OPPOSITION No B 2 681 735

La Aurora S.A., Parque Industrial Tamboril, Carretera Santiago Tamboril, Km. 5, Guazumal Santiago De Los Caballeros, Dominican Republic (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Shenzhen Smaco Technology Limited, 2-4F, No.1 Bldg, Xue Xianli Industrial Park, No.4 Industrial Area, Ci Tianpu, Gongming, Shenzhen, People’s Republic of China (applicant), represented by Arcade & Asociados, C/ Isabel Colbrand, 6 - 5ª planta, 28050 Madrid, Spain (professional representative).

On 12/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 681 735 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 958 201, , namely against all the goods in Class 34. The opposition is based on European Union trade mark registration No 258 483, ‘LA AURORA’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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; cigars, cigarettes; smokers’ articles; matches.

The contested goods are the following:

Class 34: Tobacco; Cigars; Cigarettes containing tobacco substitutes, not for medical purposes; Cigarettes; Cigarillos; Herbs for smoking; electronic cigarettes; Tobacco pipes; Cigarette cases; Cigarette holders.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

The contested tobacco includes, as a broader category, the opponent’s cigarettes. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Cigars; cigarettes; cigarillos are identically contained in both lists of goods (including synonyms).

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

The contested tobacco pipes; cigarette cases; cigarette holders are included in the broad category of the opponent’s smokers’ articles. Therefore, they are identical.

The contested cigarettes containing tobacco substitutes, not for medical purposes are included in the broad category of the opponent’s cigarettes. Therefore, they are identical.

The contested electronic cigarettes are similar to the opponent’s cigarettes because they have the same purpose and method of use, they are in competition and they have the same end users.

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 assumed 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. 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.).

3. The signs

LA AURORA
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 earlier mark is the phrase ‘LA AURORA’ and the contested sign is the word ‘Auro’ depicted in stylised title case letters. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics that the mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether word marks are depicted in lower or upper case letters.

The words ‘LA AURORA’ of the earlier mark will be understood as ‘the dawn’ by the Portuguese- and Spanish-speaking parts of the public. For the English-speaking part of the public, the element ‘AURORA’ will be understood as ‘a natural electrical phenomenon characterized by the appearance of streamers of reddish or greenish light in the sky, especially near the northern or southern magnetic pole’ (information extracted from Oxford Dictionaries on 30/05/2018 at http://www.oxforddictionaries.com/). For the German-speaking part of the public, ‘AURORA’ will be understood as ‘light from dawn’ or as the name of a Roman goddess (information extracted from Duden dictionary on 30/05/2018 at https://www.duden.de/). As it has no meaning for the relevant goods in any of the abovementioned languages, ‘(LA) AURORA’ is distinctive.

For the rest of the relevant public, the elements ‘LA AURORA’ have no meaning and are, therefore, distinctive.

The element ‘Auro’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

Visually, the signs coincide in the four letters ‘AURO’ notwithstanding the stylised font used in the contested sign. However, the earlier mark is composed of two distinct words, whereas the contested sign is a single word of four letters. The signs differ in the first element, ‘LA’, and in the final letters, ‘RA’, of the earlier mark, which have no counterparts in the contested sign.

Taking into account the fact that the contested sign is rather short, it is considered that the differences between the signs introduced by these additional letters, ‘LA’ and ‘RA’, of the earlier mark and the differences in the lengths of the words will not go unnoticed by the relevant consumers when they perceive the marks visually.

Considering the above, the visual impression created by the contested sign has clearly perceptible differences from that created by the earlier mark and therefore the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘AURO’, present identically in both signs. The pronunciation differs in the sound of the letters ‘LA’ and ‘RA’ of the earlier mark, which have no counterparts in the contested sign. The earlier mark’s pronunciation is much longer due to the higher number of syllables contained in the words ‘LA AURORA’ than in the element ‘Auro’ of the contested sign. Because the signs are fairly short, the additional letters, ‘LA’ and ‘RA’, in the earlier mark, and the additional syllables that result, create a noticeable aural difference between the earlier mark and the contested sign.

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

Conceptually, although the Portuguese- and Spanish-speaking parts of the public will perceive the meaning of the earlier mark and the English- and German-speaking parts of the public will perceive the meaning of the element ‘AURORA’, as explained above, the other sign has no meaning in those territories. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For the rest of the relevant public, neither of the signs has a meaning. 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.

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.

According to the opponent, the earlier trade mark has a reputation in the European Union in connection with some of the goods for which it is registered, namely cigars. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• Attachment 1: news articles on the La Aurora company and its tobacco products and plans to expand the business in Europe:

• one article published on 11/11/2016 in the Spanish edition of the magazine ‘Forbes’ entitled ‘A business worth millions born among tobacco leaves’ on the La Aurora company and its financial results;

• one article published on 18/09/2015 on the website www.eleconomista.es of the Spanish newspaper ‘El economista’ entitled ‘Leader in Dominican cigars forms alliance with Davidoff to compete with Tabacalera’;

• several press articles and reviews on La Aurora products published between 2010 and 2015 in the specialist magazine ‘La Boutique del Fumador’;

• several press articles and advertisements on La Aurora products published in the specialist magazine ‘La Cava de Cigarros’ between 2014 and 2016.

