OPPOSITION No B 2 862 145

Supermarches Match Société par actions simplifiée, 250 rue du Général de Gaulle, 59110 La Madeleine, France (opponent), represented by Inlex IP Expertise, Plaza San Cristobal, 14, 03002 Alicante, Spain (professional representative)

a g a i n s t

TSP Investment & Trading Enterprise, Arthur-Hoffmann-Straße 86, 04275 Leipzig, Germany (applicant), represented by Gruendelpartner Rechtsanwälte Steuerberater Wirtschaftsprüfer Part. mbB, Leutragraben 2-4, 07743 Jena, Germany (professional representative).

On 11/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 862 145 is upheld for all the contested goods.

2. European Union trade mark application No 16 130 502 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 130 502 for the word mark ‘MatchUp’. The opposition is based on French trade mark registration No 4 268 832 for the figurative mark . 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.

a) The goods

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

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flours and preparations made from cereals, bread, pastries and confectionery, edible ices; honey, treacle; yeast, baking-powder; salt, mustard, vinegar, sauces (condiments); spices; ice.

Class 32: Beers; mineral and aerated waters; non-alcoholic beverages and preparations for making beverages (except beverages based on coffee, tea or cacao and milk beverages); fruit beverages and fruit juices, syrups.

The contested goods are the following:

Class 30: Tea; iced tea; infusions, not medicinal; herb teas, other than for medicinal use; tea-based beverages with fruit flavoring; tea-based beverages.

Class 32: Energy drinks; energy drinks containing caffeine; energy drinks [not for medical purposes]; non-alcoholic beverages; carbonated non-alcoholic drinks; non-carbonated soft drinks; non-alcoholic beverages flavoured with tea; non-alcoholic flavored carbonated beverages; fruit-based soft drinks flavored with tea; aperitifs, non-alcoholic; cocktails, non-alcoholic; non-alcoholic cocktail bases; non-alcoholic fruit extracts; non-alcoholic fruit extracts used in the preparation of beverages; soft drinks; isotonic beverages; lemonades.

Contested goods in Class 30

Tea; infusions, not medicinal are identically contained in both lists of goods (including synonyms).

The contested iced tea; herb teas, other than for medicinal use; tea-based beverages with fruit flavoring; tea-based beverages are included in the broad category of, or overlap with, the opponent’s tea. Therefore, they are identical.

Contested goods in Class 32

Non-alcoholic beverages are identically contained in both lists of goods.

The contested energy drinks; energy drinks containing caffeine; energy drinks [not for medical purposes]; carbonated non-alcoholic drinks; non-carbonated soft drinks; non-alcoholic beverages flavoured with tea; non-alcoholic flavored carbonated beverages; fruit-based soft drinks flavored with tea; aperitifs, non-alcoholic; cocktails, non-alcoholic; non-alcoholic cocktail bases; soft drinks; isotonic beverages; lemonades are included in the broad category of the opponent’s non-alcoholic beverages. Therefore, they are identical.

The contested non-alcoholic fruit extracts; non-alcoholic fruit extracts used in the preparation of beverages are included in the broad category of the opponent’s preparations for making beverages (except beverages based on coffee, tea or cacao and milk beverages). Therefore, they are identical.

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 are directed at the public at large. The degree of attention is average.

c) The signs

https://www.tmdn.org/	MatchUp
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 earlier mark is a figurative mark composed of a green oval, with a notch on the uppermost part within which is the word ‘MATCH’. This word is depicted in fairly standard green upper-case letters, except for the letter ‘C’, which is in white against a red rectangular frame that is inclined to the left and has a small red curved line underneath. The contested sign is the word mark ‘MatchUp’.

The verbal element ‘MatchUp’ does not exist as such (in this combination) in French. Although marks are perceived as a whole, the exception to this rule is that, under certain circumstances, consumers could break them down into smaller parts. Since this is an exception, it has to be applied restrictively. This exception will be applied when a visual separation assists in identifying parts with a concept (e.g. through the use of lower- and upper-case letters, the stylisation of letters or the use of a special character separating the elements, such as a symbol, numeral, hyphen or other punctuation mark). This is the case in the contested sign, not only because the element ‘Match’ has a meaning for the French consumer, but also because it is perceived as separate from the following element, ‘Up’, due to the upper-case letter ‘M’ and ‘U’.

