DECISION

of the Fifth Board of Appeal

of 5 December 2016

In Case R 1103/2016-5

Atlas sp.z.o.o.
Ul. Sw. Teresy od Dzieciatka Jezus 105 91-222 Łódź Poland	Applicant / Appellant

represented by Rumpel Spółka Komandytowa, Częstochowska 1 a, 93-115 Łódź, Poland

v

Den Braven Czech and Slovak a.s.
Úvalno 353 793 91 Úvalno Czech Republic	Opponent / Respondent

represented by Hák, Janeček & Švestka, U Průhonu 5, 170 00 Praha 7, Czech Republic

APPEAL relating to Opposition Proceedings No B 2 475 773 (European Union trade mark application No 13 274 915)

The Fifth Board of Appeal

composed of G. Humphreys (Chairperson), A. Kralik (Rapporteur) and A. Pohlmann (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 19 September 2014, Atlas sp.z.o.o. (‘the applicant’) sought to register the figurative trade mark applied for (‘the contested sign’):

for the following list of goods:

Class 1 – Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry; foundry sand; china slip; unprocessed plastics; cement preservatives; additives modifying the properties of cement - leak-proofness and frost resistance; agglutinants for concrete; additives modifying the properties of concrete; additives modifying the properties of abrasive materials; fillers; cement putty;

Class 2 – Permanent or temporary decorative and protective compositions for surface covering, including mordants, colorants, paints and washes, lacquers and varnishes, colorants, mordants, primers; primers; coatings for use as primers; preparations for protection against rust and deterioration of wood, masonry and other materials, all in the form of powder, liquid, semi-liquid and spray preparations (including in aerosol form) and thinners for the aforesaid compounds and preparations; paints and washes; lacquers and varnishes; lacquers and varnishes; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists;

Class 17 – Sealing and hydroinsulating compounds; liquid and semi-liquid preparations and preparations in powder form for dilution in liquid, designed for creating sealing and water-insulating coatings for building; insulating paints; rubber; synthetic rubber; liquid rubber; silicone rubber; nitrile rubber; polysulphide rubber; chlorinated rubber; fluoro rubber; chloroprene rubber; isobutylene-isoprene rubber; vulcanised rubber; protective packaging of rubber; stair edgings of rubber; rubber for heat insulation; rubber for electrical insulation; water-tight collars of rubber; washers of rubber; vibration dampers of rubber or gum; sealants of rubber; fillers of rubber; articles made of rubber for sealing; sealing strips made of synthetic rubber; flexible tubes of rubber; mixtures for sealing joints of silicone rubber; sealants of rubber for affixing; moulds of rubber for the manufacture of building materials; gutta-percha; rubber; synthetic rubber; semi-worked rubber; foam rubber; recycled rubber; acrylic rubber; rubber stops; rubber sheets; cords of rubber; rubber packaging; rubber stoppers and valves; rubber pipes; rings of rubber; gaskets made of rubber; corner protectors of rubber; sealing strips of rubber; waterproof membranes of rubber; rubber bars and rods; packing containers of rubber; stuffing of rubber; floor sheets of rubber; general purpose silicone rubber sealant; washers of rubber or vulcanized fiber [fibre]; buffers of rubber for ramps; granules of rubber mixed with polyurethane binder; latex rubber for use in manufacture; pipe wrappings of rubber; non-metallic flexible hoses made of rubber; rubber for thermal insulation; expanded closed cell rubber for sealing joints; gaskets made of rubber; asbestos; asbestos boards; asbestos boards; asbestos fabrics; asbestos fabrics; asbestos paper; asbestos coverings; asbestos fibers [fibres]; asbestos packing; asbestos nets; asbestos safety curtains; slate asbestos; asbestos packing; asbestos packing for valves and pistons; mica; mica electrical insulators; ornamental articles of mica; plastic film, other than for packaging purposes; fibers (plastic -), not for use in textiles; semi-processed plastics; wires and rods of plastic; insulating fabrics included in this class; dielectrics (insulators); insulators; insulating paints;

Class 19 – Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal; gravel; sand, except foundry sand, included in this class; clay, including fireclay; building glass, including insulating glass (building); mortar for building; building and semi-fabricated elements containing gypsum; gypsum; gypsum plaster; cement mortars and mortars containing cement; prefabricated building elements containing cement and lime; building materials, not of metal, for insulating systems; lime; ceramic articles for construction purposes; cement.

