Knauf Insulation Technology v OHMI - Saint Gobain Cristaleria (ECOSE) (Judgment) [2015] EUECJ T-323/12 (15 July 2015)

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(Community trade mark — Opposition proceedings — International registration designating the European Community — Word mark ECOSE — Earlier national word mark ECOSEC FACHADAS — Relative grounds for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

Knauf Insulation Technology, established in Visé (Belgium), represented by K. Manhaeve, lawyer,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos, acting as Agent,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being

Saint Gobain Cristalería, SL, established in Madrid (Spain), represented by M. Montañá, S. Sebé and I. Carulla, lawyers,

ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 17 April 2012 (Case R 259/2011-5) relating to opposition proceedings between Saint Gobain Cristalería, SL and Knauf Insulation Technologies,

composed of M. Prek, President, I. Labucka and V. Kreuschitz (Rapporteur), Judges,

having regard to the application lodged at the Registry of the General Court on 19 July 2012,

having regard to the response of OHIM lodged at the Registry on 23 October 2012,

having regard to the response of the intervener lodged at the Registry of the Court on 2 November 2012,

having regard to the change in the composition of the Chambers of the General Court,

1 On 12 March 2009, the applicant, Knauf Insulation Technology, 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 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

3 The goods and services in respect of which registration was sought fall within Classes 1, 2, 3, 16, 17, 19, 20 and 40 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 17: ‘Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials, including glass wool, rock wool, expanded polystyrene, extruded polystyrene and products made of these materials for insulating purposes (included in this class); adhesive bands and tapes (other than stationery and not for medical or household purposes); flexible pipes, not of metal; pipe muffs (not of metal)’;

– Class 19: ‘Non-metallic building materials, including building panels, binding agents for making briquettes, binding material for road repair; non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 9/2009 of 16 March 2009.

5 On 15 December 2009, the intervener, Saint Gobain Cristalería, SL, filed a notice of opposition pursuant to Article 156 of Regulation No 207/2009, read in conjunction with Article 41 thereof, to registration of the mark applied for, in respect of all the goods and services designated by it.

6 The opposition was based on the earlier Spanish word mark ECOSEC FACHADAS, registered under No 2 556 409, designating goods in Classes 17 and 19 and corresponding, for each of those classes, to the following description:

– Class 19: ‘Non-metallic building materials; non-metallic rigid pipes for building; asphalt, pitch and bitumen, non-metallic transportable buildings; non-metallic monuments’.

7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

8 On 17 January 2011, the Opposition Division partly rejected the opposition in respect of the goods and services in Classes 1, 2, 3, 16, 20 and 40, and partly upheld the opposition in respect of the goods in Classes 17 and 19 referred to in paragraph 3 above. It found, in particular, that: (i) the goods in Classes 17 and 19 covered by the mark sought were identical to those covered by the earlier mark; (ii) the conflicting signs were visually and phonetically similar but not conceptually similar; (iii) given that the word element ‘fachadas’ in the earlier mark was not highly distinctive, the impact of that element in the assessment of the likelihood of confusion between the marks at issue was limited; and (iv) there was therefore a likelihood of confusion between those marks.

9 On 28 January 2011, the applicant filed a notice of appeal at OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision, in so far as it had allowed the opposition in respect of the goods in Classes 17 and 19.

10 By decision of 17 April 2012 (‘the contested decision’), the Fifth Board of Appeal of OHIM partly upheld the appeal and annulled the decision of the Opposition Division in so far as it had rejected the application for registration in respect of ‘rubber, gutta-percha, gum, asbestos and mica’ in Class 17. It dismissed the action for the remainder in respect of ‘rubber, gutta-percha, gum, asbestos, mica and goods made from these materials not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials, including glass wool, rock wool, expanded polystyrene, extruded polystyrene and products made of these materials for insulating purposes (included in this class); adhesive bands and tapes (other than stationery and not for medical or household purposes); flexible pipes, not of metal; pipe muffs (not of metal)’ in Class 17 and ‘non-metallic building materials, including building panels, binding agents for making briquettes, binding material for road repair; non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal’ in Class 19.

