OPPOSITION No B 3 049 982

Veka AG, Dieselstr. 8, 48324 Sendenhorst, Germany (opponent), represented by RWZH Rechtsanwälte, Barthstrasse 4, 80339 Munich, Germany (professional representative)

a g a i n s t

Crystal Spółka z ograniczoną odpowiedzialnością, ul. Chrobrego 30, 87-100 Toruń

Poland (applicant), represented by Kancelaria Ostrowski i Wspólnicy SP. K., ul. Grudziądzka 110-114, 87-100 Toruń, Poland (professional representative).

On 16/08/20149, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 982 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 17 551 607 for the figurative mark , namely against all the goods in Classes 6 and 19. The opposition is based on European Union trade mark registration No 4 690 483 for the figurative mark , European Union trade mark registration No 14 970 123 for the figurative mark and on the sign used in the course of trade in Germany . The opponent invoked Article 8(1)(b), Article 8(4) and Article 8(5) 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 European Union trade mark registration No 4 690 483.

1. The signs

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 earlier figurative mark is composed of two superimposed squares rotated by 45 degrees and having white edges on each of their sides. In the middle of them, the verbal element ‘VEKA’ is portrayed in black bold capital letters against a white background. This word indicates in Czech language a type of pastry similar to a French baguette. Since it does not describe any characteristics of the goods in question, it is not laudatory or otherwise weak, it is considered distinctive for this part of the public. The remaining part of the public will perceive it as meaningless and, therefore, equally distinctive. As regards the two superimposed squares which contain the element ‘VEKA’, it must be noted that these components will be perceived as being weak, because such elements are common in many trade marks and have a role which is essentially ornamental, i.e., to bring the verbal element(s) of the mark to the attention of the public, who is not accustomed to infer business origin of goods from simple geometrical shapes.

The contested figurative mark consists of one rotated black square superimposed by a series of triangles in a contrasted grey colours echoed by a grey internal frame and a grey capital letter ‘M’. All these elements are set above the verbal element ‘MODERNO’ depicted in slightly stylised black capital letters. The letter ‘M’ recalls and may be seen as a reiteration of the initial letter of the word ‘MODERNO’.

The word ‘MODERNO’ in the contested sign will be perceived by the Italian, Spanish and Portuguese speaking public as an adjective denoting something that is new and involves the latest ideas or equipment. It will be perceived with the same meaning throughout the whole EU due to its close resemblance with the basic English word ‘MODERN’ and also to the equivalent words in other languages, such as for example Dutch (‘modern’), French (‘moderne’), German (‘modern’), Swedish (‘modern’). This element will be perceived as conveying an allusion as regards the quality of the relevant goods in Classes 6 and 19, namely that they are innovative, original, they use new technologies or materials etc. Therefore, this element is weak. As regards the black square and the superimposed triangles they are equally weak because, as seen above, they perform an ornamental function and have less trade mark significance. Additionally when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37). On the other hand the letter ‘M’ will be perceived as such and is normally distinctive.

Contrary to the opponent’s claim, the contested sign has no elements which could be considered clearly more dominant (visually eye-catching) than other elements. Although the letter ‘M’, the squares and the triangles are somewhat bigger than the verbal element ‘MODERNO’, they are far from overshadowing it, because the latter is clearly legible and occupies a larger space horizontally. The same holds true for the earlier mark in which the word element ‘VEKA’ is readily perceptible and occupies a central position within the sign. Therefore, contrary to the opponent’s submission, the earlier mark has no dominant element either.

Visually, the sole point of contact between the signs under comparison is the presence of one black square rotated by 45 degrees. However, as explained above, this coinciding element has a reduced impact on the public as indicator of commercial origin. Additionally it is surrounded by different figurative elements in both signs, namely the second square placed behind the first in the earlier mark and the grey triangles pointing upwards and downwards in the contested sign. These further elements contribute to distinguish to a significant extent the marks in the minds of the relevant consumers. Most importantly, the signs also differ in their respective verbal elements, i.e. ‘VEKA’ and ‘M’ MODERNO’, which cannot be simply dismissed as ‘negligible’ as suggested by the opponent in its observation of 12/11/2018, if anything due to their position and size.

Taking into account that the average consumer normally perceives a sign as a whole without analysing its various details or comparing them side by side, it is not likely that any significant visual resemblance between the marks would be noted. Therefore, it is concluded that the signs are visually not similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier mark will be pronounced as ‘VEKA’ whereas the contested sign will be pronounced as ‘MODERNO’. Since the letter ‘M’ will be seen as a reiteration of the first letter of the verbal element ‘MODERNO’, it is highly plausible that it will not be pronounced. The geometric shapes present in both signs, in particular the black square(s), have no impact on the phonetic comparison as they will not be enunciated. As the signs do not have any coinciding verbal elements, they are aurally dissimilar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As far as the Czech-speaking public is concerned, the signs will be associated with different meanings, and therefore the signs are conceptually dissimilar. The rest of the public in the relevant territory will perceive only the semantic content of the elements ‘M’ and ‘MODERN’ of the contested sign, the earlier sign being meaningless for them. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Contrary to the opponent’s submission, the fact that the signs share the representation of a rotated black square cannot lead to conceptual similarity because, as explained above, this shape has reduced trade mark significance and it is also displayed in a significantly different way within the marks at stake. Additionally the differentiating verbal elements convey other different concepts.