2. The application was published on 17 November 2014.

3. On 13 February 2015, Den Braven Czech and Slovak a.s. (‘the opponent’) filed an opposition against the registration of the published trade mark application for trade mark applied for goods as listed in paragraph 1.

4. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

5. The opposition was based, inter alia, on the following earlier right Slovak trade mark registration No 236 506 for the word mark

Green Line

filed on 29 November 2012 and registered on 20 January2014, for the following goods:

Class 1 – Chemicals used in industry and construction; adhesives, binders, sealants and silicones mentioned in this class; sealants and silicones for protection against fire; adhesives used in industry and construction; joint-sealing compounds; chemicals for impregnating facades, masonry preservatives; concrete preservatives; chemical preparations for cleaning swimming pool water; coolants intended for vehicle engine cooling systems; coolants for heating and cooling systems of all kinds, including solar collectors and heat pumps; brake fluids; windscreen cleaning fluids; diluents for varnishes and lacquers; diluents included in Class 1; surfactants; anti-freezing and de-icing preparations; chemical preparations for de-icing; de-icing preparations for windows; door lock de-icer;

Class 17 – Plastic films other than for wrapping; insulating paints; hydro-insulating paints; insulating plaster; weather proofing materials; insulating materials; asphalt hydro-insulation; polyurethane-based, acrylic-based and silicone-based sealants; polyurethane foam; adhesive tapes and strips, except for medical, stationery or household purposes; glass-fibre reinforced fabrics for building; materials for packing, stopping and/or insulating; sealing tapes; covering films and covers from plastics included in Class 17; thermal insulation systems and insulation systems included in Class 17; roofing foils and membranes; plastics in extruded form; draught excluder profiles;

Class 19 – Geotextiles; render; building materials (non-metallic);additives to building materials and mixes; adhesive and sealing materials of cement for construction; non-metallic materials included in this class for covering roofs; roof coverings, not of metal; cement; flexible profiles of plastic; linings and claddings, not of metal; building profiles of plastic; connector materials, not of metal; other building materials, not of metal; building materials for flooring work, including levelling materials, finishing trims, not of metal.

6. By decision of 19 April 2016 (‘the contested decision’), the Opposition Division upheld the opposition, for trade mark applied for the contested goods on the grounds that there was trade mark applied for likelihood of confusion. It gave, in particular, the following grounds for its decision:

• The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponentʼs Slovak trade mark registration No 236 506.

The goods

• An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘including’, used in the applicantʼs and in the opponentʼs lists of goods, indicates that the specific goods 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, NuTride, EU:T:2003:107).

Contested goods in Class 1

• ʽChemicals used in industry; adhesives used in industryʼ are identically contained in both lists of goods (including synonyms).

• The contested ʽunprocessed artificial resins, unprocessed plastics [listed twice]; tempering and soldering preparations; chemical substances for preserving foodstuffs; foundry sand; china slip; cement preservatives; additives modifying the properties of cement - leak-proofness and frost resistance; agglutinants for concrete; additives modifying the properties of concrete; additives modifying the properties of abrasive materials; fillers; cement puttyʼ are included in the broad category of the opponentʼs ʽchemicals used in industry and constructionʼ. Therefore, they are identical.

• The contested ʽfire extinguishing compositionsʼ include, as a broader category, the opponentʼs ʽsealants and silicones for protection against fireʼ. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponentʼs goods.

• The contested ʽtanning substancesʼ are substances used in the treatment of leather and textiles and therefore are included in the broad category of the opponentʼs ʽchemicals used in industryʼ. Therefore, they are identical.

• ʽChemicals used in science and photography, as well as in agriculture, horticulture and forestry; manuresʼ are similar to the opponentʼs ʽchemicals used in industryʼ, since they have the same nature and producers.

