Hydroloc | Decision 2807348
Date Published: Sep 22, 2017
OPPOSITION No B 2 807 348
Amorim Ivestimentos, S.A., Rua do Ribeirinho, 202, Apartado 13, 4536-907 São Paio de Oleiros, Portugal (opponent), represented by C/M/S Rui Pena, Arnaut & Associados, Rua Sousa Martins, 10, 1050-218 Lisboa, Portugal (professional representative)
a g a i n s t
Corpet Cork GmbH, Goldschmidtstr. 6, 92318 Neumarkt i.d. Opf., Germany (applicant)
On 15/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 807 348 is upheld for all the contested goods.
2. European Union trade mark application No 15 741 788 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 741 788 for the word mark ‘Hydroloc’. The opposition is based on European Union trade mark registration No 12 035 374 for the word mark ‘Hydrocork’ and Portuguese trade mark registration No 352 457 for the word mark ‘Corkloc’. 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.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to earlier European Union trade mark registration No 12 035 374.
- The goods
The goods on which the opposition is based are the following:
Class 19: Parquet wood flooring; Parquet flooring and Parquet boards; Parquet flooring; Parquet of wood; Parquet flooring made of cork; Laminates of non-metallic materials for building; non-metal laminates.
Class 27: Floor coverings; Floor coverings; Cork sheets (materials for covering existing floors); Floor covering materials for existing floors; Vinyl floor coverings; Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; Floor coverings for existing floors.
Class 31: Rough cork; Rough cork.
The contested goods are the following:
Class 27: Vinyl floor coverings for existing floors; Vinyl floor coverings; Cork tiles; Floor tiles made of cork.
Contested goods in Class 27
Vinyl floor coverings are identically contained in both lists of goods.
The contested vinyl floor coverings for existing floors are included in the broad category of the opponent’s floor coverings for existing floors. Therefore, they are identical.
The contested cork tiles; floor tiles made of cork overlap with the opponent’s cork sheets (materials for covering existing floors). Therefore, they are identical.
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods found to be identical are directed at the public at large and at craftsmen and other professionals from the construction sector. The degree of attention is average to high, depending on the quality and quantity of the purchased goods.
- The signs
Hydrocork | Hydroloc |
Earlier trade mark | Contested sign |
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
Both signs are word marks. Although ‘hydro’ may be understood as a prefix for ‘water’ by a part of the relevant public, it has no meaning in relation to the relevant goods; hence it has an average degree of distinctiveness. Moreover, neither of the two signs, ‘HYDROCORK’ or ‘Hydroloc’, as a whole have a meaning. In English, the word ‘cork’ in the earlier mark refers to a soft light substance which can be used as flooring or wall covering. This element, therefore, is weak for the part of the public that understands its meaning. The word ‘loc’ is meaningless.
Visually, the signs are of a similar length: 9 vs. 8 letters, out of which the first five and the seventh letter are identical. The remaining letters differ: there is a ‘C’ as the sixth and there are ‘RK’ at the end of the earlier mark vs. ‘L’ as sixth and ‘C’ at the end of the contested mark. Therefore, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, both signs are composed of three syllables: ‘HY-DRO-CORK’ and ‘HY-DRO-LOC’. The pronunciation of the signs coincides in the first two syllables and the vowel of the third, present identically in both signs. The pronunciation differs in the sound of the letters: ‘C*RK, ‘L*C’, respectively. Rhythm and intonation are the same. Therefore, the signs are phonetically similar to an average degree.
Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘HYDRO’, included in both signs, will be associated by a part of the public with ‘water’. Furthermore, the earlier mark contains the English word ‘CORK’, however, this element is weak and as such it has less impact in differentiating the sign. Overall, the marks are conceptually similar to an average degree for the part of the public that associates a meaning with ‘HYDRO’. For the remaining part of the public neither of the signs has a meaning as a whole. Although the word ‘CORK’ of the earlier mark will evoke a concept, this element is non-distinctive and cannot indicate the commercial origin of any of the marks. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of the weak element ‘CORK’ for part of the public in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The goods of the opposing signs are identical. The level of attention of the relevant public is average. The distinctiveness of the earlier sign is normal.
The signs are similar in their first five and the seventh letter. They have the same number of syllables, rhythm, vowel sequence and intonation. The common element ‘HYDRO’ is placed at the beginning where the attention of the relevant public is usually higher. The common element is also distinctive, while the differentiating element of the earlier mark is weak for part of the public. Overall, the similarities outweigh the dissimilarities.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark No 12 035 374. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier European Union trade mark No 12 035 374 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Renata COTTRELL | Julia SCHRADER | Swetlana BRAUN |
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.