11 In particular, it considered, first of all, that the relevant public in the present case consisted of both do-it-yourself enthusiasts as well as professionals in the building sector in Spain with a high level of attention at the time of purchase (paragraphs 13 and 14 of the contested decision); secondly, that the goods in Class 17 covered by the marks at issue were partly identical and partly similar and that the goods in Class 19 were identical (paragraphs 16 to 18 of the contested decision); thirdly, that the conflicting signs were visually and conceptually similar but that there was no direct conceptual similarity between them (paragraphs 21 to 23 of the contested decision); and, fourthly, given the similarity between the conflicting signs and the identical nature or similarity between the goods at issue, that there was a likelihood of confusion between the marks at issue with respect to the identical or similar goods (paragraphs 27 and 28 of the contested decision).

– order OHIM and, if applicable, the intervener jointly and severally to pay the costs.

15 The applicant relies on a single plea in law in support of its action, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

16 The applicant disputes the Board of Appeal’s assessment that there is a likelihood of confusion between the marks at issue, inter alia, on the basis of an allegedly incorrect assessment of the similarity between the conflicting signs and the similarity of the goods designated by them.

18 Under Article 8(1)(b) of Regulation No 207/2009, applicable in the present case pursuant to Article 156(1) thereof, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with or similarity to an earlier trade 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. Moreover, Article 8(2)(a)(ii) of Regulation No 207/2009 provides that ‘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.

19 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see judgment 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 the case-law cited).

20 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009 in Commercy v OHIM –– easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and the case-law cited).

21 The applicant does not dispute the Board of Appeal’s assessment that the relevant public is inter alia made up of professionals in the building sector in Spain and that that public has a high level of attention (paragraphs 13 and 14 of the contested decision). Since the goods designated by the marks at issue are used in construction, the conclusion is that its assessment is not vitiated by any error of assessment and must accordingly be endorsed.

22 So must the Board of Appeal’s finding that the relevant public also includes part of the general public, namely do-it-yourself enthusiasts who, just like construction professionals, have a high level of attention (paragraph 14 of the contested decision).

23 In that regard the applicant’s argument that the goods designated by the marks at issue are not aimed at do-it-yourself enthusiasts must be rejected. The applicant affirms that the goods covered by the earlier mark consist of highly-specialised construction materials purchased by professionals having the relevant technical expertise. They do not include typical do-it-yourself goods which would be bought by ordinary customers, such as paints.

24 Yet the applicant has not put forward any specific arguments in support of its assertion that the goods covered by the earlier mark, including ‘thermal and acoustic insulating materials and products’ in Class 17 and ‘non-metallic building materials; non-metallic rigid pipes for building’ in Class 19 generally call for in-depth technical expertise on the part of the user, so that they cannot be used by a do-it-yourself enthusiast. Those types of products are, moreover, usually sold in do-it-yourself sales outlets which target the general public.

25 According to settled case-law, in order to assess the similarity of the goods or services concerned, all the relevant factors of the relationship between those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited).

26 It should be noted, firstly, that the applicant has not put forward any argument disputing the Board of Appeal’s finding (paragraph 16 of the contested decision) that:

– the ‘plastics in extruded form for use in manufacture’ in Class 17 and covered by the mark sought are used, inter alia, for thermal insulation and are, therefore, similar to ‘thermal insulating materials and products’ in Class 17 and covered by the earlier mark;

– the ‘packing, stopping and insulating materials, including glass wool, rock wool, expanded polystyrene, extruded polystyrene and products made of these materials for insulating purposes (included in this class)’ in Class 17 and covered by the mark sought are goods which are included in the category of ‘thermal and acoustic insulating materials and products’ in Class 17 and covered by the earlier mark and are, therefore, identical;

– the ‘pipe muffs (not of metal)’ in Class 17 and covered by the mark sought are a type of thermal and acoustic insulating product and are, therefore, identical to the ‘thermal and acoustic insulating materials and products’ in Class 17 and covered by the earlier mark; and

– all of the goods in Class 19 and covered by the mark sought are identical to the goods covered by the earlier mark in Class 19.