Contested goods in Class 2

• The contested ʽpermanent or temporary decorative and protective compositions for surface covering, including mordants, colorants, paints and washes, lacquers and varnishes, colorants, mordants, primers; primers; coatings for use as primers; paints and washes; lacquers and varnishes [listed twice]; colorants; mordants; metals in foil and powder form for painters, decorators, printers and artistsʼ are similar to the opponentʼs ʽlinings and claddings, not of metalʼ in Class 19, since they can all be used for covering walls or floors in construction processes; therefore, they coincide in purpose, end-users and distribution channels.

• The contested ʽpreparations for protection against rust and deterioration of wood, masonry and other materials, all in the form of powder, liquid, semi-liquid and spray preparations (including in aerosol form) and thinners for the aforesaid compounds and preparations; preservatives against rust and against deterioration of wood; raw natural resinsʼ are dissimilar to the opponentʼs goods in Classes 1, 17 and 19, since they do not have the same nature or purpose. They do not usually coincide in distribution channels, except for department stores, where they would be located in different sections, and they are not complementary or in competition.

Contested goods in Class 17

• ʽSealing and hydroinsulating compounds; liquid and semi-liquid preparations and preparations in powder form for dilution in liquid, designed for creating sealing and water-insulating coatings for building; insulating paints [listed twice]; rubber [listed twice]; synthetic rubber [listed twice]; liquid rubber; silicone rubber; nitrile rubber; polysulphide rubber; chlorinated rubber; fluoro rubber; chloroprene rubber; isobutylene-isoprene rubber; vulcanised rubber; protective packaging of rubber; rubber for heat insulation; rubber for electrical insulation; sealants of rubber; fillers of rubber; articles made of rubber for sealing; sealing strips made of synthetic rubber; mixtures for sealing joints of silicone rubber; sealants of rubber for affixing; guttapercha; semi-worked rubber; foam rubber; recycled rubber; acrylic rubber; rubber stops; rubber sheets; cords of rubber; rubber packaging; sealing strips of rubber; waterproof membranes of rubber; packing containers of rubber; stuffing of rubber; floor sheets of rubber; general purpose silicone rubber sealant; pipe wrappings of rubber; rubber for thermal insulation; expanded closed cell rubber for sealing joints; gaskets made of rubber; asbestos fabrics [listed twice]; asbestos; asbestos paper; asbestos coverings; asbestos fibers [fibres]; asbestos packing [listed twice]; asbestos nets; asbestos packing for valves and pistons; mica; mica electrical insulators; fibers (plastic -), not for use in textiles; semi-processed plastics; insulating fabrics included in this class; dielectrics (insulators); insulatorsʼ are included in the broad category of, or overlap with, the opponentʼs ʽmaterials for packing, stopping and/or insulatingʼ. Therefore, they are identical.

• The contested ʽplastic film, other than for packaging purposesʼ overlaps with the opponentʼs ʽcovering films and covers from plasticsʼ included in Class 17, since they coincide in those films that are made of plastic and designed for covering things. Therefore, they are identical.

• The contested ʽstair edgings of rubber; water-tight collars of rubber; washers of rubber; vibration dampers of rubber or gum; flexible tubes of rubber; rubber stoppers and valves; rubber pipes; rings of rubber; gaskets made of rubber; corner protectors of rubber; rubber bars and rods; washers of rubber or vulcanized fiber [fibre]; buffers of rubber for ramps; asbestos boards [listed twice]; slate asbestos; wires and rods of plasticʼ are similar to the opponentʼs ʽbuilding materials (non-metallic)ʼ in Class 19, as they have the same nature, purposes, end-users and distribution channels.

• The contested ʽmoulds of rubber for the manufacture of building materials; granules of rubber mixed with polyurethane binder; latex rubber for use in manufacture; non-metallic flexible hoses made of rubber; asbestos safety curtains; ornamental articles of micaʼ are dissimilar to the opponentʼs goods in Classes 1, 17 and 19, since they do not have the same nature or purpose. They do not usually coincide in distribution channels, except for department stores, where they would be located in different sections, and they are not complementary or in competition.

Contested goods in Class 19

• ʽBuilding materials (non-metallic); cementʼ are identically contained in both lists of goods (including synonyms).

