OPPOSITION DIVISION
OPPOSITION No B 2 314 048
VOLX (SAS), ZI La Ponchonnière Route du Bois du Maine, 69210 Savigny, France
(opponent), represented by Cabinet Guiu – Jurispatent, 10, rue Paul Thénard,
21000 Dijon, France (professional representative)
a g a i n s t
Katz GmbH & Co. KG, Hauptstr. 2, 76599 Weisenbach, Germany (applicant),
represented by Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft
mbB, Widenmayerstraße 47, 80538 München, Germany (professional
representative).
On 06/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 314 048 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
PRELIMINARY REMARK:
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against some of the goods of European Union trade
mark application No 12 189 668 for the figurative mark , namely
against all the goods in Class 19. The opposition is based on French trade mark
registration No 12 3 942 848 for the word mark ‘GREENLINE’. 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
Decision on Opposition No B 2 314 048 page: 2 of 6
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 and services
The goods and services on which the opposition is based are the following:
Class 19: Building materials (non-metallic); construction (non-metallic).
Class 37: Construction information.
The contested goods are the following:
Class 19: Building construction materials; Namely building materials for ecological
footfall noise insulation; Cardboard being insulation underlay for laminate flooring,
parquet flooring, cork flooring, vinyl flooring and designer flooring.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The term ‘namely’, used in the applicant’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 19
The contested building construction materials; namely building materials for
ecological footfall sound insulation; cardboard being insulation underlay for laminate
flooring, parquet flooring, cork flooring, vinyl flooring and designer flooring are
included in the broad categories of the opponent’s building materials (non-metallic);
construction (non-metallic). 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 building
construction professionals as well as the public at large, for example those interested
in DIY or home improvement. The degree of attention of both professionals and the
public at large may vary from average to high, depending on the frequency of
purchase of the relevant goods and their price.
Decision on Opposition No B 2 314 048 page: 3 of 6
c) The signs
Earlier trade mark Contested sign
The relevant territory is France.
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 consists of the string of letters ‘GREENLINE’ in standard upper case
letters, with the word ‘GREEN’ written in green and the word ‘LINE’ written in black.
On top of the letter ‘I’ is an incomplete green circle incorporating the WiFi symbol in
its top-right quadrant.
The contested mark consists of the string of letters ‘GREENLIGNIN’ in standard
upper case letters. The colour used in the word ‘GREEN’ differs from that used in the
word ‘LIGNIN’: the first element, ‘GREEN’, is in washed-out black, and the word
‘LIGNIN’ is in washed-out grey. In addition, the contested sign contains a figurative
element replacing the third stroke of the letter ‘N’ of the element ‘GREEN’, namely a
tree with two green leaves.
Regarding the meanings of the verbal elements of the signs under comparison, the
Opposition Division notes the following.
The word ‘GREEN’, present in both marks, is a basic English word used to refer to,
inter alia, a colour (obtained from mixing blue and yellow) or to the environmental
movement that advocates the sustainable management of environmental resources
by making more environmentally friendly decisions and/or opting for a sustainable
and renewable way of living. The word ‘GREEN’ is, in its ecological meaning,
commonly used by the relevant public, either because they have enough knowledge
of English to understand it or because their language has borrowed this term and
they have become accustomed to it. Therefore, the Opposition Division is of the view
that the element ‘GREEN’, in the context of the relevant goods, will be seen by the
relevant public as referring to characteristics of the goods (denoting their ecological
nature and that they are not harmful to the environment, etc.). Consequently, this
element is non-distinctive.
The element ‘LINE’ of the earlier mark will also be understood by the relevant public,
since it is very close to the French word ‘LIGNE’. This word also refers to ‘a range of
commercial goods’ and may be understood in this way by the relevant public and
consequently be seen as an element of very limited distinctiveness (used for the
undertaking’s environmentally friendly line of goods).
