OPPOSITION No B 2 976 945

Advantop, Zone Industrielle du Père Grand, 84120 Pertuis, France (opponent), represented by Cabinet Sabatier, 83, avenue Foch, 75116 Paris, France (professional representative)

a g a i n s t

Staka Holding B.V., Gouden Rijderstraat 1, 4903 RD Oosterhout, Netherlands (applicant), represented by Considine B.V., Corkstraat 46, 3047 AC Rotterdam, Netherlands (professional representative).

On 07/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 976 945 is upheld for all the contested goods.

2. European Union trade mark application No 16 901 415 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 901 415 for the word mark ‘STAKA ThermoTop’, namely against all the goods in Class 6. The opposition is based on French trade mark registration No 1 483 404 and international trade mark registration No 576 286 designating Austria, Italy, Benelux, Spain and Germany, both for the word mark ‘THERMOTOP’. 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.

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 international trade mark registration No 576 286 designating Spain.

a) The goods

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

Class 6: Panels and profiles of metal; panel junction profiles of metal; hardware of metal, small; building materials of metal, particularly for making covers for roofs or walls, terraces, balconies, galleries and cladding panels.

Class 19: Building materials not of metal, particularly for making covers for roofs or walls, terraces, balconies, galleries and cladding panels.

The contested goods are the following:

Class 6: Metal roof hatches.

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.

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 opponent’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).

A hatch is ‘an opening in a ceiling or a wall, which you can pass something through’ (information extracted from the Collins English Dictionary on 01/02/2019 at www.collinsdictionary.com). Therefore, the contested metal roof hatches can be classified under the category of ‘doors, gates, windows and window coverings of metal’. Accordingly, when compared to the opponent’s building materials of metal, particularly for making covers for roofs, they are similar to a high degree since they have the same nature, they can originate from the same producers and use the same distribution channels. Furthermore, they target the same relevant public.

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 similar to a high degree are directed at business customers with specific professional knowledge or expertise in the construction industry, but to some extent, they may also target the public at large.

The public’s degree of attention may vary from average to high, depending on the price and nature of the purchased goods and the terms and conditions associated with them.

c) The signs

THERMOTOP	STAKA ThermoTop
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 signs in conflict are word marks. In the case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether a word mark is depicted in lower or upper case or in a combination of the two. Accordingly, there are no dominant elements within the signs.

The element ‘STAKA’ of the contested sign has no meaning in Spanish and, therefore, it is distinctive for the relevant public.

The applicant claims that the common element ‘THERMOTOP’ is directly descriptive of any kind of cover having properties or connections relating to ‘covers or closures with temperature regulating properties’ and, therefore, it is non-distinctive. However, the Opposition Divisions is of the opinion that although this element as such is meaningless for the relevant public, it is likely that the public will recognise the components ‘THERMO’ and ‘TOP’. In this regard, consumers will associate the prefix ‘THERMO’, which is of Greek origin, with ‘termo’, as is the correct spelling in Spanish, meaning ‘heat’ or ‘temperature’. As the relevant goods are related to the building industry and it is usual for these kinds of goods to include insulating materials to protect the buildings from heat or cold, this component is considered weak for the relevant goods.

The component ‘TOP’ can be understood as ‘the best’ or ‘leading’ by the relevant public. It is commonly used in the Spanish market with this meaning. Therefore, this element has a limited distinctiveness in relation to the relevant goods.

However, as regards the earlier trade mark, the Opposition Division points out that in order to establish the distinctive character of a sign, it is not necessary to find that the sign is original or fanciful (31/01/2001, T 135/99, Cine Action, EU:T:2001:30, § 31, and 27/02/2002, T‑34/00, Eurocool, EU:T:2002:41, § 45). As regards the perception by the relevant public of the term ‘THERMOTOP’ first it should be noted that it is composed by an English prefix and a word; second, the combination of the two is unusual. Accordingly, the Opposition Division is of the opinion that the term ‘THERMOTOP’ will be perceived as a whole and not as the sum of the two components with a clear meaning in relation to the goods in question. Therefore, and contrary to the assertions of the applicant, the term ‘THERMOTOP’ as a whole is not devoid of any distinctive character for the relevant public.

