OPPOSITION No B 2 525 221

Sealed Air Corporation (US), 200 Riverfront Boulevard, Elmwood Park, New Jersey 07407, United States of America (opponent), represented by J A Kemp, 14 South Square Gray’s Inn, London WC1R 5JJ, United Kingdom (professional representative)

a g a i n s t

Haverkamp GmbH, Zum Kaiserbusch 26-28, 48165 Münster, Germany (applicant).

On 04/08/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 525 221 is partially upheld, namely for the following contested goods:

Class 17: Plastics materials in the form of sheets [semi-finished products]; foils of plastics [semi-finished products]; adhesive tapes, strips, bands and films; translucent tri-wall sheets made of polycarbonates; translucent twin-wall sheets made of polycarbonates; polyester sheets [other than for wrapping or packaging]; adhesive coated foils for use in manufacture; semi-finished polyamide resins in the form of sheets; rubber in the form of sheeting for use in manufacture; reflective sheeting (non-metallic -) for obviating heat transmission; synthetic resins in sheet form for use in manufacture; polypropylene films, other than for wrapping or packaging; insulating foils; foils of metal for insulating; anti-dazzle films for windows [tinted films]; laminate foil for application to a substrate

Class 19: Cladding, not of metal, for building; acoustic panels of wood for ceilings; soundproof hoods [structures], not of metal; non-metallic building materials having acoustic properties; thermal blinds (non-metallic -) [slatted outdoor]; timber laminates; laminates (non-metallic -); laminates of non-metallic materials for use in building

2. European Union trade mark application No 13 721 618 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 721 618, namely against all the goods in Classes 17 and 19. The opposition is based on European Union trade mark registration No 10 129 419. The opponent invoked Article 8(1)(a) and (b) EUTMR.

PRELIMINARY REMARKS

In its notice of opposition dated 13/05/2015, the opponent based its opposition on the grounds set out in Article 8(1)(a) and (b) and 8(5) EUTMR and directed the opposition against all goods of the application.

However, in its subsequent arguments in support of the opposition dated 30/09/2015, the opponent declared that it no longer intended to rely upon the ground set out in Article 8(5) EUTMR and no longer intended to direct the opposition against the applicant’s goods in Class 12. The opponent stated that it intended to restrict the scope of the opposition to the grounds set out in Article 8(1)(a) and (b) EUTMR and against the goods in Classes 17 and 19 covered by the contested mark.

The Opposition Division acknowledges the restriction made by the opponent and will examine the present opposition accordingly.

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 17: Plastic foam products for use in and as acoustic insulation and sound absorption, as vibration dampening materials, and as an insulation material in structural panels and planks

Following the limitation of the list of goods in Class 17 requested by the applicant on 11/04/2016, the contested goods are the following:

Class 17: Plastics materials in the form of sheets [semi-finished products]; sheets of printable polypropylene; foils of plastics [semi-finished products]; adhesive tapes, strips, bands and films; semi-processed vehicle brake lining sheet stock; sheets of printable coated polyethylene; translucent tri-wall sheets made of polycarbonates; translucent twin-wall sheets made of polycarbonates; polyester sheets [other than for wrapping or packaging]; adhesive coated foils for use in manufacture; foils of cellulose [other than for wrapping or packaging]; semi-finished polyamide resins in the form of sheets; sheets of regenerated cellulose, other than for wrapping; microporous synthetic sheets for the manufacture of protective clothing; microporous synthetic sheets for the manufacture of protective rainwear; regenerated cellulose for use in manufacture; plastics in the form of sheets, films, blocks, rods and tubes; rubber in the form of sheeting for use in manufacture; adhesive coated strips for use in manufacture; reflective sheeting (non-metallic -) for obviating heat transmission; synthetic resins in sheet form for use in manufacture; cellulose material compressed into planar form [semi-finished]; microporous synthetic sheets for the manufacture of protective workwear; polypropylene films, other than for wrapping or packaging;  insulating foils; foils of metal for insulating;  anti-dazzle films for windows [tinted films];  laminate foil for application to a substrate.

Class 19: Cladding, not of metal, for building; acoustic panels of wood for ceilings; soundproof hoods [structures], not of metal; non-metallic building materials having acoustic properties; thermal blinds (non-metallic -) [slatted outdoor]; louvre window assemblies (non-metallic -); horizontal venetian blinds [outdoor], not of metal or textile; jalousies, not of metal; timber laminates; laminates (non-metallic -); laminates of non-metallic materials for use in building; petroleum pitch.

