JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
8 July 2015 (*)
(Community trade mark — Invalidity proceedings — Community figurative mark REDROCK — Earlier national word marks ROCK, KEPROCK, FLEXIROCK, FORMROCK, FLOOR-ROCK, TERMAROCK, KLIMAROCK, SPEEDROCK, DUROCK, SPLITROCK, PLANAROCK, TOPROCK, KLEMMROCK, FIXROCK, SONOROCK PLUS, VARIROCK, SONOROCK and MASTERROCK — Relative ground for refusal — Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009)
In Case T‑548/12,
Deutsche Rockwool Mineralwoll GmbH & Co. OHG, established in Gladbeck (Germany), represented by J. Krenzel, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by V. Mahelka, P. Geroulakos and M. Rajh, acting as Agents,
defendant,
supported by
Redrock Construction s.r.o., established in Prague (Czech Republic), represented by D. Krofta, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 16 October 2012 (Case R 1596/2011-4) concerning invalidity proceedings between Deutsche Rockwool Mineralwoll GmbH & Co. OHG and Redrock Construction s.r.o.,
THE GENERAL COURT (Ninth Chamber),
composed of G. Berardis, President, O. Czúcz (Rapporteur) and A. Popescu, Judges,
Registrar: I. Drăgan, Administrator,
having regard to the application lodged at the Court Registry on 18 December 2012,
having regard to the response of OHIM lodged at the Court Registry on 14 May 2013,
having regard to the response of the intervener lodged at the Court Registry on 16 April 2013,
having regard to the reply lodged at the Court Registry on 21 August 2013,
further to the hearing on 12 November 2014,
gives the following
Judgment
Background to the dispute
1 On 20 May 2004, the intervener, Redrock Construction s.r.o., filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark for which registration was sought is the following figurative sign:
3 The goods and services for which registration of the mark was sought fall, inter alia, within Classes 1, 2, 17, 19 and 37 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 1: ‘Chemicals used in industry; mastics included in this class; chemical auxiliary agents used in industry; synthetic resins; unprocessed artificial resins; epoxy resins; chemical compositions used in industry; adhesives used in industry; cement preservatives, except paints and oils; chemical fillers and filling agents’;
– Class 2: ‘Coatings (paints) and auxiliary coating preparations; paints; powder paints and fillers; varnishes, lacquers; raw natural resins; mastics included in this class; preservatives against rust; thinners for paints and lacquers’;
– Class 17: ‘Packing and insulating materials; filling mastics; insulation materials’;
– Class 19: ‘Building materials (non-metallic); concrete; mortar; cement; plaster; plaster; cement compositions; coatings (building materials); road-making materials, not of metal; floors, not of metal; materials for use in construction of dampness downtakes, not of metal; floor laying compositions; construction timber’;
– Class 37: ‘Construction; building construction; construction information; repair and installation services; building consultancy’.
4 On 5 March 2010, the sign in question was registered as a Community trade mark (‘the contested mark’) inter alia for the abovementioned goods and services under No 3866365.
5 On 6 April 2010, the applicant, Deutsche Rockwool Mineralwoll GmbH & Co. OHG, filed an application for a declaration of invalidity against the contested mark based on Article 53(1)(a) of Regulation No 207/2009 in conjunction with Article 8(1)(b) thereof.
6 The application for a declaration of invalidity was based on the following marks:
– the earlier word mark ROCK, registered in Germany on 24 March 2003 under No 30229274 for goods and services in Classes 1, 6 to 8, 17, 19, 37 and 42,
– the earlier word mark KEPROCK, registered in Germany on 30 May 2003 under No 30312115 for the following goods and services:
– Class 17: ‘Mineral wool products in the form of webs, mats, felts, plates, lamellar mats, lamellar plates and moulded parts, the aforementioned goods also with a one or double-sided coating from plastic dispersions and/or water glass and/or from hydraulic and/or artificial resin-based binding agents, with or without fillers and/or colour pigments, all these goods being intended for thermal and sound insulation, in particular roof insulation elements for flat roofs and flatly inclined roof as well as steep roofs; valley roof elements, preferably plate-shaped’;
– Class 19: ‘Mineral wool products in the form of webs, mats, felts, plates, lamellar mats, lamellar plates and moulded parts, dry floor finish insulating panels and reversing roof panels from mineral fibers, the aforementioned products also with a one or double-sided coating from plastic dispersions and/or water glass and/or hydraulic and/or artificial resin-based binders, with or without fillers and/or colour pigments, all the aforementioned products being intended for fire protection and/or as building material for construction purposes, in particular roof insulation elements for flat and flatly inclined roofs as well as steep roofs; valley insulation elements, preferably plate-shaped’;
– Class 37: ‘Civil engineering; installation work, in particular heat and sound insulation work in roof areas as well as installation of fire protection elements, especially roof area’;
– the earlier word mark FLEXIROCK, registered in Germany on 21 September 1994 under No 2078534 for goods in Classes 17 and 19;