27 The Board of Appeal’s findings, which are not vitiated by any error, must therefore be endorsed.

28 Secondly, regarding the ‘goods made from these (rubber, gutta-percha, gum, asbestos, mica) materials and not included in other classes’ in Class 17, the Board of Appeal found that they were identical to the ‘thermal and acoustic insulating materials and products’ in Class 17 because they can be made from any of those raw materials, namely rubber, gutta-percha, gum, asbestos and mica. Rubber- and gum-based products can be used for insulating doors and windows, whilst gutta-percha and mica are used for thermal insulation and asbestos-based goods are used as thermal and acoustic insulating materials. Next, concerning the ‘adhesive bands and tapes (other than stationery and not for medical or household purposes)’ in Class 17, the Board of Appeal found that they constitute a broad category which also includes thermal insulation tapes, which have the same purpose as ‘thermal insulating materials and products’ in Class 17. It found that those goods were similar. Lastly, the Board of Appeal found that the ‘flexible pipes, not of metal’ in Class 17 were similar to the ‘non-metallic rigid pipes for building’ in Class 19. Although they are different in nature, with the former being flexible and the latter rigid, both types of goods are used in the same building and construction context, and in the same manner. They are distributed through the same channels, sold at the same sales outlets and are aimed at the same consumers, namely construction professionals and do-it-yourself enthusiasts (paragraph 16 of the contested decision).

29 The arguments put forward by the applicant disputing those assessments by the Board of Appeal cannot be upheld. It merely affirms, in an unsubstantiated manner, that the ‘goods made from these (rubber, gutta-percha, gum, asbestos, mica) materials and not included in other classes’ in Class 17 are intended solely for use in electrical insulation, that the ‘adhesive bands and tapes (other than stationery and not for medical or household purposes)’ in Class 17 are not intended for insulation, and that the ‘non-metallic rigid pipes for building’ in Class 19 are used solely by construction professionals in the building sector and not by do-it-yourself enthusiasts.

30 In putting forward such unsubstantiated assertions, the applicant has failed to establish to the requisite legal standard that the goods at issue were not actually intended for the uses described by the Board of Appeal.

31 Although, in respect of non-metallic rigid pipes for building, it is possible to distinguish flexible pipes from rigid pipes, it is nevertheless clear that the Board of Appeal did not find that flexible pipes were identical to rigid pipes, but merely similar.

32 In the light of the foregoing, the Board of Appeal’s assessment that the goods at issue are partly identical and partly similar must be upheld.

33 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (judgment of 13 September 2007 in Il Ponte Finanziaria v OHIM, C‑234/06 P, ECR, EU:C:2007:514, paragraph 48, and judgment in easyHotel, cited in paragraph 20 above, EU:T:2009:14, paragraph 42).

34 The Board of Appeal found that the conflicting signs were visually and phonetically similar but that they were not directly conceptually similar.

35 Regarding the visual similarity, the Board of Appeal observed that the sign sought was entirely contained in the first word of the earlier mark, the only two differences being the additional letter ‘c’ at the end of the first word of the earlier mark and the additional word ‘fachadas’ contained in the earlier mark. It found that consumers would attach greater visual importance to the first part of the earlier mark, namely the word ‘ecosec’, and would consider the second word contained in the earlier mark, namely ‘fachadas’, as being of secondary importance, inter alia due to its descriptive character. As the Spanish word ‘fachadas’ means ‘facades’, it would be perceived by the relevant Spanish public as presenting a direct link with the goods in question, which are used in the context of external walls. The Board of Appeal went on to conclude that the signs were, as a whole, visually similar (paragraph 21 of the contested decision).

