OPPOSITION Nо B 3 094 148

 

Roma KG, Ostpreussenstr. 9, 89331 Burgau, Germany (opponent), represented by Patentanwälte Munk, Prinzregentenstr. 3, 86150 Augsburg, Germany (professional representative) 

a g a i n s t

 

Termo Profil Sp. z o.o., Górnicza 17E, 44300 Wodzisław Śląski, Poland (applicant), represented by Biuro Doradztwa Technicznego i Usług Patentowych PLIK Joanna Pawlik, Ul. Grażyńskiego 15A/42, 40-126 Katowice, Poland (professional representative).

On 13/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 094 148 is upheld for all the contested goods, namely:

Class 6: Outdoor blinds of metal; blinds of metal; insect screens of metal for doors and windows.

Class 19: Outdoor sun-blinds, not of metal; jalousies, not of metal and not of textile; insect screens, not of metal, for doors and windows.

2. European Union trade mark application No 18 040 906 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 040 906 (figurative mark), namely against some of the goods in Classes 6 and 19. The opposition is based on German trade mark registration No 30 623 284 ‘TERMO’ (word mark). The opponent invoked Article 8(1)(a) and (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

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

Class 6: Devices for closing openings in buildings, fences and walls, and/or for weatherproofing and/or screening and/or sun shielding and/or shading, namely doors, gates, windows, roof windows, shutters, roller blinds, roller doors, sliding gates, swing gates, up-and-over doors, sectional doors, sectional gates, double wing doors, outdoor blinds, jalousie constructions, roller blind constructions, pleated blind constructions, insect screen constructions, awning constructions, canopies; all goods mainly consisting of metal with or without parts of plastic and/or textile; parts for all the aforesaid goods (included in Class 6).

Class 19: Goods for building, especially devices for closing openings in buildings, fences and walls and/or for weatherproofing and/or screening and/or sun shielding and/or shading, namely doors, gates, windows, roof windows, shutters, roller blinds, roller doors, sliding gates, swing gates, up-and-over doors, sectional doors, sectional gates, double wing doors, outdoor blinds, jalousie constructions, roller blind constructions, pleated blind constructions, insect screen constructions, awning constructions, canopies; all goods mainly not of metal (included in class 19); parts for all the aforesaid goods (included in Class 19).

The contested goods are the following:

Class 6: Outdoor blinds of metal; blinds of metal; insect screens of metal for doors and windows.

Class 19: Outdoor sun-blinds, not of metal; jalousies, not of metal and not of textile; insect screens, not of metal, for doors and windows.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘especially’, 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).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

Contested goods in Class 6

The contested outdoor blinds of metal; blinds of metal; insect screens of metal for doors and windows are identical to the opponent’s devices for sun shielding and/or shading, namely roller blinds, outdoor blinds, insect screen constructions; all goods mainly consisting of metal with or without parts of plastic and/or textile, either because they are identically contained in both lists (including synonyms or slightly different wordings) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

Contested goods in Class 19

The contested outdoor sun-blinds, not of metal; jalousies, not of metal and not of textile; insect screens, not of metal, for doors and windows are included in the broad categories of, or overlap with, the opponent’s goods for building, especially devices for sun shielding and/or shading, namely outdoor blinds, jalousie constructions; insect screen constructions; all goods mainly not of metal (included in Class 19). 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 found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c)  The signs

TERMO
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 mark is a single-word mark, ‘TERMO’, and the contested sign is a figurative sign consisting of the verbal elements ‘TERMO’ and ‘PROFIL’, separated by a figurative element of a green square, with a vertical line going through its middle and with a small gap on its left and right side. The verbal elements of the signs are depicted in standard upper-case letters.

Although the verbal element ‘TERMO’ of the signs does not exist as such in the official language of the relevant territory, the relevant German-speaking consumers are likely to associate it with something related to heat or temperature. This is either because of familiarity with the very similar prefix ‘thermo’, or due to the existence of words in German that include this prefix (e.g. ‘Thermostat’, ‘Thermoskanne’ or ‘Thermosflasche’). Given that the relevant goods are related to coverings for windows, doors and/or buildings that may feature some thermoregulation characteristics (e.g. heat regulating/protecting blinds), this element is weak for these goods.

In its observations of 12/06/2020, the applicant argued that the word ‘TERMO’ had no registration capacity according to Article 7(b), (c) and (d) EUTMR since it was a commonly known phrase, which could be used together with, and in relation to, words such as ‘temperature’ or ‘warmth’. However, even if ‘TERMO’ vaguely alludes to some characteristics of the relevant goods, as indicated above, the Opposition Division is of the opinion that this does not render it exclusively descriptive and non-distinctive. The idea it conveys is still faint and sufficiently removed from being clearly and unequivocally perceived as referring to exact characteristics of the relevant goods. Therefore, the applicant’s argument must be dismissed.