• The contested ʽnon-metallic rigid pipes for building; asphalt, pitch and bitumen; gravel; sand, except foundry sand, included in this class; clay, including fireclay; building glass, including insulating glass (building); mortar for building; building and semi-fabricated elements containing gypsum; gypsum; gypsum plaster; cement mortars and mortars containing cement; prefabricated building elements containing cement and lime; building materials, not of metal, for insulating systems; lime; ceramic articles for construction purposesʼ are included in the broad category of the opponentʼs ʽother building materials, not of metalʼ. Therefore, they are identical.

• The contested ʽnon-metallic transportable buildings; monuments, not of metalʼ are dissimilar to the opponentʼs goods in Classes 1, 17 and 19, since these contested goods are finished products, whereas the opponentʼs goods are industrial or building materials. The mere fact that those materials are used for the manufacture of non-metallic transportable buildings or monuments is not sufficient in itself to conclude that the goods are similar, as their nature, purpose and relevant public are quite distinct.

Relevant public – degree of attention

• In the present case, the goods found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will vary from average to above average, depending on the nature and price of the goods.

The signs

• The relevant territory is Slovakia.

• The earlier mark is a word mark. The contested sign is a figurative mark consisting of a green tree preceded and followed by a straight green line. Above the line to the right of the tree are the words ‘green line’ in a simple green italic typeface.

• The elements ‘GREEN LINE’ contained in the signs, will be associated by part of the relevant public with a basic understanding of English with a line of goods which are not harmful to the environment. Bearing in mind that the relevant goods are building or decorating materials, these elements are weak for these goods.

• For the part of the public with little understanding of English or that knows no English whatsoever, these words are fanciful elements and, therefore, the marks have no element that is clearly more distinctive than the others.

• The contested sign is composed of distinctive verbal elements, at least for a part of the public, a distinctive figurative element (a tree) and a less distinctive figurative element (the straight green line) of a purely decorative nature.

• The earlier mark has no element that could be considered more dominant (visually eye-catching) than other elements. However, the figurative element of a tree in the contested sign is the dominant element as it is the most eye-catching.

• Visually, the signs coincide in the elements ‘Green Line’, which are distinctive at least for a part of the public. However, they differ in the figurative elements of the contested sign, the straight green line being a purely decorative element.

• Although the figurative element of a tree is the dominant element in the contested sign, 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

• Therefore, the signs are visually similar to an average degree.

• Aurally, the pronunciation of the signs coincides in the sound of the letters ‘GREEN LINEʼ, present identically in both signs. Since there are no further word elements, the signs are aurally identical.

• Conceptually, for the part of the public with little understanding of English or that knows no English whatsoever, the word elements ‘GREEN LINE’ in both signs are fanciful elements. The figurative element of a tree in the contested sign will be perceived as such. For this part of the public, the signs are not conceptually similar. For the part of the public with at least a basic understanding of English, the coinciding elements will be understood as a line of goods not harmful to the environment. For this part of the public, which will also perceive the concept of the figurative element of a tree in the contested sign, 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.

Distinctiveness of the earlier mark

• 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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal for the part of the public with little understanding of English or that knows no English whatsoever and weak for the part with at least a basic understanding of English.

Global assessment, other arguments and conclusion

• The goods are partly identical, partly similar and partly dissimilar. The earlier mark is fully incorporated in the contested sign and plays an independent and distinctive role.

• Furthermore, although the contested sign also includes a dominant figurative element, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public will more easily refer to the signs in question by their verbal element rather than by describing their figurative elements.

• 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. Under these circumstances, the applicantʼs claims must be set aside.

• 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 opponentʼs Slovak trade mark registration. It follows from the above that the contested mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark. The opposition is rejected for the remaining goods.

• The opposition is also based on the earlier Czech trade mark No 495 585 for the word mark ‘GREEN LINE’.

• Since this mark is identical to the one which has been compared and covers the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

7. On 16 June 2016, the applicant filed an appeal against the contested decision, requesting that the decision be trade mark applied for set aside trade mark applied for accepted. The statement of grounds of the appeal was received on 28 July 2016.

