OPPOSITION No B 2 930 199

Sedak GmbH & Co. KG, Einsteinring 1, 86368 Gersthofen, Germany (opponent), represented by Charrier Rapp & Liebau, Fuggerstr. 20, 86150 Augsburg, Germany (professional representative)

a g a i n s t

Cristalmax - Indústria de Vidros, Zona Industrial de Murtede, 3060-372 Murtede, Portugal (applicant), represented by Sara Maggioni Bastos, Largo das Teixugueiras nº316, 4815-474 S. Miguel – Vizela, Portugal (professional representative).

On 27/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 930 199 is upheld for all the contested goods, namely:

Class 19: Insulating glass [building].

2. European Union trade mark application No 16 873 416 is rejected for all the contested goods. It may proceed for the remaining services.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. 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 and services of European Union trade mark application No 16 873 416, for the figurative mark , namely against all the goods in Class 19. The opposition is based on European Union trade mark registration No 16 199 291, for the word mark ‘ISOMAX’. 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 9: Glass for optical elements.

Class 19: Building glass, in particular glass fins; window glass, except glass for vehicle windows; window glass for building; plate glass [windows] for building, in particular explosion-resistant glass; enamelled glass, etched glass, sand-blasted glass, cut glass, coated glass, printed glass and/or polished glass used in building; heat-insulating and/or UV-insulating coated glass for building; plate glass (windows) for special lighting effects using daylight and artificial light through hologram technology and optoelectronic elements; insulating glass [building]; casement windows, not of metal; frameworks for buildings, not of metal, namely glass fins with load-bearing capacity; stairways, not of metal, namely steps of glass; stair-treads, not of metal, namely stair treads (steps) of glass; stair stringers, not of metal, namely stringers (parts of staircases) of glass; structures, not of metal, namely structures of glass; laminated glass, in particular combined with other materials, with optical, holographic and optoelectronic elements; tempered glass used in buildings, in particular chemically pre-stressed glass; glass used in building curved through cold forming and thermoforming; structures and laminates consisting predominantly of glass, including with silicon and metal, being supporting structures, framework structures and base structures.

Class 21: Enamelled glass; unworked or semi-worked glass (except glass used in building), in particular etched glass, sand-blasted glass, cut glass, printed glass, coated glass and polished glass; glass incorporating fine electrical conductors, in particular optoelectronic elements.

The contested goods are the following:

Class 19: Insulating glass [building].

Insulating glass [building] is identically contained in both lists of goods.

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 are directed both at professionals in the building sector and at the general public occasionally carrying out private construction, repair or renovation works. The public’s degree of attention may vary from average to higher than average, depending on the price, sophistication and frequency of purchase of the goods.

3. The signs

ISOMAX
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 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 combinations of letters ‘ISO’ and ‘ISOL’ can be understood as short for ‘insulating’ in some languages (e.g. in French as shortened versions of the word ‘isolation’). Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish‑speaking part of the public, for which the elements ‘ISO’ and ‘ISOL’ do not mean ‘insulating’.

The earlier sign is a single-word mark, ‘ISOMAX’. The letters ‘ISO’ correspond to the name of an international certification system and the letters ‘MAX’ could be perceived as a shortened version of the word ‘maximum’, or ‘máximo’ in Spanish, by at least part of the public.

However, the sign is not likely to be broken down by the public into word elements that have a concrete meaning or resemble words known to it and that, together, would form a coherent whole giving a meaning to the earlier mark. In any case, the meanings referred to above have no direct connection with the goods at issue and, in addition, the letters ‘MAX’ are not a common suffix in Spanish. Therefore, it is very likely that a significant part of the public will not dissect the earlier sign but will perceive it as a whole with no meaning.

Therefore, the earlier sign as a whole is distinctive to a normal degree.

The contested sign is a figurative sign composed of a single word element containing the letters ‘ISOLmax’, the first four letters being yellow and upper case and the following letters being blue and lower case. To the right of the word element of the sign is a blue square with a white diamond inside it; however, this element is clearly secondary because of its position at the very end of the sign and its much smaller size. The letters ‘ISOL’ are meaningless, whereas the letters ‘max’, as seen above, could be perceived as a shortened version of the word ‘maximum’ by a part of the public.

Taking into account in particular the typeface and the colours used, as well as the fact that the letters ‘max’ could convey a concept, it is likely that the public will break the sign into two elements, ‘ISOL’ and ‘max’.

The first part of the sign, ‘ISOL’, has no meaning in relation to the goods at issue and is, therefore, distinctive. The second part, ‘max’, even though it may be perceived by a part of the public as ‘maximum’, is also distinctive insofar as it has no clear meaning in relation to the goods in question.

The figurative element and the specific typeface and colours used in the contested sign have less impact on the consumer than the word elements.

Visually, the signs coincide in the letters ‘ISO*MAX’, which constitute the entire earlier sign.

The signs differ in the additional fourth letter, ‘L’, of the contested sign; however, consumers tend not to attribute very much importance to the central parts of words (01/02/2012, T‑353/09, mtronix, EU:T:2012:40, § 42).

Moreover, the signs also differ in the additional figurative element, the typeface and the colours of the contested sign. However, 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).

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the syllables /i/so*/max/, present identically in both signs. The pronunciation differs only in the sound of the additional letter, the consonant ‘L’, of the contested sign. Therefore, the earlier mark and the contested sign’s word elements have the same beginning, the same ending and the same rhythm. The difference stemming from the differing additional sound in the second syllable of the contested sign is not able to neutralise the similarities between those words, since consumers tend not to attribute very much importance to the central parts of words (01/02/2012, T‑353/09, mtronix, EU:T:2012:40, § 44).

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs contain the same meaning as regards the element ‘MAX’, but also contain additional concepts, the signs are conceptually similar to an average degree.

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.

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 goods are identical and target the public at large and professionals with a degree of attention varying from average to higher than average.

The signs are visually and aurally highly similar, and conceptually similar to an average degree. The earlier mark has a normal degree of distinctiveness.

All the letters of the earlier sign are contained in the contested sign, whereas the additional elements in the contested sign (i.e. the letter ‘L’ and the figurative elements) are not sufficient to counterbalance the similarities between the signs. 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).

Furthermore, according to case-law, when the goods covered by the marks at issue are identical, the degree of difference between the signs must be high to exclude a likelihood of confusion.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-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 16 199 291. It follows that the contested trade mark must be rejected for all the contested goods.

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

Richard BIANCHI

Cindy BAREL

Marta GARCÍA COLLADO

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.