OPPOSITION No B 2 531 773

Frenzelit Werke GmbH, Frankenhammer 7, 95460 Bad Berneck i.F., Germany (opponent), represented by Becker Kurig Straus, Bavariastr. 7, 80336 Munich, Germany (professional representative)

a g a i n s t

Thermotex Engineering Limited, 1a Broom Business Park, Broom Bank Road, Chesterfield, Derbyshire S41 9QG, United Kingdom (applicant), represented by Swindell & Pearson Ltd, 48 Friar Gate, Derby DE1 1GY, United Kingdom (professional representative).

On 11/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 531 773 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 405 221 . The opposition is based on German trade mark registration No 302 013 040 281 ‘thermoREFLEX’. 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 and services

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

Class 9: Protective blankets, fire blankets, fire curtains, the aforesaid goods consisting of glass fiber fabrics and/or technical needled nonwovens, each partially reinforced with stainless steel wire and/or high temperature resistant fibres, respectively in monolayer or multilayer structure, all the aforesaid goods for thermal and acoustic applications in the automotive industry, in heat and air conditioning technology, in the process industry, in shipbuilding, in mechanical engineering or plant manufacturing, in the energy industry, in security technology.

Class 17: Insulating fittings, fittings, prefabricated elements, especially in the form of insulating sleeves, insulating pads, insulating pipes/tubing, heat shields, exhaust pipe insulation, catalyst insulation, insulation sheating/jackets, door insulation of oil/condensing boilers, internal insulation or fire protection insulation, textile runners, especially pre-finished molded, stitched and provided with accessories such as buttons, eyelets, buckles, hooks, or Velcro straps, the aforesaid goods, consisting of glass fibre fabrics and/or technical needled nonwovens, each partially reinforced with stainless steel wire and/or high temperature resistant fibres, respectively in monolayer or multilayer structure, all the aforesaid goods for thermal and acoustic applications in the automotive industry, in heat and air conditioning technology, in the process industry, in shipbuilding, in mechanical engineering or plant manufacturing, in the energy industry, in security technology.

Class 35: Services of wholesale and retail trade over the Internet for insulating parts, fittings, prefabricated elements, especially in the form of insulating sleeves, insulating pads, insulating pipes/tubing, heat shields, exhaust pipe insulation, catalyst insulation, insulation sheathing/jackets, blankets and curtains, fire blankets, door insulation of oil/condensing boilers, internal insulation or fire protection insulation, textile runners, especially pre-finished molded, stitched and provided with accessories such as buttons, eyelets, buckles, hooks, or Velcro straps, the aforesaid goods, consisting of glass fibre fabrics and/or technical needled nonwovens, each partially reinforced with stainless steel wire and/or high temperature resistant fibres, respectively in monolayer or multilayer structure, all the aforesaid goods for thermal and acoustic applications in the automotive industry, in heat and air conditioning technology, in the process industry, in shipbuilding, in mechanical engineering or plant manufacturing, in the energy industry, in security technology.

The contested goods are the following:

Class 9: Thermostats; thermostat wires; thermostat controllers; room thermostats; electric thermostats; thermostat control apparatus; mechanical room thermostats; thermal sensors [thermostats]; thermal controls [thermostats]; thermostats for vehicles; thermostatically controlled valves; temperature control apparatus [thermostats]; temperature control apparatus [thermostats] for machines; temperature control apparatus [thermostats] for vehicles.

Class 11: Heating installations; heating apparatus; heating elements; heating apparatus for containers; heating installations for vehicles; heating apparatus for vehicles; heating apparatus for use in the home; heaters; heating blankets, other than for medical purposes; heating pads [cushions], not for medical purposes; heating cushions not for medical purposes [electric or chemically activated]; flexible heating elements for automobile seats; heating apparatus for defrosting windows of vehicles; appliances for heating; air heating apparatus; heating apparatus for solid, liquid or gaseous fuels; floor heating apparatus; electrical heating elements; electric heating elements; electric heating apparatus; electric heating installations; electric heating cables; electric radiant heating apparatus; electric water heating apparatus; electrical heating elements in the form of cables; electrical heating pads, other than for medical use; central heating installations; under floor heating; under carpet heating apparatus; under carpet heating installations; radiators for central heating systems; thermostatic valves; water heating installations; space heating apparatus; thermostatic control valves as parts of heating installations; control units for heating installations; temperature regulators for central heating radiators; radiant heating apparatus; radiant space heaters; heating controllers; valves for heating installations; thermostatic valves as parts of heating installations; control devices [thermostatic valves] for heating installations; industrial heating apparatus; industrial heating installations; thermal radiators for the heating of buildings; heating installations for fluids; commercial and industrial heating apparatus; thermal storage apparatus for heating; thermal controls for central heating radiators; temperature controls for central heating radiators; control units for heating installations; temperature control valves; temperature sensors for central heating radiators; heat regulating devices being parts of heating installations; boilers.

