OPPOSITION Nо B 3 078 407

Kingspan Holdings (IRL) Limited, Dublin Road, Kingscourt, Ireland (opponent), represented by Tomkins & Co., 5 Dartmouth Road, 6 Dublin, Ireland (professional representative)

a g a i n s t

Ravago S.A., 76-78, Rue De Merl, 2146 Luxembourg, Luxembourg (applicant), represented by Office Freylinger S.A., 234, Route d’Arlon B.P. 48, 8001 Strassen, Luxembourg (professional representative).

On 10/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 078 407 is upheld for all the contested goods, namely:

Class 17: Plastics and resins in extruded form for use in manufacture; packing materials; stopping materials; insulating materials; flexible pipes, tubes and hoses, not of metal; polystyrene semi-finished products; extruded polystyrene insulation boards; polystyrene panels for insulating purposes; extruded polystyrene pellets; extruded polystyrene pellets for packing.

2. European Union trade mark application No 17 984 421 is rejected for all the above goods. It may proceed for the remaining non-contested goods, namely:

Class 17: Rubber, raw or semi-worked; mica, raw or partly processed; gum, raw or semi-worked; unprocessed and semi-processed gutta-percha; unprocessed and semi-processed asbestos; substitutes for unprocessed and semi-processed rubber; substitutes for unprocessed and semi-processed gutta-percha; substitutes for unprocessed and semi-processed gum; substitutes for unprocessed and semi-processed asbestos; substitutes for unprocessed and semi-processed mica.

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

REASONS

On 15/03/2019, the opponent filed an opposition against some of the goods of European Union trade mark application No 17 984 421 for the word mark ‘ECOTHERMO XPS’, namely against some of the goods in Class 17. The opposition is based on, inter alia, Benelux trade mark registration No 950 334 for the word mark ‘ECOTHERM’. The opponent invoked Article 8(1)(b) EUTMR.

EARLIER UK RIGHT No 3 022 443

On 01/02/2020, the United Kingdom (UK) withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows that United Kingdom trade mark registration No 3 022 443 for the word mark ‘ECOTHERM’ no longer constitutes a valid basis for the opposition.

The opposition must therefore be rejected insofar as it is based on this earlier right.

PROOF OF USE – EARLIER BENELUX RIGHT No 950 334

On 20/07/2020, the applicant requested that the opponent submit proof of use of the earlier marks, including Benelux trade mark registration No 950 334 for the word mark ‘ECOTHERM’.

In the present case, the date of filing of the contested trade mark is 13/11/2018, whereas the date of priority claimed for this mark is 25/05/2018.

According to the Guidelines, Part C, Opposition, Section 1, Annex, ‘Calculation of the grace period for non-use in case of national marks’, where a Benelux mark is concerned, the relevant date for the purposes of calculating the proof of use requirement is defined as ‘5 years following the date of completion of the registration procedure’. In the present case, earlier Benelux trade mark registration No 950 334 was registered on 22/01/2014. Therefore, the request for proof of use of this earlier mark is inadmissible.

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 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, 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 Benelux trade mark registration No 950 334.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 17: Sealing, packing and insulating material; flexible tubes and hoses; expanded polystyrene for insulation.

The contested goods are the following:

Class 17: Plastics and resins in extruded form for use in manufacture; packing materials; stopping materials; insulating materials; flexible pipes, tubes and hoses, not of metal; polystyrene semi-finished products; extruded polystyrene insulation boards; polystyrene panels for insulating purposes; extruded polystyrene pellets; extruded polystyrene pellets for packing.

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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.

Packing materials; insulating materials; flexible tubes and hoses, not of metal are identically contained in both lists of goods (including synonyms).

The contested extruded polystyrene insulation boards; polystyrene panels for insulating purposes are included in the broad category of the opponent’s insulating material. Therefore, they are identical.

The contested polystyrene semi-finished products include, as a broader category, or at least overlap with, the opponent’s expanded polystyrene for insulation. 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 extruded polystyrene pellets for packing; extruded polystyrene pellets are included in the broad category of, or at least overlap with, the opponent’s packing material. Therefore, they are identical.

Stopping materials are ‘barrier’ materials (in the sense of ‘filling’ or ‘sealing’ enclosures) designed to stop the passage of gases, liquids, or radiation. Therefore, the contested stopping materials include, as a broader category, or at least overlap with, the opponent’s sealing material. 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 flexible pipes, not of metal are hollow cylindrical objects used, for example, to convey liquids or gases or as a protective conduit through which wires or other material can be pulled. The opponent’s flexible tubes are round, square, rectangular or oval hollow sections that are used for pressure equipment, for mechanical applications, and for instrumentation systems. The goods under comparison are all used for construction, although their specific purposes differ very slightly. Moreover, they have the same nature, producers, distribution channels and relevant public. Consequently, they are highly similar.

