ICE SHISHA | Decision 2443078 - Reemtsma Cigarettenfabriken GmbH v. Sam Naqvi
Date Published: Oct 11, 2017
OPPOSITION No B 2 443 078
Reemtsma Cigarettenfabriken GmbH, Max-Born Str. 4, 22761 Hamburg, Germany (opponent), represented by Stevens Hewlett & Perkins, 1 St Augustine's Place, Bristol BS1 4UD, United Kingdom (professional representative)
a g a i n s t
Sam Naqvi, 24 Montrose Avenue, Luton Luton LU3 1HR, United Kingdom (applicant).
On 23/03/2017, the Opposition Division takes the following
1. Opposition No B 2 443 078 is upheld for all the contested goods, namely:
Class 34: Articles for use with tobacco; Matches; Tobacco and tobacco products (including substitutes).
2. European Union trade mark application No 13 182 076 is rejected for all the contested goods. It may proceed for the remaining services.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 182 076, namely against all the goods in Class 34. The opposition is based on, inter alia, European Union trade mark registration No 8 686 271. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 8 686 271.
- The goods
The goods on which the opposition is based are the following:
Class 34: Tobacco, whether manufactured or unmanufactured; cigarettes; cigars; tobacco products; tobacco substitutes, none being for medicinal or curative purposes; matches and smokers' articles.
The contested goods are the following:
Class 34: Articles for use with tobacco; Matches; Tobacco and tobacco products (including substitutes).
Matches are identically contained in both lists of goods.
The contested tobacco and tobacco products (including substitutes) refer to the same goods as the opponent’s tobacco, whether manufactured or unmanufactured; tobacco products; tobacco substitutes, none being for medicinal or curative purposes. They are identical.
The contested articles for use with tobacco are included in the broad category of the opponent’s smokers' articles. Therefore, they are identical.
- 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.
Although tobacco products are relatively cheap articles for mass consumption, smokers are considered particularly careful and selective about the brand of cigarettes they smoke, so a higher degree of brand loyalty and attention is assumed when tobacco products are involved. Therefore, in the case of tobacco products a higher degree of similarity of signs may be required for confusion to occur. This has been confirmed by several Board of Appeal decisions (e.g. 26/02/2010, R 1562/2008-2, victory Slims (fig.) / VICTORIA et al., where it was stated that the consumers of Class 34 goods are generally very attentive and brand loyal; 25/04/2006, R 61/2005-2, GRANDUCATO / DUCADOS et al.).
Therefore, the degree of attention will vary from average (e.g. in relation to matches or cheap plain smokers articles) to high (e.g. in relation to cigarettes or expensive or infrequently purchased smokers’ requisites such as electronic cigarettes).
- The signs
Earlier trade mark
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 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.
The verbal elements in the signs are meaningful in certain territories, for example, in those countries where English is understood and for these territories there will be a certain conceptual similarity between the signs. Moreover, the understanding of the terms may have an impact on the distinctiveness of certain elements of the signs. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as United Kingdom, Ireland and Malta.
The earlier mark is a composite sign reminiscent of a label. It comprises the verbal elements ‘West’, ‘Ice’ and ‘COOL BLEND’. The word ‘West’ is depicted in bold, large letters and will be perceived as indicating, inter alia, a direction or the Western part of the world. Even though the size and central position of the element ‘West’ point to it being the dominant component of the earlier mark, the slightly stylised word ‘Ice’ is readily identifiable as a visually relevant component. The element ‘Ice’ will be understood as, inter alia, frozen water. Both verbal elements are fanciful and have an average degree of distinctiveness in relation to the goods in question.
The words ‘COOL BLEND’ of the earlier mark may be perceived as referring to the refreshing flavour of the tobacco blend, or that this tobacco blend is fashionable or very attractive. In relation to the goods this element is non-distinctive, since it is either laudatory or indicates a characteristic of some of the goods (tobacco, tobacco products, tobacco substitutes, smokers' articles), namely that they contain or can be used for that kind of tobacco blend. With respect to matches, it can be reasonably assumed that this expression will not be perceived as a badge of origin either, as these goods are closely related to tobacco products.
The background image in the earlier mark will be associated with a refrigerator door. That concept reinforces the meaning of the word ‘Ice’. The other figurative elements will be perceived as merely decorative. Therefore, the figurative elements of the earlier mark are subordinate to the verbal elements, or have a limited distinguishing power otherwise. Furthermore, it should be kept in mind that 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. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).
Like in the earlier mark, also in the contested sign the element ‘ICE’ is fanciful and enjoys an average degree of distinctiveness in relation to the goods in question. On the other hand, the element ‘SHISHA’ will be understood as hookah (a type of tobacco pipe with a long, flexible tube which draws the smoke through water contained in a bowl) or tobacco for smoking in a hookah. In relation to the goods at issue, this element is non-distinctive as it directly describes their kind or intended purpose. Being a word mark, the contested sign has no elements that can be considered visually more eye-catching than others.
Visually and aurally, the signs coincide in the element ‘ICE’ which is the only distinctive element of the contested sign and one of the two only distinctive elements of the earlier mark. They differ in the verbal element ‘West’ of the earlier mark. The signs also differ in the verbal element ‘COOL BLEND’ of the earlier mark and the word ‘SHISHA’ of the contested sign, both being non-distinctive. Finally, in relation to the visual comparison, the signs differ in the earlier mark’s figurative elements, colours and stylisation of the words, however all these features have a limited impact in the overall impression produced by the earlier mark.
Aside from the earlier mark’s element ‘West’, the signs differ in features without or with a low distinguishing power. As the signs coincide in the element ‘Ice’, contained in both signs as a distinctive element, they are visually and aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Part of both signs will be perceived as conveying the same concept, namely ‘Ice’. All the remaining elements of the signs convey differentiating concepts, however, all these elements, except for ‘WEST’ of the earlier mark, have a very limited impact on the overall impressions of the signs, or reinforce the shared concept. Therefore, the signs are conceptual similar to an 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.
- 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, despite the presence of some non-distinctive elements in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
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 covered are from the same or economically linked undertakings.
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 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).
The goods are identical, and the distinctiveness of the earlier mark is normal. The relevant public’s degree of attention varies from average to high.
Taking the above into consideration, although the signs differ in some elements, they coincide in the only distinctive element of the contested sign and one of the two distinctive elements of the earlier mark. In light of the foregoing, also taking into account the interdependence principle mentioned above, the degree of similarity between the signs at issue is sufficient for it to be considered that a substantial part of the relevant public could reasonably believe that the identical goods bearing the word mark ‘ICE SHISHA’ come from the same undertaking, or from economically linked undertakings, as those bearing the earlier composite mark, ‘COOL BLEND West Ice’, even where the public’s degree of attention is enhanced.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public in the relevant territory. 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 8 686 271. It follows that the contested trade mark must be rejected for all the contested goods.
As earlier European Union trade mark registration No 8 686 271 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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
Cecilie Leth BOCKHOFF
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.