OPPOSITION No B 2 772 237

Johann Borgers GmbH, Borgersstr. 2-10, 46397 Bocholt, Germany (opponent), represented by TBK, Bavariaring 4-6, 80336 München, Germany (professional representative)

a g a i n s t

Boo-Tex Limited, Wychbury Greaves, Towers Point, Wheelhouse Road, Rugeley, Staffordshire WS15 1UN, United Kingdom (applicant), represented by Aaron Wood, 2 Ivy Court, Daventry, Northamptonshire NN11 4EP, United Kingdom (professional representative).

On 20/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 772 237 is partially upheld, namely for the following contested goods:

Class 12:        Vehicle parts.

Class 24:        Textiles and substitutes for textiles; textile fabrics.

Class 27:         Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors.

2.        European Union trade mark application No 15 345 846 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 345 846, namely against all the goods in Classes 12, 24 and 27. The opposition is based on European Union trade mark registration No 10 208 239. 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.

1. The goods

The goods on which the opposition is based are the following:

Class 12: Fitted textile coverings and linings for vehicles and for vehicle manufacturing for use in the interior and exterior, in particular for use in the vehicle passenger compartment, the luggage trunk, wheel arch compartment, undershield compartment and engine room compartment of vehicles.

Class 24: Fitted textile coverings and linings for vehicles and for vehicle manufacturing for use in the interior and exterior, in particular for use in the vehicle passenger compartment, the luggage trunk, wheel arch compartment, undershield compartment and engine room compartment of vehicles.

The contested goods are the following:

Class 12: Vehicles; apparatus for locomotion by land, air or water; vehicle parts; vehicle body parts; vehicle body panels.

Class 24: Textiles and substitutes for textiles; bed covers; table covers; blankets; quilts; sheets; bed linen, textile fabrics, towels, bath sheets.

Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings [non-textile].

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 12

The contested vehicle parts are a general, broad term and, as such, must be considered to encompass the opponent’s fitted textile coverings and linings for vehicles and for vehicle manufacturing for use in the interior and exterior, in particular for use in the vehicle passenger compartment, the luggage trunk, wheel arch compartment, undershield compartment and engine room compartment of vehicles. Since the Opposition Division cannot dissect ex officio the contested goods, they must be considered identical to the opponent’s goods.

The contested vehicles; apparatus for locomotion by land, air or water; vehicle body parts; vehicle body panels are all vehicles or body parts thereof, which are usually manufactured by a different undertaking from that which manufactures the opponent’s fitted textile coverings and linings for vehicles and for vehicle manufacturing for use in the interior and exterior, in particular for use in the vehicle passenger compartment, the luggage trunk, wheel arch compartment, undershield compartment and engine room compartment of vehicles. While both sets of goods relate to vehicles, the opponent’s goods usually originate from a textile manufacturer, which would never be engaged in producing other parts of the vehicle, much less the vehicle itself. These goods are distributed through different channels (vehicle and vehicle parts dealers for the contested goods and textile manufacturers for the opponent’s) and target different publics (the general public for the contested goods versus car manufacturers for the opponent’s goods). Their nature is also different, since the contested goods are vehicles or parts thereof while the opponent’s goods are textile products. Pursuant to case-law, the mere fact that a certain product can be composed of several components does not establish automatic similarity between the finished product and its parts (27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61). This applies to the present case, in which the opponent’s goods are composed of a wide range of parts of very different natures. Based on all this, the goods are dissimilar.

Contested goods in Class 24

The contested textiles and substitutes for textiles; textile fabrics belong to a rather broad category, which the Opposition Division cannot dissect ex officio. What is certain about those contested goods is that they are raw materials that are used for manufacturing various products. Since the opponent’s fitted textile coverings and linings for vehicles and for vehicle manufacturing for use in the interior and exterior, in particular for use in the vehicle passenger compartment, the luggage trunk, wheel arch compartment, undershield compartment and engine room compartment of vehicles in Class 24 are all made of textiles, in this particular case the degree of transformation required from material to end product is not very great: the fabric is merely cut into shape and/or sewn to obtain the finished product. Furthermore, many establishments allow customers to purchase the basic material and ready-made products made from such material. Therefore, the relevant public may expect these goods to come from the same undertakings. As a result, the essential difference between raw materials and finished products is somewhat reduced and the goods under comparison are, therefore, similar to a low degree.

The remaining contested goods, namely bed covers, table covers, blankets, quilts, sheets, bed linen, towels and bath sheets, are all textile products used for specific purposes. However, the opponent’s goods belong to a totally different market from the contested goods. While the opponent’s goods are sold in a very niche market and are, in fact, known by and target only vehicle manufacturers, these contested goods are everyday products widely available in large department stores as well as specialised outlets. In addition, their purposes are very different and they are neither complementary nor in competition. It must be concluded, therefore, that the opponent’s fitted textile coverings and linings for vehicles and for vehicle manufacturing for use in the interior and exterior, in particular for use in the vehicle passenger compartment, the luggage trunk, wheel arch compartment, undershield compartment and engine room compartment of vehicles and the contested bed covers; table covers; blankets; quilts; sheets; bed linen, towels, bath sheets are dissimilar.