Class 17: Insulation sheets; insulation covers; thermal insulation articles and materials; insulation for pipes; insulation jackets for industrial pipes; insulation covers for industrial machinery; insulations of synthetic material for the thermic protection of pipes; foam in the form of blocks for use as heat insulation; fabrics for insulation; fabrics made from synthetic fibres for insulation; fabrics woven from ceramic fibres for use as insulation; fibres impregnated with synthetic resins for insulation; fiberglass for insulation; fiberglass fabrics for insulation; fibres [glass] for insulation; fibre board for use as insulation; silicone foam thermal insulation; insulation material for roofing; insulation materials of plastics; insulation for electric conductors; insulation for building purposes; insulating sleeves for water heaters; insulating sleeves for pipes; insulating blankets for hot water heaters; insulation for aircraft; insulation for underground pipes and tanks; insulation and barrier articles and materials; insulating materials for insulation against heat; insulation board made from mineral wool; insulation in the form of floor coverings; insulation material for use in the ship building industry; expanded closed cell rubber for thermal insulation; fleece of crude fibres of rock [insulation]; articles made of rubber for insulation purposes; crude fibres of glass for insulation purposes; glass fiber insulation for use in construction; pre-formed insulation components; acoustical insulation for buildings; acoustic sheets for insulation; fiberglass insulation for hot water heaters; under floor insulation; substrates for electrical insulation; rubber for heat insulation; rubber for sound insulation; flexible plastic pipe insulation; flexible elastomeric thermal insulation; polyester fleece for thermal insulation; pipe wrappings for insulation purposes; silicone foam thermal insulation; expanded polystyrene underfloor insulation; quilted wadding articles for insulation; quilted textile articles for insulation; flexible tubing for insulation purposes; thermal insulation jackets; thermal insulation covers; Insulating materials for insulation against heat; fabrics made from wool for use as insulation; thermal insulation jackets for hot water cylinders; thermal insulation jackets for valves; thermal insulation jackets for industrial plant; lightweight mineral wool slabs for thermal insulation purposes; lightweight mineral wool slabs for fire insulation purposes; commercial and industrial heating apparatus; heat resistant fabrics [insulation]; ceramic parts for insulation in high frequency apparatus.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services 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 partly at the public at large and partly at business customers with specific professional knowledge or expertise in the field of construction.

The degree of attention varies from average to high, depending on the nature of the goods. For instance, the degree of attention will be average in relation to the contested goods in Class 11, while it will be higher for goods in Class 17.

3. The signs

thermoREFLEX
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 the single-word mark ‘thermoREFLEX’.

Although consumers normally perceive a mark as a whole and do not proceed to analyse its various details (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25), the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a concrete meaning or which resemble words known to them (13/06/2012, T-342/10, Mesilette, EU:T:2012:290, § 33).

Therefore, the relevant public will break the earlier mark down into two elements, ‘THERMO’ and ‘REFLEX’.

‘REFLEX’ will be understood by the relevant public as meaning ‘reflection, light reflex, or as referring to the reaction of the organism to a stimulus affecting the nervous system’ (information extracted from Duden on 24/08/2017 at http://www.duden.de/rechtschreibung/Reflex). Therefore, in relation to the opponent’s goods and services, the word has an average degree of distinctiveness.

The element ‘THERMO’, included in both marks, is a prefix that is used to express a relationship with heat (see 01/07/2015, R 2866/2014-5, THERMOBOX (fig.), § 18-19; 23/04/2015, R 2921/2014-5, THERMODATA, § 22 et seq.; 11/11/2011, R 1282/2011-4, THERMOFRAME, § 12; 13/05/2009, R 140/2009-2, THERMOPRO, § 16; 16/07/2004, 24/10/2008, R 944/2008-4, THERMOPLIER, § 16; R 107/2004-1, THERMOROOF, § 10; 24/10/2008, R 944/2008-4, THERMOPLIER, § 16; 28/10/2002, R 315/2002-1, THERMOSLEEVE, § 19). Moreover, this word is included in the German dictionary (information extracted from Duden on 24/08/2017 at http://www.duden.de/rechtschreibung/thermo_).

