OPPOSITION No B 2 356 742

Carrefour, SA, 33, avenue Emile Zola, 92100 Boulogne Billancourt, France (opponent), represented by Novagraaf France, Bâtiment O2 – 2, rue Sarah Bernhardt, CS 90017, 92665 Asnières-sur-Seine, France (professional representative)

a g a i n s t

Green Mountain Europe B.V., Vaartweg 97, 5106 NB Dongen, the Netherlands (applicant), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL Breda, Netherlands (professional representative).

On 28/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 356 742 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 12 340 451, namely against all the goods in Classes 24 and 25. The opposition is based on, inter alia, French trade mark registration No 1 205 373. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s French trade mark registration No 1 205 373.

1. The goods

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

Class 24:         Fabrics, bed covers and table; textile articles not included in other classes.

Class 25:        Clothing including boots shoes and slippers.

The contested goods are the following:

Class 24:        Textiles, textile goods and textile laminates, not included in other classes; nonwoven textile goods; fibres, textiles and fabrics for use with linings (being nonwovens); composite textile materials, included in this class; linings of textile for clothing, footwear or headgear.

Class 25:        Clothing, footwear, headgear.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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 24

The contested textiles not included in other classes is a synonym for the opponents fabrics in Class 24. Therefore they are identical.

The contested textile goods not included in other classes is a synonym for the opponent’s textile articles not included in other classes. Therefore, they are identical.

The contested textile laminates not included in other classes are included in the broad category of the opponent’s fabrics. A textile laminate is a two (or more) layer construction with a polymer film bonded to a fabric (i.e. to make it waterproof). Some fabrics will be laminated while others will not. Therefore, they are identical.

The contested nonwoven textile goods; linings of textile for clothing, footwear or headgear are included in the broad category of the opponent’s textile articles not included in other classes. Therefore, they are identical.

The contested fibres, textiles and fabrics for use with linings (being nonwovens); composite textile materials, included in this class are included in the broad category or overlap with the opponent’s fabrics. Therefore, they are identical.

Contested goods in Class 25

The contested clothing is identically contained in both lists of goods.

The contested footwear includes, as a broader category, the opponent’s boots, shoes and slippers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested headgear is similar to the opponent’s clothing. They serve the same purpose since they are used to cover and protect various parts of the human body against the elements. They are also articles of fashion and are often found in the same retail outlets. Consumers, when seeking to purchase clothes, will expect to find headgear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce all of the aforementioned items.

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 goods found to be identical and similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention is considered to be average.

3. The signs

TEX
Earlier trade mark	Contested sign

The relevant territory is France.

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 mark consists of the figurative mark . The second last letter is a backward capital ‘E’ that may also be read as the number ‘3’. Therefore, the mark may be perceived as ‘TRIPLETEX’ or ‘TRIPLET3X’.

The Opposition Division finds it appropriate to first examine the opposition in relation to those who perceive the contested sign as ‘TRIPLETEX’ which as a whole has no meaning in French.

The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

In the present case the elements ‘TRIPLE’ and ‘TEX’ will be identified.

The element ‘TRIPLE’, the same word in French, will be understood by the French-speaking consumer as meaning ‘multiplied by three’ or ‘consisting of or involving three parts’. In relation to the goods at issue, this element is weak as it may refer to the triple strength or the three-fold composition of the goods at hand.

The element ‘TEX’ is defined as ‘a unit of measure for the linear mass density of fibers’ (French Larousse Dictionary). This meaning will only be perceived however by the professional public and for this section of the public the element ‘TEX’ is weakly distinctive.

The general public, more prone to confusion, will perceive the part ‘TEX’ as an abbreviation of the word ‘textile’ which is the same in French. The fact that ‘TEX’ is an understandable abbreviation for ‘textile’ has been consistently decided by the Boards of Appeal in previous decisions (see for instance decisions of 23/05/2016 16/01/2012 R 1230/2015-4 TEX / MODOTEX, § 19; R 273/2011-2, TEX / TEX, § 42; 06/10/2014, R1604/2014-4, TOUGHTEX, § 12; 27/11/2015, R 895/2015-2, Perlatex / Bellatex,§ 31; 18/02/2016, R 2959/2014-5, CRYOTEX / CRYOTEC, § 20). It follows that also for the general public the part ‘TEX’ within the contested mark is weakly distinctive for the goods concerned which are either textiles or goods made of textile.

The earlier trade mark is a word mark made up of the single verbal element ‘TEX’, which for the reasons described above is weakly distinctive for the goods at issue.

Visually and aurally the signs coincide in the last three letters of the contested mark, the weak element ‘TEX’.  Although consumers may read ‘TEX’ in the contested sign the fact that the ‘E’ is backwards will not go unnoticed as a striking visual difference. They differ in the first part of the contested sign ‘TRIPLE’ which has no counterpart in the earlier mark, is also weak and is double the length of the coinciding element.

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. This observation can also apply from an aural point of view, the sound at the beginning of the marks first catching the attention of the consumer.

Therefore the marks are aurally similar to a below average degree.