8. In its observations in reply received on 10 October 2016, the opponent requests that the appeal be dismissed and the contested decision be upheld in its entirety.

Submissions and arguments of the parties

9. The arguments raised in the statement of grounds may be summarised as follows:

• The contested sign is a compound mark and the differences presented therein prevail over the similarities.

• The words ‘GREEN LINE’ do not have distinctive character as they only indicate that the goods are ecological, without artificial ingredients. Nowadays it is very common to indicate ecologic goods as a GREEN LINE. Therefore, the characteristic, dominant and most eye-catching graphic element is crucial as consumers will pay significant attention to it.

• Visually, the marks therefore present significant differences which cannot be ignored. Moreover, given the dominant placement of the graphic element in the shape of a tree, consumers will read the contested sign as ‘TREE GREEN LINE’ or even just ‘TREE’.

• The word components ‘GREEN LINE’ are basic English terms that will be understood by all Slovak citizens as reference to a descriptive message, namely that the goods in question are ecological.

• As a whole the marks therefore present significant differences which prevail over the similarities and eliminate any risk of a likelihood of confusion. In support thereof reference is made to 23/01/2008, T‑106/06, Bau How, EU:T:2008:14, 17/02/2011, T‑385/09, Ann Taylor Loft, EU:T:2011:49, 24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, 09/02/2011, T‑222/09, Alpharen, EU:T:2011:36 and 08/02/2011, T‑194/09, Líneas aéreas del Mediterráneo, EU:T:2011:34.

• Finally, there are more than 40 trade marks containing the words ‘GREEN LINE’ registered at the EUIPO.

10. The arguments raised in reply to the appeal may be summarised as follows:

• The opponent fully agrees with the contested decision.

• Consumers tend to remember verbal elements and therefore those elements have to be considered the most important in any compound mark. Furthermore, the figurative elements contained in the contested sign merely serve to underline the verbal elements in it.

• The verbal elements contained in the mark must be considered to be of normal distinctive character, at least to part of the relevant public.

• Bearing in mind the strong similarities between the contested sign and the earlier mark, the identity and high similarity of the goods and also the imperfect recollection of consumers, it is clear that consumers will associate the contested mark with the earlier mark.

Reasons

11. The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.

Correction of obvious mistake (Rule 53 CTMIR)

12. In accordance with Rule 53 CTMIR, where the Office becomes aware, of its own motion or at the instance of a party to the proceedings, of a linguistic error, error of transcription or obvious mistake in a decision, it shall ensure that error or mistake is corrected by the department or division responsible.

13. As correctly pointed out by the opponent in its letter dated 9 June 2016 as well as in the statement of grounds, the contested decision contains an obvious mistake. The list of goods for which the contested EUTMA is rejected, as mentioned in the operative part on the first two pages of the contested decision is incomplete, the following goods are missing: ‘metals in foil and powder form for painters, decorators, printers and artists’ in Class 2 and ‘ asbestos fabrics’ in Class 17. These goods were found to be similar or identical by the Opposition Division (page 5 and 6 of the contested decision) and, consequently, the contested EUTMA was rejected for these goods (page 10 of the contested decision). This result is clear from the decision as a whole and the omission on the first page of the decision is an obvious mistake which is hereby corrected.

14. Contrary to the opponent’s assertions, the goods ‘expanded closed cell rubber for sealing joints’ in Class 17 were listed in the operative part of the contested decision.

Scope of the appeal

15. In the present case, the applicant only partially appealed the contested decision, namely insofar as the Opposition Division found a likelihood of confusion. As such the appeal at hand solely regards whether or not the Opposition Division correctly refused the contested sign under Article 8(1)(b) EUTMR.

16. As done by the Opposition Division, the Board will also, initially, conduct its assessment based on the opponent’s earlier Slovak trade mark registration, namely No 236 506.

Article 8(1)(b) EUTMR

17. Under 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 and 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. A likelihood of confusion
    includes the likelihood of association with the earlier trade mark.