– the earlier word mark FORMROCK, registered in Germany on 21 September 1994 under No 2078535 for goods in Classes 17 and 19;
– the earlier word mark FLOOR-ROCK, registered in Germany on 6 October 1994 under No 2079579 for goods in Classes 17 and 19;
– the earlier word mark TERMAROCK, registered in Germany on 18 September 1995 under No 39502727 for goods in Classes 17 and 19;
– the earlier word mark KLIMAROCK, registered in Germany on 7 May 1996 under No 39517348 for goods in Classes 17 and 19;
– the earlier word mark SPEEDROCK, registered in Germany on 21 May 1996 under No 39543868 for goods in Classes 17 and 19;
– the earlier word mark DUROCK, registered in Germany on 11 June 1996 under No 39551027 for goods in Classes 17 and 19;
– the earlier word mark SPLITROCK, registered in Germany on 23 May 1996 under No 39605619 for goods in Classes 17 and 19;
– the earlier word mark PLANAROCK, registered in Germany on 17 December 1996 under No 39644214 for goods in Classes 17 and 19;
– the earlier word mark TOPROCK, registered in Germany on 23 April 1997 under No 39707589 for goods in Classes 17 and 19;
– the earlier word mark KLEMMROCK, registered in Germany on 10 October 1997 under No 39737546 for goods in Classes 17 and 19;
– the earlier word mark FIXROCK, registered in Germany on 23 August 1999 under No 39920622 for goods in Classes 6, 17 and 19;
– the earlier word mark SONOROCK PLUS, registered in Germany on 11 February 2002 under No 30166175 for goods and services in Classes 17, 19 and 37;
– the earlier word mark VARIROCK, registered in Germany on 11 February 2002 under No 30166176 for goods and services in Classes 17, 19 and 37;
– the earlier word mark SONOROCK, registered in Germany on 11 February 2002 under No 30166177 for goods and services in Classes 17, 19 and 37;
– the earlier word mark MASTERROCK, registered in Germany on 9 July 2002 under No 30212141 for goods and services in Classes 17, 19 and 37.
7 The application for a declaration of invalidity was based on all the goods and services designated by the earlier marks and was directed against all the goods and services designated by the contested mark which are mentioned in paragraph 3.
8 By decision of 12 July 2011, the Cancellation Division refused the application for a declaration of invalidity made by the applicant. In its view, the goods and services covered by the signs at issue were identical or similar. With regard to the element ‘rock’, it held that it was descriptive of the goods covered by the earlier marks and that the signs at issue had a certain degree of similarity. However, in view of the high level of attentiveness of the relevant public, it found that there was no likelihood of confusion in respect of all the earlier marks. Lastly, it rejected the applicant’s argument concerning the existence of a family of marks.
9 On 3 August 2011, the applicant filed a notice of appeal with OHIM against the decision of the Cancellation Division.
10 By decision of 16 October 2012 (‘the contested decision’), the Fourth Board of Appeal confirmed the decision of the Cancellation Division. With regard to the application for a declaration of invalidity based on the earlier mark ROCK, it stated that the absence of a likelihood of confusion had been definitively established by the Court in the judgment of 13 October 2009 in Deutsche Rockwool Mineralwoll v OHIM — Redrock Construction (REDROCK) (T‑146/08, EU:T:2009:398). With regard to the application for a declaration of invalidity based on the earlier mark KEPROCK, the Board of Appeal held that the degree of attention of the relevant public was high, that the goods covered by the contested mark in Classes 1 and 2 and the construction timber in Class 19 were dissimilar, whilst some of the other contested goods and services were identical and some were similar to the goods and services covered by the mark KEPROCK. In addition, the signs at issue were visually similar to a degree below average and aurally similar to an average degree, without being conceptually similar. Lastly, the shared element ‘rock’ had only weak distinctive character. Consequently, there was no likelihood of confusion. The Board of Appeal held that the likelihood of confusion was also excluded in respect of the other earlier marks for essentially the same reasons. Moreover, it considered that the broader protection granted to families of marks could not be applied in this case.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
12 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant relies on a single plea in law alleging an infringement of Article 8(1)(b) and Article 53(1)(a) of Regulation No 207/2009.
14 Under those articles, a Community trade mark is to be declared invalid, on application by the proprietor of an earlier mark, if because of its identity with, or similarity to, an earlier mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
15 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (judgments of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33, and 7 November 2013 in Three-N-Products v OHIM — Munindra (AYUR), T‑63/13, EU:T:2013:583, paragraph 14).
16 In the case in point, it should be observed that in its judgment in REDROCK, cited in paragraph 10 above (EU:T:2009:398), the Court found that there was no likelihood of confusion between the signs ROCK and REDROCK. That conclusion is not called into question by the applicant and, moreover, has become final. It is therefore necessary to assess the likelihood of confusion between the sign REDROCK and the rest of the earlier marks.
