OPPOSITION No B 2 911 108

Getzner Werkstoffe Holding GmbH, Herrenau 5, 6706, Bürs, Austria (opponent), represented by Patentanwälte Hofmann & Fechner, Hörnlingerstraße 3, 6830, Rankweil, Austria (professional representative)

a g a i n s t

Karatzi Industrial and Hotelier Enterprises Societe Anonyme, Melidochori, Monofatsi, 71601, Irakleio, Kritis, Greece (applicant), represented by Αγγελικα Γκουσκου, ΣΚΟΥΦΑ 5-7, 10673, ΑΘΗΝΑ, Greece (professional representative).

On 18/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 911 108 is upheld for all the contested goods, namely:

Class 17: Insulation sheets; acoustical insulation barrier panels; rubber sheets; rubber sheets for sealing; rubber sheets for stopping; rubber sheets for insulating; polythene sheeting for insulation; insulating materials made of polyethylene foam; polyethylene synthetic resin [semi-processed] for foam mouldings; seals, sealants and fillers; insulation and barrier articles and materials.

2. European Union trade mark application No 16 383 317 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 383 317, for the figurative mark , namely against some of the goods in Class 17. The opposition is based on, inter alia, European Union trade mark registration No 15 632 532, for the word mark ‘Sylofloor’. 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.

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 opponent’s European Union trade mark registration No 15 632 532.

1. The goods

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

Class 17: Plastics in extruded form for use in manufacture; plastics (compact, foamed or glued); compact, foamed or glued granules; rubber, gum, being unworked or semi-worked; insulating materials; wear protection linings and coatings; non-conducting materials for retaining heat; thermal insulating materials; sound insulating material; soundproofing materials and compounds; materials, in particular sheets, strips, moulded parts and compounds for elastic mounting, for vibration damping and shock absorption; articles and materials for elastic mounting, for vibration damping and for shock absorption; elastomers.

The contested goods are the following:

Class 17: Insulation sheets; acoustical insulation barrier panels; rubber sheets; rubber sheets for sealing; rubber sheets for stopping; rubber sheets for insulating; polythene sheeting for insulation; insulating materials made of polyethylene foam; polyethylene synthetic resin [semi-processed] for foam mouldings; seals, sealants and fillers; insulation and barrier articles and materials.

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.

The contested insulation sheets; polythene sheeting for insulation; insulating materials made of polyethylene foam; fillers are included in, or overlap with, the opponent’s insulating materials. Therefore, they are identical.

The contested acoustical insulation barrier panels are included in the broad category of the opponent’s sound insulating material. Therefore, they are identical.

The contested rubber sheets; rubber sheets for sealing; rubber sheets for stopping; rubber sheets for insulating are included in the broad category of the opponent’s rubber, gum, being unworked or semi-worked. Therefore, they are identical.

The contested polyethylene synthetic resin [semi-processed] for foam mouldings overlaps with the opponent’s plastics in extruded form for use in manufacture. Therefore, they are identical.

The contested insulation and barrier articles and materials include, as a broader category, the opponent’s articles and materials for elastic mounting, for vibration damping and for shock absorption. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested seals, sealants are substances that are used to seal holes, cracks or gaps, while the opponent’s insulating materials are building (or refurbishing) materials. These goods have similar purposes and natures, in that they are materials used for construction and repair. They can have the same commercial origin. Moreover, they are distributed through the same channels and target the same relevant public. Finally, they can be complementary, as the use of seals and sealants is indispensable for the installation of some insulating materials. Therefore, these goods are highly similar.

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 to a high degree are mainly directed at professionals in building, construction or other industries. However, it cannot be excluded that at least some of the relevant goods (e.g. acoustical insulation barrier panels; seals, sealants and fillers) may also be directed at members of the general public wishing, for example, to renovate or soundproof their own apartments or perform basic household repairs.

The degree of attention may vary from average to high, depending on the public and the specialised and technical nature of the goods (08/11/2017, T‑777/16, iCell. Insulation Technology Made in Sweden, EU:T:2017:785, § 21).

3. The signs

Sylofloor
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 earlier mark consists of the single word ‘Sylofloor’. The contested sign is a figurative mark consisting of the word ‘SiloFilm’ at the top and a green curved line at the bottom. ‘SiloFilm’ is in title case letters, with no space between the elements ‘Silo and ‘Film’. ‘Silo’ is depicted in a green typeface, while ‘Film’ is in a black typeface. Above the word ‘Film’, the small element ® appears.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union 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 (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements ‘Film’ and ‘floor’ are meaningful in English-speaking countries. In those territories, these elements have a lower than average degree of distinctiveness, given the nature of at least some of the relevant goods. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

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 (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Consequently, while the rule is that marks are perceived as a whole, the exception to the rule is that, under certain circumstances, consumers may break them down into smaller parts.

