OPPOSITION No B 2 482 167

Manufacture de Tabacs Heintz van Landewyck Sàrl, 31, rue de Hollerich, 1741 Luxembourg, Luxemburg (opponent), represented by Office Freylinger S.A., 234, route d'Arlon B.P. 48, 8001 Strassen, Luxemburg (professional representative)

a g a i n s t

AX Technology Sp. z o.o. Spólka komandytowa, ul. Modra 62, 71220 Szczecin, Poland (applicant), represented by Kancelaria Patentowa Tadeusz Kachnic, ul. Nowowiejska 41, 71-219 Bezrzecze, Poland (professional representative).

On 07/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 482 167 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 (in Classes 6, 19 and 34) of Community trade mark application No 13 210 505 (word mark:
“ecosmoker”). The opposition is based on Benelux trade mark registration No 320 500 (figurative mark:
“ ”). The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 in Class 34 on which the opposition is based are the following:

Raw tobacco; manufactured tobacco.

The contested goods in Classes 6, 19 and 34 are the following:

Class 6: Smoking booths of metal.

Class 19: Smoking booths, not of metal.

Class 34: Smoking urns; Ashtrays; Matches.

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Classes 6 and 19

The contested goods have different natures and purposes. They are offered by different companies to consumers with different needs. Furthermore, they are neither complementary to each other nor in competition with each other. The distribution channels and the methods of use are also different. Contrary to the opinion of the opponent, the fact that the goods refer to smoking is not sufficient to find them similar if the other criteria indicate that they are clearly different from each other, which is the case here. Consumers would not think that the goods come from the same or economically linked undertakings. Therefore, they are dissimilar.

Contested goods in Class 34

All contested goods have the same distribution channels and public as the opponent’s manufactured tobacco. Therefore, they are similar to a low degree.

2. The signs

	ecosmoker
Earlier trade mark	Contested sign

The relevant territory is Benelux.

Visually, the earlier trade mark comprises both word and figurative elements, consisting of a label with a thick vertical red line on its left and right borders and inner parallel red lines with a pattern on them. In the upper part of the label, the words ‘Tabac choisi de coupe fine pour la cigarette’ appear in upper case letters. In the lower part of the label is the name ‘Heintz van Landewyck’, also in upper case letters. Between the words ‘van’ and ‘Landewyck’, a lighthouse is depicted. The contested sign is a word mark, which is protected for all its different spellings. The element ‘smoker’ has no counterpart in the earlier trade mark. The only element that the signs have in common, the letters ‘ECO’, are depicted in a red bold typeface in the earlier trade mark, different to that of the contested sign. Therefore, there is only a low degree of visual similarity.

Aurally, the figurative elements will not be taken into account. The word elements ‘Tabac choisi de coupe fine pour la cigarette’ and ‘Heintz van Landewyck’ occur only in the earlier trade mark, which, as a result, sounds much longer than the contested sign. The element ‘smoker’ has no counterpart in the earlier trade mark and will be pronounced only in the contested sign. The only element that the signs have in common, the letters ‘eco’, cannot compensate for the rather different overall aural impressions of the signs. Therefore, there is only a low degree of aural similarity.

Conceptually, the letters that the signs have in common, ‘eco’, will be recognised by consumers as the short form of ‘ecological’ or ‘economical’. The signs are, to that extent, conceptually similar. ‘Smoker’ is also comprehensible as a basic English word meaning ‘a person who smokes tobacco regularly’ (Oxford Dictionary). In this respect, the signs are not conceptually similar. This also applies to the meaning of the contested sign in its entirety, as a person who smokes ecologically or takes ecological aspects into account when smoking. The part of the Benelux public that understands French will understand the word sequence ‘Tabac choisi de coupe fine pour la cigarette’ as ‘Fine cut tobacco chosen for the cigarettes’. For this part of the public, there are conceptual differences. ‘Heintz van Landewyck’ will be understood as a first and last name. The signs also differ in the depiction of a lighthouse in the earlier trade mark, which has no counterpart in the contested sign.

Taking into account the abovementioned visual, aural and conceptual coincidences and differences, it is considered that the signs under comparison are similar to a below average degree.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The element the signs have in common, ‘eco’, will be associated with ‘ecological’ or ‘economical’ (see conceptual comparison). Bearing in mind that the relevant goods refer to smoking or tobacco, it is considered that this element is weak for all the goods, as a reference to a desirable quality. The public understands the meaning of this weak element and will not pay as much attention to it as to the other, more distinctive, elements of the marks. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The word sequence ‘Tabac choisi de coupe fine pour la cigarette’ of the earlier mark will be associated with ‘Fine cut tobacco chosen for the cigarettes’ (see conceptual comparison). Bearing in mind that the relevant goods refer to smoking or tobacco, it is considered that this element is weak for all the goods, as a reference to a desirable quality. The part of the relevant public that understands the meaning of this weak word sequence will not pay as much attention to it as to the other, more distinctive, elements of the mark. Consequently, the impact of this weak word sequence is limited when assessing the likelihood of confusion between the marks at issue.

The contested sign has no element which could be considered more dominant (visually eye catching) than other elements.

The element ‘ECO’ in the earlier mark is the dominant element as it is the most eye catching, because of its size and position in the middle of the sign.

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.

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 weak elements in the mark as stated above in section c) of this decision.

5. 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 similar to a low degree are directed at the public at large. The degree of attention is average.

6. Global assessment, other arguments and conclusion

The goods are partly similar to a low degree and partly dissimilar.

According to Article 8(1)(b) CTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are partly dissimilar, one of the necessary conditions of Article 8(1)(b) CTMR is not fulfilled, and the opposition must be rejected.

The signs are similar only to a below average degree (see above). The overall impressions of the signs are rather different. The only element the signs have in common, ‘eco’, is weak.

Taking into account the below average degree of similarity of the signs, their different overall impressions, the fact that the only element in common, ‘eco’, is weak, the no more than normal degree of distinctiveness of the earlier trade mark, the average degree of attention of the consumers and the no more than low degree of similarity of the goods, there is no likelihood of confusion. Even though the element the signs have in common, ‘eco’, is the dominant element of the earlier trade mark, this cannot change the outcome, because this element is weak.

Contrary to the arguments of the opponent, the differences between the signs are sufficient to avoid a likelihood of confusion.

Therefore, the opposition has to be rejected as not well founded under Article 8(1)(b) CTMR.

COSTS

According to Article 85(1) CTMR, 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 (7)(d)(ii) CTMIR, 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

Beatrix STELTER

Peter QUAY

Judith NÉMETH

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.