17 It should be noted in this regard that both before OHIM and before the Court the applicant focused its arguments on the likelihood of confusion between the sign REDROCK and the earlier mark KEPROCK and concentrated on the goods covered by the earlier marks which are manufactured mainly from mineral wool, without putting forward any separate arguments regarding the services covered by those marks.
The relevant public
18 According to the case-law, so far as concerns the degree of attentiveness of the relevant public for the purposes of the global assessment of the likelihood of confusion, the average consumer of the relevant goods and services is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and cited case-law).
19 In the present case the Board of Appeal found that the relevant territory was Germany, the country in which the earlier marks were registered and protected, and that the relevant public consisted of professionals in the construction sector and, occasionally, well informed average consumers in the construction sector who purchased the goods concerned in DIY stores. It held that the relevant public’s level of attention would be high at the time of purchase due to the price and expected long durability of the goods in question.
20 The applicant does not dispute that analysis.
21 It must be emphasised that the goods concerned, which are largely building materials, are not intended for everyday use by average consumers. The specialised nature of those goods requires a precise, informed choice, regardless of the price and volume of goods sold. In addition, the fact that a type of product is not purchased regularly by the consumer suggests that that consumer’s level of attention will be fairly high. It should be added that, although some of the goods in question are available to the general public, it is unusual for the purchase of such goods to be carried out by ordinary consumers, who generally either entrust a professional with such a task or seek advice from consumers whose knowledge of the subject is higher than average (see, to that effect, judgment in REDROCK, cited in paragraph 10 above, EU:T:2009:398, paragraphs 45 and 46).
22 It should be added that knowledge of the characteristics, quality and commercial origin of building materials is all the more important for the relevant public as those goods — once incorporated into a building — can often be replaced only at high cost. Moreover, poor quality building materials may cause damage to the building, which may then require expensive intervention. For these reasons, it is sensible to assume that even average consumers who do not entrust the task of selecting such goods to a professional will carry out Internet searches regarding the goods concerned and that such consumers will, at all events, be interested in the background and identity of the manufacturer of those goods.
23 The same applies with regard to the construction services in Class 37, which involve a precise, informed choice and require a high level of circumspection on the part of the relevant public.
24 Consequently, it must be held that the level of attentiveness of the relevant public is particularly high (see, to that effect, judgment in REDROCK, cited in paragraph 10 above, EU:T:2009:398, paragraph 47).
Comparison of the goods and services covered by the marks REDROCK and KEPROCK
25 In the contested decision, the Board of Appeal held that the goods covered by the contested mark in Classes 1 and 2 and the construction timber in Class 19 were dissimilar, whilst some of the other contested goods and services were identical and some were similar to the goods and services covered by the mark KEPROCK.
26 The applicant challenges that assessment. It claims that the goods covered by the contested mark in Classes 1 and 2 have the same intended use as the goods covered by the mark KEPROCK in Classes 17 and 19 or may be complementary to those goods. In addition, the distribution channels are the same. Those goods are therefore similar. In addition, it considers that the ‘packing materials’ covered by the contested mark in Class 17 are not just similar to the insulation materials covered by the mark KEPROCK in Classes 17 and 19, but highly similar.
27 It must be stated that, according to the contested decision, the ‘insulating materials; filling mastics; insulation materials’ in Class 17 covered by the contested mark are identical to ‘all goods being intended for thermal and sound insulation’ in the same class covered by the mark KEPROCK. Similarly, the Board of Appeal held that the ‘building materials (non-metallic)’ in Class 19 covered by the contested mark, were identical to the building materials in the same class covered by the mark KEPROCK. Lastly, according to the Board of Appeal, the construction services covered by the signs in question in Class 37 were also identical.
28 It held that even though those goods and services covered by the signs at issue were identical, there was no likelihood of confusion.
29 It must therefore be examined, first of all, whether the Board of Appeal could validly conclude that there was no likelihood of confusion in respect of the goods and services covered by the signs at issue which it held to be identical. The validity of such a conclusion in the contested decision would make it unnecessary to examine the degree of similarity of the other goods and services.
30 The Court thus considers it appropriate first to examine the similarity between the signs REDROCK and KEPROCK.
Comparison of the signs REDROCK and KEPROCK
31 The applicant accuses the Board of Appeal of erring in its assessment of the similarity between REDROCK and KEPROCK and of the descriptive nature of the element ‘rock’ in the context of goods in the construction sector.
32 It should be borne in mind that the overall assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the signs at issue, be based on the overall impression given by those signs, account being taken, in particular, of their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the overall assessment of the likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and cited case-law).
