OPPOSITION No B 2 272 220
Tesco Stores Limited, Tesco House, Shire Park, Kestrel Way, Welwyn Garden City AL7 1GA, United Kingdom (opponent), represented by Kempner & Partners LLP, Fountain House, 4 South Parade, Leeds LS1 5QX, United Kingdom (professional representative)
a g a i n s t
Tiseco B.V.B.A., I.Z. Huttegem 2, 8570 Anzegem, Belgium (applicant), represented by K.O.B. N.V., Kennedypark 31c, 8500 Kortrijk, Belgium (professional representative).
On 27/03/2019, the Opposition Division takes the following
1. Opposition No B 2 272 220 is upheld for all the contested goods.
2. European Union trade mark application No 11 831 302 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of European Union trade mark application No 11 831 302 for the word mark ‘TISECO Home Studio’. In its observations of 18/07/2018, the opponent has expressly limited the basis of its opposition to earlier European Union trade mark registration No 388 223 and international trade mark registration designating the European Union No 911 977, both for the word mark ‘TESCO’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.
SUBSTANTIATION OF EARLIER IR No 911 977
According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.
In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.
In the present case, the only evidence submitted by the opponent for earlier international registration No 911 977 designating the European Union consists of an extract from the former OHIM (now EUIPO)’s data base CTM-Online. The evidence mentioned above is not sufficient to substantiate the opponent’s earlier IR No 911 977, as it does not emanate from the administration by which the trade mark was registered, namely the World Intellectual Property Organization (WIPO).
According to Article 8(1) and (7) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.
The opposition must therefore be rejected as unfounded, as far as it is based on this earlier international trade mark registration. The opposition will proceed on the basis of the remaining mark on which the opposition is based, namely on the opponent’s European Union trade mark registration No 388 223.
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.
a) The goods and services
The goods and services on which the opposition is based are, inter alia, the following:
Class 16: Paper, paper articles, and cardboard articles, all included in Class 16; cardboard, printed matter, periodical publications, books; photographs, stationery, adhesive materials (stationery); paint brushes, office requisites (other than furniture); and ordinary playing cards.
Class 18: Trunks, holdalls, umbrellas, parasols and walking sticks; bags and articles made from leather or from imitation leather, all included in Class 18, leather and imitation leather.
Class 20: Furniture, mirrors included in Class 20, picture frames, drinking straws, ornaments (not for wear) made of wood, wax, plaster, or of plastics materials, sleeping bags (other than sheeting in the form of envelopes), pillows (not for surgical or curative purposes); ladders and barrels, all made of wood or of plastics materials; poles and workbenches, all made of wood; drinking straws.
Class 24: Textiles and textile goods, not included in other classes; bed and table covers.
Class 25: Articles of clothing, footwear and headgear.
Class 35: Advertising and promotional services; dissemination of advertising and promotional materials; direct mail advertising services; market research and marketing services; distribution of samples; shop window dressing; all included in Class 35.
The contested goods are the following:
Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; boxes of cardboard or paper; office requisites (except furniture); stationery; cardboard articles; table linen, table cloths and table mats of paper.
Class 18: Trunks and travelling bags; leather and imitations of leather, and goods made of these materials and not included in other classes; boxes of leather or leather board; handbags; cases, of leather or leatherboard; travelling bags; school bags; bags for sports; beach bags.
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; display stands; bins of wood or plastic; curtain hooks and rails; pillows; bins, not of metal; coat hangers; cushions.
Class 24: Textiles and textile goods, not included in other classes; bed covers; table covers; bath linen (except clothing); bed linen; quilts; curtains of textile or plastic; pillowcases; tablecloths, not of paper; table cloths and table linen, not of paper; tablemats, not of paper.
Class 25: Clothing, footwear, headgear; aprons for cooking; dressing gowns; sandals.
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 16
Paper, cardboard and goods made from these materials, not included in other classes; printed matter; office requisites (except furniture); stationery; cardboard articles are identically contained in both lists of goods in Class 16 (including synonyms and despite their sometimes slightly different wording).
The contested boxes of cardboard or paper in Class 16 are similar to at least an average degree to the opponent's cardboard in Class 16. At the very least, these goods may have the same purpose, namely wrapping, packing or otherwise enclosing something in a container or covering. They may target the same public and be distributed through the same channels. Moreover, they are in competition with each other.
The contested table linen, table cloths and table mats of paper in Class 16 are similar to table covers included in Class 24 protected by the earlier mark. Even if the contested goods are made of paper whereas the earlier goods are made of fabric, they share the same purpose and method of use. They are targeted to the same end consumers who can decide to substitute the goods under comparison.
Contested goods in Class 18
Trunks; leather and imitations of leather; goods made of these materials [i.e. leather and imitations of leather] and not included in other classes (despite their slightly different wording) are identically included in both lists of goods in Class 18.
The contested boxes of leather or leather board; handbags; cases, of leather or leatherboard; travelling bags; school bags; bags for sports; beach bags are at least similar to the opponent’s trunks or holdalls in Class 18. They have at least the same purpose and may coincide in producer, relevant public and distribution channels.
Contested goods in Class 20
The contested furniture, mirrors, picture frames; pillows; picture frames, cushions are identical to the opponent’s goods furniture and mirrors included in Class 20, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, these contested goods.
