OPPOSITION Nо B 3 101 267

 

Oknoplast IP Management Spółka Z Ograniczoną Odpowiedzialnością Spółka Komandytowa, ul. Dekerta 24, 30-703 Kraków, Poland (opponent), represented by AG Górska Tułecki Spółka Partnerska Kancelaria Patentowa i Radcowska, ul. Długa 59/5, 31-147 Kraków, Poland (professional representative) 

 

a g a i n s t

 

al bohn Fenster-Systeme GmbH, In Der Au 16, 74889 Sinsheim, Germany (applicant), represented by Gerhard Amling, In Der Au 16, 74889 Sinsheim, Germany (professional representative).

 

On 26/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 101 267 is upheld for all the contested goods and services.

 

2.	European Union trade mark application No 18 098 306 is rejected in its entirety.

 

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

 

REASONS

 

On 25/10/2019, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 098 306 TerraLinea (word mark). The opposition is based on European Union trade mark registration No 14 696 876, TERRA (word mark). 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 and services

 

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

Class 6: Metal windows; metal terrace windows; metal terrace windows; metal roller shutters; metal blinds; metal doors; metal balcony doors; metal terrace doors; metal shutters; metal windowsills; metal gates; metal garage doors; metal door and window frames; parts of windows, of metal; parts of roller shutters, of metal; parts of blinds, of metal; parts of doors, of metal; parts of shutters, of metal; window profiles, of metal; roller shutter profiles, of metal; blinds profiles, of metal; door profiles, of metal; shutter profiles, of metal; window fittings, of metal; roller shutter fittings, of metal; blinds fittings, of metal; door fittings, of metal; shutter fittings, of metal.

Class 19: Windows, not of metal; balcony windows, not of metal; terrace windows, not of metal; roller shutters, not of metal or textile; blinds, not of metal; doors, not of metal; balcony doors, not of metal; terrace doors, not of metal; shutters, not of metal; windowsills, not of metal; gates, not of metal; garage doors, not of metal; door and window frames; not of metal; parts of windows, not of metal; parts of roller shutters, not of metal; parts of blinds, not of metal; parts of doors, not of metal; parts of shutters, not of metal; window profiles, not of metal; roller shutter profiles, not of metal; blinds profiles, not of metal; door profiles, not of metal; shutter profiles, not of metal;  window panes; glazed units [windows].

Class 37: Building construction; assembly, installation and repair of windows; assembly, installation and repair of balcony windows; assembly, installation and repair of terrace windows; assembly, installation and repair of roller shutters; assembly, installation and repair of blinds; assembly, installation and repair of doors; assembly, installation and repair of balcony doors; assembly, installation and repair of terrace doors; assembly, installation and repair of shutters; assembly, installation and repair of windowsills; assembly, installation and repair of gates; assembly, installation and repair of garage doors; assembly, installation and repair of door and window frames; assembly, installation and repair of parts of windows; assembly, installation and repair of parts of roller shutters; assembly, installation and repair of parts of blinds; assembly, installation and repair of parts of doors; assembly, installation and repair of parts of shutters;  assembly, installation and repair of window profiles; assembly, installation and repair of roller shutter profiles; assembly, installation and repair of blinds profiles; assembly, installation and repair of door profiles; assembly, installation and repair of shutter profiles; assembly, installation and repair of window fittings; assembly, installation and repair of roller shutter fittings; assembly, installation and repair of blinds fittings; assembly, installation and repair of door fittings; assembly, installation and repair of shutter fittings; assembly, installation and repair of curtain walls; assembly, installation and repair of sunrooms (constructions); assembly, installation and repair of glass for building; assembly, installation and repair of window glass for building; assembly, installation and repair of window panes; assembly, installation and repair of glazed units [windows].

 

The contested goods and services, following the limitations requested by the applicant on 15/10/2019 and 23/11/2020,  are the following:

 

Class 6: Metal terrace roofs, metal roofing for terraces, roofing materials of metal, metal roof trusses, roof gutters of metal, soffits (metal), eaves of metal, greenhouse frames of metal.

Class 19: Terrace roofs not of metal, roofing for terraces not of metal, building materials consisting of glass, roofing materials not of metal, common sheet glass for building.

Class 37: Assembly of terrace roofs of metal, assembly of terrace roofs not of metal, assembly of roofing for terraces of metal, assembly of roofing for terraces not of metal, constructing (erecting and glazing) conservatories, roofing installation.

 

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.

 

Contested goods in class 6

The contested roofing materials of metal; metal roof trusses; roof gutters of metal; soffits (metal); eaves of metal; greenhouse frames of metal; metal terrace roofs; metal roofing for terraces are similar to a low degree to the opponent's metal doors because they coincide in producer, relevant public and distribution channels. In this light, the contested goods are essentially materials made of metal and parts or fittings for roofs while the opponent’s goods in Class 6 are, inter alia, doors made of metal, which are aimed at building/renovating houses or other edifices. As the opponent observes, the consumers (end users) of the goods in question may be the same, namely specialised consumers in the area of building construction. Furthermore, the know-how required to produce these goods is similar and therefore, they may be produced by the same manufacturer as well as distributed through the same channels as these goods may be used together in building or renovating a house.

