OPPOSITION No B 2 592 817

Metco (Middle East Tobacco Co.) Limited, 1, Dositheos Street, Soleas Building, 3rd Floor, 1071 Nicosia, Cyprus (opponent), represented by Elias Marine Consultants Ltd., Platinum Crest, 18 Loizou Askani Street, 3110 Limassol, Cyprus (professional representative)

a g a i n s t

Shenzhen SaiHaoDa Science and Technology Co., Ltd., Room 1209, Meilan Business Center, Xixiang Avenue, Xixiang Street, Bao’an District, Shenzhen City, Guangdong Province, People’s Republic of China (applicant), represented by Teodoru I.P. SRL, 12 Nerva Traian Street, Building M37, 1st Entrance, 1st Floor, Suite 1, District 3, 031176 Bucharest, Romania (professional representative).

On 08/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 592 817 is upheld for all the contested goods.

2. European Union trade mark application No 14 435 424 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 14 435 424. The opposition is based on, inter alia, European Union trade mark registration No 10 015 691. 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 10 015 691.

1. The goods

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

Class 34: Tobacco; Smokers’ articles; Matches; Cigarettes; Cigars; Snuff.

The list of goods was amended as above due to the opponent’s declaration in accordance with Article 28(8) EUTMR received by the office on 29/03/2016.

The contested goods are the following:

Class 34: Tobacco; Electronic cigarettes; Pipe tobacco; Tobacco pouches; Cigarette tips; Matches; Lighters for smokers; Cigarette paper; Herbs for smoking; Cigars.

Contested goods in Class 34

Tobacco; matches and cigars are identically contained in both lists of goods.

The contested electronic cigarettes; tobacco pouches; cigarette tips; lighters for smokers; cigarette paper; herbs for smoking are included in the broad category of the opponent’s smokers’ articles. Therefore, they are identical.

The contested pipe tobacco is included in the broad category of the opponent’s tobacco. 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.

The goods at issue covered by Class 34 target purchasers of tobacco products. These consumers are generally very attentive and brand loyal. 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. This has been confirmed by several Board decisions: 26/02/2010, R 1562/2008-2, victory slims, in which it was stated that the consumers of Class 34 goods are generally very attentive and brand loyal; and 25/04/2006, R 0061/2005-2, Granducato.

3. The signs

AMERICAN EAGLE
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, 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.

The earlier mark is the word mark ‘AMERICAN EAGLE’. The contested sign is a figurative mark consisting of the words ‘GOLDEN EAGLE’, above which there is a depiction of a red eagle.

The relevant English-speaking public will understand ‘American’ in the earlier mark as referring to the United States of America or the American continent and, therefore, as an allusive indication of geographical origin. Therefore, the distinctiveness of this element is considered weak.

The element ‘GOLDEN’ in the contested sign will be understood as ‘of the colour of gold; that shines like gold’ (Oxford English Dictionary, https://en.oxforddictionaries.com/definition/us/golden) by the English-speaking public. Therefore, for most of the goods at issue, or at least the goods consisting of or containing tobacco, the element ‘golden’ may be perceived as suggesting that these goods have a golden colour. In respect of all the goods, the same English-speaking public may perceive the element ‘golden’ as alluding to the positive qualities of the goods, and it is, thus, an element with little or no distinctiveness (see 30/03/2016, R 1805/2015-2, GOLDEN GRAPE/GOLDEN GATE, § 33).

Therefore, in both marks, the word ‘EAGLE’ is the most distinctive verbal element and the relevant public will pay more attention to this element than to the other elements in the marks. The meaning of ‘EAGLE’ is reinforced in the contested sign by the distinctive figurative element depicting an eagle.

Neither mark contains elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs are similar to the extent that they coincide in the distinctive word ‘EAGLE’, while they differ in the weak element ‘AMERICAN’ of the earlier mark, and the weak element ‘GOLDEN’ and the depiction of a red eagle, which reinforces the verbal element ‘EAGLE’, of the contested sign.

In addition, 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the syllables /EA/GLE/, present identically in both signs. The pronunciation differs in the syllables /A/ME/RI/CAN/ of the earlier mark and /GOL/DEN/ of the contested sign; however, these elements have a weak degree of distinctiveness, as mentioned above.

Therefore, the signs are aurally similar to a high degree.

Conceptually, the public in the relevant territory will associate the distinctive word ‘EAGLE’ in both signs with a kind of bird. The word ‘AMERICAN’ of the earlier mark and the word ‘GOLDEN’ of the contested sign are adjectives, which qualify the coinciding word ‘EAGLE’ and are considered weak. In addition, the depiction of an eagle in the contested sign reinforces the abovementioned perception of the word ‘EAGLE’, which both marks have in common.

As the signs will be associated by the relevant public with similar meanings, on account of the element ‘EAGLE’, the signs are conceptually similar to a high 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.

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 a weak element as described in section c) of this decision.

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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C‑342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, ‘Sabèl’, EU:C:1997:528, § 24; 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.

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).

The relevant public is the public at large and the degree of attention is considered high.

The earlier mark has a normal degree of distinctiveness in relation to the relevant goods.

The signs are visually, aurally and conceptually similar to a high degree due to the word ‘EAGLE’, which the signs have in common and which constitutes the most distinctive verbal element of the earlier trade mark and the contested sign. In addition, the concept associated with this word is reinforced by the depiction of an eagle in the contested sign.

Although it is true that the initial part of a word mark is liable to attract consumers’ attention more than the following parts (see, to that effect, 17/03/2004, T‑183/02 & T‑184/02, Mundicor, EU:T:2004:79, § 81; and 16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 64 and 65), the differences in the weak elements at the beginnings of the earlier mark and the contested sign are not enough to counteract the similarity arising from the presence, in both marks, of the distinctive word ‘EAGLE’.

Furthermore, a likelihood of confusion includes a likelihood of association with the earlier trade mark. In the present case, it is conceivable that the relevant consumer will perceive the marks as variations of each other, configured in different ways depending on the type of goods they designate. It is, therefore, conceivable that the target public may regard the goods designated by the trade mark applied for as belonging to two ranges of goods coming, nonetheless, from the same undertaking.

Taking into account the abovementioned high degree of similarity between the signs in question and the identity between the goods, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public, even taking into account the high degree of attention. 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 10 015 691. It follows that the contested sign must be rejected for all the contested goods.

As earlier European Union trade mark registration No 10 015 691 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).

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

Gazda FERENC

Bekir GÜVEN

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.