The element ‘LIGNIN’ of the contested sign is derived from the Latin word ‘lignum’,
which means ‘wood’. Lignin is a complex organic polymer that occurs in certain plant
Decision on Opposition No B 2 314 048 page: 4 of 6
cell walls and makes the plant rigid. In French, this word is ‘lignine’. The term
‘LIGNIN’/‘lignine’ is very technical. Therefore, for the professional part of the relevant
public, the term is of limited distinctiveness, since it may be perceived merely as
describing the relevant goods. Nevertheless, it cannot be taken for granted that the
entire relevant public will understand this term and, for the part of the public that will
not associate it with any meaning, this term has a normal degree of distinctiveness.
The figurative element of the earlier sign, namely the incomplete green circle
incorporating the WiFi symbol, will be associated with the internet. The figurative
element of a tree with two green leaves in the contested mark will be associated with
nature and green. Bearing in mind that the relevant goods are non-metallic building
construction materials, and taking into account that almost all kinds of goods can be
purchased online, these elements are weak for these goods.
Neither the earlier mark nor the contested sign has any element that could be
considered clearly more dominant than other elements.
Visually, the signs coincide in the string of letters ‘GREENLI*N*’. The signs differ in
the letters ‘********E’ in the earlier mark and ‘*******G*IN’ in the contested sign. The
signs also differ in their graphic depictions, that is, the green circle incorporating the
WiFi symbol in the earlier mark, the tree with two green leaves in the contested sign,
and the colours and stylisation of the typeface in both marks.
Therefore, taking into account the distinctiveness of their various elements, the signs
are visually similar to a lower than average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters
‘GREENLI*N*’, present identically in both signs. The pronunciation differs in the
sound of the letter ‘********E’ of the earlier sign and of the letters ‘*******G*IN’ of the
contested mark, which have no counterparts in the other sign.
Considering what has been stated above regarding the distinctiveness of the different
elements of the marks, the signs are aurally similar to a lower than average degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. Although the signs coincide in the semantic content
of the element ‘GREEN’, it is non-distinctive and unable to lead to a relevant
conceptual similarity. Taking into account the other concepts in the marks, it is
concluded that the signs are not conceptually similar.
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 below average for
Decision on Opposition No B 2 314 048 page: 5 of 6
all of the goods in question, namely building materials (non-metallic); construction
(non-metallic) in Class 19.
e) Global assessment, other arguments and conclusion
The Court has held that 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).
In the present case, the goods are identical. The degree of attention of the relevant
public varies from average to high.
The signs coincide visually, aurally and conceptually in the non-distinctive element
‘GREEN’, and in the letters ‘LIN*/LI*N**’ of their second verbal elements. As
explained in section c) above, the element ‘LINE’ is also weak in relation to the
relevant goods from the perspective of the French public. Consequently, the signs
are visually and aurally similar to a lower than average degree.
In the present case, in assessing the likelihood of confusion, an analysis of whether
the coinciding components are descriptive, allusive or otherwise weak was carried
out to calculate the capacity of these coinciding components to indicate commercial
origin. This is because the consumer is likely to consider that a descriptive, allusive
or otherwise weak element of a mark is not being used to identify a particular
undertaking and thus to distinguish that undertaking’s goods or services from those
of other undertakings. This applies even when the goods in question are identical.
Consequently, although trade mark proprietors commonly use descriptive, allusive or
otherwise weak elements as part of a trade mark to inform consumers about certain
characteristics of the relevant goods or services, it may be more difficult to establish
that the public may be confused about their origin due to similarities that pertain
solely to weak elements. In the present case, the differing elements convey different
not particularly distinctive concepts, but overall the differences between the marks,
including their figurative elements, are sufficient to rule out any likelihood of
confusion.
Considering all the above, there is no likelihood of confusion on the part of the
relevant public. Therefore, the opposition must be rejected.
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.
Decision on Opposition No B 2 314 048 page: 6 of 6
The Opposition Division
Denitza STOYANOVA-
VALCHANOVA
Anna POLITI Vít MAHELKA
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.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100
(Annex I A(33) EUTMR) has been paid.