General Court refuses to recognise family of 'rock' marks

In Deutsche Rockwool Mineralwoll GmbH & Co OHG v Office for Harmonisation in the Internal Market (OHIM) (Case T-436/12, July 8 2015), the Ninth Chamber of the General Court has affirmed a decision of the Second Board of Appeal of OHIM finding that there was no likelihood of confusion between the figurative Community trademark ROCK & ROCK and a series of earlier national marks containing the term 'rock'.

In January 2008 Spanish company Ceramicas del Foix SA registered the figurative sign ROCK & ROCK for goods in Classes 2, 9, and 27 of the Nice Classification, including paints, non-metallic building material and flooring material.

German company Deutsche Rockwool Mineralwoll GmbH & Co OHG filed an application for a declaration of invalidity of that mark, claiming that there was a likelihood of confusion with several earlier marks belonging to it for all the goods covered by the contested mark. This claim was based on the prior German word marks MASTERROCK, FIXROCK, FLEXIROCK, COVERROCK and CEILROCK, registered for goods and services in Classes 6, 17, 19, and 37, including building materials manufactured, for the most part, from mineral wool.

The Cancellation Division of OHIM rejected the application for a declaration of invalidity in its entirety, as there was no likelihood of confusion for the relevant public.

The Second Board of Appeal of OHIM upheld the Cancellation Division’s decision in all respects. The board found, in particular, that there was an average degree of similarity between some of the goods covered by the signs and - with the exception of the earlier trademark CEILROCK, which was dissimilar to the contested mark - a low degree of visual, aural and conceptual similarity between the signs. Furthermore, the board held that the broader protection granted to a family of trademarks was not applicable in the circumstances.

In its action to the General Court, Rockwool relied on a single plea of law and claimed infringement of Article 8(1)(b) and Article 53(1)(a) of the Community Trademark Regulation (207/2009), alleging that the Board of Appeal had erred in holding that no likelihood of confusion existed. However, the General Court affirmed the Board of Appeal’s decision and dismissed the action.

Apart from the undisputed findings regarding the similarity of the goods, the high level of attention of the relevant public (which consisted of average German consumers and professionals in the construction sector) and the weak distinctive character of most of the earlier trademarks, the General Court held as follows:

• Contrary to Rockwool’s allegation that the Board of Appeal had erred in its assessment of the descriptive nature of the element ‘rock’, the General Court found that this word element, shared by all of the listed trademarks, was largely descriptive and/or laudatory of the goods and services in the construction sector which are manufactured from stone-based materials. This meant that the element ‘rock’ had only a weakly distinctive character, despite the fact that national or Community trademarks consisting of ‘rock’ alone have been registered.

• There was a low visual similarity between the conflicting signs, as the common suffix '-rock' in the earlier signs did not dominate those signs, but was equally descriptive and/or laudatory in conjunction with their different prefixes ('master', 'fix', 'flexi' and 'cover'). With consumers attaching greater importance to the beginning of words, the first word element of the earlier marks attracted more attention than the common second word 'rock'. Further, although the graphic presentation of the contested mark ROCK & ROCK was not particularly fanciful, it nonetheless distinguished the visual impression of that mark from that given by the earlier trademarks.

• The Board of Appeal had correctly found that there was only a low degree of phonetic and conceptual similarity because the consonant sequences in ROCK & ROCK and COVERROCK (which is phonetically the most similar of the earlier trademarks) are completely different from each other. Likewise, to the relevant public, ROCK & ROCK represents a play on words based on the expression ‘rock & roll’, rather than an association with the characteristics of a ‘stone’ or ‘rock, as the earlier trademarks do.

• The General Court rejected Rockwool’s claim that there would be a likelihood of confusion by association with a series or family of trademarks. The recognition of a family of trademarks containing the serial element 'rock' would wrongfully lead to the monopolisation of a largely descriptive and/or laudatory element. In addition, the semantic content of the element ‘rock’ in the contested ROCK & ROCK mark was different from that in the earlier trademarks.

The General Court’s arguments are in line with the relevant case law and are convincing, so the decision does not come as a surprise.

Florian Schwab, Boehmert & Boehmert, Munich