OPPOSITION No B 2 427 204

Isocell GmbH, Bahnhofstraße 36, 5202 Neumarkt am Wallersee, Austria (opponent), represented by Anwälte Burger und Partner Rechtsanwalt GmbH, Rosenauerweg 16, 4580 Windischgarsten, Austria (professional representative)

a g a i n s t

iCell AB, Box 87, 79622 Älvdalen, Sweden (applicant), represented by Ehrner & Delmar, Luntmakargatan 34, 100 55 Stockholm, Sweden (professional representative).

On 08/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 427 204 is upheld for all the contested goods and services.

2. Community trade mark application No 12 882 023 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 and services of Community trade mark application No 12 882 023. The opposition is based on, inter alia, Community trade mark registration No 5 664 503. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate first to examine the opposition in relation to the opponent’s Community trade mark registration No 5 664 503.

1. The goods and services

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

Class 7: Machines for applying cellulose fibres and similar insulating materials.

Class 16: Paperboard packages; paper in the form of cellulose fibres (fibrous paper, cardboard, for filters).

Class 17: Insulating materials of cellulose fibres.

Class 19: Building materials (non-metallic).

Class 37: Civil construction services.

The contested goods and services are the following:

Class 17: Acoustic board for ceilings [insulation]; Acoustic insulants; Acoustical insulation for buildings; Insulation and barrier articles and materials; Treated papers for insulating; Insulation for building purposes; Insulation for electric conductors; Flexible plastic pipe insulation; Insulation for aircraft; Industrial molten metal furnace insulation made of ceramic enamel fiber; Insulation for air conditioners; Magnet wire (Insulation for -); Insulation for underground pipes and tanks; Insulating floor coverings; Insulations with sealing functions for noise protection; Insulations with sealing functions for heat protection; Insulating blankets for hot water heaters; Insulating substances; Insulating materials for building; Insulation material for use in the ship building industry; Insulation material for use in the aircraft industry; Insulating materials for electrical purposes; Insulating materials for insulation against heat; Cables (Insulators for -); Soundproofing materials; Insulation material for roofing; Insulating matting; Insulating buildings against moisture (Substances for -); Insulating tiles; Structures (non-metallic -) for noise abatement [insulation]; Insulating paper; Insulating paper; Plates of insulating material for use in manufacture; Boards for insulating purposes; Sealing and insulating materials; Quilted wadding articles for insulation; Quilted jackets (Non-metallic -) for insulating hot water tanks; Quilted blankets for insulating; Fabrics of organic fibres for use as insulation; Insulating fabrics; Fabrics made from natural fibres for use as insulation; Fabrics made of mixed synthetic and natural fibres for use as insulation; Structures (non-metallic -) for noise abatement [insulation].

Class 37: Building insulating; Building insulating; Building insulating; Buildings (Insulation to existing -); Insulation of pipes; Insulation of pipes; Insulation of pipes; Insulation of roofing; Insulation services; Building insulating.

