DECISION

of the Fifth Board of Appeal

of 19 November 2020

In case R 2281/2019-5

Veka AG
Dieselstr. 8 48324 Sendenhorst Germany	Opponent / Appellant

represented by rwzh Rechtsanwälte Wachinger Zoebisch Partnerschaft mbB, Barthstrasse 4, 80339 München, Germany

v

Crystal Spółka z ograniczoną odpowiedzialnością
ul. Chrobrego 30 87-100 Toruń Poland	Applicant / Defendant

represented by Kancelaria Prawno-Patentowa Ryszard Skubisz, ul. Piastowska 31, 20‑610 Lublin, Poland

APPEAL relating to Opposition Proceedings No B 3 049 982 (European Union trade mark application No 17 551 607)

The Fifth Board of Appeal

composed of V. Melgar (Chairperson), C. Govers (Rapporteur) and A. Pohlmann (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 4 December 2017, Crystal Spółka z ograniczoną odpowiedzialnością (‘the applicant’) sought to register the figurative mark

for the following list of goods:

Class 6 - Metal doors; Metal components for doors; Metal door trim; Outer doors of metal; Glazed doors of metal; Door fittings, of metal; Door fittings, of metal; Doors of metal for buildings; Metal door frames; Metal door frames; Metal door units; Metal locks for doors; Metal door bolts; Door handles of metal; Metal door frames; Door handles of metal; Door friction stays of metal; Metal bolts for locking doors; Door pulls of metal; Safety fittings of metal for doors; Aluminium doors; Aluminium residential doors; Aluminium patio doors; Door locks; Door guards of metal;

Class 19 - Doors, gates, windows and window coverings, not of metal; Mirror doors; Wooden doors; Glass doors; Vinyl doors; Non-metal doors; Safety doors, not of metal; Door casings, not of metal; Revolving doors not of metal; Sliding doors, not of metal; Fireproof doors, not of metal; Fireproof doors, not of metal; Vinyl sliding doors; Vinyl patio doors; Outer doors, not of metal; Inner doors, not of metal; Folding doors, not of metal; Armored doors, not of metal; Swing doors, not of metal; Glazed doors, not of metal; Wooden door frames; Wooden door frames; Door casings, not of metal; Door casings, not of metal; Door panels, not of metal; Door casings, not of metal; Insect screens (Non-metallic -) for doors; Doors made of glass for buildings; Patio doors [non-metallic frame]; Glass panels for doors; Door casings, not of metal; Door casings, not of metal; Transparent doors of glass for buildings; Tiltable doors (Non-metallic -) for buildings; Insulating doors of non-metallic materials; Transparent doors (Non-metallic -) for buildings; Frames (Non-metallic -) for glazed doors; Frames (Non-metallic -) for glazed doors; Lift-up doors, non-metallic; Vertically raisable rolling doors [non-metallic]; Doors (Non-metallic -) for use in garages; Doors (Non-metallic -) for use in garages; Doors made of plastic for buildings; Roller doors (Non-metallic -) having insulating properties; Doors made of wood for buildings; Door casings, not of metal; Glass in sheet form for use in doors; Screen doors, not of metal; Security door frames (Non-metallic -) for buildings; Window glass; Vinyl windows; Stained-glass windows; Non-metal windows; Stained glass windows (Glass for -); Jalousies, not of metal; Casement windows, not of metal; Window guards (Non-metallic -); Cladding (Non-metallic -) for windows; Skylights (Non-metallic -) for buildings; Non-metal skylights; Armoured windows having non-metallic frames; Sun louvres of glass for buildings; Roof windows made of plastics; Roof fanlights [windows] of non-metallic materials; Plastic security windows allowing communication; Sash windows, not of metal; Skylights made from plastics materials for use in buildings.

2. The application was published on 18 January 2018.

3. On 16 April 2018, Veka AG (‘the opponent’) filed an opposition against the registration of the published trade mark application for all goods as mentioned above under paragraph 1.

4. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR, Article 8(4) and Article 8(5) EUTMR.

