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FRIDAY, 31 JULY 2015
It's a hard rock life in the General Court

In Case T-436/12, the General Court upheld OHIM’S decision which rejected an action for invalidity between the following trade marks:

Ceramicas del Foix, SA

Deutsche Rockwool Mineralwoll GmbH & Co. OHG – earlier German rights

Image not foundImage not found

MASTERROCK

FIXROCK

COVERROCK

COVERROCK

Class 2: ‘Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; dyestuffs; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists

Class 19: ‘Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal. All the afore-mentioned goods with the exception of all kinds of mineral wool goods and damping materials for use in the building industry’;

Class 27: ‘Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile)

 

Classes 6, 17 and 19 covered by the earlier trade marks are building materials manufactured, for the most part, from mineral wool. In addition, the trade mark MASTERROCK also covers ‘civil engineering’ and ‘installation works’ services in Class 37.

The Cancellation Division (CD) and the Board of Appel (BoA) rejected the application for a declaration of invalidity holding that there was an average degree of similarity between some of the goods covered by the signs at issue, while others were either dissimilar or remotely similar.

In addition, there was a low degree of visual, aural and conceptual similarity between the signs at issue, emphasising the descriptive nature of the shared element ‘rock’. Indeed, English is a global language which is also used in the building industry. 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’ with the result that that word is largely descriptive of those materials.  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. Further, in all the earlier trade marks, the element ‘rock’ alludes to a ‘stone’, a ‘rock’, or to mineral wool, with the elements ‘fix’, ‘flexi’ and ‘cover’ giving details of the physical characteristics or their intended use. In addition, the element ‘master’ has a laudatory meaning which will be connected by the relevant public to the meaning of the word ‘rock’. Accordingly, the Boa’s finding that the earlier trade marks FLEXIROCK, FIXROCK, MASTERROCK and COVERROCK are only weakly distinctive must be upheld.

Furthermore, since the relevant public will not attribute any particular meaning to the element ‘ceil’, the word combination CEILROCK is fanciful, with the result that it is averagely distinctive. The earlier trade mark CEILROCK was found to be dissimilar altogether to the contested trade mark.

The Court finally upheld the reasoning that a family of marks with the serial element "rock" would specifically lead to the monopolization of the element "rock", which is largely descriptive and laudatory with regard to the products and services covered by the earlier marks. Such a restriction on free competition that would result from reserving a basic term of the English language to a single economic operator, cannot be justified by the need to reward creative and advertising efforts of the holder of the earlier marks. In view of the relevant public’s high level of attention, and the fact that the broader protection granted to a family of trade marks was not applicable in the circumstances, the CD and BoA rightly concluded that there was no likelihood of confusion.

***

Deutsche Rockwool Mineralwoll GmbH & Co. OHG lost a similar action for invalidity against Image not foundImage not foundon the basis of earlier marks KEPROCK, FLEXIROCK, FORMROCK, FLOOR-ROCK, TERMAROCK, KLIMAROCK, SPEEDROCK, DUROCK, SPLITROCK, PLANAROCK, TOPROCK, KLEMMROCK, FIXROCK, SONOROCK PLUS, VARIROCK, SONOROCK et MASTERROCK in Judgment T-548/12 rendered on the same day, please see here.

Posted by: Laetitia Lagarde @ 03.44
Tags: General Court, likelihood of confusion, rock, family of marks,
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