CORTEX | Decision 2683897
Date Published: Oct 11, 2017
OPPOSITION No B 2 683 897
J. Cortès Cigars N.V., Pannenbakkersstraat 1, 8552 Zwevegem, Belgium (opponent), represented by Gevers, Brussels Airport Business Park, Holidaystraat, 5, 1831 Diegem, Belgium (professional representative)
a g a i n s t
Shenzhen Innokin Technology Co. Limited, Building 6, Xinxintian Industrial Park, Xinsha Road, Shajing Street, Baoan District, Shenzhen, 518000, China (The people’s Republic of) (applicant), represented by Beetz & Partner, Steinsdorfstr. 10, 80538 München, Germany (professional representative).
On 22/03/2017, the Opposition Division takes the following
1. Opposition No B 2 683 897 is upheld for all the contested goods.
2. European Union trade mark application No 14 797 724 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods of European Union trade mark application No 14 797 724. The opposition is based on European Union trade mark registration No 9 439 126. 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.
- The goods
The goods on which the opposition is based are the following:
Class 34: Tobacco; smokers' articles; matches.
The contested goods are the following:
Class 34: Tobacco; electronic cigarettes; cigarettes; liquid nicotine solutions for use in electronic cigarettes; tobacco pipes (not of precisous metal); filter tips; cigarette lighter; oral vaporizers for smokers; flavourings, other than essential oils, for use in electronic cigarettes; cigarette filters.
Contested goods in Class 34
The contested tobacco is also contained in the opponent’s list of goods. Therefore, they are identical.
The contested cigarettes are included in, or overlap with, the broad category of the opponent’s tobacco. Therefore, they are identical.
The contested electronic cigarettes; tobacco pipes(not of precious metal); cigarette lighter; oral vaporizers for smokers; cigarette filters are included in, or overlap with, the broad category of the opponent’s smokers’ articles. Therefore, they are identical.
The opponent’s tobacco and the contested liquid nicotine solutions for use in electronic cigarettes; filter tips; flavourings, other than essential oils, for use in electronic cigarettes have the same distribution channels and points of sale, are in competition and target the same consumers. Therefore, they are highly similar.
- 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 a high degree are directed at the public at large. The degree of attention will vary from average to high, depending on the particular goods involved.
For example, although tobacco products in Class 34 are relatively cheap articles for mass consumption, smokers are considered particularly careful and selective as regards the brand of tobacco they smoke, so a higher degree of brand loyalty and attention is assumed when tobacco products are involved.
However, in relation to certain other goods in Class 34, for instance, certain smokers’ articles that do not entail such brand loyalty or careful and selective purchase, the degree of attention will be average.
- The signs
Earlier trade mark
The relevant territory is 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 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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. The words ‘J.CORTES’ and ‘CORTEX’ are meaningless in certain territories, for example, in those countries where Spanish language is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public.
The earlier mark is a word mark consisting of the verbal element ‘JCORTES’ divided into two parts by a dot: ‘J.CORTES’. This element might be understood as an abbreviated name plus surname but it does not have a meaning in relation to the relevant goods and is therefore distinctive.
The contested sign is a figurative mark containing the verbal element ‘CORTEX’ in capital letters and in bold type. This element does not have a meaning in relation to the relevant goods and is therefore distinctive.
Visually, the signs coincide in the letter sequence ‘CORTE’. They merely differ in the first letter ‘J.’ of the earlier mark, and in the letters ‘X/S’ which are placed at the end of the marks.
Therefore, the signs are similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘C-O-R-T-E’, present identically in both signs. The pronunciation differs in the sound of the letters ‘J’ and ‘S’ of the earlier mark and ‘X’ of the contested sign. However, the letters ‘S’ and ‘X’ have a highly similar sound for the public in the relevant territory.
Therefore, the signs are aurally similar to a high degree.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- Global assessment, other arguments and conclusion
The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).
In the present case, the contested goods are identical and similar to the opponent’s goods.
The signs are visually similar to an average degree and aurally to a high degree because part of the differences in the verbal elements, ‘S’ versus ‘X’, are placed at the end of the marks and are therefore less noticeable. Furthermore, as already mentioned, these letters are pronounced in a highly similar way.
In view of the foregoing, it is likely that a significant part of the relevant consumers may confuse the signs, especially bearing in mind the principle of imperfect recollection. Indeed, 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).
Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54), especially taking into account the high degree of similarity between the marks in question and the fact that the goods and services are identical and similar.
Considering all the above, there is a likelihood of confusion on the part of the German-speaking part of the public. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 439 126. It follows that the contested trade mark must be rejected for all the contested goods.
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 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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
Patricia LOPEZ FERNANDEZ DE CORRES
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.