5. The opposition was based on the following earlier rights:

1. EUTM No 4 690 483 for the figurative mark

filed on 18 October 2005 and registered on 20 September 2006 for the following goods and services:

Class 1 - Plastic mixtures;

Class 17 - Plastic products in the form of profiles, shaped seals for the aforesaid products, shaped parts (semi-finished goods), plates;

Class 19 - Building materials, windows, roller blinds and doors of plastic, plastic window systems, plastic door systems and plastic roller blind systems, folding shutters, roofs, covers and wall coverings of plastic, profiles, seals and plates of plastic, all the aforesaid goods for building; fences, railings, balustrades, floorboards and partitions of plastic, and connectors and fittings therefor, included in Class 19;

Class 37- Assembly and installation of windows, doors, roller blinds, folding shutters, roofs, fences, covers and wall coverings for building; providing information material and support for the aforesaid activities, and for the processing of plastic plates for building.

2. EUTM No 14 970 123 for the figurative mark

filed on 30 December 2015 and registered on 30 May 2016 for the following goods:

Class 17 - Plastic products in the form of profiles, shaped seals for the aforesaid products, shaped parts (semi-finished goods), plates;

Class 19 - Building materials, windows, roller blinds and doors of plastic, plastic window systems, plastic door systems and plastic roller blind systems, folding shutters, roofs, covers and wall coverings of plastic, profiles, seals and plates of plastic, all the aforesaid goods for building; Fences, railings, balustrades, floorboards and partitions of plastic, and connectors and fittings therefor, included in Class 19.

3. Company symbol

for the following business activity: 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.

6. By decision of 16 August 2019 (‘the contested decision’), the Opposition Division rejected the opposition. It gave, in particular, the following grounds for its decision:

Comparison of signs

• Within the earlier mark the expression ‘VEKA’ which only has a meaning in the Czech language is distinctive whereas the superimposed squares are basic shapes and weak.

• Within the contested sign the term ‘MODERNO’ will be understood as reference to modern or innovative or original. It is laudatory and weak, the same as the figurative element.

• Visually, the few resemblances in the weak figurative elements are negligible and overshadowed by the differences between the marks. Visually the marks are dissimilar.

• Aurally, the pronunciation of the verbal elements contained in the marks is different which leads to a phonetic dissimilarity.

• Conceptually, the contested sign will be associated to innovation. In any event, there is no conceptual similarity between the marks.

Conclusion

• The similarity between the signs is a necessary condition for all the earlier grounds invoked by the opponent. Since none of the earlier marks and rights is similar to the contested sign the opposition has to be rejected.

7. On 10 October 2019, the opponent filed an appeal against the contested decision, requesting that the decision be entirely set aside. The statement of grounds of the appeal was received on 17 December 2019.

8. In its response received on 27 March 2020, the applicant requested that the appeal be dismissed.

Submissions and arguments of the parties

9. The arguments raised by the opponent may be summarised as follows:

• The goods are identical or similar.

• The earlier marks and the earlier company symbol enjoy a high recognition in the market for ‘windows, doors roller shutters and their distribution’. To this end, the opponent provided before the Opposition Division several extracts from its own and third parties websites attesting the reputation of the earlier rights. It also submitted various copies of extracts from the German regional newspaper ‘Westfällische Nachrichten’ with advertisements and some articles concerning the opponent for some of its goods marketed under the earlier rights.

• The contested decision erred when it stated that rhombs are common in many trade marks and are therefore ornamental. The applicant did not put forward any such argument or claim in that sense. It is rather the case that the signs are dominated by their respective figurative elements, due to their size and eye-catching nature and their ‘point-reflective and focusing orientation’. The figurative elements of the signs are visually similar and will hardly be distinguished by the public. In any event, there is overall at least a very low visual similarity.

• The respective word elements in the signs are negligible. In the case of the contested sign and in view of the fact that within it the verbal elements are non-distinctive and descriptive according to Article 7(1)(b) and (c) EUTMR, the contested decision should have considered that the contested sign could only be registered due to the presence of the figurative element; reaching then finally the conclusion that this figurative element is dominant.

• With respect to the earlier rights the term ‘VEKA’ corresponds to the opponent’s company name and in this respect at least the German public tends to consider the remaining element(s) as the actual indication of the origin of the goods or services covered by the opposing marks (see judgement of the German Federal Court of Justice of 22 March 2012 - I ZR 55/10 (GRUR 635,636) – ‘METRO/ROLLER's Metro’).