The contested curtain hooks and rails; display stands; bins of wood or plastic; bins, not of metal; coat hanger are at least similar to the opponent’s furniture in Class 20, as they may coincide in producer, relevant public and distribution channels.
The remaining contested 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 are considered vague terms and are held similar to a low degree to the opponent’s furniture in Class 20. This is because they may coincide in their nature; and their purpose, in the broadest sense, may also be the same in that they are movable objects intended to support various human activities such as seating (e.g., chairs, stools, and sofas), eating (tables), and sleeping (e.g., beds) and to that extent these goods can be held similar to a low degree. However, in the absence of an express limitation by the applicant in order to clarify these goods, it cannot be assumed that they coincide in other criteria.
Contested goods in Class 24
Textiles and textile goods, not included in other classes; bed and table covers are identically contained in both lists of goods covered in Class 24.
The contested bath linen (except clothing); bed linen; quilts; pillowcases; tablecloths, not of paper; table cloths and table linen, not of paper; tablemats, not of paper in Class 24 are included in the broad category of the opponent’s textiles and textile goods, not included in other classes, in the same Class. Hence, they are considered identical.
The contested curtains of textile or plastic in Class 24 are identical or highly similar to the opponent’s textile goods, not included in other classes, in the same Class.
Contested goods in Class 25
The contested clothing, footwear, headgear; aprons for cooking; dressing gowns; sandals are identical to the opponent’s goods in Class 25 (articles of clothing, footwear and headgear), either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include the contested goods.
b) 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 (to various degrees) are mainly directed at the public at large, but also at business customers (e.g. textiles, paper, cardboard, leather and imitations of leather).
The degree of attention is considered to be average.
c) The signs
TISECO Home Studio
Earlier trade mark
The relevant territory is the European Union.
The earlier mark is the word mark ‘TESCO’. The contested sign is the word mark ‘TISECO Home’.
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Given that the second and third word of the contested sign, ‘Home Studio’, is meaningful in certain languages of the relevant territories, for example in those countries where English is understood, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, for which these terms are meaningful and the expression will be associated with the concept of a home or of a studio or activity set up in a private home rather than in an professional environment: hence this expression is of weaker distinctiveness for the goods at issue, since they indicate, or are at least allusive to, a characteristic, namely that the goods are for home (or casual) use or can be used (also at home) while of a professional nature or quality, or that the goods are plurifunctional, useable in different occasions and/or environments (i.e. Classes 16, 18, 20, 24 and 25 goods).
‘TESCO’ and ‘TISECO’ are meaningless for the public under analysis as detailed above, which will perceived them as fanciful terms. Consequently, they are considered to be of inherent normal distinctiveness.
Account must also be taken of the fact that 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.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As neither of the first and normally distinctive elements of the signs has a meaning for the part of the public under analysis as detailed above, the conceptual aspect cannot significantly influence the assessment of the similarity of the signs. Furthermore, although the public under analysis will also perceive the meaning of the terms ‘Home Studio’ in the contested sign, this will not establish any significant conceptual dissimilarity between the signs, as these verbal elements are - at best - of weaker distinctiveness in relation to the goods concerned and will have less impact than the first verbal element of the signs that will first catch the consumers’ attention, as seen above.
Visually and aurally, the signs are similar to an average degree on account of their coincidence in five letters (of which four in the same order) out of the five letters of which the entire earlier mark is composed and out of the six letters of which the first verbal (and normally distinctive) element of the contested sign is composed.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
d) 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 and enjoys a high degree of distinctiveness as result of its long standing and intensive use in the European Union in connection with part of the goods and services for which it is registered, namely all the goods and services covered in Classes 2 – 39, and thus including for all the above mentioned and compared goods and services.
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). However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
In any event, for the sake of completeness, the Opposition Division points out that the opponent’s evidence mainly relates to retail services in relation to foodstuffs and clothing and other items of apparel, which are Class 35 services which however are not covered by the earlier EUTM on which the present opposition is based (which, specifically, in its Class 35, in substance covers different types of advertising and promotional services; dissemination of advertising and promotional materials and market research and marketing services). While it cannot be denied that the evidence as a whole indicates use and a certain level of recognition of the opponent’s earlier mark in at least part of the relevant territory for certain retail services of specific goods, there is, in any event, little or no reference of a reputation in relation to any of the specific goods and services covered by the sole earlier mark on which the present opposition is validly based.
In light of the foregoing, the assessment hereunder continues on the basis of the inherent distinctiveness of the earlier mark.
e) Global assessment, other arguments and conclusion
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).
The signs contain the same five letters (four of which in the same order and three of which in the same position), and which also form the beginning of both word marks that is likely to first catch the attention of consumers and also forms the (more) distinctive element of both signs. Furthermore, they are aurally and visually similar to an average degree and the distinctiveness of the earlier mark is normal. The attention of the relevant public is also considered to be average.
It must be emphasised 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).
The differences between the signs (the first vowel/second letter ‘I’ instead of ‘E’ which however then follows at the third position and the – at best - weaker expression ‘Home Studio’ in the contested sign) are certainly not sufficient to counteract the similarities as their impact in the present case is not such as to enable the part of the public under analysis, with an average degree of attention, to safely distinguish between them in the context of identical or similar (including lowly similar) goods.
Consequently, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the relevant public and therefore the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 388 223. 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 that there is no need to analyse the remaining part of the public and the contested sign must be rejected for all the contested goods.
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.
According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Edith Elisabeth VAN DEN EEDE
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.