OPPOSITION No B 2 688 391

Renolit SE, Horchheimer Str. 50, 67547 Worms, Germany (opponent), represented by Zellentin & Partner mbB Patentanwälte, Rubensstr. 30, 67061 Ludwigshafen, Germany (professional representative)

a g a i n s t

BauschLinnemann GmbH, Robert-Linnemann-Str. 21-27, 48336 Sassenberg, Germany (holder), represented by Cohausz & Florack Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB, Bleichstr. 14, 40211 Düsseldorf, Germany (professional representative).

On 27/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 688 391 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of international registration designating the European Union No 1 266 677, namely against some of the goods in Classes 16, 17 and 19. The opposition is based on international trade mark registration No 1 207 876 designating the European Union. 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.

1. The goods

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

Class 17:        Semi-finished products from plastic materials for further manufacturing; films and sheets of plastic material except for packaging; semi-finished products from plastic, especially films and sheets, for coating or covering of furniture, furniture parts, paneling, ceiling liners.

The contested goods are the following:

Class 16:        Paper, paperboard (cardboard) in particular printed paper for the coating of surfaces of work pieces or furniture; self-adhesive foils made of plastics.

Class 17:        Impregnated paper, not for office, stationary or packaging requisites, for the coating of surfaces of work pieces or furniture; surface foils and coating foils made from plastics, not for packaging; plastic films and CPL laminate surfaces (continuous pressure laminate), not for packaging; goods made from plastics, in particular technical profiles (in each case being semi-finished goods).

Class 19:        Building materials (non-metallic), in particular skirting boards and profiles made from plastics, skirting boards made from wood, wood siding, end strips, façade panels and elements consisting thereof, façade profiles (building materials, non-metallic), plastic veneers, edging strips for walls; edge bands (building materials).

Some of the contested goods are identical to goods on which the opposition is based; for example, in Class 17, the contested surface foils and coating foils made from plastics, not for packaging; plastic films and CPL laminate surfaces (continuous pressure laminate), not for packaging; goods made from plastics, in particular technical profiles (in each case being semi-finished goods) are identical to the opponent’s semi-finished products from plastic, especially films and sheets, for coating or covering of furniture, furniture parts, paneling, ceiling liners because the opponent’s goods include, are included in, or overlap with the contested goods.

For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

2. 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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise in the field of building construction and/or civil engineering. The degree of attention may vary from average to higher than average, depending on the price of the goods, their nature (specialised or not) and the frequency of their purchase.

3. The signs

RENOLIT ECOFILM	TECOFILM
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 first verbal element ‘RENOLIT’ of the earlier trade mark and the contested sign ‘TECOFILM’, as a whole, are meaningless for the relevant public and therefore distinctive.

As regards the second word, ‘ECOFILM’, of the earlier mark, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

The element ‘ECO’ of the earlier trade mark will be understood by the majority of the relevant public as referring to ‘ecology’ or ‘ecological’. This is because this word (compound form) exists as such in some languages (e.g. English, French, Italian and Spanish), because it is very similar to the equivalent words in other languages (e.g. ‘eko’ in Czech, Latvian and Slovak) or because of the extensive use of this word, and variations thereof, in trade and marketing. Since the word as such refers to objective or desirable characteristics of the goods in question, the element ‘ECO’ as a whole has little capacity to indicate commercial origin.

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The element ‘FILM’, which the signs have in common, is descriptive for a part of the public of the European Union, meaning ‘a thin layer covering a surface’ (information extracted from Oxford Living Dictionaries on 12/07/2017 at https://en.oxforddictionaries.com/definition/film), and therefore is non-distinctive for this public for some of the relevant goods, such as surface foils and coating foils made from plastics, not for packaging; plastic films and CPL laminate surfaces (continuous pressure laminate), not for packaging; goods made from plastics, in particular technical profiles (in each case being semi-finished goods) in Class 17.

However, for the other part of the public, the element ‘FILM’ is meaningless. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The Opposition Division will first examine the opposition in relation to the part of the public for which ‘FILM’ has no meaning and has a normal degree of distinctiveness.

Visually and aurally, the signs coincide in ‘ECOFILM’. However, they differ in the first verbal element of the earlier trade mark, ‘RENOLIT’, and in the first letter, ‘T’, of the contested sign.

Consumers generally tend to focus on the beginning of a sign 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.

Bearing in mind the above and that ‘ECO’ will be considered a weak element in the earlier trade mark, the signs are visually and aurally similar to a low degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘ECO’ in the earlier mark, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, as the element ‘ECO’ is weak, the impact of this conceptual difference on the relevant public will be very limited.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 meaning for any of 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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

According to the case-law of the Court of Justice, in determining the existence of a 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, Sabèl, EU:C:1997:528).

The opponent argues that the global impressions created by the contested sign and the earlier mark are clearly similar. According to the opponent, the word ‘ECOFILM’ has an independent distinctive role in the earlier mark and must be considered similar to the contested sign. Moreover, the opponent points out that the relevant public will have an average to low degree of attention in relation to some goods.

The Opposition Division does not agree with this finding. As mentioned above, the verbal element ‘ECO’ is less distinctive for the relevant goods and therefore carries less weight visually, aurally and conceptually than the other elements of the marks. Furthermore, there is some similarity between the signs from the visual and aural points of view, but this similarity is low. Although the earlier mark evokes a certain concept as regards the element ‘ECO’, this will not be sufficient to distinguish the marks, since it is weak for the relevant goods. Contrary to the opponent’s view, the degree of attention that the relevant public, whether the general public or professionals, will have at the moment of choosing the goods in question may vary from average to higher than average and this must be given due consideration.

The opponent refers to previous judgments of the General Court and the Court of Justice to support its arguments. The Opposition Division, while acknowledging that some of the principles mentioned by the opponent are well established by relevant case-law, observes that the previous cases referred to by the opponent are not relevant to the present proceedings, since they relate to marks composed of different words/word combinations or figurative signs with different semantic content. Therefore, the cases mentioned by the opponent cannot be considered analogous to the present one.

The opponent also refers to the principle of imperfect recollection of the signs, taking into account that average consumers rarely have the chance to make a direct comparison between different marks. When assessing the likelihood of confusion, the Opposition Division has taken this principle into consideration and has considered the goods identical; nevertheless, bearing in mind all the relevant circumstances of the case, the Opposition Division concludes that, contrary to the opponent’s view, the differences between the marks at issue are sufficiently striking to allow the relevant public to avoid the likelihood of confusion, including the likelihood of association.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘FILM’ is non-distinctive. This is because, as a result of the non- distinctive character of that element, that part of the public will perceive the signs as being even less similar.

COSTS

According to Article 85(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 holder in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Richard BIANCHI

Carlos MATEO PÉREZ

Inés GARCÍA LLEDÓ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.