• Consequently, the depiction of the rhombs in the marks under comparison leads to at least a low degree of visual similarity.

• Moreover, the conflicting signs are phonetically and conceptually identical, as at least the contested sign will be referred to by ‘the mark with two rhombs overlapping each other’ with the result that taking all the factors into account there is likelihood of confusion.

• The contested decision also erroneously considered the letter ‘M’ in the rhomb as having a normal distinctive character in spite of the fact that it is an abbreviation of the laudatory term ‘MODERNO’.

• According to settled case-law, in some cases the figurative elements can have the same or more weight than the word elements (07/02/2018, T‑775/16, CRABS (fig.) / DEVICE OF A CRAWFISH (fig.), EU:T:2018:74, § 25).

• Further, the mere indication that the signs are dissimilar for the finding of likelihood of confusion and therefore also for the application of Article 8(5) EUTMR is not correct. The signs are similar enough in order to establish a link between them with the consequence that the opposition would succeed based on Article 8(5) EUTMR as the further conditions thereof are fulfilled.

10. The arguments raised in response may be summarised as follows:

• The enhanced distinctive character or reputation of the earlier mark is only one factor for the assessment on likelihood of confusion. The similarity between the signs is a main condition necessary for the application of Article 8(1)(b) EUTMR and of Article 8(5) EUTMR as well.

• The rhombs are typically used in trade in the corresponding market and used as symbols for windows and doors. Moreover, it is a non-distinctive basic geometric shape.

• The overlapping rhombs in each mark have different features and stylisation rendering them different.

• The difference of the verbal elements in the marks under comparison is decisive in the case at hand justifying the finding of dissimilarity with the consequence that neither Article 8(1)(b) EUTMR nor Article 8(5) EUTMR are applicable (see 16/07/2014, T‑36/13, Antonio Bacione, EU:T:2014:673).

• The national decision on which the opponent relies is not binding and is from a factual point of view different to the case at hand.

• The judgement in the case 07/02/2018, T‑775/16, CRABS (fig.) / DEVICE OF A CRAWFISH (fig.), EU:T:2018:74, § 25, dealt with very distinctive figurative elements combined with non-distinctive and not dominant terms and is not applicable to the present case.

Reasons

11. All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.

12. The appeal complies with Articles 66, 67 and 68(1) EUTMR. It is admissible.

Preliminary remark

13. The opponent put forward in the statement of grounds that in view of the fact that within the contested sign the verbal elements are non-distinctive and descriptive according to Article 7(1)(b) and (c) EUTMR the contested decision should have considered that the contested sign could only be registered due to the presence of the figurative element reaching then finally the conclusion that this figurative element is dominant.

14. The Board notes that in the context of an opposition proceedings Article 7(1)(b) and (c) EUTMR cannot be applied and is not relevant. Consequently, the opponent’s statement that the contested decision should have stated that pursuant to Article 7(1)(b) and (c) EUTMR the contested sign could only be registered due to the presence of the figurative element is to be dismissed as inadmissible and not relevant.

Article 8(1)(b) EUTMR

15. Pursuant to Article 8(1)(b) EUTMR, a European Union trade mark application shall be rejected upon opposition where there is an earlier trade mark as referred to in Article 8(2) EUTMR and if, because of the identity with, or similarity to, the earlier sign and the identity or similarity between the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. A likelihood of confusion includes a likelihood of association with the earlier mark.

16. According to settled case-law, the risk that the public might believe that the goods in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion within the meaning of that Article (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16‑18; 29/09/1998, C-39/97, Canon, EU:C:1999:323, § 17).

17. For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (22/01/2009, T‑316/07, easyHotel, EU:T:2009:14, § 42 and the case-law cited).

The relevant public

18. Since the earlier rights are two EUTMs and the company symbol is registered in Germany, the relevant territory is that of the whole EU and for the company name Germany.

19. The relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark[s] and those covered by the mark applied for that were found to be identical or similar (24/05/2011, T-408/09, ancotel, EU:T:2011:241, § 38 and the case-law cited; 01/07/2008, T-328/05, Quartz, EU:C:2009:450). Furthermore, the relevant public is identified by means of the nature of the goods/services covered by the conflicting marks.

