Polar -Tex | Decision 2594045 - CARREFOUR, SA v. MMI-IPCO, LLC

Date Published: Sep 25, 2017

OPPOSITION No B 2 594 045

Carrefour, SA, 33, avenue Émile 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

MMI-IPCO, LLC, 46 Stafford Street, P.O. Box 809, Lawrence, Massachusetts 01842, United States of America (applicant), represented by SKW Schwarz Rechtsanwälte, Kurfürstendamm 21, Neues Kranzler Eck, 10719 Berlin, Germany (professional representative).

On 27/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 594 045 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 336 788. The opposition is based on 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.

1. The goods

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

Class 25:        Clothing including boots, shoes and slippers.

The contested goods are the following:

Class 25:        Footwear.

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, normally introduces a non-exhaustive list of examples of items included in the broader category (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107). However, in the present case the contested boots, shoes and slippers are clearly not included in the broader category of clothing. Therefore, the opposition will proceed as if the contested boots, shoes and slippers were claimed as separate items in Class 25.

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.

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 are directed at the public at large.

The degree of attention is considered 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 earlier trade mark is a word mark made up of the single verbal element ‘TEX’. In this regard, it should be noted that the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether a word mark is depicted in lower or upper case letters, or in a combination thereof.

The contested sign is a figurative sign consisting of two verbal elements, ‘Polar’ and ‘Tex’, joined with a hyphen and written in a rather standard title case typeface; the first letter ‘P’ is slightly stylised at its top part.

The element ‘TEX’/‘Tex’, included in both signs, will be understood by the relevant French-speaking consumer 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 16/01/2012, R 273/2011-2, TEX / TEX, § 42; 06/10/2014, R 1604/2014-4, 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 the element ‘TEX’/‘Tex’ in the signs is, contrary to the opponent’s argument, weakly distinctive for the relevant goods as it indicates that they are made of textile (23/05/2016, R 1229/2015-4, modotex / TEX et al., § 19). With regard to the opponent’s arguments that ‘TEX’ is defined as ‘a unit of measure for the linear mass density of fibres’ (French Larousse Dictionary) and that this meaning is likely to be understood by professionals in the textile and clothing sectors, these considerations are irrelevant in the present case, since the goods found to be identical target only the public at large, as stated above in section b) of this decision.

The word ‘Polar’ of the contested sign will be associated by at least a part of the relevant public with something ‘relating to the North or South Pole’ (information extracted from Oxford Dictionaries at https://en.oxforddictionaries.com/definition/polar) or with polar fleece, that is, ‘a synthetic fabric with a thick, soft pile, used esp. to make warm outer clothing and blankets’ (information extracted from the Oxford English Dictionary at http://www.oed.com/view/Entry/146742?redirectedFrom=polar+fleece#eid29439555), due to the existence of a similar equivalent to this word in French, ‘polaire’. In view of the above, this word is at most allusive with respect to the contested goods in Class 25, namely footwear, since it may indicate that they are either designed to be worn in cold weather or made of a special synthetic fibre. Therefore, the distinctiveness of the word ‘Polar’ in the context of the relevant goods is somewhat below average for this part of the public. However, it is not completely devoid of any distinctiveness, as indicated by the opponent in its submissions, because forming the abovementioned link between the meanings of ‘Polar’ and the contested goods requires a certain mental effort, particularly given that the word ‘Polar’ per se has no direct meaning for the goods in Class 25 in French. Nevertheless, the fact still remains that for the remaining part of the public, that is, that part for which the word ‘Polar’ has no relevant meaning and will not be associated with the French equivalent ‘polaire’, this word is distinctive to an average degree for the relevant goods. Taking all the above into consideration, the Opposition Division will first examine the opposition in relation to the part of the public for which ‘Polar’ alludes to the word ‘polaire’ and so has a distinctiveness which is below average. This also considers the best case scenario for the opponent in the present case.

The hyphen between the verbal elements ‘Polar’ and ‘Tex’ of the contested sign is a common punctuation mark and will have little or no impact on the consumer. This element is non-distinctive and simply serves to clearly separate the two verbal elements.

