REDROCK opposition left on the rocks

European Union

In Deutsche Rockwool Mineralwoll GmbH & Co OHG v Office for Harmonization in the Internal Market (OHIM) (Case T-257/08, October 13 2009), the Court of First Instance (CFI) has upheld a decision of the Board of Appeal of OHIM in which the latter had dismissed an opposition against the registration of the trademark REDROCK.

Redrock Construction sro applied for the registration of REDROCK as a Community trademark (CTM) for goods and services in Classes 1, 2, 17, 19, 36 and 37 of the Nice Classification (including "building materials", "real estate management" and "building construction services"). Deutsche Rockwool Mineralwoll GmbH & Co OHG opposed the application on the grounds that:

  • REDROCK was similar to its earlier trademark ROCK, which was registered in Germany for goods and services in Classes 1, 17, 19, 37 et 42; and
  • the goods and services covered by the REDROCK mark were identical or similar to those covered by the ROCK mark, in such a way that there would be a likelihood of confusion on the part of the relevant public.

The application was refused for all classes, save for services in Class 36 (including "real estate management"). Redrock appealed. The Board of Appeal of OHIM allowed the appeal on the grounds that:

  • the relevant public (ie, the average German consumer) would pay a greater level of attention at the time of purchase of the goods due to their high cost and specific nature; and
  • the common element ‘rock’ had a weak distinctive character.

Therefore, there was no likelihood of confusion among the relevant public. Deutsche Rockwool appealed to the CFI.

Before the CFI, Deutsche Rockwool submitted new arguments relating to the fact that the colour red was part of its corporate identity and that it was renowned for owning similar word marks (namely, TECTOROCK, BETOROCK and ISOROCK). However, the CFI, citing relevant case law, held that elements of law and fact that have not been brought before OHIM are not admissible before the CFI.

Deutsche Rockwool also argued that the Board of Appeal had infringed Article 8(1)(b) of the Community Trademark Regulation (40/94). The CFI noted that a likelihood of confusion included a likelihood of association. According to established case law, a likelihood of association might arise when the relevant public believes that the goods and/or services at issue were provided by the same trader or that the businesses were economically linked.

Although it was agreed that the relevant public consisted of the average German consumer of construction materials, as well as professionals in the construction sector, the CFI expressly stated that it disagreed with Deutsche Rockwool’s arguments challenging the special level of attention paid by the public at the time of purchase of the goods. The CFI noted that Deutsche Rockwool’s arguments were based on the unit price of the goods (construction materials), yet these were often ordered in batches. Further, construction materials were rarely used on a daily basis by the average consumer, and their purchase was often made by a professional or consumer with better-than-average knowledge of the goods. Therefore, the CFI agreed with OHIM’s statement that the relevant public would pay particular attention at the time of purchase.

The CFI then took the usual route of considering whether the word 'rock' was descriptive, and decided that it had only a weak distinctive character. According to the CFI, the mere fact that the earlier mark was registered as a national trademark or a CTM did not prevent it from being descriptive or having a weak distinctive character in relation to the goods and services in question.

The CFI further considered that the goods were often made of stone in their natural state, which could easily be associated with the term ‘rock’. It agreed with OHIM that the German translation of ‘rock’ would include 'Fels' ('rock') or 'Stein' ('stone'), and noted that the dictionary synonym for ‘rock’ included the term ‘stone’, showing that these terms were interchangeable. Since English was the common language in construction matters, the average German consumer would not need a great understanding of English to associate ‘rock’ with ‘stone’.

The CFI then took the customary three-pronged approach to the comparison of the marks, and focused on the visual, phonetic and conceptual similarities between them. Visually, the CFI considered that there were elements of similarity between the marks due to the common ‘rock’ element. However, the earlier mark was only a word mark, while Redrock's mark was a complex sign incorporating capital letters and a shape element, as well as the common word element 'rock'.

In considering whether 'rock' was the dominant element, the CFI noted that Redrock's mark used the word ‘red’ at the beginning, which was the part of the word that the German consumer would attach more importance to. The common element 'rock' occupied second place in Redrock's mark, even though it was longer than the word ‘red’. The CFI thus considered that 'red' and 'rock' had equal standing in terms of the overall impression of the mark, so that 'rock' could not be said to be the dominant element.

Phonetically, the CFI considered that the two marks sounded similar in relation to one syllable, but that their syllabic structures and rhythms were essentially different. Redrock's mark had two syllables, while the earlier mark had only one. Moreover, the common syllable was at the end of Redrock's mark, and would thus have less significance under the rules of German pronunciation.

Notably, the CFI disagreed with OHIM’s decision in relation to the conceptual similarities between the marks. The CFI felt that there were conceptual similarities between the marks, citing as an example the fact that the word ‘red’ could describe the colour of rocks. However, this was insufficient to constitute grounds for annulment of OHIM’s decision.

Although the marks covered identical goods and services, the CFI concluded that there was no likelihood of confusion due to:

  • the earlier mark’s lack of distinctiveness;
  • the greater level of attention paid by the relevant public; and
  • the visual, phonetic and conceptual differences between the marks.

The appeal was thus rejected.

A number of interesting points were raised by this decision. First, it highlights the growing importance, when considering the relevant public, of the level of attention paid by the consumers of the goods and/or services in question. This is clearly a rule that must be applied on a case-by-case basis, depending on the type of goods or services, their price and the relevant consumer. Second, the CFI reiterated that likelihood of association should not be considered as a substitute for likelihood of confusion  - perhaps disappointingly for trademark owners as, clearly, likelihood of association is far easier to prove than likelihood of confusion. Finally, the decision shows that the mere fact that the earlier mark was contained within the mark applied for was insufficient to make the relevant public believe that that mark was a variation of the earlier mark.

Ellen Forrest-Charde and Chris McLeod, Hammonds LLP, London

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