20. For the purpose of the global appreciation, the average consumer of the category of goods/services concerned is deemed to be reasonably well informed and reasonably observant and circumspect (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

21. It should, however, be recalled that the average consumer’s level of attention is likely to vary according to the category of goods/services in question and that the average consumer only rarely has the chance to make a direct comparison between the different marks, but must place trust in the imperfect picture of them that he or she has kept in his or her mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

22. The goods and services are targeted at professionals in the building sector and DIY enthusiasts. These consumers will have a high degree of attentiveness at the time of purchase, because of the specialised nature of the goods/services in question (19/09/2017, T‑768/15, RP ROYAL PALLADIUM (fig.) / RP, EU:T:2017:630, § 27).

Comparison of the marks

23. The conflicting marks have to be compared visually, phonetically and conceptually. Such a comparison must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 28; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).

24. Furthermore, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more visual, phonetic or conceptual aspect (02/12/2009, T-434/07, Solvo, EU:T:2009:480, § 31; 13/09/2010, T-149/08, Sorvir, EU:T:2010:398, § 29; 14/04/2011, T-466/08, Acno focus, EU:T:2011:182, § 52).

25. The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 41).

26. The average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 35 and the case-law cited).

27. The signs to be compared are:

Earlier EUTM No 4 690 483	Contested sign

The distinctive and dominant elements of the earlier EUTM No 4 690 483

28. The earlier EUTM No 4 690 483 is a figurative mark with the central verbal element, ‘VEKA’.

29. From the outset, it should be borne in mind, that, according to settled case-law, where a trade mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting the name of the trade mark than by describing its figurative element (09/09/2008, T‑363/06, Magic seat, EU:T:2008:319; § 30; 31/01/2012, T‑205/10, La victoria de Mexico, EU:T:2012:36, § 38 and 23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 47).

30. Moreover, the term ‘VEKA’ is a fanciful expression without any meaning except in the Czech language in which it has the meaning of ‘type of pastry similar to a French baguette’ which is not descriptive and thus distinctive for the goods and services at hand.

31. On the other hand the figurative elements in the earlier mark consist of two overlapping rhombs bearing in the middle a rectangular shape in white containing the term ‘VEKA’ written in black bold letters. The overlapping rhombs show grey lines delimiting the rhombs. Having regard to the fact that neither the basic geometric shapes (rhombs and rectangular shape) which are in general commonly used in trade (12/09/2007, T‑304/05, Pentagon, EU:T:2007:271, § 22) nor their standard borders (22/06/2017, T‑236/16, ZUM wohl (fig.), EU:T:2017:416, § 51) are distinctive or decisive as indicators of the origin of the goods or services at hand, the term ‘VEKA’ becomes without any doubt the distinctive and dominant element and the consumers will refer to and recall the earlier mark by this term.

32. The opponent contends that the applicant did not argue that the shape of a rhomb is used in trade or constitutes a decorative element. Therefore, the contested decision exceeded its scope of examination according to Article 95(1) EUTMR when it stated that the rhombs are weak.

33. Firstly, in this respect, the applicant raised before the Opposition Division the issue of the weak distinctive character of the rhombs in both marks and that basic geometric shapes as those contained in the marks under comparison are considered as decorative parts and very weak as regards their capacity to identify the trade origin of goods or services in general. The aforesaid opponent’s contention is therefore to be dismissed.

34. Secondly, the opponent claims that at least for German consumers there is a rule that in the case that a sign is composed of a company name, the public will perceive the other elements contained in such a sign as the indication of origin or the goods or services. To this end it referred to the judgement of the German Federal Court of Justice of 22 March 2012 - I ZR 55/10 (GRUR 635,636) – ‘METRO/ROLLER’s Metro’.

35. This judgment mentions German case-law according to which in some cases the public when confronted with a sign that contains the company name together with another element may attach to that other element the indication of origin. At the same time, the judgement also indicates that this is not a general rule. In this respect the opponent does not further explain why in the present case and according to the German case-law the German consumers – in spite of the more distinctive term `VEKA’ – would consider the figurative elements of the earlier mark as decisive for the indication of the origin of the goods and services of that mark. Furthermore, the German judgement compared two word marks, namely ‘METRO’ and ‘ROLLER’s METRO’ whereas the common element in the case at hand is an intrinsically weak figurative element.