As the signs do not coincide in any relevant aspects, they are dissimilar.

2. Other arguments

The opponent refers to previous national decisions to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T 292/08, Often, EU:T:2010:399).

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings because the signs referred therein are clearly not comparable to those at issue here and additionally there is not enough information on the factual and legal background of the previous cases.

In view of the above, the opponent’s arguments based on previous national decisions must be rejected as unfounded.

3. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade mark:

• European Union trade mark registration No 14 970 123 for the figurative mark

The other earlier right invoked by the opponent is also dissimilar to the contested mark. This is because it also contains the graphical representation of seven stars and the expression ‘Das Qualitätsprofil’ that would add even more visual, aural and conceptual differences between the signs (at least in some languages of the European Union). It follows that the above finding is valid, a fortiori, with respect to this earlier trademark.

For the sake of completeness, it must be stressed that this finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade marks, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

Given that the opposition is not successful under Article 8(1)(b) EUTMR, it is necessary to examine one of the other grounds on which the opposition is based, namely Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

The opponent claims reputation for the European Union trade mark registration No 4 690 483 for the figurative mark for goods in Classes 17 and 19.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As the signs do not coincide in any relevant aspects, they are dissimilar.

As seen above, similarity between the signs is a requirement for the opposition to be successful under Article 8(5) EUTMR. Since the signs are clearly dissimilar, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled. Therefore, the opposition must be rejected and there is no need to examine the other conditions laid down by Article 8(5) EUTMR (24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 66).

Given that the opposition is not well founded under Article 8(5) EUTMR, it is unnecessary to examine the evidence filed by the opponent to prove reputation, as the outcome would be the same.

Therefore, the Opposition Division will now examine the remaining ground on which the opposition is based, namely Article 8(4) EUTMR.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

The opposition is also based on the earlier company symbol used in the course of trade in Germany for window systems, in particular windows and window profiles of plastic; door systems, in particular doors, door profiles and door panels of plastic; roller shutter systems; sheet systems, in particular plastic sheets.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

The right under the applicable law

In relation to the national law, the applicant cited Section 5(1) and (2) and Section 15(1) to (4) of the German Trademark Act and submitted a translation of the law, reported below:

Section 5 - Commercial designations

(1) Company symbols and titles of works shall enjoy protection as commercial designations.

(2) Company symbols are signs used in the course of trade as a name, company name or special designation of a business operation or an enterprise. Business symbols and other signs intended to distinguish the business operation from other business operations which are regarded as symbols of the business operation within involved trade circles shall be deemed equivalent to the special designation of a business operation.

Section 15 - Exclusive right of the proprietor of a commercial designation, right to an injunction, compensation claim

(1) The acquisition of the protection of a commercial designation shall grant to its proprietor an exclusive right.

(2) Third parties shall be prohibited from using the commercial designation or a similar sign in the course of trade without authorisation in a manner liable to cause confusion with the protected designation.

(3) If the commercial designation is a commercial designation which has a reputation in this country, third parties shall be furthermore prohibited from using the commercial designation or a similar sign in the course of trade if there is no likelihood of confusion within the meaning of subs. 2, insofar as the use of the sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the commercial designation.

(4) Anyone who uses a commercial designation or a similar sign in contravention of subs. 2 or subs. 3 may be required to refrain therefrom by the proprietor of the commercial designation if there is a danger of recurrence. The right shall also exist if a contravention is threatened.

The opponent states the abovementioned conditions to be fulfilled under the German law with regard to commercial designations and refers to the case law.

Company names or symbols are generally protected against subsequent marks according to the same criteria that are applicable to conflicts between registered marks, namely identity or similarity between the signs, identity or similarity between the goods or services, and the presence of a likelihood of confusion. In these cases, the criteria developed by the courts and by the Office with regard to Article 8(1) EUTMR can be applied mutatis mutandis when examining Article 8(4) EUTMR. Indeed Section 15 (2) above expressly refers to likelihood of confusion as necessary requirement for a German symbol to be able to prohibit the use of a subsequent trade mark.

Considering that the earlier sign is identical (if not less similar) to the opponent’s European Union trade mark registration No 4 690 483, which has already been compared above with the contested EUTM application, it follows that Section 15 (2) of the German Trademark Act is not applicable in the present case since there is no visual, phonetic or conceptual similarity between the signs and therefore no likelihood of confusion of confusion can be found between them.

As regards the provision of Section 15(3) of the German Trade mark Act, invoked subsidiarily by the opponent, the Opposition Division refers to the reasoning and findings from the paragraph above on Article 8(5) EUTMR of the present decision which stated that since one of the necessary conditions contained in that Article was not fulfilled, namely the similarity of signs, the use without due cause of the contested trade mark would not take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Those findings apply here mutatis mutandis.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded in so far as it is based on this ground.

As the opposition has failed in regard to all the grounds on which it is based, it must be rejected in its entirety.

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

Irena LYUDMILOVA LECHEVA

Riccardo RAPONI

Michele M. BENEDETTI-ALOISI

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.