Contested goods in class 19

The contested common sheet glass for building are similar to a low degree to the opponent's windows, not of metal because they are complementary and might be sold through the same distribution channels, and the producers of the goods might be the same.

The contested terrace roofs not of metal; roofing for terraces not of metal; roofing materials not of metal; building materials consisting of glass are similar to a low degree to the opponent's doors, not of metal as they usually coincide in producer, relevant public and distribution channels. In this regard, the goods under dispute may be used together in building or renovating a house, they require a similar know-how and may be manufactured by the same undertaking.

Contested services in class 37

The contested constructing (erecting and glazing) conservatories; roofing installation; assembly of terrace roofs of metal; assembly of terrace roofs not of metal; assembly of roofing for terraces of metal; assembly of roofing for terraces not of metal are included in the opponent's broad category of building construction. 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 and services found to be identical or similar are directed at the general public (e.g. DIY enthusiasts) and at business customers with specific professional knowledge or expertise, such as those in the building sector.

 

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 the present case, the goods and services are intended for the construction or installation of parts of buildings where the degree of attentiveness to the products selected and the services provided ranges from average to high, due to their technical and specialised nature.

 

c) The signs

 

TERRA	TerraLinea
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.

 

Both marks are word marks: the earlier mark consists of the word ‘Terra’ and the contested sign is ‘TerraLinea’. In word marks, it is the word as such that is protected and not its written form. Consequently, it is irrelevant whether the signs are represented in upper- or lower-case characters unless the word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing (‘irregular capitalisation’). In this case, such capitalisation of the contested sign must be taken into account because it may have an impact on how the public perceives the sign, and consequently, on the assessment of similarity.

Therefore, the capital L in the middle of the contested sign will lead the public to clearly perceive two distinct words: ‘Terra’ and ‘Linea’.

The common element ‘Terra’ contained in both signs is meaningful in certain territories, for instance, for the Portuguese and Italian-speaking part of the public, it will be understood as ‘earth’. Due to the fact that ‘terra’ has a Latin root, a similar word can be found in other Romance languages, such as ‘Tierra’ in Spanish and ‘Terre’ in French. For these territories, although the common element has a meaning, it is unrelated to the goods and services under analysis, and therefore it is distinctive. The same finding is applicable for the remaining part of the public that would not understand the meaning of ‘Terra’.

The contested sign is composed of the verbal element ‘TerraLinea’, which does not exist as such in any language spoken in the relevant territory, and as mentioned above, will be perceived as two distinct words: ‘Terra’ and ‘Linea’.

The differing element ‘Linea’ of the contested sign will be understood throughout the European Union as a variation of the basic English word ‘line’, which refers to, inter alia, a product type or range (see, inter alia, judgment 22/05/2012, T-273/10, EU:T:2012:246, O⋅LIVE, § 60). Therefore, the relevant public will not pay as much attention to this weak element as to the other more distinctive element of the mark ‘Terra’.

 

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 and aurally, the signs coincide in the element/sound ‘Terra’ which is to be regarded as distinctive and located at the beginning of the contested mark. The signs differ in the element/sound ‘Line’, which is has a low distinctive character, as explained above.

 

Therefore, the signs are highly similar.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.  The common element ‘Terra’ contained in both signs is meaningful and distinctive in certain territories while in others it has no meaning. The element Linea in the contested sign would be understood throughout the relevant territory and perceived as a weak element. Therefore, for the part of the public who would understand the concept conveyed by the word element ‘Terra’ the signs are conceptually highly similar while for the remaining part of the public who would not perceive any semantic meaning in this element the signs are not conceptually similar, since consumers would in any case perceive the meaning of the weak element ‘Linea’.

 

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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).

 

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.

 

The goods and services have been found partially identical, and partially similar to a low degree. The earlier mark was found to be distinctive to a normal degree.

The marks are visually and aurally highly similar. They are conceptually highly similar for the part of the public who understands the semantic meaning of the coinciding element ‘TERRA’, which will be associated with the distinctive concept of ‘earth’. For the remaining part of the public who would not understand this element, only the contested sign would convey a concept, albeit weak, and therefore, the signs would not be conceptually similar.

The earlier mark is wholly included in the contested sign and differs only in the element ‘Linea’, which as above mentioned in c) would be perceived as a weak element and which moreover is placed at the end of the contested sign, while the beginnings of the signs, where consumers focus their attention, are identical.

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).

 

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

  

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

 

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 696 876. It follows that the contested trade mark must be rejected for all the contested goods and services.

 

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

 

 

Helen Louise MOSBACK

Inês RIBEIRO DA CUNHA

Julia GARCÍA MURILLO

 

 

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.