelihood of confusion

18. For the purpose of the global assessment, the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. The level of attention of the average consumer is likely to vary according to the category of goods or services in question and the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his/her trust in the imperfect picture of them that he/she has kept in his/her mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26 and 30/06/2004, T-186/02, Dieselit, EU:T:2004:197, § 38).

19. The goods in question target the public at large but also the professional public. The level of attention of the public at large will be higher in relation to these goods since they are long-lasting and rather expensive goods which are not ordered on a daily basis.

20. The Board recalls that owing to their weak distinctive character, descriptive elements of a sign are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them. That does not mean, however, that the descriptive elements of a sign are necessarily negligible in the overall impression conveyed by that sign. It is necessary, in particular, to examine whether other elements of the sign are likely to dominate, by themselves, the relevant public’s recollection of that sign (21/03/2012, T‑63/09, Swift GTi, EU:T:2012:137, § 103). In the present case, the weak distinctive character of the verbal element ‘THERM’ is not compensated by its position or size. It is placed at the ends of the signs and it is not longer than ‘GROH’ and ‘GREEN’, respectively. Consequently, the verbal element ‘THERM’ must be considered as being weak and the conflicting signs as being dominated by their respective beginnings.

21. In this respect it is also relevant to take into account that the consumer, although perceiving the marks as a whole, generally takes more note of a mark’s beginning than of its ending. It follows that the initial element ‘GREEN’ of the earlier mark and the initial element ‘GROH’ of the mark applied for are likely, on an overall visual and aural impression, to have more of an impact than the final element ‘THERM’ (see, as far as the visual impression is concerned, for example, 23/09/2009, T-493/07, T-26/08 & T-27/08, Famoxin, EU:T:2009:355, § 68 and the case-law cited therein and 28/10/2010, T-131/09, Botumax, EU:T:2010:458, § 35 and case-law cited therein and as far as the aural impression is concerned, for example, 13/10/2009, T-146/08, Redrock, EU:T:2009:398, § 72 and the case-law cited therein).

22. In light of the above, based on the visual, aural and conceptual comparison of the conflicting marks, the enhanced level of attentiveness of relevant consumers, and notwithstanding the principles of interdependence and imperfect recollection, the Board comes to the conclusion that it is unlikely that consumers would confuse the marks or believe that the goods applied for come from the same undertaking or, as the case may be, from undertakings that are economically linked, merely on the basis of the final element ‘THERM’ which the conflicting signs have in common. The clearly perceptible differences between the signs at their beginnings would not be overlooked by relevant customers. In conclusion, the Board finds that there can be no likelihood of confusion in accordance with Article 8(1)(b) EUTMR.

23. Consequently, the opposition based on Article 8(1)(b) EUTMR must be rejected and the contested decision annulled.

Costs

24. As the respondent is the losing party in the opposition and appeal proceedings within the meaning of Article 85(1) EUTMR, it must be ordered to bear the corresponding costs incurred by the appellant.

Fixing of costs

25. Pursuant to Article 85(6) EUTMR in conjunction with Rule 94(3) CTMIR, the decision of the Board shall, where applicable, include the fixing of the costs and fees to be paid by the losing party. According to Rule 94(7)(d)(ii) and (v) CTMIR, the representation costs of the opposition proceedings are fixed at EUR 300 and those of the appeal proceedings at EUR 550. Pursuant to Rule 94(6) CTMIR, the respondent shall also bear the appeal fee of EUR 800. The total amount to be paid is EUR 1 650.

Order

On those grounds,

THE BOARD

hereby:

1. Annuls the contested decision;

2. Rejects the opposition;

3. Orders the respondent to bear the fees and costs in the opposition and appeal proceedings;

4. Fixes the amount of costs and fees to be paid by the respondent to the appellant at EUR 1 650.

Signed D. Schennen

Signed S. Martin

Signed C. Bartos

Registrar: Signed H.Dijkema