36. In the absence of a more detailed explanation on how the ratio decidendi of the judgement invoked by the opponent may be relevant for the present proceedings, the reference to the judgement of the German Federal Court of Justice has to be dismissed.

37. Finally, the opponent relies on a judgement, namely 07/02/2018, T‑775/16, CRABS (fig.) / DEVICE OF A CRAWFISH (fig.), EU:T:2018:74, arguing that in certain cases the figurative elements are more important than the word elements.

38. However, in that case, the word elements had indeed a minor role because of their size and position. In that judgment in the contested sign they were very small compared to the strikingly dominant figurative elements which consisted in the repeated depiction of several crabs. The same in the earlier marks of that case which contained verbal elements in Cyrillic which are for the vast majority of the public concerned illegible and incomprehensive. Moreover, the General Court emphasized that the figurative elements of the signs shared a very similar structure. Having regard to the significant different factual situation and in lack of any further explanation by the opponent, the aforesaid judgment on which the opponent relies has no impact for the outcome of the present case.

39. In the light of the above the Board concludes that the term ‘VEKA’ of the earlier mark is clearly its distinctive and dominant element.

The distinctive and dominant elements of the contested sign

40. The contested decision stated that the contested sign consists of one rotated black square superimposed by a series of triangles in contrasting 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.

41. The term ‘MODERNO’ will be understood by the Italian, Spanish and Portuguese-speaking public as meaning ‘modern’ which alludes to modernity, innovation or transformation. The same meaning will also be grasped by the majority of the public within the EU, because of the resemblance with the equivalent word in many languages as for example in English or German, ‘modern’.

42. Consequently, the verbal element contained in the contested sign is weak. Considering the basic graphic elements, which consist of a rhomb surrounded by triangles, the Board finds that the expression ‘MODERNO’ and the figurative elements together with the letter ‘M’ are co-dominant, since none of these elements stand out due to their size.

43. Firstly, the opponent’s statement that the verbal elements contained in the contested sign are fully descriptive and not to be taken into account at all, cannot be followed. As indicated above under paragraph 29, the consumers will refer to signs by their words elements and not by their figurative elements, especially when they are weak, as in the case at hand. Secondly, although the letter ‘M’ might be considered as an abbreviation of the full term underneath, its position in the middle of the figurative elements together with the grey shade gives that single letter a certain distinctiveness.

The visual comparison

44. Firstly, the representation and stylisation of the shape of the rhomb is different in each mark. In the earlier mark there appears to be two overlapping rhombs with a grey line as delimitation and the upper rhomb shows also a further grey line in parallel to its borders. The rhombs contained in the earlier mark are rather common place and very simple. On the other hand the rhomb contained in the contested sign is surrounded by a series of stylised grey lines outside the rhomb, merely insinuating the outer shape of a further rhomb, and additionally depict two triangles over and under the rhomb. Thus the way of representation of the rhombs and their stylisation, in particular in case of the contested sign, are different. Due to the aforementioned differences, the opponent’s statement that the rhombs in the marks under comparison have strong similar features that would lead to a finding of a clear visual similarity, cannot be upheld.

45. Secondly, it must be stated that the signs at issue have different structures. The earlier mark consists of one complex element which are the rhombs that have in the centre a rectangle in white which contains in black bold letters the central term, ‘VEKA’. The contested sign has a stylised rhomb which bears in the centre the letter, ‘M’, in grey in a large size and outside of that rhomb as a second element appears underneath the term, ‘MODERNO’.

46. Finally, it cannot be overlooked that the verbal elements of the marks, namely ‘VEKA’ (earlier mark) and ‘M MODERNO’ (contested mark) are completely different, both as concerns their letters and their length. The earlier mark has only four letters and is a short word, which is in clear contrast to the longer term contained in the contested sign.

47. Having regard to all the aforesaid – overwhelming – visual differences between the signs, the mere appearance of a basic graphic element such as a rhomb, which is moreover differently stylized in each case, cannot lead to a visual similarity. The public will perceive the signs as being visually different.