They are visually similar to a low degree taking into consideration the specific graphic design of the contested mark (inverted ‘E’) that further differentiates the visual appearance of the element ‘TEX’ in the two signs.

Conceptually, the contested mark as a whole has no meaning. Reference is made to the previously examined semantic content of the marks. The marks differ with respect to the element ‘TRIPLE’ of the contested sign that has no counterpart in the earlier mark. They are similar insofar as they both refer to the concept of textile. Taking into account the goods concerned for which the element ‘TEX’ is weakly distinctive, the marks can be considered conceptually similar to a below average degree.

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.

According to the opponent the earlier trade mark has a reputation in France in connection with part of the goods for which it is registered, namely clothing including boots, shoes and slippers. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

1. Internet search: Google search for ‘TEX vêtements’ (clothing) dated 07/03/2016 showing results mainly from the Carrefour TEX trademark (also from the GORE-TEX trademark).

2. Extract from the Internet website www.tex.carrefour.fr showing the TEX collection including items of clothing and footwear for men, women and children. 07/03/2016

3. Internet articles:

www.heylistenfolks.fr Carrefour and its trademark TEX are ‘shazaming’ 08/12/2014

www.actusmediasandco.com Try TEX clothes without getting undressed 08/12/2014

Blog article: What TEX products can you find at Carrefour?

www.aufeminin.com Presentation of TEX underwear products

Blog article: TEX by Absolutely Glamourous 08/12/2014

www.lsa.conso.fr Carrefour launches the TEX collection by Kenzo Takada 23/04/2015

www.parismatch.com Kenzo Takada redresses Carrefour 23/04/2015

4. Affidavit signed 12/03/2015 by Ms. Françoise Clement, Textile Director of the Carrefour Marchandises Internationales company, indicating that:

• the TEX trademark has been regularly and widely used since 1982 in many countries and especially in Europe;
• TEX goods are sold in 1430 hypermarkets and 3077 supermarkets in Europe, 234 hypermarkets and 939 supermarkets of which are located in France;
• the turnover in 2014 achieved through the sales of goods bearing the trademark TEX reached € 1,021,673,367, more than half of which (€ 587,633,947) came from France.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Enhanced distinctiveness of the earlier trademark, if claimed, should exist at the time of filing of the contested EUTM application, in this case 25/11/2013. All of the evidence submitted has dates after the filing date of the contested mark.

Account has to be taken of all the relevant facts of the case, in particular the market share held by the mark how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the marks, identifies the goods or services as originating from a particular undertaking; and statement from chambers of commerce and industry or other trade and professional associations (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20-23).

The affidavit submitted which claims regular and widespread use of the mark in the relevant territory since 1982 and a 2014 turnover to the tune of over half a billion Euro in France alone, was not supported by any objective evidence to support the claims made. It does not specify for which goods the mark was used and there is no mention of the goods for which reputation is claimed. In addition it comes from the opponent itself and so the probative value is lower than evidence coming from independent third parties.

The internet printouts submitted from both the opponent’s own website and other websites, all with dates from after the relevant point in time, give in any case no indication about the recognition of the mark in France or about the market share held by the mark in the relevant territory. The mere fact that goods with the trademark in question were available for purchase online or that articles were published relating to the mark does not indicate that the mark has acquired a reputation among the relevant public.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all goods in question.

5. Global assessment, other arguments and conclusion

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.

As has been concluded above, the contested goods in Class 24 and 25 were found identical and similar to those of the earlier mark and are directed at the public at large and a professional public whose level of attention is average. The signs are visually similar to a low degree and aurally and conceptually similar to a below average degree.

Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). The same can be said for the purchase of fabrics and textiles where a physical examination of the goods is highly likely to take place before purchase. Therefore, the considerable visual differences between the signs caused by the difference between the length of the signs and the inverted ‘E’ in the coinciding weak element of the contested sign are particularly relevant when assessing the likelihood of confusion between them.

 

The fact that the conflicting marks coincide in ‘TEX,’ a weakly distinctive element in relation to the goods at issue, is not sufficient to find likelihood of confusion on the part of the relevant public whose level of attention is average in particular as the coinciding element comes at the end of the contested mark where it will have less impact.

This absence of a likelihood of confusion equally applies to the part of the public that perceives the inverted ‘E’ as the number ‘3’ and the contested sign as ‘TRIPLE3X’.  This is because that part of the public will perceive the signs as being even less similar.

Considering all the above, even for identical goods, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade mark.  

European Union trade mark registration No 5 897 293.

The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains figurative elements such as the white letters on the black squares which are not present in the contested trade mark. Given the layout of the letters, it is questionable whether the relevant consumers will read ‘TEX’ at all. Even for those who might recognise the word ‘TEX’ as a distinctive word element, the visual impact of the marks is so different that a likelihood of confusion can be safely ruled out in particular taking into account the importance of the visual aspect when dealing with clothing and textiles where a prior physical examination is likely to take place. Moreover, this mark covers a narrower scope of the goods. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Swetlana BRAUN

Lynn BURTCHAELL

Martin EBERL

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.