Contested goods in Class 27

The contested carpets, rugs, mats and matting, linoleum and other materials for covering existing floors are all products used for covering floors, including the floors of various kinds of vehicles. Since the opponent’s products are also used for covering various parts of a vehicle, these goods of the opponent may originate from the same undertaking as the contested goods. In certain cases, they can be in competition, especially as regards carpets or mats, and they may even be sold in the same outlets. Overall, these goods are similar to a low degree.

The remaining contested goods, namely wall hangings [non-textile], and the opponent’s goods target totally different markets. While the opponent’s goods are sold in a very niche market and are, in fact, known by and target only vehicle manufacturers, these contested goods are everyday products widely available in large department stores as well as specialised outlets. In addition, their purposes are very different and they are neither complementary nor in competition. It must be concluded, therefore, that these contested goods and the opponent’s goods are dissimilar.

2. 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 contested goods found to be identical or similar to a low degree to the opponent’s goods target the general public and a professional public and the goods of the earlier mark target a professional public exclusively. Therefore, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 81).

The degree of attention is considered higher than average, as car manufacturers tend to pay a great deal of attention to the components and parts that they use in manufacturing a vehicle.

3. The signs

BOtex
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).

The contested sign comprises the word ‘BOO-TEX’ in green upper case letters. This word is placed against a black rectangle, in the bottom left corner of which there is a green device. Of these elements, the word has the dominant role while the figurative element has a secondary, decorative purpose because of its small size and lack of any concrete concept. With regard to the word elements, ‘BOO’ is an English word used as an expression of strong disapproval or to surprise or frighten someone. This word has no connection whatsoever with the relevant goods and is, therefore, distinctive throughout the relevant territory, since, in addition, it lacks any meaning in the remaining part thereof. The other element, ‘TEX’, lacks any meaning; however, it will be perceived as a strong allusion to the concept of ‘textile’ and will, therefore, be weak for the relevant goods. While average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a concrete meaning or which resemble words known to them (see, to that effect, 13/06/2012, T-342/10, Mesilette, EU:T:2012:290, § 33 and the case-law cited therein). This is all the more relevant to the contested sign, as the part recognised and understood by the public, ‘TEX’, is separated by a hyphen from the sign’s other word element.

The earlier mark is the word mark ‘BOtex’. It lacks any meaning and is distinctive as a whole, while the above arguments regarding the weak distinctiveness of the element ‘TEX’ apply here, too.

Visually, the signs coincide in their first two letters, ‘BO’, and in their endings, ‘TEX’. However, they differ in the contested sign’s additional letter ‘O’ and its colour and figurative elements. Since the signs’ coinciding element, ‘TEX’, is strongly allusive of the relevant goods and is, therefore, weak, this commonality is to a certain extent offset by the contested sign’s device elements, which are, however, merely decorative.

Nevertheless, the earlier sign’s two first, and most relevant, letters are identically contained in the contested sign, in the same position. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Furthermore, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Overall, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in their final syllable, ‘TEX’, present identically in both signs. As explained above, this element is weak. The pronunciation differs in the sound of the letters ‛O’ of the earlier sign and ‘OO’ of the contested sign, for the part of the public that understands the English word ‘BOO’ and pronounces it accordingly: /′bu:/. That difference in pronunciation will almost totally disappear for the remaining members of the public, who will simply pronounce the contested sign’s verbal element with a double ‘O’, particularly since this difference is in the middle of the contested sign and could, therefore, be lost in speech. In summary, the signs have identical endings (albeit of weak distinctiveness), and aurally similar and highly similar beginnings for the English-speaking public and the remaining part of the public, respectively. As a result, the signs are aurally similar to an average degree for the English-speaking public and similar to a high degree for the remaining part of the public.

Conceptually, the coinciding element ‘TEX’ means that the signs will evoke the same concept, as explained above, albeit of weak distinctiveness. The attention of the relevant public will be attracted by the additional, distinctive, verbal elements, one of which has a meaning for the English-speaking part of the public. Overall, the signs are conceptually similar to a low degree given that they have a weak element in common and even considering the differences in the remaining elements.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

In the present case, some of the goods are identical and some are similar to a low degree. The signs are visually similar to an average degree, aurally similar to an average or high degree and conceptually similar to a low degree. Both signs contain the same, albeit weak, word element; in addition, the remaining word elements are nearly identical and are placed at the beginnings of the signs. The contested sign’s additional, decorative elements will play little role in consumers’ perception.

Considering all the above, there is a likelihood of confusion on the part of the public, even for the goods found to be similar to a low degree.

Therefore, the opposition is partly well founded on the basis of the opponent’s trade mark registration. It follows that the contested trade mark must be rejected for the contested goods that were found to be identical or similar to a low degree.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Marianna KONDÁS

Ferenc GAZDA

Zuzanna STOJKOWICZ

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.