The word is non-distinctive in relation to the goods and services at issue, given that they all relate to insulation, heating apparatus, thermostat control apparatus, etc., and therefore this element directly indicates the nature and purpose of the goods and services (i.e. that they have some type of heat-related feature or characteristic).

The contested sign is a figurative mark consisting of the verbal element ‘THERMOTEX’ in red upper case letters. Above the element ‘THERMOTEX’ is a figurative element, namely a red circle surrounded by black arrows pointing towards the circle.

For the reasons explained above, the relevant consumer will also break the contested mark down into two elements.

The word ‘TEX’ might be understood by part of the public as a ‘unit of measurement for the weight of textile yarns’ (information extracted from Duden on 24/08/2017 at http://www.duden.de/rechtschreibung/Tex). The relevant public may also perceive it as an allusion to ‘textile’. This word is weak in relation to some goods in Class 17, for instance quilted textile articles for insulation.

Nevertheless, ‘TEX’ will be meaningless for a relevant part of the public; for those consumers, this element has an average degree of distinctive character.

The figurative device is fanciful and is distinctive in relation to the contested goods.

There is no dominant element in the contested sign.

Visually, the signs coincide in the prefix ‘thermo-’ and in their final letters, ‘ex’. They differ in the additional figurative element and in the typeface of the contested sign, as well as in the letters in the middle of the signs, namely ‘refl’ in the earlier mark and ‘t’ in the contested sign.

Given the significance of the different elements of the signs, as explained above, the most distinctive elements of the signs are ‘REFLEX’ in the earlier mark and ‘TEX’ and the figurative element in the contested sign. These two verbal elements are rather different. ‘TEX’ is a shorter word; it is composed of three letters, while ‘REFLEX’ is composed of six letters, so ‘REFLEX’ has twice as many letters as ‘TEX’. The figurative element in the contested mark creates another difference between the signs.

Therefore, the marks are visually similar to a low degree.

Aurally, the signs coincide in the sound of the letters ‘THERMO’ and ‘EX’. They differ in the letters ‘REFL’ in the earlier mark and ‘T’ in the contested sign.

The verbal elements ‘THERMOTEX’ and ‘THERMOREFLEX’ consist of three and four syllables, respectively, and two of these syllables coincide. Nevertheless, these identical syllables form a non-distinctive element (‘THERMO’) and therefore have a very limited impact. The remaining and (more) distinctive elements (although ‘TEX’ is weak for part of the public and some of the goods) have significant differences, which will be immediately perceived by the consumers. In this case, the differences in length and letters are significant and will not be disregarded by the consumers

Therefore, given all the above, the signs are aurally similar to a low degree.

Conceptually, the signs coincide in the element ‘THERMO’. It should be noted that non-distinctive elements have no influence on the conceptual comparison (04/02/2013, T-159/11, Walichnowy Marko, EU:T:2013:56, § 45).

As regards the remaining elements, reference is made to the previous assertions concerning the semantic content that they convey. For the part of the public that understands ‘TEX’ as referring to ‘textile’ or to a unit of measurement, the signs are dissimilar because they coincide in a non-distinctive element and the differentiating elements convey different distinctive concepts. Therefore, the commonality has no impact.

For the part of the public for which ‘TEX’ is meaningless, 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.

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 and services 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 non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the signs are visually and aurally similar to a low degree, and conceptually dissimilar for part of the public, while for the other part of the public the signs are not conceptually similar.

The goods were assumed to be identical.

The signs coincide in the element ‘THERMO’ of the verbal elements ‘THERMOTEX’ and ‘THERMOREFLEX’. However, this element is non-distinctive, for the reasons explained above. Therefore, in the present case, the most distinctive parts of the signs are the sequence of letters ‘TEX’ and the figurative element in the contested sign and the word ‘REFLEX’ in the earlier mark. The verbal elements ‘TEX’ and ‘REFLEX’ differ both in appearance and in the sound they produce, which makes this difference clearly perceptible, both visually and aurally, for the relevant public. Visually, the difference is increased by the presence of the distinctive and fanciful figurative device in the contested sign.

Furthermore, account should be taken of the fact that the signs are conceptually dissimilar for part of the public, while for another part they are not conceptually similar. All these differences offset the similarities between the marks and make the signs sufficiently distinguishable in the relevant public’s perception.

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.

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 applicant 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 applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Gueorgui IVANOV

Patricia LOPEZ FERNANDEZ DE CORRES

Robert MULAC

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.