OPPOSITION No B 2 227 745

Japan Tobacco Inc., 2-2-1 Toranomon, Minato-ku, Tokyo, Japan (opponent), represented by Lynde & Associés, 5, rue Murillo, 75008 Paris, France (professional representative)

a g a i n s t

British American Tobacco (Brands) Inc., 2711 Centerville Road, Suite 300, Wilmington, Delaware 19808, United States of America (applicant), represented by Hogan Lovells, Avenida Maisonnave, 22, 03003 Alicante, Spain (professional representative).

On 24/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 227 745 is upheld for all the contested goods.

2. European Union trade mark application No 11 709 417 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 11 709 417. The opposition is based on international trade mark registration designating the European Union No 1 141 730. 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 34: Tobacco, raw or manufactured; smoking tobacco, pipe tobacco, rolling tobacco, chewing tobacco; cigarettes, cigars, cigarillos; snuff; smokers’ requisites included in this class; matches.

The contested goods are the following:

Class 34: Cigarettes; tobacco; tobacco products; lighters; matches; smokers’ articles.

The contested cigarettes; tobacco; matches; smokers’ articles are identically contained in both lists of goods, despite the slightly different wording.

The contested tobacco products include, as a broader category, the opponent’s smoking tobacco. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested lighters are included in the broad category of the opponent’s smokers’ requisites included in this class. Therefore, they are identical.

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. Although the goods in question are relatively inexpensive 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.

3. The signs

STAY TRUE	ALWAYS TRUE
Earlier trade mark	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 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, and contrary to the applicant’s argument regarding the relevant territory, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public, i.e. on the part of the relevant public that understands the meanings of both signs. In this regard, it should be pointed out that, although the Member States where English is an official language are Ireland, Malta and the United Kigdom, the Court has confirmed that there is at least a basic understanding of English on the part of the general public in the Scandinavian countries, the Netherlands and Finland (26/11/2008, T‑435/07, New Look, EU:T:2008:534, § 23).

The signs under comparison are word marks. The earlier mark consists of the words ‘STAY TRUE’, whereas the contested sign is composed of the words ‘ALWAYS TRUE’.

Each of the signs will be perceived as a whole as a meaningful expression and, therefore, neither of them has any element that could be considered clearly more distinctive than other elements.

Neither of the signs has any elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the word ‘TRUE’, which is the second word in each sign. Furthermore, they coincide in three letters of their first words, namely in the sequence of the letters ‘AY’ and in the letter ‘S’, albeit in different positions. In addition, both signs consist of the same number of verbal components, specifically two words. However, the signs differ in the remaining letters of their first words, namely ‘*T**’ in the earlier mark and ‘ALW***’ in the contested sign.

With regard to the differences in the first words of the signs, the applicant emphasises the importance of the beginnings of conflicting signs for the consumer’s perception of the signs. Even though the applicant was correct in stating that there is an established legal practice according to which it is considered that consumers pay more attention to the beginning of a mark, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2013:40, § 52).

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛TRUE’, present identically in both signs. The pronunciation also coincides in the sound of the sequence of letters ‘AY’ as well as in the sound of the letter ‘S’, present in the first word of each sign. However, the pronunciation differs in the sounds of the remaining letters of the signs’ first words, namely in the sound of the letter ‘T’ in the earlier mark and in the sound of the letters ‘ALW’ in the contested sign.

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

Conceptually, the relevant English-speaking public might perceive the earlier mark, ‘STAY TRUE’, as meaning ‘remain loyal’ and the contested sign, ‘ALWAYS TRUE’, as meaning ‘continually loyal’. The parties dispute whether or not the public will perceive these meanings in the expressions, since several definitions of the words used in the signs are given in the dictionaries, and their meanings depend on their use and the words that they are used with. However, as the applicant correctly argues, a conceptual comparison of meaningful expressions must be carried out in relation to the meanings of the expressions as a whole.

The applicant argues that the signs are conceptually different due to their first words. However, taking into account the combinations of words of which the signs consist and the relevant goods, the expressions ‘ALWAYS TRUE’ and ‘STAY TRUE’ may both be perceived as expressing the idea of continuous and everlasting loyalty. In other words, although the words used in the signs, taken individually, could have several meanings, the specific expressions created by combining these words may both be perceived as conveying the general idea of permanent loyalty to something or someone. Therefore, as the signs could be associated with the same meaning, they are conceptually highly similar from the perspective of the relevant English‑speaking public.