In terms of dominance, neither of the signs has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually and aurally, the signs coincide in the sequence of letters/sounds ‘TEX’/‘Tex’, which constitutes a weak element in each of the signs. However, they differ in the word/sound ‘Polar’ of the contested sign, forming an element with a below average degree of distinctiveness. Furthermore, the signs differ in their lengths (three letters/sounds in the earlier mark versus eight letters/sounds in the contested sign) and numbers of elements (one verbal element in the earlier mark versus two verbal elements in the contested sign), which means that they have different numbers of syllables (one in the earlier mark versus three in the contested sign), so their rhythms and intonations also differ. Visually, the signs also differ in the non-distinctive hyphen and in the stylisation of the contested sign.

In addition, it is important to note that the first elements of the signs, ‘TEX’ and ‘Polar’, are different. It is established practice 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. This applies also from an aural point of view: the sound at the beginning of a mark first catches the attention of the consumer.

Therefore, considering the limited impact of the weak element ‘TEX’/‘Tex’ and all the other relevant circumstances described above, the signs are visually and aurally similar to a below average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and their individual elements.

As the signs coincide in the concept of the word ‘TEX’/‘Tex’, which is a weak element in both signs, and differ in the concept(s) conveyed by the word ‘Polar’ of the contested sign, with a below average degree of distinctiveness, they are conceptually similar to a below average degree.

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.

According to the opponent, the earlier trade mark has a reputation in France in connection with some 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:

ANNEX A

1. Internet search results: the results of a Google search for ‘TEX vêtements’ (in English, ‘TEX clothing’), dated 07/03/2016, showing results mainly relating to the Carrefour trade mark ‘TEX’ (and also relating to the trade mark ‘GORE-TEX’); an extract from the website www.priceminister.com showing the ‘TEX’ collection, including items of clothing, dated 07/03/2016.

2. An extract from the website www.tex.carrefour.fr showing the ‘TEX’ collection, including items of clothing and footwear for men, women and children, dated 07/03/2016.

3. Internet articles in French (partially translated into English) promoting ‘TEX’ collections, published on the following websites:

• www.heylistenfolks.fr – an article entitled ‘Carrefour and its trademark TEX are “shazaming” (English translation)’, dated 15/03/2014;
• www.actusmediasandco.com – an article entitled ‘Try TEX clothes without getting undressed’, dated 25/03/2014;
• a blog post entitled ‘Which TEX products can you find at Carrefour?’, undated;

• www.aufeminin.com – a presentation of ‘TEX’ underwear products, undated;
• a blog post entitled ‘TEX by Absolutely Glamourous’, dated 04/09/2014;
• www.lsa-conso.fr – an article entitled ‘Carrefour launches the TEX collection by Kenzo Takada (English translation)’, dated 23/04/2015;
• www.parismatch.com – an article entitled ‘Kenzo Takada redresses Carrefour (English translation)’, dated 23/04/2015.

ANNEX B

An affidavit signed on 12/03/2015 by Ms Françoise Clement, Textile Director of the company Carrefour Marchandises Internationales, indicating that:

• the ‘TEX’ trade mark has been regularly and widely used since 1982 in many countries and especially in France, Spain, Italy, Benelux, Poland, Romania and Greece;
• the goods bearing the trade mark ‘TEX’ are sold in 1 430 hypermarkets and 3 077 supermarkets, mostly in EU countries, of which 234 hypermarkets and 939 supermarkets are located in France;
• in 2014, the turnover achieved through sales of goods bearing the trade mark ‘TEX’ reached EUR 1 021 673 367, more than half of which (EUR 587 633 947) came from France.

It must be pointed out that the evidence of use submitted by the opponent on 19/10/2016 cannot be taken into account in the assessment of enhanced distinctiveness, as it was received after the deadline to substantiate the opposition, namely 10/03/2016. According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted within the time limit set by the Office.

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 trade mark, if claimed, should exist at the time of filing of the contested EUTM application, in this case 07/07/2015. Some of the evidence submitted is either undated or is dated after the filing date of the contested sign, as seen above.