The verbal element ‘MATCH’, which appears in both signs, will be perceived by the French public as referring to, inter alia, the concept of: ‘Compétition sportive entre deux adversaires ou deux équipes, rencontre’ (or, in English, as ‘a formal game or sports events in which people, teams, etc, compete to win’). However, since it has no particular relationship to the relevant goods, the verbal element ‘MATCH’ is, therefore, distinctive in both signs. This is contrary to the applicant’s argument that the opposing trade mark has a weak degree of distinctiveness. There is no reason to uphold this argument, as the word is not related to the relevant goods in any way. The element ‘Up’ of the contested sign is an English word that means, inter alia, ‘indicating movement from a lower to a higher position; at a higher or further level or position in or on’. It is likely that part of the relevant public will understand this term, since it can be considered a basic English term. Another part of the public will perceive it as meaningless. However, from both perspectives, since it has no meaning in relation to the goods involved, it has an average degree of distinctiveness. The figurative elements in the earlier mark, in the form of geometrical shapes (a green oval and a red rectangular frame) are of a decorative nature and the public will pay less attention to these elements. Therefore, they have less impact on the overall impression.

Even though, in the earlier mark, the word ‘MATCH’ is written in a small typeface and occupies a much smaller part of the mark compared to the green oval, this word cannot be overlooked, as it appears clearly in the uppermost part of the mark. For these reasons, the earlier mark has no element which is more visually eye-catching than other elements.

Visually, the signs are similar to the extent that they coincide in the verbal element ‘MATCH’, with the only difference being the typeface. However, the earlier mark’s typeface, being fairly standard, will not divert the consumer’s attention from the element it embellishes. They coincide in five letters of the single verbal element in both marks, constituting the entire verbal element of the earlier mark and the first five, out of seven, letters in the contested sign.

Furthermore, 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. The fact that the only word of the earlier mark and the first element of the contested sign coincide is relevant for the comparison.

Moreover, the marks differ in the verbal element ‘Up’ of the contested sign, which appears at the end, where the consumer usually pays less attention.

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, because the public will more easily refer to the signs by their verbal element (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011‑4, BEST TONE (FIGURATIVE MARK) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This also applies with regard to the earlier mark’s geometrical shapes, which are of a merely decorative nature.

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

Aurally, the pronunciation of the signs coincides in the sound of the element ‘MATCH’, which is present identically in both marks. The pronunciation differs in the sound of the last syllable, ‘Up’, of the contested sign.

Therefore, taking into account the greater or lesser impact attributed to the various elements forming the marks, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be associated with a similar meaning on account of the word ‘MATCH’. The contested sign has an additional concept in relation to the word ‘Up’ that is not shared by the earlier mark, although this is perceived only by that part of the public for which this term has a meaning. The figurative elements in the form of geometrical shapes do not refer to any concepts in particular.

Therefore, the signs are conceptually similar to a high degree.

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.

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.

e) Global assessment, other arguments and conclusion

The goods are identical and target the public at large, who pay an average degree of attention. The earlier mark has a normal degree of distinctiveness.

The marks are visually similar to an average degree and aurally and conceptually similar to a high degree.

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).

Taking into account all the circumstances, the coincidence between the only verbal element ‘MATCH’ of the earlier mark and the first element of the contested sign where the consumer usually focuses more attention is enough to counteract the few differences that lie merely in the very short element ‘Up’ in the contested sign, and in some figurative elements in the earlier mark that are merely decorative. Consumers will not be able to distinguish between the marks in relation to the identical goods, and will believe that the goods have the same origin.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 4 268 832 for the figurative mark  . It follows that the contested trade mark must be rejected for all the contested 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.

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

Saida CRABBE

Chantal VAN RIEL

Maria del Carmen SUCH SÁNCHEZ

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.