OPPOSITION No B 3 046 947

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

a g a i n s t

Creaton South-East Europe Kft., Cserépgyár utca 1., 8960 Lenti, Hungary (applicant), represented by Altius, Avenue du Port 86 C B414, 1000 Brussels, Belgium (professional representative).

On 30/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 046 947 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 481 011 ‘CREATHERM’ (word mark). The opposition is based on international trade mark registration No 1 279 386 ‘CERETHERM’ (word mark) designating Bulgaria, Czech Republic, Hungary, Poland, Romania and Slovakia. 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.

a) The goods

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

Class 17: Stopping and insulating materials.

Class 19: Building materials (not of metal); coatings.

The contested goods are the following:

Class 19: Building and construction materials and elements, not of metal, in particular for roofing and cladding; roofing materials, not of metal; roofing underlayment; cladding materials, not of metal; tiles; slates; corrugated sheets; sidings; building panels; refractory construction materials.

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

The term ‘in particular’, used in the applicant’s list 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

The contested building and construction materials and elements, not of metal, in particular for roofing and cladding are included in the broad category of the opponent’s building materials (not of metal). Therefore, they are identical.

The contested roofing materials, not of metal; roofing underlayment; cladding materials, not of metal; tiles; slates; corrugated sheets; sidings; building panels; refractory construction materials are all different kinds of non-metallic building materials and therefore, they are included in the broad category of the opponent’s building materials (not of metal). Therefore, they are identical.

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 identical are directed at the public at large on the DIY-market and at professionals with specific professional knowledge or expertise.

The degree of attention will vary from average to high, because some of the relevant goods could be expensive and/or their performance quality is of importance.

c) The signs

CERETHERM	CREATHERM
Earlier trade mark	Contested sign

The relevant territories are Bulgaria, Czech Republic, Hungary, Poland, Romania and Slovakia.

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).

Both marks are nine-letter word marks and have no meaning as a whole for the relevant public. Therefore, they have an average distinctiveness in relation to the goods in question.

However, the Court has held that, although average consumers normally perceive a mark as a whole and do 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). Therefore, at least a part of the relevant public will be able to split the earlier mark into the elements ‘CERE’ and ‘THERM’ and the contested sign into the elements ‘CREA’ and ‘THERM’, because ‘THERM’ will be understood by the relevant public as a direct reference to ‘heat’ (29/08/2016, R 783/2015-4, MARCOTHERM / MICROTHERM). It is also identical or very close to the equivalent word in the official language in at least some of the relevant territories, such as in Bulgarian: терм [term], Polish: terma and Romanian: term. In relation to building materials, the suffix ’THERM’ will be understood by the relevant consumer as a reference to warmth and insulation. Bearing in mind that the relevant goods in both marks are building materials (not of metal), this element is weak for the goods in question, as it alludes to their intended purpose as thermal insulators.

The element ’CERE’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The element ’CREA’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, it is true that the signs have the same number of letters (nine) and share the suffix ‘THERM’. This element is however weak. The marks furthermore coincide in some letters; the initial letter ‘C’ and in two letters ‘R’ and ‘E’, however in inverted order, in the first part of the marks. Moreover, the common weak element ‘THERM’ appears at the end of the marks where the consumers do not focus their attention, as described above. The beginnings of the marks are, despite a few common letters, rather different: ‘CERE’ versus ‘CREA’.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛THERM’, present identically at the end of both signs. This element is weak. The pronunciation differs (even though some letters coincide) in the sound of the first letters ‛CERE’ of the earlier mark, and the letters ‘CREA’ of the contested sign. For example, in Bulgarian, these first elements are pronounced as [zere] versus [srea or krea], in Hungarian [zere] versus [tsrea] and in Polish [tsere] versus [tsrea].

Therefore, the signs are aurally similar to only a low degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘THERM’, included in both signs, will be associated with the meaning explained above. However, since this element is weak for the relevant goods, the signs are conceptually similar to a very low degree.

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.

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 weak element in the mark, as stated above in section c) of this decision.

e) 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. The degree of attention is average to high.

The signs are visually and aurally similar to a low degree and conceptually similar to only a very low degree. The main similarity between the signs lies in the weak verbal element ‘THERM’, placed as a suffix at the end of both marks. This element is likely to be considered secondary by the relevant public, especially since their level of attention is rather high while purchasing the relevant building materials. The relevant public with an average degree of attention will also note the differences in the beginning of the marks. Therefore, the Opposition Division considers that the similarities between the signs are not sufficient to lead to a likelihood of confusion or association on the part of the public.

As seen above, the opponent did not claim that its earlier mark enjoys a higher than average degree of distinctiveness on account of its extensive use on the market. Under the principle of interdependence the low degree of similarity of the marks would require some degree of enhanced distinctiveness, even for identical goods. Otherwise there would be no room for the factor of enhanced distinctiveness (see 17/04/2008, C‑108/07 P, Ferro, EU:C:2008:234, § 58). There can be no automatism for finding a likelihood of confusion in instances where the similarity is only low.

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

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

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

Begoña URIARTE VALIENTE

Lena FRANKENBERG GLANTZ

Katarzyna ZANIECKA

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.