33 The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. The comparison must rather be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment in OHIM v Shaker, cited in paragraph 32 above, EU:C:2007:333, paragraph 41 and cited case-law). It is only if all the other components of the mark are negligible that the assessment of the similarity may be carried out solely on the basis of the dominant element (judgments in OHIM v Shaker, cited in paragraph 32 above, EU:C:2007:333, paragraph 42, and 20 September 2007 in Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 42). That could in particular be the case where that element is likely, by itself, to dominate the image that the relevant public has of the mark, with the result that all the other components of the mark are negligible within the overall impression (judgment in Nestlé v OHIM, cited above, EU:C:2007:539, paragraph 43).
Preliminary remarks
34 According to case-law, 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 (judgments of 13 June 2006 in Inex v OHIM — Wiseman (Representation of a cowhide), T‑153/03, ECR, EU:T:2006:157, paragraph 35, and 27 February 2008 in Citigroup v OHIM — Link Interchange Network (WORLDLINK), T‑325/04, EU:T:2008:51, paragraph 66).
35 In the present case the Board of Appeal held, in the context of the visual comparison, that the relevant public would identify the element ‘rock’ as a word, but examined the signs at issue as a whole. With regard to the aural comparison, the Board of Appeal found that the sign REDROCK would be perceived by the relevant public as an English word composed of words of basic vocabulary, whilst the mark KEPROCK would be perceived as a fanciful expression. From a conceptual point of view, in its view, the relevant German consumers would immediately perceive the meaning of the two words of basic English vocabulary forming the mark REDROCK. In addition, in view of the goods and services concerned, consumers would associate the element ‘rock’ with the German equivalents of the word ‘stone’, namely ‘Fels’ and ‘Stein’, with the result that that element would have weak distinctive character. Furthermore, the Board of Appeal held that the letter combination ‘kep’ was meaningless in English and in German. Accordingly, in its view, the public had no reason to dissect the mark KEPROCK and would perceive it as a fanciful word combination.
36 First, the applicant argues that the relevant public considers a mark as a whole. It thus considers that the Board of Appeal was wrong to examine the first and second syllables of the signs at issue separately.
37 In this regard, it should be noted that although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgment of 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 25), the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (judgments of 6 October 2004 in Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, ECR, EU:T:2004:292, paragraph 51, and RESPICUR, cited in paragraph 18 above, EU:T:2007:46, paragraph 57). Identifying word elements which consumers can understand is useful for the assessment of the visual, aural and conceptual similarity between the signs at issue (see, to that effect, judgment of 25 June 2010 in MIP Metro v OHIM — CBT Comunicación Multimedia (Metromeet), T‑407/08, ECR, EU:T:2010:256, paragraphs 37 and 38).
38 Consequently, the Board of Appeal rightly held that the relevant public would identify the word element ‘rock’ as a word, even in the absence of any visual separation between that element and the other elements of the signs at issue. Even if the average German consumer does not have a thorough knowledge of English, the word ‘rock’ is a basic English word, and professionals and consumers alike will associate that word with the word ‘stone’ (judgment in REDROCK, cited in paragraph 10 above, EU:T:2009:398, paragraph 53).
39 The same applies to the element ‘red’ in the contested mark, which designates the colour red in English and, as it is part of basic English vocabulary, it will be directly comprehensible for the relevant public (judgment in REDROCK, cited in paragraph 10 above, EU:T:2009:398, paragraph 78).
40 Thus, the Board of Appeal did not err in holding that the relevant public would split the mark REDROCK into two elements, ‘red’ and ‘rock’, and that it would identify the element ‘rock’ in the mark KEPROCK as a meaningful word.
41 It should be added that, in its argument concerning the family of marks having the word ‘rock’ as a shared element, the applicant recognises that that element has a degree of autonomy in all the earlier marks, including KEPROCK, because, in its view, that element constitutes the serial element which would permit the public to associate all those marks with a single commercial origin. It cannot therefore legitimately deny in a different context that the element ‘rock’ constitutes a separate element which can be identified by the relevant public.
42 Lastly, it is clear from the contested decision that, after identifying the element ‘rock’ as a meaningful word, the Board of Appeal included all the signs at issue in the comparison and that, furthermore, it found that the sign KEPROCK would be perceived, as a whole, as a fanciful word combination aurally and conceptually.
43 There is nothing to prevent the Board of Appeal first identifying the comprehensible elements of the signs at issue, assessing their distinctive character and then comparing those signs as a whole. Such an approach is perfectly compatible with the case-law cited in paragraphs 32 and 37. In addition, identifying ‘distinctive’ and ‘dominant’ elements may require an assessment of distinctiveness in relation to all the components of the mark and thus an identification of less distinctive elements. Such an exercise is without prejudice to the consideration of the overall impression created by the marks at a subsequent stage of the examination.
44 Consequently, the applicant’s argument concerning the separate examination of the elements making up the signs at issue must be rejected.
45 Second, it should be stated that in several passages of the contested decision the Board of Appeal established the descriptive character of the element ‘rock’.