Although the contested resins in extruded form for use in manufacture are semi-processed materials, some of them (e.g. insulating acrylic resins) can be used in that form for insulating electrical connectors or to insulate against heat. Therefore, they can be in competition with the opponent’s insulating material. Furthermore, they can be obtained through the same distribution channels and have the same end users (e.g. construction professionals and do-it-yourself enthusiasts, who could use these goods for building insulation purposes). Therefore, these goods are similar.

The same logic applies to the contested plastics in extruded form for use in manufacture. Plastic extrusion refers to the process whereby a polymer is mixed, heated, melted, compressed and pumped through a shaped die to form a continuous stream of product of the desired cross-sectional shape. Extrusion usually results in a semi-finished or intermediate product that can be used in that form for insulating and can therefore be in competition with the opponent’s insulating material. Furthermore, they can be obtained through the same distribution channels and have the same end users. Therefore, these goods are similar.

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 in question.

In the present case, the goods and services found to be identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased. In particular, both groups will display a high level of attention in relation to some of the relevant goods, for example insulating materials, given the technical and craftsmanship knowledge required (15/09/2016, R 2496/2015‑1, ICell (fig.) / ISOCELL et al., § 14).

c) The signs

ECOTHERM	ECOTHERMO XPS
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (09/03/2005, T‑33/03, Hai, EU:T:2005:89, § 39; 03/03/2004, T‑355/02, ZIRH, EU:T:2004:62, § 36).

Both signs are word marks. 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 that the mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is generally irrelevant whether word marks are depicted in upper- or lower-case letters. Neither of the signs deviates from the usual way of writing, since both signs are written in upper-case letters, which is a fairly common way of depicting words.

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 they know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Therefore, it is likely that the relevant public will break each sign down into two elements they know, namely ‘ECO’ and ‘THERM’ in the case of the earlier mark and ‘ECO’ and ‘THERMO’ in the case of the contested sign.

The coinciding element ‘ECO’ will be understood as an abbreviation for ‘ecology’. In this regard, the Court has already established that ‘eco’ is a commonly used abbreviation in English for ‘ecology’, ‘ecological’ or ‘environmentally friendly’ (13/07/2017, T‑150/16, ECOLAB, EU:T:2017:490, § 33). In fact, it is a well-known fact that ‘eco’ is widely used throughout the European Union to mean ‘ecological’ (10/09/2018, R 188/2018‑2, EcoAqua, § 21). Accordingly, it is likely that the relevant consumers will identify the element ‘ECO’ at the beginning of both signs’ verbal elements and attribute to it the abovementioned connotations of ‘ecological’ or ‘environmentally friendly’. Therefore, in relation to the relevant goods in Class 17, this verbal component is inherently distinctive to at most a low degree.

The earlier mark’s verbal component ‘THERM’ is a common element denoting ‘heat’ or ‘temperature’ in various languages, including those spoken in the relevant territories: for example, therme, thermal, thermies, thermique, and thermaliser in French; thermisch in Dutch; and thermal, thermisch in German. Similarly, the contested sign’s verbal component ‘THERMO’ is commonly used throughout the respective territory as a reference to ‘heat’ or ‘temperature’ because either the same word or similar equivalent words exist in their respective languages (e.g. Dutch and French) (03/03/2021, R 1117/2020‑2, THERMOKNIT (fig.) / THERMONET (fig.), § 27). Therefore, these verbal elements will be perceived as alluding to the thermal features or purpose of the relevant goods in Class 17, and they are considered weak in relation to them. However, contrary to the applicant’s argument, and in light of the case-law, ‘ECOTHERM’ and ‘ECOTHERMO’, taken as a whole, have no clear and direct meaning in relation to the goods and are not descriptive of ecological or economical thermal insulation products (03/03/2016, R 1321/2015‑5, ECOTERME (fig.) / ECOTHERM BLUELINE, § 41, 45; see, to this effect, 24/03/2021, 168/20, Creatherm / Ceretherm, EU:T:2021:160, § 62).

As argued by the opponent, the contested sign’s verbal element ‘XPS’ will be perceived by at least a part of the relevant public as an acronym for ‘extruded polystyrene’ used in the relevant insulation and building material sectors. This verbal element is non-distinctive for the goods in Class 17, as it informs consumers that the goods are extruded polystyrene or contain extruded polystyrene as an essential component. This applies equally to flexible pipes, tubes and hoses, not of metal, as these are often insulated with extruded polystyrene in order to increase their resistance to moisture, mildew, corrosion, and rot as well as to prevent them softening or losing strength at high temperatures. The Opposition Division finds it appropriate to focus the assessment on the part of the public that will perceive the verbal element ‘XPS’ as having the abovementioned meaning.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. In the present case, the signs are relatively long (eight and twelve letters, respectively).

Visually and aurally, the signs coincide in the sequence of letters ‘ECOTHERM*’ (and their sound), present identically in both signs. These letters constitute, respectively, the entire earlier mark and almost all the letters of the contested sign’s first and most conspicuous verbal element. They differ mainly in the additional letter/sound ‘O’, placed at the end of the contested sign’s most distinctive verbal element, which has no counterpart in the earlier mark. They also differ in the additional verbal element ‘XPS’ of the contested sign, which, however, has a minimal impact on the sign’s overall impression, due to its non-distinctive character for the goods at issue, as explained above.