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 17

The contested acoustic board for ceilings [insulation]; acoustic insulants; acoustical insulation for buildings; insulation and barrier articles and materials; treated papers for insulating; insulation for building purposes; insulating floor coverings; insulations with sealing functions for noise protection; insulations with sealing functions for heat protection; insulating substances; insulating materials for building; insulating materials for insulation against heat; soundproofing materials; insulation material for roofing; insulating buildings against moisture (substances for -); structures (non-metallic -) for noise abatement [insulation]; insulating paper; insulating paper; plates of insulating material for use in manufacture; boards for insulating purposes; sealing and insulating materials; fabrics of organic fibres for use as insulation; insulating fabrics; fabrics made from natural fibres for use as insulation; fabrics made of mixed synthetic and natural fibres for use as insulation; structures (non-metallic -) for noise abatement [insulation] include as broader categories, or overlap with, the opponent’s insulating materials of cellulose fibres, which are made from recycled paper goods and are used as building insulation in walls, ceilings, attics, basements, etc., as thermal and sound insulation, or to function as a fire retardant or vapour barrier. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested insulation for electric conductors; flexible plastic pipe insulation; insulation for aircraft; industrial molten metal furnace insulation made of ceramic enamel fiber; insulation for air conditioners; magnet wire (insulation for -); insulation for underground pipes and tanks; insulating blankets for hot water heaters; insulation material for use in the ship building industry; insulation material for use in the aircraft industry; insulating materials for electrical purposes; insulating tiles; cables (insulators for -); insulating matting; quilted wadding articles for insulation; quilted jackets (non-metallic -) for insulating hot water tanks; quilted blankets for insulating are different types of insulating materials and goods manufactured from varying chemical compositions, such as fibreglass, ceramic fibre, mineral wool, plastic fibre, natural fibre (e.g. cotton, sheep’s wool, straw and hemp), polystyrene, polyisocyanurate (a type of plastic), polyurethane (an insulation material that contains a low-conductivity gas), cement, etc. They are similar to the opponent’s insulating materials of cellulose fibres. These goods have similar purposes. Furthermore, they can be provided by the same undertakings.

Contested services in Class 37

The contested building insulating; building insulating; building insulating; buildings (insulation to existing -); insulation of pipes; insulation of pipes; insulation of pipes; insulation of roofing; insulation services; building insulating are similar to the opponent’s civil construction services, which involve the construction of the physical and built environment, including works such as buildings. They can coincide in their relevant public, their distribution channels and their commercial origin.

2. The signs

Isocell
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 (judgment of 08/09/2008, C‑514/06 P ‘Armacell’, paragraph 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 Italian-speaking part of the relevant public.

Visually, the signs are similar to the extent that they both include the letters ‘I**CELL’. They differ in the letters ‘SO’ of the earlier mark, in the words ‘Insulation Technology Made in Sweden’ and the stylisation and colours of the contested sign.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘I**CELL’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‘SO’ of the earlier sign and in the words ‘Insulation Technology Made in Sweden’ of the contested sign.

Conceptually, neither of the two signs as a whole has a clear meaning for the public in the relevant territory. However, it cannot be excluded that a part of the relevant public may associate the letter ‘i’ of the contested sign with something related to the ‘internet’, ‘interactive’ or ‘intelligent’. It also cannot be excluded that the element ‘iso’ included in the earlier mark might be perceived by a part of the relevant public, in particular a professional one, as referring to the abbreviation for ‘International Standards Organization’ (http://www.treccani.it/enciclopedia/tag/iso/). Finally, it cannot be excluded that the element ‘cell’ could call to mind for a part of the public the Italian word ‘cellula’. The words ‘Insulation Technology Made in Sweden’ of the contested sign have no meaning as such for the relevant public. However, they are likely to be understood at least by a part of the relevant public, as the words ‘Insulation Technology’ are rather similar to the equivalent words in Italian (‘isolamento’ and ‘tecnologia’). ‘Made’ is a rather basic and widespread English word commonly used in Italy to indicate the place in which a good is produced (http://www.treccani.it/vocabolario/ricerca/made/); therefore, it will be understood by at least a part of the relevant public. The element ‘in’ is a preposition and is identical in Italian (http://www.treccani.it/enciclopedia/in-preposizione_%28La_grammatica_italiana%29/); therefore, it will be perceived with the same meaning by at least a part of the relevant public. The word ‘Sweden’ will also be perceived by at least a part of the relevant public as referring to the name of a country (http://www.treccani.it/enciclopedia/tag/sweden/).

Therefore, for the part of the public that perceives the element ‘cell’ in both marks, the signs are conceptually similar to that extent, and they are conceptually dissimilar as regards the remaining elements included in the marks. For the part of the public that will not associate either of the two marks with a meaning, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

Taking into account the abovementioned visual, aural and possible conceptual coincidences, the signs under comparison are similar.

3. 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 earlier mark has no element that could be clearly considered more distinctive than other elements.

