Case T‑436/12
Deutsche Rockwool Mineralwoll GmbH & Co. OHG
v
Office for Harmonisation in the Internal Market
(Trade Marks and Designs) (OHIM)
(Community trade mark — Invalidity proceedings — Community figurative mark Rock & Rock — Earlier national word marks MASTERROCK, FIXROCK, FLEXIROCK, COVERROCK and CEILROCK — Relative ground for refusal — Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009)
Summary — Judgment of the General Court (Ninth Chamber), 8 July 2015
1. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Criteria for assessment
(Council Regulation No 207/2009, Art. 8(1)(b))
2. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark
(Council Regulation No 207/2009, Art. 8(1)(b))
3. Community trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an identical or similar earlier mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Figurative mark Rock & Rock and word marks MASTERROCK, FIXROCK, FLEXIROCK, COVERROCK and CEILROCK
(Council Regulation No 207/2009, Arts 8(1)(b), and 53(1)(a))
4. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity of the marks concerned
(Council Regulation No 207/2009, Art. 8(1)(b))
5. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark
(Council Regulation No 207/2009, Art. 8(1)(b))
6. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark
(Council Regulation No 207/2009, Art. 8(1)(b))
1. See the text of the decision.
(see para. 16)
2. See the text of the decision.
(see para. 18)
3. For the relevant public composed of average German consumers or professionals from the construction sector, there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 on the Community trade mark between the figurative sign Rock & Rock, registration of which as a Community trade mark is sought in respect of goods falling within Classes 2, 19 and 27 of the Nice arrangement, and the word marks MASTERROCK, FIXROCK, COVERROCK, and CEILROCK, previously registered in Germany for goods or services in Classes 6, 17, 19 or 37.
The goods covered by the signs at issue are in part similar, and, as to the rest, either slightly similar or dissimilar. In addition, the relevant public’s level of attention is particularly high and there is only a low degree of similarity between the signs at issue, which, moreover, stems from an element which is largely descriptive and/or laudatory of the goods in question and laudatory of the services covered. Lastly, the distinctiveness of the earlier trade marks, with the exception of the trade mark CEILROCK, which is averagely distinctive, is weak.
In the context of a global assessment of the signs at issue, in view of the fact that the relevant public’s level of attention is particularly high at the time of purchasing the goods covered, the visual, aural and conceptual differences separating the signs at issue are sufficient to prevent the similarities stemming from the presence of the shared element ‘rock’ from giving rise to a likelihood of confusion on the part of average German consumers or professionals from the construction sector despite the similarities between some of the goods covered.
Since the element ‘rock’ is largely descriptive and laudatory of the goods and services covered by the earlier trade marks, it is not capable of constituting the shared core of a family of trade marks. Recognition of the family of trade marks containing the serial element ‘rock’ would lead precisely to the monopolisation of the element ‘rock’, which is largely descriptive and/or laudatory of the goods and services covered by the earlier trade marks. The enhanced protection resulting from the recognition of a family of trade marks would mean that, in practice, no other operator would be able to register a trade mark containing the element ‘rock’ and could even, depending on the circumstances, be banned from using that element in its slogans and advertising materials. Such a restriction of free competition, which would be the result of a basic English word being reserved for a single economic operator, cannot be justified by the desire to reward the creative or advertising efforts expended by the proprietor of the earlier trade marks. When there is no enhanced distinctiveness through use, the commercial value represented by that reservation is the result, not of such efforts on the part of the proprietor, but only of the meaning of the word, predetermined by the language in question, which refers to the characteristics of the goods and services concerned.
(see paras 19, 24, 81, 83, 86, 96, 97)
4. See the text of the decision.
(see paras 26, 27)
5. In order to determine the distinctiveness of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered.
(see para. 28)
6. The likelihood of association is a specific case of the likelihood of confusion, which is characterised by the fact that the marks in question, whilst not likely to be directly confused by the target public, may be perceived as being two marks belonging to the same proprietor. In order for that criterion to be taken into account, it is necessary that the application for a declaration of invalidity be based on the existence of several marks with shared characteristics enabling them to be regarded as part of the same ‘series’ or ‘family’ of trade marks. However, the fact that a trade mark is part of a series or family of trade marks is not relevant unless the shared element is distinctive. If that element is merely descriptive, it is not capable of creating a likelihood of confusion.
The broader protection granted to a family of trade marks could not successfully be relied on when the shared element of the earlier trade marks was largely descriptive of the goods and services covered. A word which refers to the nature of those goods and services is not capable of constituting the shared distinctive core of a family of trade marks.
Even where a family of trade marks is involved, the broader protection designed to avoid a likelihood of association is not to be granted unless a subsequent trade mark displays characteristics capable of associating it with the series. That could not be the case when, for example, the shared element of the earlier serial marks is used in the trade mark applied for with a different semantic content.
(see paras 79, 80, 87)