46 It should be noted in this regard that at least some of the building materials covered by the contested mark and nearly all the goods covered by the earlier marks are manufactured from stone-based raw materials which, especially in their natural state, may easily be associated by the relevant public with the word ‘rock’, whether taken to mean ‘rock’ or ‘cliff’, with the result that that word is largely descriptive of those materials (judgment in REDROCK, cited in paragraph 10 above, EU:T:2009:398, paragraph 54).
47 That finding cannot be called into question by the applicant’s assertion that the word ‘rock’ has other meanings in German, namely, that it refers to the name of a style of music and an item of women’s clothing. In order to assess the distinctiveness or descriptiveness of a sign, account must be taken of the meaning of that sign which refers to the goods covered or designates one of their characteristics (judgments of 23 October 2003 in OHIM v Wrigley, C‑191/01 P, ECR, EU:C:2003:579, paragraph 32, and REDROCK, cited in paragraph 10 above, EU:T:2009:398, paragraph 55).
48 Furthermore, in the present case, the word ‘rock’ also conveys a laudatory message concerning the characteristics of the goods and services covered which relate to building materials and building activity, in so far as it can be understood as alluding to the solidity and stability of rocks or rock formations. However, with regard to the goods and services covered, the inherent distinctiveness of a laudatory word relating to the characteristics of those goods or services is not high (see, to that effect, judgments of 16 January 2008 in Inter-Ikea v OHIM — Waibel (idea), T‑112/06, EU:T:2008:10, paragraph 51, and REDROCK, cited in paragraph 10 above, EU:T:2009:398, paragraph 56).
49 It follows that the shared element ‘rock’ is largely descriptive and/or laudatory of the goods and services covered by the signs at issue, with the result that it has only a weak inherent distinctiveness, as was rightly held by the Board of Appeal.
The visual aspect of the comparison
50 In the contested decision the Board of Appeal found that the signs REDROCK and KEPROCK coincided in their second part and in the number of letters. However, significant differences appeared in the beginnings of the signs, to which the public generally paid more attention and which in the case at hand also represented the more distinctive parts of the marks in dispute. The shared letter ‘e’ was visually different in the mark REDROCK and in the mark KEPROCK as it had an original stylisation. Consequently, the signs were visually similar to a degree below average.
51 The applicant considers that the marks are highly similar from a visual point of view. It claims that the upper case letters ‘K’ and ‘R’, on the one hand, and ‘P’ and ‘D’, on the other, have similar structures.
52 It should be noted that both marks are composed of seven letters and share the second syllable ‘rock’.
53 It must be stated, however, that that syllable is identified by the relevant public in the word ‘rock’, which refers to the characteristics of the goods and services concerned and has only weak distinctive character.
54 In addition, according to case-law, the initial part of the word elements of a mark is liable to attract the consumer’s attention more than the following parts (judgment of 17 March 2004 in El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, ECR, EU:T:2004:79, paragraph 81). Furthermore, whilst it is true that the word ‘red’ is also understood by the relevant public and is linked with the element ‘rock’, the fact remains that the figurative element — the stylised reproduction of the upper case letter ‘E’ in grey — appears in the first part of the mark REDROCK.
55 Thus, from a visual point of view, the relevant public pays much more attention to the initial parts of the signs at issue than to the shared element ‘rock’.
56 In the case in point, the beginning of the signs at issue differs for two letters out of three, with only the upper case letter ‘E’ being shared. In addition, the stylisation of that upper case letter ‘E’ and the use of the colour grey create further distance between the visual image of the element ‘red’ of the contested mark and the element ‘kep’ in the earlier mark.
57 With regard to the alleged similarity between the upper case letters ‘K’ and ‘R’, on the one hand, and ‘P’ and ‘D’, on the other, it should be stated that, in view of the relevant public’s high level of attentiveness, it will certainly perceive the difference in those letters, even if it retains only a partial image of the earlier mark.
58 Therefore, the view taken by the Board of Appeal that the signs at issue are visually similar to a degree below average must be confirmed and it must also be stated that that the degree of similarity is low.
The aural aspect of the comparison
59 With regard to the aural comparison, according to the contested decision both marks are pronounced in two syllables by the relevant German consumers. The vowel sequence is the same. The sign REDROCK would be perceived as a compound English word made of basic terms, so the mark would be pronounced according to English pronunciation rules. The earlier German mark KEPROCK would be perceived as a fanciful expression and therefore pronounced in agreement with German pronunciation rules. Although the ending is pronounced very similarly, the different beginning is clearly perceptible. Aurally the marks are therefore similar to an average degree.
60 According to the applicant, there is no practical reason why German-speaking consumers should pronounce the contested mark according to English pronunciation rules while pronouncing the earlier mark KEPROCK according to German pronunciation rules. The average consumer does not understand the meaning of the element ‘rock’ as corresponding to the German words ‘Fels’ or ‘Gestein’. On the contrary, the German public will link the word ‘rock’ with the identical German word meaning ‘skirt’ or, if it thinks of the English, with the word designating a genre of music. Since the signs at issue are pronounced according to German pronunciation rules and the sonority of the sounds ‘r’ and ‘k’ and ‘d’ and ‘p’ is close, those signs are aurally highly similar.