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 17

The contested reflective sheeting (non-metallic -) for obviating heat transmission; insulating foils; foils of metal for insulating are insulating materials in the form of sheets and foils. These goods are considered similar to the earlier plastic foam products for use in and as acoustic insulation and sound absorption, as vibration dampening materials, and as an insulation material in structural panels and planks. The goods in question, although they may differ in nature, have the same general purpose of insulating, whether that be acoustic or heat insulation or sound absorption. Furthermore, these goods have the same method of use, they can be manufactured by the same companies, they target the same public and they are sold through the same distribution channels. Therefore, they are similar.

The contested plastics materials in the form of sheets [semi-finished products]; foils of plastics [semi-finished products]; adhesive tapes, strips, bands and films; translucent tri-wall sheets made of polycarbonates; translucent twin-wall sheets made of polycarbonates; polyester sheets [other than for wrapping or packaging]; adhesive coated foils for use in manufacture; semi-finished polyamide resins in the form of sheets; rubber in the form of sheeting for use in manufacture; synthetic resins in sheet form for use in manufacture; polypropylene films, other than for wrapping or packaging; anti-dazzle films for windows [tinted films];  laminate foil for application to a substrate cover a broad range of materials and, in the absence of any further specification from the applicant, can include those that have an insulating function or are used for the purpose of insulation or together with insulating material. The earlier goods are constructed from plastic foam, whereas the contested goods may be constructed from a wide range of materials. However, notwithstanding their differing natures, the purpose can be the same, and the goods may be complementary to one another or in competition with one another. Therefore, they are considered similar.

The contested sheets of printable polypropylene; semi-processed vehicle brake lining sheet stock; sheets of printable coated polyethylene; foils of cellulose [other than for wrapping or packaging]; sheets of regenerated cellulose, other than for wrapping; microporous synthetic sheets for the manufacture of protective clothing; microporous synthetic sheets for the manufacture of protective rainwear; regenerated cellulose for use in manufacture; plastics in the form of sheets, films, blocks, rods and tubes; adhesive coated strips for use in manufacture; cellulose material compressed into planar form [semi-finished]; microporous synthetic sheets for the manufacture of protective workwear; are dissimilar to the opponent’s goods. Although some of these goods may serve similar purposes in building and construction or manufacturing, the goods do not have the same nature, as they are manufactured from different materials. They are produced by different producers belonging to different fields that require completely different know-how. These goods are not complementary or in competition (e.g. plastic foils and cellulose foils have completely different characteristics from foam products for insulating).

Contested goods in Class 19

The contested cladding, not of metal, for building; acoustic panels of wood for ceilings; soundproof hoods [structures], not of metal; non-metallic building materials having acoustic properties; thermal blinds (non-metallic -) [slatted outdoor]; timber laminates; laminates (non-metallic -); laminates of non-metallic materials for use in building, can have some similarity with the opponent’s goods plastic foam products for use in and as acoustic insulation and sound absorption, as vibration dampening materials, and as an insulation material in structural panels and planks. Even though the goods do not have the same nature, they may coincide in their ultimate purposes, as they are materials used in construction, and some of them are specifically created for insulation. Moreover, these goods are normally distributed through the same distribution channels and may originate from the same undertakings. The goods are, therefore, similar.

The remaining contested goods louvre window assemblies (non-metallic -); horizontal venetian blinds [outdoor], not of metal or textile; jalousies, not of metal; petroleum pitch are considered dissimilar to the opponent’s goods in Class 17, since they have a different nature, a different purpose and usually a different commercial origin. Moreover, they are neither complementary nor in competition.

2. The signs

WHISPER	Whisper
Earlier trade mark	Contested sign

From the outset, it is noted that differences in the use of lower or upper case letters are immaterial to the assessment of identity between word marks.

The signs are identical.

3. Global assessment, other arguments and conclusion

The signs are identical and the goods have been found partly similar and partly dissimilar.

Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld insofar as it is directed against the goods found similar.

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

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because those goods are obviously not identical.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Inés GARCÍA LLEDÓ

Claudia ATTINA

Ana MUÑIZ RODRÍGUEZ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.