A part of the relevant public may associate the letter ‘i’, included in the contested sign, with, inter alia, something related to the ‘internet’, ‘interactive’ or ‘intelligent’. Although these concepts are not commonplace or directly meaningful in the field of insulation services and insulators, the letter ‘i’ might allude to some characteristics of the goods and services (e.g. that they can be purchased via the internet). For this part of the public, this individual element is weak. For the remaining part of the public, the element has a normal degree of distinctiveness.

A part of the relevant public may also perceive the element ‘ISO’ included in the earlier mark as the abbreviation for ‘International Standards Organization’. For this part of the public, this element is weak, as it may refer to the fact that the relevant goods and services comply with international quality standards. For the remaining part of the public, the element has a normal degree of distinctiveness.

The verbal element ‘Insulation Technology Made in Sweden’ of the contested sign will be perceived as having that meaning by at least a part of the relevant public. Bearing in mind that the relevant goods and services are related to insulation, it is considered that this element is weak for these goods and services, as it refers to the nature, characteristics and origin of the goods and services (insulators and insulating services that have a technical nature or are related to technology and originate from Sweden). The part of the relevant public who understands the meaning of that element will not pay as much attention to this weak element as to the other more distinctive elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The earlier mark has no element which could be considered more dominant (visually eye‑catching) than other elements.

The element ‘iCell’ of the contested sign, by virtue of its central position, colours and size, is the dominant element of the contested sign, as it is the most eye‑catching.

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 trade mark as a whole has no meaning for any of the goods and services 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, for a part of the relevant public, of a weak element in the mark as stated above in section c) of this decision.

5. 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 directed at the public at large as well as at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high depending on the specific use of the goods and services in question and their price.

6. Global assessment, other arguments and conclusion

According to settled case law, 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.

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, on the association that can be made with the used or registered sign and on the degree of similarity between the trade mark and the sign and between the goods or services identified (eighth recital of the CTMR). It must be assessed globally, taking into account all factors relevant to the circumstances of the case.

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa.

The goods and services are partly identical and partly similar.

The marks are visually and aurally similar to the extent they both include the letters ‘I**CELL’. The marks differ in the letters ‘SO’ of the earlier mark and in the colours, stylisation and the wording ‘Insulation Technology Made in Sweden’ of the contested sign.

As seen above, the word elements ‘Insulation Technology Made in Sweden’ of the contested sign are weak for a part of the relevant public. Furthermore, the element ‘iCELL’ of the contested sign is the dominant element because of its size and position. Therefore, it is likely that the consumer will focus attention on the element ‘iCELL’ when referring to the contested sign.

Although the element ‘ISO’ of the earlier mark and the letter ‘i’ of the contested sign may be weak for a part of the relevant public, for the remaining part of the public these elements have a normal degree of distinctiveness. Furthermore, and in any case, taken as a whole, the earlier mark, ‘ISOCELL’, remains distinctive, since it has no direct meaning for the goods and services in question.

As regards the figurative elements of the contested sign (i.e. the stylisation and colours), it is considered that, when a sign consists of both word and figurative components, as is the case with the contested mark, the word component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public will most readily refer to a sign by its verbal component rather than by describing the figurative elements.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the element ‘CELL’. In support of its argument, the applicant refers to several trade mark registrations in the European Union. In order to back up its claim, the applicant submitted extracts of some trade marks from the database ‘eSearch plus’.

The Opposition Division notes that the existence of several 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 the element ‘CELL’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the Italian-speaking part of the public. As stated above in section b) 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 the opponent’s Community trade mark registration No 5 664 503. It follows that the contested trade mark must be rejected for all the contested goods and services.

As earlier Community trade mark registration No 5 664 503 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (judgment of 16/09/2004, T‑342/02, ‘Moser Grupo Media’).

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

Pedro JURADO MONTEJANO

Francesca CANGERI SERRANO

Michele M. BENEDETTI-ALOISI

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.