Account must 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 statements 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 internet printouts and articles submitted, from both the opponent’s own website and other websites, give 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 trade mark 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.

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 euros in France alone, was not supported by any objective evidence. 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 its probative value is less than that of evidence coming from independent third parties.

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 the goods in question.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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 concluded above, the goods in question are identical; the relevant public consists of the public at large; the degree of attention is average; and the earlier mark has a low degree of inherent distinctiveness for the relevant goods.

The conflicting signs are visually, aurally and conceptually similar to a below average degree, given that the similarities result only from the sequence of letters/sounds ‘TEX’/‘Tex’, which forms a weak element in the context of the goods in question, as explained in detail above in section c) of this decision. According to settled case-law, if trade marks have identical parts that are weak or devoid of distinctive character, the differences between the signs are to be given more importance in the overall assessment of the signs (18/03/2002, R 0814/2001-3, ALL-DAY AQUA / Krüger All Days, § 50; 14/05/2001, R 0257/2000-4, e plus / PLUS, § 22).

The differences between the signs, mainly present at their beginnings, where the consumer’s attention is generally focused, are readily perceptible and sufficient to enable the relevant public to safely distinguish between them. When encountering the conflicting signs, the relevant public will pay less attention to the weak element ‘TEX’/‘Tex’, present in both signs, and will mentally register their differences. This substantially reduces the likelihood of confusion between the conflicting signs, to such an extent that it can be safely ruled out, despite the identity between the goods at issue.

As regards the goods in question, namely footwear in Class 25, it is also important to note that generally in clothes and footwear shops customers can themselves either choose the clothes or footwear 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 or footwear 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). Therefore, the presence of the additional word ‘Polar’ at the beginning of the contested sign, even though it has a below average degree of distinctiveness, is particularly relevant when assessing the likelihood of confusion between the signs.

Based on an overall assessment and taking all the above into account, it can be safely concluded that the average consumer, who, for the purposes of the assessment of likelihood of confusion, is considered reasonably well informed and reasonably observant and circumspect, will neither directly confuse the conflicting signs nor perceive them as coming from the same undertaking or from economically linked undertakings.

The opponent refers to three previous decisions of the Opposition Division (29/09/2014, B 2 261 553, BODYTEX/TEX; 29/04/2015, B 2 363 623, modotex/TEX et al.; 05/01/2016, B 2 477 365, SPORT TEX HAAG/TEX) and the decision of 10/06/2015 issued by the French Trade Mark Office (INPI), 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).

Likewise, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T-292/08, Often, EU:T:2010:399).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

Having examined the decisions to which reference has been made, the Opposition Division considers that the reasoning applied in those cases cannot apply in the present case. This is because those cases relate to signs that have different characteristics from those involved in this case, especially given that the differing elements in the contested sign were found to be either non-distinctive or weak in those cases, whereas in the present case the differing element of the contested sign has a below average degree of distinctiveness and is considered sufficient to exclude a likelihood of confusion between the conflicting signs. Furthermore, the decision of 29/04/2015, B 2 363 623, modotex/TEX et al., was annulled and the opposition was rejected by the decision of 23/05/2016, R 1229/2015-4, modotex / TEX et al. Finally, as regards the INPI decision, it should be noted that the conditions of French law under which a mark would have enhanced distinctiveness or reputation were not proven by the opponent. In addition, the exact evidence on which the decision that the element ‘TEX’ had a high degree of distinctive character for clothing was based is not specified. Given that the previous decisions referred to by the opponent are not relevant to the present proceedings, the opponent’s argument relating to the previous decisions must be set aside.

Considering all the above, there is no likelihood of confusion (and no likelihood of association) on the part of the public in the relevant territory. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the remaining part of the public, for which the element ‘Polar’ of the contested sign has an average degree of distinctiveness for the relevant goods, as explained above. This is because, as a result of the distinctive character of that element, that part of the public will perceive the signs as being even less similar.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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

Chantal VAN RIEL

Martin MITURA

Richard BIANCHI

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.