61 It should be noted that the signs at issue have an identical length and that they share the same vowel sequence. The second syllable, the word ‘rock’, is also shared.
62 On the other hand, the beginning contains different consonants.
63 In addition, it is true that the relevant public understands the meaning of the English words ‘red’ and ‘rock’. However, this fact does not prevent some consumers from pronouncing the contested mark according to German pronunciation rules.
64 In any event, even if the signs at issue were pronounced according to German pronunciation rules, the difference between the sonority of its ‘r’, which is not rolled in German, and that of its ‘k’ would still be very marked. In addition, even though the difference between the sonority of the consonants ‘d’ and ‘p’ is slightly smaller, the relevant public is able to perceive it.
65 In the light of these considerations, even if German pronunciation is taken as the basis for the assessment, the aural similarity between the signs at issue is average, as the Board of Appeal rightly held.
The conceptual aspect of the comparison
66 According to the contested decision, from a conceptual point of view the relevant German consumers would immediately perceive the meaning of the two basic words making up the mark REDROCK. Thus, for them the contested mark would convey the concept of a stone in red colour. However, the beginning of the mark KEPROCK was meaningless, with the result that it would be perceived as a fanciful word combination. Accordingly, the signs at issue were conceptually different.
67 It should be noted that the applicant has not put forward any arguments concerning the conceptual comparison.
68 In its judgment in REDROCK, cited in paragraph 10 above (EU:T:2009:398), the Court ruled that the element ‘rock’ in the contested mark was understood by the relevant public, which makes the connection between the English adjective ‘red’ and the English noun ‘rock’, as meaning ‘stone’, ‘rock’ or ‘cliff’. It thus describes, as a whole, an image determined by the meaning of those words (judgment in REDROCK, cited in paragraph 10 above, EU:T:2009:398, paragraph 80).
69 On the other hand, the mark KEPROCK does not create any particular image in the mind of the consumer because the element ‘kep’ is meaningless. Thus, even if the relevant public gives a meaning to the element ‘rock’, the sign KEPROCK as a whole is perceived as a fanciful word combination without any particular meaning.
70 Consequently, it is not possible to compare the meaning of the signs REDROCK and KEPROCK with the result that the conceptual comparison remains a neutral element in this case.
71 In the light of the foregoing, it must be concluded that there is a low degree of visual similarity between the signs at issue and average aural similarity, whilst the conceptual comparison is neutral.
The likelihood of confusion
72 The Board of Appeal found that there was no likelihood of confusion between the contested mark and the earlier marks.
73 The applicant challenges that assessment.
The likelihood of confusion between the signs REDROCK and KEPROCK
74 First, it should be noted that the distinctive character of the earlier mark KEPROCK is average, as the Board of Appeal rightly held. The Court finds that the sign KEPROCK is not particularly inventive or striking and is not such as to possess an above normal degree of inherent distinctive character. It should be added that the applicant itself does not identify factors to show that the mark KEPROCK is more distinctive than an average mark without any meaning. Moreover, the applicant does not claim that the mark KEPROCK has enhanced distinctive character through use.
75 Second, it must be stated that the relevant public’s level of attention is particularly high at the time of purchasing the goods and services concerned and that the public wishes to know their commercial origin.
76 Third, it should be noted that there is a low degree of visual similarity between the signs at issue and average aural similarity, whilst the conceptual comparison of the signs is neutral.
77 In this regard, it should be added that the visual, aural or conceptual aspects of the opposing signs do not always have the same weight and that, in the global assessment of the likelihood of confusion, it is appropriate to take account of the nature of the goods in question and to examine the objective conditions under which the marks may be present on the market (judgment of 6 October 2004 in New Look v OHIM — Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, ECR, EU:T:2004:293, paragraph 49).
78 The degree of aural similarity between the two marks is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually perceives visually the mark designating those goods (judgments of 14 October 2003 in Phillips-Van Heusen v OHIM — Pash Textilvertrieb und Einzelhandel (BASS), T‑292/01, ECR, EU:T:2003:264, paragraph 55, and idea, cited in paragraph 48 above, EU:T:2008:10, paragraphs 78 and 79).
79 That is the case with the building materials covered by the signs at issue, which are marketed in a way that permits the average consumer to perceive visually the marks affixed to them. Similarly, the choice of the goods in question by the relevant public is necessarily preceded by an examination of the characteristics of those goods, in shops or on the Internet, as the public wishes to satisfy itself that the materials used fulfil their function in the long term in the building into which they are incorporated. These circumstances also mean that the relevant public is visually confronted with the image of the mark before it makes its choice.
80 In those conditions, the Court considers that there is no likelihood of confusion between the marks REDROCK and KEPROCK, taken in isolation, even in respect of the goods covered by the two marks which are identical. The average consumer, showing a particularly high level of attention at the time of purchase, will perceive the differences between the marks and will not think that the goods bearing the signs at issue have the same commercial origin.
