OPPOSITION No B 2 487 752

Henkel AG & Co. KGaA, Henkelstr. 67, 40589 Düsseldorf, Germany (opponent)

a g a i n s t

Vita Investments S.A., 73 rue du fort neipperg, 2230 Luxembourg, Luxembourg (applicant), represented by Plaza y Cía, Calle Orense 64 1ºD, 28020 Madrid, Spain (professional representative).

On 21/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 487 752 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 390 315, namely against all the goods in Classes 2 and 17. The opposition is based on international trade mark registration No 719 937 designating Poland. The opponent invoked Article 8(1)(b) EUTMR.

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

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

Class 17: Stopping and insulating materials.

The contested goods are the following:

Class 2: Paints, varnishes, lacquers; 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: Rubber, gutta-percha, gum, asbestos, mica; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 2

The Opposition Division finds the applicant’s goods in Class 2 dissimilar to the opponent’s goods. The applicant’s goods in this class include mainly goods that are intended to coat other items for decorative or protective purposes, while the opponent’s goods in Class 17 are materials wrapped around other goods to protect them by reducing or preventing the transmission of sound, heat or electricity. The goods have different natures and purposes; they are neither complementary nor in competition with each other. Furthermore, they are not likely to be manufactured by the same producers, to be marketed through the same distribution channels or to target the same consumers. In light of the foregoing, the Opposition Division considers that the goods in dispute are dissimilar.

Contested goods in Class 17

The contested stopping and insulating materials are identically contained in both lists of goods.

The contested plastics in extruded form for use in manufacture are related to the opponent’s insulating materials. These goods have a similar nature, since the opponent’s insulating materials are usually made of the aforementioned materials. The goods compared may be in competition insofar as the contested raw or semi-finished products (e.g. in the form of blocks or sheets) may be bought, for instance, by construction professionals or do-it-yourself enthusiasts for building insulation purposes. Moreover, none of these goods is a finished product and they can often be obtained through the same distribution channels and have the same relevant public. Therefore, these goods are considered similar.

The earlier insulating materials are various kinds of substances, materials or items used as a barrier to prevent the passage of air, water, gas, fire, etc. The contested flexible pipes non-metallic are hollow cylindrical objects used, for example, to convey liquids or gases or as a protective conduit through which wires, for example, can be pulled, and parts and accessories thereof. The goods compared are all used for construction purposes, although their specific purpose of use differs. Moreover, they can have the same producers, distribution channels and relevant public. Consequently, they are similar.

The contested packing materials are any material used to protect something. To that extent they are similar to the insulating materials of the earlier sign in Class 17, which are wrapped around other goods to protect them by reducing or preventing the transmission of sound, heat or electricity. They have the same purpose, they may have the same method of use and they can be manufactured by the same undertakings.

The Office considers that the contested rubber, gutta-percha, gum, asbestos, mica, are dissimilar to the opponent’s goods in Class 17. The goods for which protection is sought are raw materials used at an industrial level, whereas the opponent’s goods are finished or semi-finished products. Their natures, initial purposes, methods of use and manufacturers are different. Furthermore, the fact that the earlier goods can be made of, for example, the contested asbestos is not sufficient to warrant a finding of similarity between these goods, since the applicant’s asbestos is a mineral targeted at manufacturers, while the opponent’s insulating materials target professionals in the construction sector.

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 found to be identical or similar in some cases target business customers with specific professional knowledge or expertise, such as professionals in the building industry, and in other cases target professionals only. The degree of attention may therefore vary from average to high depending on the technical character of the relevant goods.

3. The signs

CERETHERM	C-THERM
Earlier trade mark	Contested sign

The relevant territory is Poland.

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).

The earlier mark and the contested sign are word marks. Therefore, neither has any element that could be considered more dominant (visually eye-catching) than other elements.

The earlier sign is composed of a single verbal element that does not exist as such in Polish. Moreover, the contested mark is made up of the letter ‘C’ followed by a hyphen and by the word ‘THERM’. Part of the relevant public may associate the word ‘THERM’, present in both signs, with ‘TERMA’ in Polish, which forms the last part of compound words related to heat or temperature and by itself means a small heater for water. However, for the significant part of the public on which the Opposition Division will focus the comparison, the words ‘CERETHERM’ and ‘C-THERM’ have no identifiable components. They are therefore fanciful and enjoy an average degree of inherent distinctiveness in the context of the relevant goods. Consequently, the signs have no elements that could be considered more distinctive than other elements.

Visually, the signs coincide in their first letter, ‘C’, and in their last five letters, ‘THERM’. However, they differ in that the contested mark is made up of two elements, ‘C’ and ‘THERM’, separated by a hyphen, whereas the earlier mark is a single word; they also differ in their middle parts, namely the letters ‘ERE’ and the hyphen. Therefore, the signs are visually similar only to a low degree, in particular due to their difference in length.

Aurally, the signs coincide in the sounds of the first letter, ‘C’, of the contested mark and ‘CE’ of the earlier mark and of the last letters ‘THERM’. They differ in the sound of the remaining verbal components of the earlier mark, since the hyphen of the contested mark will not be pronounced. Therefore, they are similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 trade mark as a whole has no meaning for any of the goods in question from the perspective of a significant part of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

In the present case, the goods are partly identical, partly similar and partly dissimilar to the opponent goods.

The signs are visually similar to a low degree and aurally similar to an average degree. In particular, the marks coincide in the string of letters ‘THERM’ at the end of each sign, and in their first letter, ‘C’, which is pronounced in Polish identically to the letters ‘CE’ of the earlier mark. However, similarity arising merely from the coincidence in a string of letters is not sufficient for a finding of similarity. The marks have different structures. The contested mark is formed of one letter and one word, whereas the earlier sign has only one word. In the earlier mark, the letters ‘THERM’ are combined with the other letters, forming a single word; this is in contrast to the contested mark, in which two elements can be clearly perceived. There is no reason to consider that the consumer will artificially dissect the earlier sign into two parts, ‘CERE’ and ‘THERM’, as they are not visually separated and do not have specific meanings on their own. Furthermore, although the marks start with the same letter, ‘C’, this is not sufficient to counteract the differences between the marks.

Against this background, the similarities between the marks are not sufficient to give rise to a likelihood of confusion.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marzena MACIAK

Cristina CRESPO MOLTO

Julie GOUTARD

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.

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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.