OPPOSITION No B 3 050 617

Hemtex AB, P.O. Box 495, 501 13 Borås, Sweden (opponent), represented by Nihlmark & Zacharoff Advokatbyrå AB, Regeringsgatan 67, 4 TR Stockholm, Sweden (professional representative)

a g a i n s t

Min Xia, No. 75 East Songhu Road, Zhangpu Town, 215300 Kunshan City, Jiangsu Province, China (applicant), represented by Christoph Friedrich Jahn, Rothenburg 41, 48143 Münster, Germany (professional representative).

On 27/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 617 is partially upheld, namely for the following contested goods:

Class 20: Lawn furniture; seat covers [shaped] for furniture; protective coverings for furniture [shaped]; outdoor furniture; textile covers [shaped] for furniture.

2. European Union trade mark application No 17 650 607 is rejected for all the above goods. It may proceed for the remaining goods, namely those in Class 22.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 650 607 . The opposition is based on, inter alia, European Union trade mark registration No 1 069 723 for the word mark ‘HEMTEX’. 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 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool for cleaning; unworked or semi-worked glass (except building glass); glassware, porcelain and earthenware not included in other classes.

Class 24: Textiles and textile goods, not included in other classes; bed and table covers, not of paper.

Class 25: Clothing, footwear, headgear.

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

The contested goods are the following:

Class 20: Lawn furniture; seat covers [shaped] for furniture; protective coverings for furniture [shaped]; outdoor furniture; textile covers [shaped] for furniture.

Class 22: Coverings in the nature of tarpaulins; all-purpose tarpaulins of plastic; plastic sheet materials [tarpaulins]; tarpaulins; waterproof covers [tarpaulins]; waterproof covering sheets [tarpaulins]; concrete curing blankets made of textile.

Contested goods in Class 20

The contested lawn furniture; outdoor furniture are included in the broad category of furniture of the opponent’s goods in Class 20. Therefore, they are identical.

The contested seat covers [shaped] for furniture; protective coverings for furniture [shaped]; textile covers [shaped] for furniture are similar to the opponent’s furniture because they share the same distribution channels and are likely to originate from the same kind of producers and target the same consumers. Furthermore they are complementary.

Contested goods in Class 22

The contested coverings in the nature of tarpaulins; all-purpose tarpaulins of plastic; plastic sheet materials [tarpaulins]; tarpaulins; waterproof covers [tarpaulins]; waterproof covering sheets [tarpaulins]; concrete curing blankets made of textile serve very specific purposes: they are used to protect large surfaces from various weather conditions.

The opponent’s goods are mainly furniture, apparatus and instruments for household purposes, decorative items for the home and goods that are worn to protect the human body.

Based on the definitions of the goods being compared, they are considered dissimilar, since they differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, do not target the same consumers and are not likely to originate from the same kind of undertakings.

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 or similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

HEMTEX
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 unitary character of the European Union trade mark means that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57).

The expression ‘Functional fabric’, on top of the contested sign, is meaningful in certain territories, for example in those countries where English is spoken. Consequently, the Opposition division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public since, for that part of the public, the differing expression ‘Functional fabric’ has reduced impact for the reasons explained below, and this is therefore considered the best-case-scenario for the opponent.

The verbal elements ‘Hentex’ and ‘HEMTEX’ are fanciful terms. The signs as a whole will be perceived as meaningless and invented terms and therefore distinctive in relation to all the goods involved.

The expression ‘Functional fabric’ in the contested sign is descriptive of the characteristics of some of the goods under comparison, such as the protective coverings for furniture [shaped]. It is therefore void of distinctive character for those goods and of normal distinctive character for the remaining goods.

‘Leisure Production Inc.’ refers to the company that produces or commercialises the goods. Due its smaller size and position at the bottom of the mark, it is a visually secondary element.

In the lower middle part of the contested sign, a small figurative element showing different layers of fabric is depicted. The different materials and characteristics of the product are written around the figurative element, but due to their size these are barely noticeable. As these words are likely to be disregarded by the relevant public, they are negligible and will not be taken into consideration. The figurative element clearly shows the product itself, namely fabric, and is therefore descriptive and void of distinctive character for some of the goods involved, such as seat covers (shaped) for furniture and of normal distinctive character for the remaining goods.

Finally, the figurative element of the contested sign is a purely decorative frame, which has a low degree of distinctiveness. Moreover, 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, which reinforces its secondary character.

Visually and aurally the signs coincide in the sequence of letters (and their sound) ‘HE*TEX’, forming almost the entire earlier mark and the element with greater weight in the contested sign.

They differ in the third letter of those sequences, namely ‘M’ and ‘n’ in the earlier mark and the contested sign, respectively. However, these differing letters are both nasal sonorous consonants and aurally highly similar. The signs also differ, visually and aurally, in the expressions ‘Functional fabric’ and in ‘Leisure Production Inc.’, and visually in the figurative elements, all found in the contested sign. These elements have reduced impact, for the reasons described above.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the concepts of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 relevant public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods under comparison are partly identical, partly similar and partly dissimilar. They target the public at large whose degree of attention during purchase is average.

The signs are visually and aurally similar to an average degree, and not conceptually similar. The distinctiveness of the earlier mark is average.

The commonality in the only element forming the earlier mark, and one of the elements of greater impact in the contested sign (with exception of the third letters ‘M/n’) is crucial in establishing a high similarity between the signs. The differences between the signs are confined to secondary and weak elements and therefore not enough to outweigh the similarities between them.

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).

In this case, it is likely that, due to imperfect recollection of the signs, consumers will overlook the differences between ‘HEMTEX’ and ‘Hentex’, which are visually not very striking, being in the middle of the words, and aurally hard to perceive, as both are nasal sounds. Also, the remaining figurative elements of the contested sign all are of reduced impact.

Even though the differing elements in the contested sign described above are likely to be perceived, 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 undertaking or economically linked undertakings. In the present case, it is likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 1 069 723. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested sign must be rejected for the goods found to be identical or similar to those of the earlier mark.

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.

The opponent has also based its opposition on European Union trade mark registration No 9 112 723, which covers other goods and services than the earlier right that has been examined in this decision, namely:

Class 3: Bleaching preparations and other substances for laundry use; cleaning preparations; soaps; perfumery, essential oils, cosmetics, haircare preparations; dentifrices.

Class 28: Toys.

Class 35: Retailing of bleaching preparations and other substances for laundry use, detergents, soaps, perfumery, essential oils, cosmetics, haircare preparations, dentifrices, furniture, mirrors, picture frames, goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell amber, mother- of- pearl, meerschaum or substitutes, for all these materials, or of plastics, household kitchen utensils and containers (not of precious metal or coated therewith), combs and sponges, brushes (except paintbrushes), brush-making materials, articles for cleaning purposes, steel wool for cleaning, unworked or semi-worked glass (except glass used in building), glassware, porcelain and earthenware, textiles and textile goods, bed and table covers, not of paper, clothing, footwear, headgear, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, wall hangings (non-textile), marketing, information relating to retailing services.

Class 42: Design of furnishings and consultancy relating thereto, design information.

This other earlier right invoked by the opponent covers goods and services that are clearly different from those for which registration is sought and for which the opposition has been already rejected. They are dissimilar, since they differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, do not target the same consumers and are not likely to originate from the same kind of undertakings.

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.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) 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 for only some 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

María del Carmen SUCH SÁNCHEZ

Sylvie ALBRECHT

Maria Clara IBAÑEZ FIORILLO

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.