OPPOSITION DIVISION
OPPOSITION No B 2 742 099
Izocam ticaret ve sanayi anonim sirketi, Dilovasi mevki, Gebze–kocaeli, Turkey
(opponent), represented by Curell suñol S.L.P, Via Augusta 21, 08006 Barcelona,
Spain (professional representative)
a g a i n s t
Izohan sp. z o.o., Łużycka 2, 81-963 Gdynia, Poland (applicant), represented by
Rumpel spółka komandytowa, Częstochowska 1 a, 93-115 Łódź, Poland
(professional representative).
On 06/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 742 099 is partially upheld, namely for the following
contested goods:
Class 17: Insulating oils; Sealants for joints; Resins (Artificial -) [semi-finished
products]; Insulating tape and band; Thermal insulating materials;
Insulating fabrics; Thermal insulating materials; Synthetic resins;
Insulating and stopping materials of rubber, gutta-percha, gum,
asbestos, and mica; Rubber solutions, all the indicated goods are
not glass wool, stone wool and extruded polystyrene.
2. European Union trade mark application No 15 128 432 is rejected for some of
the contested goods. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 15 128 432 , namely against all of the goods
Decision on Opposition No B 2 742 099 page: 2 of 6
in Class 17. The opposition is based on European Union trade mark registration
No 36 22 10 . 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.
a) The goods
The goods on which the opposition is based are the following:
Class 17: Glass wool, stone wool and extruded polystyrene.
Upon limitation, the contested goods are the following:
Class 17: Insulating oils; Sealants for joints; Resins (Artificial ) [semi-finished
products]; Insulating tape and band; Thermal insulating materials;
Insulating fabrics; Thermal insulating materials; Synthetic resins;
Rubber, gutta-percha, gum, asbestos, mica; Insulating and stopping
materials of rubber, gutta-percha, gum, asbestos, and mica; Rubber
solutions, all the indicated goods are not glass wool, stone wool and
extruded polystyrene.
The relevant factors relating to the comparison of the goods or services include, inter
alia, the nature and purpose of the goods or services, the distribution channels, the
sales outlets, the producers, the method of use and whether they are in competition
with each other or complementary to each other.
Contested goods
The contested Insulating oils; sealants for joints; resins (Artificial -) [semi-finished
products]; insulating tape and band; thermal insulating materials; insulating fabrics;
thermal insulating materials; synthetic resins; insulating and stopping materials of
rubber, gutta-percha, gum, asbestos, and mica; rubber solutions, all the indicated
goods are not glass wool, stone wool and extruded polystyrene are all used for
insulation or weatherproofing purposes, and are similar to the opponent´s goods
such as glass wool to that extent, notwithstanding the applicant´s limitation. They
share the same method of use being materials mainly used in construction and, for
this reason, may be used together and distributed via the same channels.
The contested rubber, gutta-percha, gum, asbestos, mica, on the other hand, are
dissimilar to the opponent´s goods in Class 17. These goods are raw materials used
at an industrial level, whereas the opponent´s goods are finished or semi-finished
products. Their nature, initial purpose, method of use and manufacturers are
different. Moreover, they are neither complementary nor in competition with each
other.
Decision on Opposition No B 2 742 099 page: 3 of 6
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 similar are specialised goods directed at
builders and other construction professionals, and cheap or simple goods such as
insulating tape and band.
The degree of attention is considered to be average.
c) 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 unitary character of the European Union trade mark means that an earlier
European Union trade mark can be relied on in opposition proceedings against any
application for registration of a European Union trade mark that would adversely
affect the protection of the first mark, even if only in relation to the perception of
consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,
EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
The Opposition Division finds it appropriate to focus the comparison of the signs on
the English-speaking part of the public.
The earlier mark is a figurative mark which depicts the word ‘IZOCAM’ in a bold,
black font. It has no meaning for the relevant public and is, therefore, distinctive.
The contested sign is also a figurative mark, made up of the verbal element ‘IZOHAN’
in a bold, red font against a black and white trapezoidal background. The verbal
element will be understood as an invented term by the relevant public. As it is not
descriptive, allusive or otherwise weak for the relevant services, it is distinctive. The
geometrical background is merely decorative and serves only to frame the distinctive
and dominant verbal element.
Decision on Opposition No B 2 742 099 page: 4 of 6
en 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).
It should also be noted that in terms of recognition and recall, the beginnings of trade
marks tend to be of more importance for the public. In this sense, it is a general
principle that the first part of a sign is generally the part which catches consumers´
attention and will be remembered more clearly than the rest of the sign.
Visually, the signs share four letters out of a six letter sequence ‘IZO-A-’. Their
respective fourth and last letters differ, as do their word fonts which differ in colour
and dimension. Furthermore, the contested mark contains additional decorative
elements.
Therefore, the signs are similar to an average degree.
Aurally, the pronunciation of the marks coincides in the sound of the letters ‘IZO-A-’,
present identically in both signs, and to that extent, the marks are aurally highly
similar, differing only in the pronunciation of their fourth and sixth letters ‘C/H’ and
‘M/N’ respectively. They have the same number of syllables. The figurative elements
will not be pronounced.
Conceptually, neither of the signs has a meaning as a whole. Since a conceptual
comparison is not possible, the conceptual aspect does not influence the assessment
of the similarity of the signs.
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. 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 English-
speaking public. Therefore, the distinctiveness of the earlier mark must be seen as
normal.
e) Global assessment, other arguments and conclusion
The Court has stated that likelihood of confusion must be appreciated globally, taking
into account all the factors relevant to the circumstances of the case; this
appreciation depends on numerous elements and, in particular, on the degree of
recognition of the mark on the market, the association that the public might make
between the two marks and the degree of similarity between the signs and the goods
and services (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Decision on Opposition No B 2 742 099 page: 5 of 6
The previous cases referred to by the applicant in support of its arguments are not
analogous as they pertain to marks with meaningful elements. The applicant argues
that the letters ‘IZO’ are descriptive, but has produced no evidence to show that this
is a usual abbreviation for isolation.
Furthermore, the Opposition Division notes that the existence of trade marks on the
register which contain these three letters is not per se particularly conclusive, as it
does not necessarily reflect the situation in the market. In other words, on the basis
of data concerning a register only, it cannot be assumed that all such trade marks
have been effectively used. It follows that the bare assertion that other such trade
marks exist on the register filed does not demonstrate that consumers have been
exposed to widespread use of, and have become accustomed to, trade marks that
include the letters ‘IZO’. Under these circumstances, the applicant’s claims must be
set aside.
The signs are of average visual similarity, high aural similarity and the earlier sign
possesses a normal degree of distinctiveness.
Account is also taken of the fact that average consumers rarely have the chance to
make a direct comparison between different marks, but must trust in their imperfect
recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323,
§ 26).
Considering all the above, there is a likelihood of confusion on the part of the
English-speaking part of the public for those goods found to be similar. As previously
stated, a likelihood of confusion for only part of the relevant public of the European
Union is sufficient to reject the contested application.
Therefore, the opposition is partially well founded on the basis of the opponent’s
European Union trade mark registration No 36 22 10. It follows that the contested
trade mark must be rejected for all the contested goods found to be similar.
The rest of the contested goods are dissimilar. As similarity of goods and services is
a necessary condition for the application of Article 8(1) EUTMR, the opposition based
on this Article and directed at these services cannot be successful.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Since the opposition is successful for only some of the contested goods, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
Decision on Opposition No B 2 742 099 page: 6 of 6
The Opposition Division
Plamen IVANOV Keeva DOHERTY Natascha GALPERIN
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.