The phonetic comparison

48. Aurally the earlier mark will be pronounced as /VE-KA/ and the contested sign as /MO-DER-NO/. The number of syllables is different, the two syllables of the earlier mark being completely different to any of those of the contested sign. The sound and rhythm therefore are also different. Consequently, the signs are aurally dissimilar.

49. The opponent’s view that the public would refer to the marks by describing their figurative elements is to be dismissed. Following settled case-law purely figurative elements will not be pronounced (15/03/2018, T‑151/17, DEVICE OF A WINGED BULL (fig.) / DEVICE OF A GRIFFIN (fig.) et al., EU:T:2018:144, § 40; 16/10/2018, T‑581/17, DEVICE OF FOUR CROSSING LINES (fig.) / DEVICE OF FOUR CROSSING LINES (fig.) et al., EU:T:2018:685, § 48). This holds even more so true in the case where both marks have verbal elements which will be pronounced.

The conceptual comparison

50. Conceptually, the contested sign refers to modernity or innovation. This semantic meaning is however laudatory and therefore has hardly an impact on the outcome. The expression ‘VEKA’ in the earlier mark refers to, in Czech language, a ‘type of pastry similar to a French baguette’. In any event, the signs do not have any semantic meaning in common.

51. The General Court has already considered the comparison of two marks which have the depiction of rhombs in common together with different verbal elements (16/07/2014, T‑36/13, Antonio Bacione, EU:T:2014:673, § 52) and reached the conclusion that there was no conceptual link between the marks. The opponent’s submission before the Opposition Division that the marks are conceptually identical because of the coincidence in the rhombs has therefore to be rejected.

52. Consequently, the conceptual comparison is neutral.

Global assessment on comparison of signs

53. In the light of the above, it must be held that the signs are visually and phonetically dissimilar while the conceptual comparison is neutral. Consequently, the conclusion of the contested decision that the signs are overall dissimilar must be upheld. The opponent did not provide any convincing argument to the contrary. It does in particular not succeed with the argument that the rhombs in the marks under comparison are sufficiently similar in order to lead to a visual similarity. The rhombs are stylized differently, containing different elements and the public will therefore not recall or remember the few negligible commonalities, which are moreover fully counteracted by the other different elements contained in the signs.

The other earlier EUTM 14 970 123

54. The opponent also invoked under Article 8(1)(b) EUTMR the EUTM No 14 970 123 for the figurative mark

.

55. This earlier mark has some additional elements in comparison to the earlier mark already considered. These consist of the German words ‘Das Qualitätsprofil’ and underneath the figurative elements of seven stars, as well as the use of a striking blue colour. These additional elements are all different to the contested sign and thus increase the overall differences.

56. Consequently, the earlier EUTM 14 970 123 is also dissimilar to the contested sign.

Overall assessment on likelihood of confusion

57. A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (14/12/2006, T‑81/03, T‑82/03 and T‑103/03, Venado, EU:T:2006:397, § 74).

58. It must be pointed out that, having regard to the fact that there is no visual, phonetic or conceptual similarity between the signs at issue, the contested decision was right to find that those signs were dissimilar overall and that, consequently, one of the conditions for the application of Article 8(1)(b) EUTMR had not been satisfied in the present case (09/04/2014, T‑249/13, Dorato, EU:T:2014:193, § 86). Consequently, there is no need to compare the goods or to examine the enhanced distinctive character or reputation of the earlier marks as claimed by the opponent.

Article 8(5) EUTMR

59. In accordance with settled case-law, for the broader protection to be granted to earlier trade marks under Article 8(5) EUTMR a number of conditions must be satisfied including in particular the identical or similar character of the marks at issue and the reputation of the earlier trade mark (22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 34-35; 11/07/2007, T‑150/04, Tosca Blu, EU:T:2007:214, § 54- 55).

60. However, it must be pointed out that for the purpose of the examination of the similarity between the signs Article 8(1)(b) EUTMR is conditional upon a finding of a degree of similarity between the marks at issue such that there is a likelihood of confusion between them, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) EUTMR. Accordingly, the types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is, to establish a link between them (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 27, 29, 31; (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 57-58, 66).