36 That conclusion cannot be called into question by the arguments put forward by the applicant.

37 First, as the applicant argues that the Board of Appeal found, incorrectly, that the word ‘fachadas’ was negligible for the purposes of making a visual comparison of the conflicting signs, it must be observed that, in the context of a visual comparison of the conflicting signs, the Board of Appeal indeed took account of that in its assessment. It is clear from paragraph 21 of the contested decision that the Board of Appeal recognised that the earlier mark contained ‘a second element’ and that it attached ‘secondary importance’ and, therefore, non-negligible importance to that element.

38 The applicant further criticises the Board of Appeal for having based itself, in its assessment of the visual similarity, on conceptual considerations with regard to the word ‘fachadas’ contained in the earlier mark.

39 It must in any event be noted that the conflicting signs have the same first five letters, namely ‘e’, ‘c’, ‘o’, ‘s’ and ‘e’ and that the five letters constitute the entire mark sought. It is therefore clear that, since the conflicting signs have the same first five letters, the Board of Appeal was correct in finding that there was a visual similarity between the conflicting signs.

40 Therefore, the Board of Appeal’s finding of visual similarity must be endorsed.

41 Regarding the phonetic similarity, the Board of Appeal found that the pronunciation of made-up or fanciful words which do not exist in Spanish, such as the word ‘ecose’ constituting the mark sought and the word ‘ecosec’ contained in the earlier mark, was difficult to establish with certainty. The first two syllables of those two words, namely ‘e’ and ‘co’, are identical, whereas there is a difference in the third syllable, namely ‘se’ for the mark sought and ‘sec’ for the earlier mark. Given that the similarity is to be found in the first parts of the conflicting signs and the relevant Spanish public will perceive the word ‘fachadas’ as being descriptive and therefore easier to overlook, the Board of Appeal concluded that the signs should be considered to be phonetically similar (paragraph 22 of the contested decision).

42 As pointed out by the Board of Appeal in paragraph 22 of the contested decision, there would be a difference in how the words ‘ecose’ and ‘ecosec’ would be stressed if they were pronounced according to Spanish pronunciation rules. The stress would then be put on the syllables ‘co’ and ‘sec’. However, the Board of Appeal was also correct in stating that the words ‘ecose’ and ‘ecosec’ were not part of the Spanish vocabulary. It is therefore not possible to determine their rhythm or intonation with absolute certainty.

43 In that regard it should be observed, first of all, that the first two syllables ‘e’ and ‘co’ are at the start of both of the conflicting signs. As rightly pointed out by OHIM, it is therefore highly likely that the first two syllables will be pronounced in an identical manner.

44 In so far as the applicant has argued that the word ‘ecosec’ contained in the earlier mark will be perceived by the relevant public as an abbreviation of other Spanish words, such as ‘ecológico’ (ecological), ‘económico’ (economical) or ‘seco’ (dry), and that it will thus be pronounced by the relevant public in accordance with Spanish rules of pronunciation, it is clear that the first two syllables ‘e’ and ‘co’ of the mark sought would also tend to be construed as an abbreviation of the same Spanish words identified by the applicant. It would thus be logical to stress the words ‘ecose’ and ‘ecosec’ in an identical manner, especially since the words ‘ecológico’ and ‘económico’ are always stressed on the third syllable, that is to say, the syllable following the ‘e’ and the ‘co’.

45 Lastly, the applicant criticises the Board of Appeal for having failed to take into account, in its assessment of the phonetic similarity of the conflicting signs, of the second word of the earlier mark, namely the word ‘fachadas’, on which two observations can be made. Firstly, the Board of Appeal was correct in finding, in paragraph 22 of the contested decision, that in the present case the similarity was to be found in the first part of the marks at issue. It thus did take account of the presence of the word ‘fachadas’ in the earlier mark and merely relegated it to a secondary position due to its descriptive nature. The fact that there was no reference to the word ‘fachadas’ in the phonetic comparison of the signs may be understood, in the light of the general scheme of the reasons given in the contested decision, as implying that that term was taken into account in the analysis of the earlier mark but was relegated to a secondary position.