81 The same applies to the services covered by the marks REDROCK and KEPROCK, with regard to which the applicant does not put forward any specific arguments. The signs at issue will not be confused by the relevant public for the reasons set out in paragraphs 74 to 76 above.
82 There is therefore no need to examine the applicant’s arguments seeking to demonstrate that, for certain goods, the degree of similarity is higher than that established in the contested decision, since there is no likelihood of confusion even in respect of the identical goods and services. It should be noted in this regard that the word ‘rock’ is largely descriptive and/or laudatory of all the goods concerned and laudatory of the services covered by the earlier marks.
The likelihood of confusion between the mark REDROCK and the other earlier marks
83 As far as the other earlier marks are concerned, the Board of Appeal held that the distance between those marks and the sign REDROCK was sufficient to outweigh the identity and similarity of the goods and services concerned.
84 The applicant, which concentrated on the comparison of the marks REDROCK and KEPROCK and its argument concerning the family of marks, does not put forward any specific arguments concerning the other earlier marks (FLEXIROCK, FORMROCK, FLOOR-ROCK, TERMAROCK, KLIMAROCK, SPEEDROCK, DUROCK, SPLITROCK, PLANAROCK, TOPROCK, KLEMMROCK, FIXROCK, SONOROCK PLUS, VARIROCK, SONOROCK and MASTERROCK) individually.
85 In this connection, as regards the visual comparison, it should be stated that, of the other earlier marks, only TOPROCK and FIXROCK have the same number of letters as REDROCK. However, the first parts of those marks, to which the relevant public generally pays more attention according to case-law (see paragraph 54 above), are completely different, as none of the letters in the elements ‘top’ and ‘fix’ correspond to the element ‘red’. Moreover, even though the earlier marks KLEMMROCK and SPEEDROCK contain the letter ‘e’, it should be noted that the rest of the first parts of the signs in question is completely different from the first part of the mark REDROCK and, furthermore, those earlier marks have nine letters, whereas REDROCK has only seven. Consequently, since a figurative element is also present in the mark REDROCK, the marks TOPROCK, FIXROCK, SPEEDROCK and KLEMMROCK, on the one hand, and the mark REDROCK, on the other, are at most visually slightly similar, despite the shared element ‘rock’. This holds a fortiori for the other earlier marks.
86 With regard to the aural comparison, it should be added that only the sonority of the earlier mark KLEMMROCK has some similarities with that of the mark REDROCK, on account of the presence of the same vowel sequence and the same number of syllables. However, the combination of the consonants ‘k’ and ‘l’ at the beginning of the sign slightly clips the pronunciation, in addition to which a double ‘m’, is also present, further differentiating the pronunciation of that mark from that of REDROCK. Therefore, the aural similarity between KLEMMROCK and REDROCK is at most weak. This holds a fortiori for the other earlier marks.
87 Lastly, with regard to the conceptual comparison, it must be stated that, in the case of the majority of the earlier marks, the word ‘rock’ has the same meaning as in the case of the mark REDROCK. However, the first elements ‘flexi’, ‘form’, ‘floor’, ‘terma’, ‘klima’, ‘speed’, ‘split’, ‘plana’, ‘top’, ‘klemm’, ‘fix’, ‘sono’, ‘vari’ and ‘master’ have a completely different meaning from ‘red’ with the result that the overall conceptual similarity between the signs in question remains at most weak. With regard to the mark ‘DUROCK’, the same conclusion must be reached if the average German consumer is presumed to identify the element ‘dur’ as referring to notions of durability or solidity. Alternatively, if the relevant public is presumed not to attribute any meaning to the element ‘du’, the conceptual comparison remains neutral.
88 It must therefore be concluded that, in view of the relevant public’s particularly high level of attentiveness, the differences between the contested mark and the earlier marks FLEXIROCK, FORMROCK, FLOOR-ROCK, TERMAROCK, KLIMAROCK, SPEEDROCK, DUROCK, SPLITROCK, PLANAROCK, TOPROCK, KLEMMROCK, FIXROCK, SONOROCK PLUS, VARIROCK, SONOROCK and MASTERROCK are sufficient to exclude any likelihood of confusion.
The likelihood of confusion allegedly resulting from the existence of a family of marks with the shared element ‘rock’
89 In the contested decision the Board of Appeal concluded that the applicant could not rely on the broader protection granted to a family of trade marks.
90 The applicant claims that the earlier marks KEPROCK, FLEXIROCK, FORMROCK, FLOOR-ROCK, TERMAROCK, KLIMAROCK, SPEEDROCK, DUROCK, SPLITROCK, PLANAROCK, TOPROCK, KLEMMROCK, FIXROCK, SONOROCK PLUS, VARIROCK, SONOROCK and MASTERROCK constitute a family of marks. In its view, the average consumer will think that the contested mark also belongs to that series and therefore that the commercial origin of the goods bearing the contested mark is the same, which constitutes a likelihood of association.