61. In this case, it must be noted that, even if it is common ground that the goods and services covered by the signs at issue are identical and even though the earlier trade marks are reputed, it is nevertheless apparent from the comparison between the signs at issue, set out in paragraphs 23 to 49 above, that those signs are not similar. In these circumstances, the condition relating to the identical or similar character of the marks at issue is not satisfied in this case.

62. As has been observed during the examination of the likelihood of confusion, the contested sign cannot be considered to be similar to either of the earlier trade marks within the meaning of Article 8(1)(b) EUTMR. The marks under comparison contain completely different terms, have a different structure and stylization. In light of these differences, it is unlikely that the public will establish a link, between the applicant’s mark and those of the opponent. It should be borne in mind that the public will refer to the earlier marks by their dominant and distinctive element, namely ‘VEKA’, which is completely unrelated to the verbal element, ‘MODERNO’, of the contested sign and the sole fact that the contested sign also includes a rhomb which is nevertheless differently stylized and structured compared to the figurative elements of the earlier marks, makes it very unprobeable that the consumers will consider the marks similar in order to establish a link between them. The opponent’s claim that the similarities as regards the rhombs are sufficient for the purpose of establishing a link cannot therefore be upheld.

63. Given that the requirement of a similarity between the conflicting marks, for the purpose of establishing a link between them according to Article 8(5) EUTMR, is not fulfilled, there is no need to examine the further conditions of that provision (24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 66). Consequently, the opposition also fails under Article 8(5) EUTMR.

Article 8(4) EUTMR

64. The opponent also invoked the following earlier German company symbol under Article 8(4) EUMR:

65. Under Article 8(4) EUTMR, the existence of an earlier non‑registered trade mark or a sign other than a trade mark gives good grounds for opposition if the sign satisfies the following conditions: the sign must be used in the course of trade; it must be of more than mere local significance; the right to that sign must have been acquired in accordance with the law of the Member State in which the sign was used prior to the date of application for registration of the Community trade mark; and, lastly, the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark (30/06/2009, T‑435/05, Dr. No, EU:T:2009:226, § 35).

66. In the context of Article 8(4) EUTMR the opponent invoked the Sections 15(2) and (3) of the German Trademark Act which allow the owner of a German company symbol the prohibition of use of a subsequent trade mark if due to a similarity between the signs there is a likelihood of confusion (Section 15(2) of the German Trademark Act) or the later trade mark takes unfair advantage of the distinctive character or repute of the earlier Company symbol (Section 15(3) of the German Trademark Act) .

Similarity of signs

67. Similarly, as set out above under paragraphs 54 to 56, the earlier German company symbol is in a blue colour, which creates a further difference to the contested sign. Consequently, it is also dissimilar to the contested sign.

68. As the opponent explained and indicated before the Opposition Division the concepts of similarity in Sections 15(2) and (3) of the German Trademark Act correspond to those in Article 8(1)(b) EUTMR and Article 8(5) EUTMR respectively. As it has been examined above in paragraphs 15 to 58 for the likelihood of confusion as well as in paragraphs 59 to 63 for Article 8(5) EUTMR, the signs are dissimilar avoiding any likelihood of confusion or the establishing of a link between the marks pursuant to Article 8(5) EUTMR.

69. Consequently, the provisions as set out in the Sections 15(2) and (3) of the German Trademark Act are not applicable to the present case and the opposition also fails under Article 8(4) EUTMR.

70. Since, none of the invoked grounds is applicable, the opposition has to be rejected in its entirety and the appeal is unfounded.

Costs

71. Pursuant to Article 109(1) EUTMR and Article 18 EUTMIR, the opponent, as the losing party, must bear the applicant’s costs of the opposition and the appeal proceedings.

72. As to the appeal proceedings, these consist of the applicant’s costs of professional representation of EUR 550.

73. As to the opposition proceedings, the Opposition Division ordered the opponent to bear the applicant’s representation costs which were fixed at EUR 300. This decision remains unaffected. The total amount for both proceedings is therefore EUR 850

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the opponent to bear the applicant’s costs in the appeal proceedings, which are fixed at EUR 550. The total amount to be paid by the opponent to the applicant in the opposition and appeal proceedings is EUR 850.

Signed V. Melgar

Signed C. Govers

Signed A. Pohlmann

Registrar: Signed p.o. P. Nafz