• Attachment 2: articles on awards won by the La Aurora brand and La Aurora goods published on the opponent’s website, http://www.laaurora.com.do/. Among them are the following:

• ‘La Aurora, one more time selected in Top Brands’, published on 26/05/2016;

• press clipping entitled ‘La Aurora wins two prizes in the DCA’, in which reference is made to two awards received by La Aurora in December 2015, ‘Tobacco Personality of the Year’ and ‘Best Factory Tour’, in a contest organised by the magazine the ‘Dominican Cigar Review’ on the basis of votes cast by consumers;

• information on a certificate of excellence awarded by Trip Advisor to La Aurora in 2015;

• Press clipping relating to an award given to the cigar ‘Untamed Robusto’ in 2014 by the specialist magazine ‘The Dominican Cigar Review’.

• Attachment 3: articles published on the opponent’s website http://www.laaurora.com.do/ to illustrate the constant efforts made by La Aurora in the renewal and promotion of its brand image.

• Attachment 4: catalogue of La Aurora cigar products distributed throughout the United Kingdom in 2014, published on www.toimports.co.uk.

• Attachment 5: two images of advertisements for La Aurora products in the European Union, undated and with no specification of the relevant territory but with text in English.

• Attachment 6: copies of some websites of European Union distributors of La Aurora branded products, undated:

• Tors Imports Limited (United Kingdom), http://torimports.co.uk/products/Cigars/dominican-republic/la-aurora.html;

• TTI Tobacco Trading International (Bulgaria);

• Alles André (Germany).

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use on the market in Spain, but not in the rest of the relevant territory.

Reputation requires recognition of the mark by a significant part of the relevant public. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22).

Despite showing some use of the trade mark in Spain, the United Kingdom, Germany and Bulgaria, contrary to the opponent’s assertions, there is no clear evidence that the earlier mark has acquired a high degree of distinctiveness in any of the European Union Member States other than Spain.

The evidence submitted does not allow the Opposition Division to deduce any solid conclusion in relation to the trade mark’s recognition by the consumers in the European Union other than in Spain. In particular, the advertising material and information leaflets allow conclusions to be drawn not on consumer perception but only on the use made of the mark. The opponent has submitted information about awards, but these recognitions relate only to the Spanish territory, and the rest of the documents do not give any direct insight into the recognition of the earlier trade mark among the consumers in all European Union countries.

There is, therefore, no evidence that would establish the recognition of the mark by all the relevant public. In this regard, the opponent did not submit any other documents, such as surveys regarding the mark’s recognition, or statements from professional associations able to show that the mark is known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has acquired a high degree of distinctiveness through its use in all the European market. Only in Spain can a high degree of distinctiveness be assumed.

It must be recalled that, as follows from Article 95(1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the facts, evidence and arguments submitted by the parties. Therefore, in assessing whether the earlier mark enjoys reputation/enhanced distinctiveness through use, the Office may neither take into account facts known to it as a result of its own private knowledge of the market, nor conduct an ex officio investigation, but should base its findings exclusively on the information and evidence submitted by the opponent. The evidence must be clear, convincing and ultimately reveal facts necessary to safely conclude that the mark is known by a significant part of the public (06/11/2014, R 0437/2014-1, SALSA/SA SALSA (fig. mark) et al.).

Consequently, the examination will proceed on the assumption that the earlier mark has enhanced distinctiveness in Spain.

The assessment of the distinctiveness of the earlier mark in the rest of European Union 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.

5. Global assessment, other arguments and conclusion

The contested goods are assumed to be identical to the opponent’s goods, and target the public at large, whose degree of attention is high. Furthermore, the Opposition Division has assumed that the earlier mark has an enhanced degree of distinctiveness in Spain and an average degree of distinctiveness in the rest of the relevant territory.

The signs under comparison are visually and aurally similar to a low degree. Conceptually, for the Portuguese-, Spanish-, English- and German-speaking parts of the public the signs are not conceptually similar, and for the rest of the relevant public the conceptual aspect has no influence on the assessment of the similarity of the signs.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. The signs have in common only four letters out of eight in the earlier mark, and this commonality is not at the beginning of the earlier mark, but in the middle.

The signs differ in their lengths, constituent elements and structures, and for part of the public the signs are not conceptually similar.

As a consequence, it is reasonable to conclude that it is unlikely that the relevant public will assume that the signs in question, just because they happen to have four letters in common, designate goods of the same origin.

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).

Even on the premise that the earlier mark has an enhanced degree of distinctiveness in Spain, and in spite of the commonality in the four letters ‘AURO’, the conceptual differences are sufficient to exclude any likelihood of confusion between the signs, also considering that, in the present case, the public has a high degree of attention.

The opponent refers to previous decisions of the Office to support its arguments, namely a cancellation decision, 20/07/2017, 12 419 C, concerning the marks ‘VEGA’ and , an opposition decision, 29/02/2000, B 26 304, concerning the marks ‘CYCLE’ and ‘CYCLAX’, and an opposition decision, 09/12/2015, B 2 017 864, concerning the marks ‘RACE’ and ‘RAFE’. 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 the present case, the previous cases referred to by the opponent are not relevant to the present proceedings because the signs in those cases are of similar lengths, have similar structures and have identical beginnings.

Considering all the above, even assuming that the goods are identical and that in Spain the earlier mark has a high degree of distinctiveness, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

The Opposition Division has concluded that the opponent failed to prove that its trade mark has acquired a high degree of distinctiveness through its use in all the European market, and that only in Spain could a high degree of distinctiveness be assumed.

The opponent has submitted information about some awards, which demonstrate some degree of enhanced distinctiveness, but the rest of the evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

According to Article 109(1) EUTMR, 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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Janja FELC

Loreto URRACA LUQUE

Jessica LEWIS

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.