Furthermore, when dealing with the distinctiveness of the earlier mark as a whole, the latter should always be considered to have at least a minimum degree of inherent distinctiveness. Earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. The Court made it clear, in its judgment of 24/05/2012, C-196/11, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’. The Court added that ‘it should be noted that the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character’.

Visually and aurally, the signs coincide in the string of letters/phonemes ‘THERMOTOP’. They differ in the letters/phonemes of the element ‘STAKA’ present only in the contested sign.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, neither of the signs as a whole has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

However, when the relevant public perceives the components ‘THERMO’ and ‘TOP’ separately, they will be associated with the meanings explained above. To that extent, 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.

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 clear meaning for 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.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, Sabel, EU:C:1997:528, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

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 similar to a high degree and are directed at the public at large and at business customers whose degree of attention varies from average to high.

The earlier mark is inherently distinctive to a normal degree.

The signs are visually and aurally similar to an average degree. As a rule, when the earlier trade mark is wholly incorporated in the contested sign and performs an independent and distinctive role therein, this is an indication that the two signs are similar (13/06/2012, T 519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T 260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T 179/11, Seven Summits, EU:T:2012:254, § 26).

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. 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 that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Consequently, the Opposition Division is of the opinion that the contested mark can be perceived as a version of the earlier sign.

The applicant refers to decisions of the Court to support its arguments, namely the finding that a combination of two descriptive words might in fact qualify for a trade mark protection if the combination is unusual or striking in such a manner that it might itself be seen as an inventive word. It refers also to the ruling that all combinations of two descriptive terms should be excluded from trade mark protection, as such terms need to remain available for use by competitors, unless the combination has an extremely high degree of distinguishing capability.

The cases used by applicant to support its arguments are:

- Chiemsee (04/05/1999, C–108/97 & C 109/97, Chiemsee, EU:C:1999:230).

This case refers to signs or indications which may serve to designate the geographical origin of goods and acquired distinctive character of a trade mark following the use made of it.

- Biolmild (12/02/2004, C 265/00, Biomild, EU:C:2004:87)

In this case the Court ruled that a trade mark consisting of a neologism composed of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, is itself descriptive of the characteristics of those goods or services for the purposes of that provision, unless there is a perceptible difference between the neologism and the mere sum of its parts.

- Doublemint (23/10/2003, C 191/01 P, Doublemint, EU:C:2003:579)

The ruling of the Court refers to refusing registration of a sign if at least one of its possible meanings designates a characteristic of the goods or services concerned.

- Postkantoor (12/02/2004, C 363/99, Postkantoor, EU:C:2004:86)

The Court ruled that a mark consisting of a word composed of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, is itself descriptive of the characteristics of those goods or services for the purposes of that provision, unless there is a perceptible difference between the word and the mere sum of its parts.

However, the previous cases referred to by the applicant are not relevant to the present proceedings.

As regards the first case, Chiemsee, there is no designation of geographical origin involved in the current proceedings. Furthermore, the assessment of the distinctiveness of the earlier mark rests on its distinctiveness per se which has been accepted to be normal, as stated above in section d) of this decision. Therefore, the case is not relevant to the present proceedings.

As regards the remaining three cases, Biomild, Doublemint and Postkantoor, the Opposition Division is of the opinion that, contrary to the applicant’s opinion and considering what has been stated above in section c) of this decision, the word ‘THERMOTOP’ as such is not descriptive from the perspective of the relevant public, as the sum of the meanings of its components (being an English prefix and a word) does not result in a clear concept in relation to the relevant goods. In fact, there is not a direct link between this word and the related goods as the term ‘THERMOTOP’ does not enable the public concerned to discern immediately and without further reflection the description of one of their characteristics. The link that can be found between the term ‘THERMOTOP’ and those ‘building materials’ is too vague as it involves several mental steps from consumers to make a mental connection between the word ‘THERMOTOP’ and the ‘building materials’.

Considering all the above, and taking into account the interdependence principle, there is a likelihood of confusion (including a likelihood of association) on the part of the public even with a high degree of attention.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 576 286 designating Spain. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right ‘THERMOTOP’ 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 right 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 (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

Carlos MATEO PÉREZ

Tzvetelina IANTCHEVA

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.