91 It should be borne in mind that 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 (see judgment of 9 April 2003 in Durferrit v OHIM — Kolene (NU-TRIDE), T‑224/01, ECR, EU:T:2003:107, paragraph 60 and cited case-law). 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 (judgment of 18 December 2008 in Les Éditions Albert René v OHIM, C‑16/06 P, ECR, EU:C:2008:739, paragraph 101). 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 (see, to that effect, judgment of 6 July 2004 in Grupo El Prado Cervera v OHIM — Héritiers Debuschewitz (CHUFAFIT), T‑117/02, ECR, EU:T:2004:208, paragraph 59).
92 In the first place, it should be borne in mind that the Court has previously held that 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 (see, to that effect, judgment of 13 July 2012 in Caixa Geral de Depósitos v OHIM — Caixa d’Estalvis i Pensions de Barcelona (la Caixa), T‑255/09, EU:T:2012:383, paragraph 82).
93 It should be borne in mind that the element ‘rock’ is largely descriptive and/or laudatory of the goods and services covered by the earlier trade marks. Consequently, in accordance with the case-law cited in paragraphs 91 and 92 above, it is not capable of being the shared element of a family of trade marks.
94 In the second place, that finding is supported by the order of 30 January 2014 in Industrias Alen v The Clorox Company (C‑422/12 P, ECR, EU:C:2014:57, paragraph 45), in which the Court of Justice held that the finding that there was a likelihood of confusion between the trade marks CLOROX and CLORALEX did not amount to conferring a monopoly over the element ‘clor’ — which was largely descriptive of the goods in question — upon the proprietor of the earlier trade mark, given that a finding of a likelihood of confusion led solely to the protection of a certain combination of elements without, however, a descriptive element forming part of that combination being protected as such.
95 However, 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.
96 In the third place, the applicant cannot validly rely on the judgment of 27 April 2010 in UniCredito Italiano v OHIM — Union Investment Privatfonds (UNIWEB) (T‑303/06 and T‑337/06, EU:T:2010:160). In that judgment, the Court emphasised the importance of the distinctiveness of the serial element ‘uni’ in relation to the services covered and held that that distinctiveness was of such a level that the element was capable in itself of giving rise to a direct association by the relevant public with the series concerned (judgment in UNIWEB, cited above, EU:T:2010:160, paragraphs 35, 38 and 39). However, no such level of distinctiveness exists in the present case.
97 The element ‘uni’ has, admittedly, a meaning for the average German consumer, but cannot be directly linked to the financial services, investment funds in particular, covered by the earlier trade marks at issue in the proceedings giving rise to the judgment in UNIWEB, cited in paragraph 96 above (EU:T:2010:160). By contrast, the element ‘rock’ relied on in the present case refers to the characteristics of the building materials and services covered by the earlier trade marks. Accordingly, since the factual context differs on that crucial point, the solution adopted in that judgment cannot be applied by analogy to the present case.
98 It follows that, in the present case, since the element ‘rock’ is largely descriptive and/or 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.
99 For the sake of completeness, it should be stated that in any event the applicant has not provided proof of genuine use of a sufficient number of marks which could constitute a family of marks.
100 According to case-law, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgments in VITAKRAFT, cited in paragraph 37 above, EU:T:2004:292, paragraph 28, and 30 November 2009 in Esber v OHIM — Coloris Global Coloring Concept (COLORIS), T‑353/07, EU:T:2009:475, paragraph 24).
101 In this present case, the evidence of genuine use submitted by the applicant before OHIM consists in an affidavit and catalogues featuring the goods bearing the earlier marks.
102 As the Board of Appeal rightly held, the applicant failed to submit independent evidence, such as market surveys, invoices or advertising numbers which could corroborate the figures indicated in the affidavit. Moreover, the catalogues proved only that the earlier marks existed, without indicating in which quantities and when they were distributed.
103 Consequently, the applicant has not provided solid and objective evidence of effective and sufficient use of all the earlier marks, or at least of a sufficiently large number of them which could be regarded as a family of marks. Such proof is required by the case-law regarding the family of marks (see, to that effect, judgment of 23 February 2006 in Il Ponte Finanziaria v OHIM — Marine Enterprise Projects (BAINBRIDGE), T‑194/03, ECR, EU:T:2006:65, paragraphs 126 and 127).
104 In view of the foregoing as a whole, the applicant’s arguments alleging the presence of a family of marks must be rejected.
105 Consequently, the single plea in law raised by the applicant must be rejected and its action must therefore be dismissed.
Costs
106 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by OHIM and by the intervener, as applied for by them.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1. Dismisses the action;
2. Orders Deutsche Rockwool Mineralwoll GmbH & Co. OHG to pay the costs.
Delivered in open court in Luxembourg on 8 July 2015.
[Signatures]