Furthermore, 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. The word ‘ECOTHERMO’ is the contested sign’s initial element and will therefore catch the consumers’ attention first when they encounter it.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The part of the relevant public under examination will associate the signs with essentially the same notions as those conveyed by the verbal elements ‘ECO’ and ‘THERM’/’THERMO’, which have the meaning and degree of distinctiveness described above. The signs differ mainly in the concept evoked by the contested sign’s verbal element ‘XPS’. However, this element does not create any relevant conceptual difference, as it is non-distinctive and cannot indicate the commercial origin. Therefore, the signs are conceptually highly similar.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier marks on the market, the association that can be made with the registered marks, and the degree of similarity between the marks, and between the goods identified. It must be appreciated globally, taking into account all the 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).

The goods are partly identical and partly similar to varying degrees. They target the public at large and professional public. The public’s degree of attentiveness is average to high. 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).

The signs are visually, aurally and conceptually similar to a high degree. The entirety of the earlier mark ‘ECOTHERM’ is reproduced as the contested sign’s initial, independent and distinctive element ‘ECOTHERMO’, which is that mark’s main indicator of origin. As explained above, the beginning is the part of a sign to which consumers will pay more attention. The additional differing elements of the contested sign, namely the last letter ‘O’ and its additional verbal element ‘XPS’ is non-distinctive and not sufficient to create a significant difference between the signs for identical and similar goods. Overall, the differences between the signs are not sufficient to counteract the existing similarities, which result from the complete reproduction of the earlier mark at the beginning of the contested sign’s most distinctive element.

The applicant argues that the coincidence in the verbal element ‘ECOTHERM*’, which does not have a high degree of distinctiveness in the earlier mark, cannot prevail over the need to take account of the marks’ different overall impressions in assessing their similarity. In the applicant’s view, the relevant public will be able to differentiate between the marks due to the addition of the letter ‘O’ and the element ‘XPS’. The Opposition Division agrees that the coincidence in some elements has to be put into perspective and refers to the previous arguments in the comparison of the signs. If trade marks have almost identical parts that are weak or that have at most a low degree of distinctiveness, the differences between the signs are to be given more importance in the overall assessment (see, to this effect, 18/03/2002, R 814/2001‑3, ALL-DAY AQUA / Krüger All Day (fig.), § 50; 14/05/2001, R 257/2000‑4, FIG/COLOUR MARK (e plus) / PLUS, § 22). Nevertheless, in the present case, the differences between the signs are confined to the verbal element ‘XPS’, which is non-distinctive, and a single letter placed at the end of the more distinctive verbal element ‘ECOTHERMO’. However, this element does not differentiate the signs conceptually, as it does not add any semantic content to the term as a whole.

Therefore, even taking into account the weakness of the signs’ coinciding components and the weak inherent distinctiveness of the earlier mark, in general the differences between the signs are clearly insufficient to enable the relevant public, even with a high level of attention, to safely distinguish between them. In a number of cases, word elements that may have limited distinctive character have been recognised as relevant in the comparison of the signs, ultimately concluding that there is a likelihood of confusion (see, inter alia, 20/07/2016, T‑745/14, easy Credit (fig.), EU:T:2016:423, § 40-43; 21/07/2016, T‑804/14, Tropical, EU:T:2016:431, § 87-89, 136; 19/04/2016, T‑326/14, HOT JOKER / JOKER et al., EU:T:2016:221, § 76-78, 80; 26/01/2016, T‑202/14, LR nova Pure. / NOVA, EU:T:2016:28, § 42-49, 59, 71-73, 81-82, 89, 97-98).

The abovementioned findings are not called into question by the earlier mark’s low degree of distinctiveness. Indeed, according to established case-law, a finding of a low degree of distinctiveness for the earlier mark does not mean that there is no likelihood of confusion. Although the distinctive character of an earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others in that assessment. Therefore, even in a case involving an earlier mark with a low degree of distinctiveness and a contested sign that does not completely reproduce it, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods covered (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 61). Furthermore, in cases where the earlier mark has a low degree of distinctiveness, finding a likelihood of confusion only where the contested sign completely reproduces it, whatever the degree of similarity between the marks, would not be consistent with the nature of the global appreciation required by virtue of Article 8(1)(b) EUTMR (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 71). In the present case, although the earlier mark has a low degree of distinctiveness, this is outweighed by the fact that the goods are identical and similar to varying degrees, and that the entirety of the earlier mark is reproduced as the contested sign’s initial, independent and most distinctive element.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Benelux public.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees to those of the earlier trade mark.

As earlier Benelux trade mark registration No 950 334 for the word mark ‘ECOTHERM’ 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, 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

Gueorgui IVANOV

Anna PĘKAŁA

Lars HELBERT

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.