OPPOSITION Nо B 2 647 801

 

3D Laminates Limited, Unit 4, The Courtyards, Victoria Park, Victoria Road, LS14 2LB Leeds, United Kingdom (opponent), represented by Appleyard Lees IP LLP, 15 Clare Road, HX1 2HY Halifax, United Kingdom (professional representative) 

 

a g a i n s t

 

Röchling Engineering Plastics SE & Co. Kg, Röchlingstr. 1, 49733 Haren, Germany (applicant), represented by Meissner & Meissner, Hohenzollerndamm 89, 14199 Berlin, Germany (professional representative).

On 10/11/2020, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 2 647 801 is upheld for all the contested goods.

 

2.	European Union trade mark application No 14 637 805 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 European Union trade mark application No 14 637 805 ‘CoolSkin’ (word mark). The opposition is based on the European Union trade mark registration No 9 827 585 ‘ ’ (figurative mark). The opponent invoked Article 8(1)(a), 8(1)(b), 8(3) and 8(5) 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.

  

a) The goods

 

Pursuant Cancellation proceedings No C13691 issued on 17/02/2020, the goods protected by the earlier mark and used as basis of the instant opposition are the following:

Class 19: Non-metallic building materials, namely panels for doors; parts and fittings for the aforesaid goods. 

The contested goods are the following:

 

Class 17: Foils of plastic in extruded form for use in manufacture; Plastic slabs, plates and sticks (semi-finished products). 

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

Furthermore, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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.

Comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for this comparison since it is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

The contested foils of plastic in extruded form for use in manufacture consist of semi-finished thin sheets made of plastics for use in the manufacture of different kind of products. Also the contested plastic slabs, plates and sticks (semi-finished products) can comprise panels of different size and shape made of plastics, that can be also stick to other surfaces. On the other side, the opponent’s panels for doors are panels used for manufacturing doors. For instance, these goods might include plastic panels that are applied on the surface of a door in order to give it a particular style or color.

Following the above definition, it cannot be excluded that the contested products entail semi-finished materials which are pivotal in the production of the opponent’s panels for doors. For instance, the contested goods might include semi-finished PVC plain panels which are essential for producing PVC panels with a pattern resembling the wood grain and shaped in order to be applied in door’s surface as an aesthetic external panel.

This conclusion is also supported by the evidence submitted by the opponent. In specific, it has been demonstrated (among others, in Annexes 1 of the submission of 16/06/2016 and 15/07/2020) that the market reality show the presence of PVC panels that can be transformed in panels to be applied in doors in a wide range of style and colors.

Taking the above into account, it is concluded that all the contested goods are similar to a low degree to the opponent’s panels for doors as they can coincide in producer, relevant public and distribution channels.

b) 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 similar to a low degree are directed at business customers with specific professional knowledge or expertise in the field of production of doors and, in particular, doors’ panels. The degree of attention is considered to be average.

 

 

c) The signs

 

	CoolSkin
Earlier trade mark	Contested sign

 

The relevant territory is the European Union.

 

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 contested sign is a word sign. In this regard it must be noted that the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43).

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

For part of the relevant public, such as the non-English speaking consumers, the signs’ common verbal element ‘COOLSKIN’ does not convey any specific meaning and is, therefore, distinctive.

However, it cannot be excluded either that the public with a certain knowledge of English might understand the signs’ verbal element as recalling the meaning of ‘a covering’ (conveyed by the word ‘SKIN’) ‘with cooling properties’ (conveyed by the word ‘COOL’). For this consumers, said components can be somehow allusive of one of the characteristics of the relevant products e.g. a panel that has some insulating properties; in this circumstance their degree of distinctiveness can be considered slightly below average. However, while the distinctiveness of the elements of the signs is, as a rule, relevant for their comparison, in this particular case, whether ‘COOLSKIN’ will be meaningful or not for the public and whether such meaning may be in some way related to some of the goods at issue, is irrelevant. This is because the public will perceive this element in both signs identically.

The earlier mark has no elements that can be considered more dominant (visually eye catching) than others.

Visually and aurally, the signs coincide in the verbal element (and sound) ‘COOLSKIN’ whereas they visually differ in the earlier mark’s stylization and colours.

Therefore, the signs are visually similar to a high degree and aurally identical.

Conceptually, neither of the signs has a meaning for the non-English speaking 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 for this part of the public.

  

Conversely, the English-speaking consumers will perceive the signs as conceptually identical, given the meaning outlined above.

 

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

 

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.

 

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

 

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 part of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal for part of the public. As outlined above, however, another part of the public might perceive the sign with a slightly below average degree of distinctiveness.

 

e) Global assessment, other arguments and conclusion

 

The appreciation of likelihood of confusion on the part of the public depends, inter alia, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the goods have been found similar to a low degree. They target the professional public. The degree of attention paid is average.

The signs have been found visually similar to a high degree, aurally identical and conceptually identical (for a part of the public). For the other part of the public, the conceptual aspect remains neutral. Specifically, the contested sign is entirely reproduced in the earlier mark’s sole verbal component.

Taking all the above into account, the Opposition Division considers that the differences between the signs are clearly not sufficient to outweigh the assessed similarities between them. Consequently, the relevant public, are likely to think that they come from the same undertaking or from economically linked undertakings.

This findings is applicable even if the goods are similar to a low degree only. Indeed, it must be kept in mind that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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).In the present case, the degree of similarity between the signs is clearly sufficient to offset the low degree of similarity between the goods at issue.

 

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 827 585. It follows that the contested trade mark must be rejected for all the contested goods.

 

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to  its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

 

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) and Article 8(3) and 8(5) EUTMR.

 

COSTS

 

According to Article 109(1) EUTMR, 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

 

 

María Clara IBÁÑEZ FIORILLO

Aldo BLASI

Francesca CANGERI

 

 

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.