The verbal element ‘PROFIL’ of the contested sign refers to a specific type of products used in the construction industry and, as such, it is weak (or even non-distinctive) for the relevant goods, which may all be offered as construction profiles or their parts. As a whole, the combination of the verbal elements ‘TERMO PROFIL’ will be perceived as alluding to a type of product used in the construction of buildings, mainly for window and door installations, for heat regulation/protection. Therefore, it is, per se, also weak for the relevant goods, which are essentially blinds and insect screens for doors and windows (metal and non-metal). These goods are commonly offered as construction profiles or parts thereof, with some thermoregulation properties.

Likewise, the figurative element of the contested sign, although being rather abstract in nature, may be perceived by some consumers as a window frame and, therefore, as weak at least for some of the relevant goods. In any case, irrespective of its perception, the fact remains that 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).

The earlier mark has no dominant element due to its nature (word mark). The contested sign does not have any element that could be considered more dominant (visually eye-catching) than other elements.

Visually and aurally, the signs coincide in the verbal element ‘TERMO’ and its sound. They differ in the contested sign’s verbal element ‘PROFIL’ and its sound.

Visually, the signs also differ in the figurative element of the contested sign, which, however, has less weight in the comparison of the signs, for the reasons explained in detail above.

It is important to note that the entire earlier mark, ‘TERMO’, is placed at the beginning of the contested sign, where consumers generally tend to focus 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.

Therefore, despite the fact that the coinciding element ‘TERMO’ is weak for the goods in question, and bearing in mind that the contested sign’s additional element ‘PROFIL’ is also of limited (if any) distinctiveness and impact as is its figurative element, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

As seen above, the earlier mark will be associated with something related to heat or temperature, and the contested sign with heat regulation/protection profiles. Given that both signs overlap semantically in the idea of heat or temperature (notwithstanding that this idea lies in the weak element ‘TERMO’), they are conceptually similar to an average degree. This holds true despite the presence of the additional concept of the verbal element ‘PROFIL’ in the contested sign and, for some consumers, also the concept of a window frame in its figurative element, as these concepts result from equally weak – or even non-distinctive – elements of the sign.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the relevant goods.

e)  Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

As stated above, the contested goods are identical to the opponent’s goods and they target the public at large and business customers, whose degree of attention varies from average to high.

The earlier trade mark has a low degree of inherent distinctiveness for the relevant goods. However, the finding of a low degree of distinctiveness for the earlier trade mark does not preclude a finding of a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor involved in that assessment. Therefore, even in a case involving an earlier mark with a low degree of distinctiveness, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

The conflicting signs are similar to an average degree on all levels (visually, aurally and conceptually), as explained in detail above in section c) of this decision. This is because they coincide in the verbal element ‘TERMO’, which is the sole verbal element of the earlier mark and the first element of the contested sign, where consumers usually pay more attention.

It should be remembered that when marks have an element with a low degree of distinctiveness in common, the assessment of likelihood of confusion should focus on the impact of the non-coinciding elements on the overall impressions created by the signs. However, as stated above in section c) of this decision, the differing verbal element of the contested sign only describes the type of the relevant goods and, therefore, only has a weak degree of distinctiveness, if any at all, and its figurative element has a reduced weight in the assessment of the similarity of the signs.

Consequently, these differences will not help the relevant consumers to differentiate the signs to a significant extent. Therefore, despite the low degree of distinctiveness of the earlier mark, the differences between the signs are not sufficient to counteract their similarities and to exclude the likelihood of confusion, even if part of the public displays a high degree of attention for some of the goods.

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. Furthermore, it is common practice in the relevant market for manufacturers/providers to make variations of their trade marks – for example by altering the typeface or colours, or adding verbal or figurative elements to them – in order to denote a new product and/or service line or to endow a trade mark with a new, fashionable image.

In the present case, although the relevant public might detect certain differences between the conflicting signs, the likelihood that it may associate the signs with each other is very real. It is likely that the relevant consumer will perceive the contested sign 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). Indeed, it is conceivable that the relevant public, including the part with a high degree of attention, will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking, under the ‘TERMO’ brand.

Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion (including a likelihood of association) on the part of the public in the relevant territory and, therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 623 284.

In its observations, the applicant states that it is the owner of Polish trade mark registration No 139 939 for the figurative mark . In this regard, the Opposition Division notes that the assessment of likelihood of confusion must be based on the comparison of a sign against which an opposition is directed (i.e. the contested sign) and a mark which gives a third person a right to oppose against such a sign (i.e. the earlier mark). Therefore, the existence of the trade mark mentioned by the applicant in its observations is irrelevant to the present comparison.

It follows from the above that the contested sign must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

 

 

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

 

 

Christian STEUDTNER

Martin MITURA

Boyana NAYDENOVA

 

 

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.