In the present case, the element ‘floor’ of the earlier mark is meaningful for the relevant public and the Opposition Division therefore considers that at least part of the public will dissect the sign. Given that the distinctive character of this element will have an impact on the present assessment, the Opposition Division will focus on the part of the public that will break the sign down. The contested sign’s word elements are in two colours and title case letters, which creates a de facto separation between the words.

The word ‘Film’ in the contested sign will be understood as meaning ‘material in the form of a thin flexible sheet’ (information extracted from Oxford Dictionaries on 26/04/2018 at https://en.oxforddictionaries.com/definition/us/film). Given the nature of the contested goods, this element is non-distinctive for most of the contested goods. It has an average degree of distinctiveness in relation to some of the contested goods, in particular in relation to the contested seals.

The component ‘Silo’ in the contested sign is meaningful for the relevant public and is defined as ‘a tall round metal tower on a farm, in which cereals are stored’ (information extracted from Collins Dictionary on 26/04/2018 at https://www.collinsdictionary.com/es/diccionario/ingles/silo). However, the Opposition Division considers that given the goods at issue, at least a part of the relevant public will not perceive this particular meaning in the word ‘Silo’ but will, rather, consider it a fanciful element. In either case, this element has an average degree of distinctiveness, since it has no relation to the relevant goods, even if it is understood.

The contested sign also includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The figurative element of the contested sign will be perceived as a fanciful element and has an average degree of distinctiveness.

The contested sign has no element that could be considered more dominant than other elements.

The component ‘Sylo’ of the earlier mark is meaningless and has an average degree of distinctiveness.

The component ‘Floor’ in the earlier mark is defined as follows: ‘the floor of a room is the part of it that you walk on’ (information extracted from Collins Dictionary on 26/04/2018 at https://www.collinsdictionary.com/es/diccionario/ingles/floor). Considering the goods at issue, this element is non-distinctive, as it indicates that the goods are for use in particular for floors (e.g. for floor insulation).

Visually, the signs coincide in the letters ‘S*LO’ of their first word elements and in the letters ‘F’ and ‘L’ (despite ‘L’ not being in the same position) of their second word elements. They differ in their second letters, ‘Y’ in the earlier mark and ‘I’ in the contested sign, and in their endings, namely ‘LOOR’ and ‘ILM’, as well as in the contested sign’s stylisation and figurative element. The marks are of a similar length (eight letters in the earlier mark versus nine letters in the contested sign). The contested sign includes five out of the eight letters of the earlier mark, four of them appearing in the same sequence.

When a trade mark is composed of both verbal and figurative elements, 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; 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).

Moreover, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark.

Given, the weight attributed to the various elements of the signs, and taking into account that ‘floor’ and, for some of the goods, ‘Film’ are non-distinctive, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of their first element, ‘S(Y/I)LO’, and differs in the sound of their second elements, ‘FILM’ in the contested sign and ‘FLOOR’ in the earlier mark (even though both start with the letter ‘F’ and contain the letter ‘L’). The signs have two out of their three syllables in common.

As the beginning is the most significant part of a sign, and given that the distinctive component of the earlier mark is aurally entirely included in the contested sign at its beginning, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Bearing in mind that ‘floor’ is non-distinctive in the earlier mark, the signs are conceptually dissimilar if ‘Silo’ is associated with a meaning and/or ‘Film’ has some distinctive character. However, if ‘Silo’ is perceived as a fanciful element and ‘Film’ is non-distinctive in the contested sign, 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 the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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 conflicting signs are visually similar to an average degree and aurally similar to a high degree. The signs are conceptually not similar for some of the goods, whereas for the other goods the conceptual comparison has no influence.

The relevant public will display a higher than average degree of attention. The earlier mark has an average degree of distinctiveness.

It is settled case-law that, when the goods covered by the marks at issue are identical or highly similar, the degree of difference between the signs must be high to exclude a likelihood of confusion. In the present case, the fact that the marks at issue have a similar structure – namely, a highly similar meaningless (or at least meaningless in this context for part of the public) first component, ‘Sylo’/‘Silo’, followed by a second meaningful component (which is non-distinctive for almost all the goods at issue) – leads to the conclusion that the signs are sufficiently similar overall such that the relevant public might believe that the goods found to be identical or similar to a high degree had the same trade origin or came from economically or industrially linked undertakings.

Moreover, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) 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 European Union trade mark registration No 15 632 532. It follows that the contested trade mark must be rejected for all the contested goods.

As the abovementioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Zuzanna STOJKOWICZ

Birgit FILTENBORG

Julie, Marie-Charlotte HAMEL

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.