18. A likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case, furthermore, a likelihood of confusion lies in 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 (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29 and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

The relevant public and territory

19. In the present case, as indicated above, the opposition is, initially, assessed on the basis of a Slovak trade mark registration No 236 506, consequently the relevant territory is Slovakia.

20. The relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods [and services] covered by the earlier mark and those covered by the mark applied for (24/05/2011, T‑408/09, ancotel, EU:T:2011:241, § 38 and the case-law cited). Furthermore, the relevant public is identified by means of the nature of the goods [and services] covered by the conflicting marks.

21. The goods in question consist of a wide range of products in Class 1, 2, 17 and 19 (as listed at paragraph 6), all of which have varying specialised purposes. Given the nature of those goods they are likely to be aimed at the public at large as well as professional consumers. However given the specialised nature of the goods in question and the fact that they will usually require some knowledge to be used correctly and are not bought on an everyday basis, consumers are likely to display a relatively high level of attention in the context thereof.

Comparison of the goods and services

22. The assessment of the similarity of goods and services must take into account all relevant factors, which include their nature, their purpose and method of use, and whether they are in competition with each other or complementary (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account such as, for example, the distribution channels of the goods concerned (11/07/2007, T-443/05, Piranam, EU:T:2007:219, § 37).

23. The contested decision carried out a detailed comparison of the goods in question, finding that they were, partly identical and similar and to some extent dissimilar. Overall, none of the parties have disputed this assessment and the Board confirms it and refers to its underlying reasoning, as stated in the contested decision.

Comparison of the marks

24. The global appreciation of the likelihood of confusion, as far as concerns the visual, aural or conceptual similarities between the marks at issue, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

25. The signs to be compared are:

    Green Line
    Earlier mark	Contested sign

26. The earlier mark is a word mark comprising two English words namely, ‘GREEN’ and ‘LINE’. The contested sign on the other hand is a figurative mark consisting of green horizontal lines extending out from either side of a centrally positioned graphical representation of a tree in green on the right side thereof containing the words ‘green line’ above the line.

27. The Board notes, that the protection which results from registration of a word mark concerns the word mentioned in the application for registration and not any specific graphic or stylistic elements accompanying that mark (29/03/2012, T‑369/10, Beatle, EU:T:2012:177, § 42).

28. Visually, the marks are identical to the extent that the earlier mark is fully incorporated in the contested sign and those word components are depicted identically in a prominent and obvious position in the contested sign. The signs differ in the graphical elements contained in the contested sign, namely the green tree being a visually dominant element and the broken green line. The Board considers that the signs are similar to an average degree.

29. Aurally, regardless of whether or not the word components ‘GREEN LINE’ would be understood by the relevant Slovak consumer, the signs will be pronounced identically. Insofar as the applicant claims that the relevant consumer will read the contested mark depending on their fanciful interpretation either as ‘TREE GREEN LINE’ or even only ‘TREE’, the Board observes that where a trade mark is composed of verbal and figurative elements, the former should, in principle, be considered more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). The Board therefore considers that in the present case the graphical representation of a tree should not play any role in the aural comparison.

30. Conceptually, the marks are identical, in so far as the relevant consumers have a basic understanding of English, in that the word components ‘GREEN LINE’ contained identically in both signs maybe understood, as correctly defined by the Opposition Division as a reference to ‘a line of goods not harmful to the environment’. To those consumers the addition of the stylised depiction of a green tree in the contested sign will merely serve to emphasize that message.

31. To consumers with no understanding of English the word components ‘GREEN LINE’ maybe understood as fanciful made-up terms, which as such are devoid of any conceptual content.

32. Overall, regardless of the differences in layout and graphic elements, the earlier mark is contained identically in the contested sign in a position in which it is easily recognisable and legible and for those reasons, the marks must be considered to be highly similar.

Overall assessment of the likelihood of confusion

33. A likelihood of confusion on the part of the public must be assessed globally which implies some interdependence between the relevant factors, and in particular a similarity between the marks under comparison and the goods and/or services under comparison. Accordingly, a lesser degree of similarity between the goods and/or 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).