46 Secondly, the applicant cannot rely on conceptual considerations and argue that the components ‘eco’ and ‘sec’ of the first word of the earlier mark must be construed as abbreviations of certain conceptual words such as ‘ecological’, ‘economical’ or ‘dry’ whilst at the same refusing to take those considerations into account with regard to the meaning of the word ‘fachadas’.

47 It follows that, given the similarity in the first part of the conflicting signs, in particular the first two syllables ‘e’ and ‘co’, which are identical in the conflicting signs and will therefore probably be pronounced in the same manner by the relevant public, the Board of Appeal was correct in finding that the conflicting signs were phonetically similar.

48 As regards the conceptual similarity, the Board of Appeal’s finding that there is no direct conceptual similarity between the conflicting signs (paragraph 23 of the contested decision) must be endorsed.

49 In so far as the applicant argues that the first two syllables ‘e’ and ‘co’ of the earlier mark should be understood as referring to the concepts ‘ecológico’ (ecological) or ‘económico’ (economical) it is clear that the same reasoning should then apply to the first two syllables of the mark sought, which are identical. In such a case, as rightly found by the Board of Appeal in paragraph 23 of the contested decision, there exists a vague conceptual similarity between the conflicting signs in that they could be linked to the rather allusive concepts of ‘ecological’ or ‘economical’.

50 The applicant further argues that the syllable ‘sec’ should be understood as referring to the concept of ‘dry’ or ‘dryness’. Suffice it to note that that argument does not cast any doubt on the Board of Appeal’s finding that there is no direct conceptual similarity between the conflicting signs.

51 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that 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 the case-law cited).

52 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. On the contrary, the comparison must 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 51 above, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment in OHIM v Shaker, cited in paragraph 51 above, EU:C:2007:333, paragraph 42, and judgment of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which the relevant public retains, so that all the other components are negligible in the overall impression produced by that mark (judgment in Nestlé v OHIM, EU:C:2007:539, paragraph 43).

53 The global assessment implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgments of 29 December 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).

54 The Board of Appeal considered that the earlier mark contained the descriptive element ‘fachadas’, meaning ‘facades’, which is perceived by the relevant Spanish public as giving an indication of the types of walls on which the goods in question, in particular insulation materials, construction materials, pipes, transportable buildings and non-metallic monuments, are intended to be used, rather than as a distinctive expression. The element ‘ecosec’ has no clear meaning, with the result that, as a whole, the earlier mark possesses normal distinctiveness (paragraph 26 of the contested decision). The conflicting signs are visually and phonetically similar. The lack of direct conceptual similarity does not affect the overall finding of similarity between the marks at issue (paragraph 27 of the contested decision). Overall and given inter alia the descriptive nature of the word ‘fachadas’ of the earlier mark, the signs are similar. The goods in question covered by the mark sought are identical or similar to the goods covered by the earlier mark, with the result that even though the relevant public may be attentive when choosing and purchasing the goods in question, the conclusion must be that there is a likelihood of confusion between the marks at issue (paragraph 28 of the contested decision).

55 Thus the Board of Appeal was right in finding that, having regard to the goods covered by the earlier mark, the Spanish word ‘fachadas’ (facades) contained in the earlier mark would be perceived by the relevant public, that is to say, construction professionals in the construction sector and do-it-yourself enthusiasts, as being descriptive and therefore not very distinctive.

56 The Board of Appeal was also right in finding that the first element of the earlier mark, namely ‘ecosec’, had no clear meaning in Spanish.

57 It is true, as argued by the applicant, that the elements ‘eco’ and ‘sec’ of the earlier mark could potentially be understood as referring to the concepts of ‘ecological’ (‘ecológico’ in Spanish) or ‘economical’ (‘económico’ in Spanish) and ‘dry’ (‘seco’ in Spanish). The first of those elements, ‘eco’, is moreover the reason why the Board of Appeal found, correctly, that in so far as that element can be construed thusly, there is a vague conceptual similarity between the conflicting signs (see paragraph 49 above).

