OPPOSITION No B 3 050 618

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 26/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 618 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 17 650 615 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 17 650 615 . 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.

a) 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 have the same distribution channels, 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.

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

c) The signs

HEMTEX
Earlier trade marks	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 verbal element ‘Cover’ 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 element ‘cover’ has reduced impact for the reasons explained below, and it is considered the best-case scenario for the opponent.

The verbal elements ‘Hentex’ and ‘HEMTEX’ are fanciful terms. However, they might be dissected by part of the relevant public into ‘Hen’/‘Hem’ and ‘tex’, since the public might perceive the element ‘tex’ as a distinctive and independent element, commonly used as an abbreviation of ‘textile’. Identifying this element within the words will lead consumers to carrying out the mental dissection referred to (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T146/06, Aturion, EU:T:2008:33, § 58).

If it conveys the concept described above, and therefore is perceived within the signs, ‘tex’ is weak for some of the relevant goods, namely for seat covers (shaped) for furniture; protective coverings for furniture (shaped); textile covers (shaped) for furniture. In this scenario, consumers will focus their attention on the most distinctive parts of the signs, namely their beginnings, ‘HEM’ and ‘Hen’. The element ‘tex’, whether understood or not, is of average distinctiveness for the remaining goods that are not related to textiles.

For the remaining part of the public, which will not mentally dissect the words ‘Hentex and ‘HEMTEX’, the signs will be perceived as meaningless and invented terms and therefore distinctive in relation to all the goods involved.

The verbal element ‘Cover’ of 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, of lower than average distinctiveness for those goods and consequently has less impact.

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

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 will reinforce 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 middle letters 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 verbal elements ‘Cover’ and ‘Leisure Products, Inc.’ and visually in the figurative element of the contested sign. These elements are of reduced impact, for the reasons described above.

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

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘TEX’, included in both signs, will be associated with the meaning explained above, at least by part of the public. To that extent, the signs are conceptually highly similar.

For the part of the public for which the earlier mark is meaningless and will not be mentally dissected, only the concepts of the contested sign described above will be grasped. In this scenario, 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.

d) Distinctiveness of the earlier mark

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. 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, and its degree of distinctiveness is normal, although at least part of the public, in relation to some of the goods, will perceive a weak element in the mark, namely ‘TEX’, as stated above in section c) of this decision.

e) 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 will be average.

The signs are visually and aurally similar to an average degree. Depending on the consumer’s perception, the signs are conceptually highly similar or 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 the exception of the middle letters, ‘M’/‘n’) is crucial in establishing a high degree of 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.

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 services 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 trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade 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 those of 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

María Clara IBÁÑEZ 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.