34. Furthermore, the more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

35. For the purpose of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to
    identify the goods for which the mark was registered as coming from a
    particular undertaking, and thus to distinguish those goods from those of other
    undertakings. In making that assessment, it is necessary to take into account, in
    particular, the inherent characteristics of that element and to ask whether it is at
    all descriptive of the goods for which the mark has been registered
    (03/09/2010,T-472/08, 61 a nossa alegria, EU:T:2010:347, § 47 and the case-law
    cited therein).

36. In the present case, the applicant argues that there is no conflict between the signs at hand as the word components ‘GREEN LINE’ are descriptive and non-distinctive in the context of the relevant goods and therefore consumers will pay little attention to them. It further argues that the graphical elements in the contested sign endow the marks with a diverging overall impression and finally that there are a multitude of marks registered at the EUIPO containing those very same word components and therefore the marks can coexist.

37. It must be noted at the outset that in the absence of any evidence to the contrary, there is no reason to assume that all or a vast majority of the relevant consumers in Slovakia would understand the word components ‘GREEN LINE’ in accordance with their English definitions. Furthermore, even if those word components were to be understood as a reference to a descriptive message, the Board nevertheless cannot call into question the validity of the earlier trade mark and must consider a registered national trade mark to possess a certain degree of distinctiveness (24/05/2012, C‑196/11 P, F1-Live, EU:C:2012:314, § 42-47).

38. Word elements are generally more important that figurative elements in a combined sign (see by analogy 18/09/2012, T‑460/11, Bürger, EU:T:2012:432, § 35) whether they be understood as a reference to a descriptive message or not. As such the presence of a dominant graphical element in the shape of a green tree and various other graphic elements in the contested sign may not be sufficient in order to neutralise any similarities, in particular to consumers who have no understanding of English and therefore may perceive the word elements contained identically in both signs as fanciful made-up terms, which as such will possess a normal degree of distinctiveness.

39. Furthermore, when the earlier mark is fully incorporated in the contested sign, similarity of goods and services, generally leads to a likelihood of confusion (02/10/2013, T‑285/12, Boomerang, EU:T:2013:520, § 46). In particular, as in the present case, where that sign retains its independent and distinguishing features in the contested sign.

40. The applicant argues that there are more than 40 other marks on the register consisting of the words ‘GREEN LINE’ that co-exist with the earlier mark. The Board notes in this respect that the mere fact that other marks are registered or applied for cannot prove use of these marks and is therefore not conclusive for the possible weakness of the earlier mark. Moreover, coexistence of trade marks is a fact that must be proved (02/10/2013, T‑285/12, Boomerang, EU:T:2013:520, § 59). The applicant has submitted no evidence to that effect and as such references to various, unspecified, registrations submitted by the applicant are not sufficient for such purposes.

41. Having regard to the interdependence principle and that the relevant public rarely has a chance to make a direct comparison between the signs but must place his or her trust in the imperfect recollection of the marks in question (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25-26), and considering the level of attention displayed by the relevant consumer, even the varying degrees of similarity of the contested goods is not sufficient to offset, the aural, visual and conceptual characteristics of the marks and consequent overall similarity, in particular as the differences established by the graphical elements of the contested sign are not sufficient to counterbalance the highly similar overall impressions which the marks convey.

42. Contrary to the applicant’s arguments, consumers are therefore likely to confuse the marks, including believing that the goods originate from the same undertaking or from economically-related undertakings.

Conclusion

43. For the reasons stated above, and those stated in the contested decision, the appeal is dismissed and the contested decision is upheld in its entirety with the corrections described in paragraph 13. As the opposition is successful based on the earlier Slovak trade mark registration No 236 506 and Article 8(1)(b) EUTMR, there is no need to adjudicate on the other earlier right.

Costs

44. Since the applicant is the losing party within the meaning of Article 85(1) EUTMR, it must bear the fees and costs pursuant to Article 85(6) EUTMR. It follows that it must also bear the opponent’s representation costs in the appeal proceedings in the amount of EUR 550 specified in Rule 94(7)(d) CTMIR.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the applicant to bear the costs of the opponent in the appeal proceedings of EUR 550.

Signed G. Humphreys

Signed A. Kralik

Signed A. Pohlmann

Registrar: Signed H.Dijkema