Case T‑548/12
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 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)
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 REDROCK and word marks KEPROCK, FLEXIROCK, FORMROCK, FLOOR-ROCK, TERMAROCK, KLIMAROCK, SPEEDROCK, DUROCK, SPLITROCK, PLANAROCK, TOPROCK, KLEMMROCK, FIXROCK, SONOROCK PLUS, VARIROCK, SONOROCK and MASTERROCK
(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. 15)
2. See the text of the decision.
(see para. 18)
3. For the relevant public composed of professionals from the construction sector, and, occasionally, well-informed average consumers in the construction sector who buy the products concerned in DIY stores, 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, on the one hand, the figurative sign REDROCK, registration of which as a Community trade mark is sought in respect of goods falling within Classes 1, 2, 17, 19 and 37 of the Nice arrangement, and, on the other hand, the word mark KEPROCK, previously registered in Germany for goods or services in Classes 17, 19 and 37 and the word marks REDROCK, FLEXIROCK, FORMROCK, FLOOR-ROCK, TERMAROCK, KLIMAROCK, SPEEDROCK, DUROCK, SPLITROCK, PLANAROCK, TOPROCK, KLEMMROCK, FIXROCK, SONOROCK PLUS, VARIROCK, SONOROCK et MASTERROCK, previously registered in Germany for goods and services in Classes 17, 19 or 37.
The degree of phonetic similarity between two marks is of limited significance 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. 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.
In those circumstances, 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.
The same applies to the services covered by the marks REDROCK and KEPROCK. The signs at issue will not be confused by the relevant public for reasons concerning the average distinctive character of the mark KEPROCK, the relevant public’s particularly high attention level, the desire of that public to know the commercial origin of the goods and services, and the fact that 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.
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.
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 being the shared element 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 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, 74-76, 78-81, 88, 93, 95)
4. 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.
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. 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. 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.
Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, 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. Identifying word elements which consumers can understand is useful for the assessment of the visual, aural and conceptual similarity between the signs at issue.
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 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.
(see paras 32, 33, 37, 43)
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. 34)
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.
(see paras 91, 92)