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. However, the opponent asserts that the earlier mark has enhanced distinctiveness per se because it is unusual. First, it is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. However, this degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use or because it is highly original, unusual or unique (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.)/BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49, last alternative). It should, however, be recalled that a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (order of 16/05/2013, C‑379/12 P, H/Eich, EU:C:2013:317, § 71). Since the opponent did not submit any evidence of the enhanced distinctiveness of the earlier mark, this argument must, therefore, be set aside.

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 unequivocal and clear meaning for any of the goods in question from the perspective of the English‑speaking public in the relevant territory. As stated above, the expression ‘STAY TRUE’ would most probably be associated with the general idea of remaining loyal to something or someone. In any case, it triggers in the mind of the relevant public a cognitive process or requires an interpretative effort. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods are identical and the earlier mark enjoys a normal degree of distinctiveness in relation to the relevant goods.

The signs are visually and aurally similar to an average degree, since they are both word marks consisting of two English words, coinciding in their second word, namely ‘TRUE’, and having some letters of their first words in common, namely the sequence of letters ‘AY’ and the letter ‘S’. Conceptually, the signs are highly similar, since they have the same structure, in which the English word ‘TRUE’ is combined with a meaningful word, ‘STAY’ in the earlier mark and ‘ALWAYS’ in the contested sign, resulting in two expressions evoking the general idea of continuous loyalty to something or someone.

The differences between the conflicting signs lie only in some letters of their first words, namely ‘*T**’ in the earlier mark and ‘ALW***’ in the contested sign.

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). This is particularly relevant in the present case, as the conflicting goods are identical.

Furthermore, the fact that the relevant public may have a higher than average degree of attention when acquiring the contested goods does not mean that the purchaser will always have the opportunity to compare the marks side by side. Accordingly, some degree of imperfect recollection of the absent mark at the time of acquisition cannot be totally ruled out.

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. In the present case, the facts that the signs in dispute have the same structure and that they consist of expressions conveying the same idea result in a likelihood of confusion, which includes a likelihood of association, even for consumers displaying a higher than average degree of attention.

The applicant refers to previous decisions of the Office 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).

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.

In any event, the previous case (18/09/2013, R 1462/2012-G, ULTIMATE GREEN/ ULTIMATE NUTRITION) referred to by the applicant is not relevant to the present proceedings. In that case, there was no likelihood of confusion because it was considered that the coinciding element, ‘ULTIMATE’, was weak and therefore non‑distinctive in relation to the relevant goods, and, in addition, the other words of the signs had different meanings. However, in the present case, the likelihood of confusion between the signs results not from the mere presence of the word ‘TRUE’ considered individually, but from the conjunction of this word with another English word, such that each of the signs, taken as a whole, evokes the same idea.

The parties refer to previous national decisions to support their arguments. However, 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 national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

The applicant refers to the decision issued on 04/03/2014 by the Spanish Patents and Trade Marks Office, in which it was found that there was no likelihood of confusion between the same signs, ‘STAY TRUE’ and ‘ALWAYS TRUE’, for goods in Class 34, since it was considered that, for the Spanish consumer ‘there exist between the signs sufficient differences in overall nature, name and concept’. In reply, the opponent refers to the recent decision issued on 26/05/2016 by the French Trade Marks Office, regarding the same signs, ‘STAY TRUE’ and ‘ALWAYS TRUE’, for goods in Class 34, in which it was considered that these English words would be easily understood by the average French consumer having an average level of education and, therefore, it was found that there was a likelihood of confusion between the signs.

In view of the foregoing, the cases referred to by the parties are not relevant to the present proceedings, even though they concern the same signs and the same goods, because they take into account the perception of the Spanish or French public, whereas in the present case account must be taken of the English-speaking part of the relevant public.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the English-speaking part of the relevant 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 international trade mark registration designating the European Union No 1 141 730. It follows that the contested sign must be rejected for all the contested goods.

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 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

Martin MITURA

Marta GARCÍA COLLADO

Saida CRABBE

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.