58 However, the applicant has not demonstrated that the relevant public does actually so perceive the element ‘ecosec’. The applicant itself puts forward two possible interpretations of the element ‘eco’, namely ‘ecological’ and ‘economical’, to which must be added that of ‘echo’ (‘eco’ in Spanish), concepts which are not identical or even similar. While it is true that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see OHIM v Shaker, cited in paragraph 51 above, EU:C:2007:333, paragraph 35 and the case-law cited), the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (see judgment of 10 July 2012 in Clorox v OHIM — Industrias Alen (CLORALEX), T‑135/11, EU:T:2012:356, paragraph 27 and the case-law cited). In the present case, given that the applicant itself puts forward two possible interpretations of the element ‘eco’, the conclusion must be that that element does not suggest a concrete meaning and does not resemble words known to the average consumer. It is accordingly highly unlikely that the relevant public will examine the earlier mark by breaking it down into two parts, as suggested by the applicant.

59 Since the element ‘ecosec’ thus has normal distinctiveness, it follows that the Board of Appeal’s finding that the earlier mark as a whole has normal distinctiveness is not vitiated by any error.

60 As a whole, inter alia because the goods covered by the mark sought are partly identical and partly similar to those designated by the earlier mark, given the similarity between the conflicting signs and the normal distinctiveness of the earlier mark, the Board of Appeal was correct in finding that, in the mind of the relevant public, there was a likelihood of confusion between the marks at issue.

61 As to the national decisions relied on by the parties, it should be borne in mind that it is settled case-law that registrations already made in the Member States are merely a factor which, without being given decisive weight, may be taken into consideration for the purposes of registering a Community trade mark (judgments of 16 February 2000 in Procter & Gamble v OHIM (Soap bar shape), T‑122/99, ECR, EU:T:2000:39, paragraph 61, and 19 September 2001 in Henkel v OHIM (Red and white round tablet), T‑337/99, ECR, EU:T:2001:221, paragraph 58).

62 Regarding OHIM’s earlier decision-making practice, relied on by the parties, it is settled case-law that the legality of the decisions of Boards of Appeal, which are adopted in the exercise of circumscribed powers and are not a matter of discretion, must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the Courts of the European Union, and not on the basis of OHIM’s previous decision-making practice, which, in any event, cannot bind the Courts of the European Union (judgments of 15 September 2005 in BioID v OHIM, C‑37/03 P, ECR, EU:C:2005:547, paragraph 47; 12 January 2006 in Deutsche SiSi-Werke v OHIM, C‑173/04 P, ECR, EU:C:2006:20, paragraph 48; and 30 April 2013 in Boehringer Ingelheim International v OHIM (RELY-ABLE), T‑640/11, EU:T:2013:225, paragraph 33).

63 Although, given the principles of equal treatment and sound administration, OHIM must take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must be consistent with respect for the principle of legality. As a result, there can be no equality in illegality and a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (see, to that effect, judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraphs 73 to 76). Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case, since the registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (judgments in Agencja Wydawnicza Technopol v OHIM, EU:C:2011:139, paragraph 77, and RELY-ABLE, cited in paragraph 62 above, EU:T:2013:225, paragraph 34).

64 In the present case, it is clear from the foregoing examination that the Board of Appeal found, correctly, on the basis of a complete examination and taking account of the relevant public’s perception, that there was a likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009. It follows that, in accordance with the case-law referred to in paragraphs 62 and 63 above, that assessment cannot be called into question on the sole ground that it does not follow OHIM’s decision-making practice.

65 Therefore, the plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected.

67 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.

68 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Knauf Insulation Technology v OHMI - Saint Gobain Cristaleria (ECOSE) (Judgment) [2015] EUECJ T-323/12 (15 July 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T32312.html Cite as: ECLI:EU:T:2015:510, EU:T:2015:510, [2015] EUECJ T-323/12

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