OPPOSITION No B 2 908 781

International Masis Tabak LLC, 10 Gortsaranayin str., Industrial zone, Masis, Ararat region, 0802, Armenia (opponent), represented by Casalonga Alicante, S.L., Avenida Maisonnave, 41-6C, 03003 Alicante, Spain (professional representative)

a g a i n s t

Khairat Al-Manafie Company, Zuqaq al-Balat Ahmed tabarra street Bedon building Second floor, Beirut, Lebanon (applicant), represented by Bogdan Alecu, Brasov, strada Paducelului 18, 600012 Brasov, Romania (professional representative).

On 04/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 908 781 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. 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 all the goods of the mark, namely, goods in Class 34 of European Union trade mark application No 16 322 901, ‘Masis’. After a restriction of the basis, the opposition is based on the following earlier rights, all protecting goods in Class 34:

- international trade mark registration No 866 746 ‘Noy International Masis Tabak’ , designating Bulgaria, Estonia and Italy,

- international trade mark registration No 863 552 ‘Gloria International Masis Tabak IMT’, , designating Estonia and Italy,

- international trade mark registration No 864 053 ‘Ararat International Masis Tabak IMT’, , designating Austria, Benelux, Cyprus, Denmark, Germany, Hungary, Ireland, Latvia, Lithuania, Poland, Portugal, Slovakia, Spain, United Kingdom and Romania,

- the non-registered trade mark used in the course of trade in Germany, ‘Masis’ ‘in relation to tobacco and tobacco products’,

- the Company name used in the course of trade in Germany ‘International Masis Tabak LLC’, for the manufacture and commercialization of tobacco and tobacco products.

The opponent invoked Article 8(1)(b) and Article 8(4) 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 signs

Mark Nº 1: ‘

	MASIS
Earlier trade mark	Contested sign

The relevant territory is Bulgaria, Estonia and Italy.

Mark Nº 2:

	MASIS
Earlier trade mark	Contested sign

The relevant territory is Estonia and Italy.

Mark Nº 3:

	MASIS
Earlier trade mark	Contested sign

The relevant territory is Austria, Benelux, Cyprus, Denmark, Germany, Hungary, Ireland, Latvia, Lithuania, Poland, Portugal, Slovakia, Spain, United Kingdom and Romania.

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 contested sign is the word ‘MASIS’.

The earlier marks are figurative complex signs consisting of packets of cigarettes and contain figurative elements and several phrases, some of which are informative indications, such as ‘American blend’ or ’20 filter cigarettes’. Other elements are also barely perceptible, such as the phrases written in vertical. As these informative or negligible elements are likely to be disregarded by the relevant public, they will not be taken into consideration for the purposes of comparison.

Furthermore, in the certificate of earlier mark Nº 1 there is an annotation on a disclaimer stating that ’except for the word ”NOY”, the expression “INTERNATIONAL MASIS TOBAK” are considered to be as non-protected elements’.

In the certificate of earlier mark Nº 2 there is an annotation on a disclaimer stating that ’except for the word ”GLORIA”, the expression ‘INTERNATIONAL MASIS TOBAK’ and the abbreviation ”IMT” are considered to be as non-protected elements’.

In the certificate of earlier mark Nº 3 there is an annotation on a disclaimer stating that ’except for the expression “INTERNATIONAL MASIS TOBAK” and the abbreviation ”IMT”, all other words are considered to be as non-protected elements’.

Disclaimers in marks registered by the Office before the entry into force of the Amending Regulation and in earlier national marks will still be binding on the Office and must be taken into account even if the element might appear distinctive when analysed independently. This applies by analogy to international registrations.

The effect of a disclaimer is that the proprietor is prevented from successfully invoking rights in the disclaimed element. Therefore, similarity between two signs cannot be induced or increased because of coincidence or similarity in the disclaimed element (decision of 06/10/2008, R 21/2008-4, AUTENTICO JABUGO / FLOR SIERRA DE JABUGO JABUGO (fig.) et al., § 17, where JABUGO was disclaimed).

Therefore, in the present case, earlier marks Nº 1 and Nº 2 are prevented from invoking the wording ‘International Masis Tabak’. Consequently, the only expression containing the only word in the contested sign, ‘MASIS’, must be considered to be not a part of these earlier trade marks as such.

As earlier marks Nº 1 and Nº 2 do not coincide in any element with the contested sign, the Opposition Division concludes that the signs are dissimilar.

Following the statement in the disclaimer of earlier mark Nº 3, the protected elements in the sign are ‘International Masis Tobak IMT’, but due to their size and position, they are not noticeable at first sight and are likely to be disregarded by the relevant public.

Therefore, the Opposition Division concludes that earlier mark Nº 3 is also dissimilar to the contested sign.

It remains necessary to consider the opponent’s argument that it is the proprietor of other earlier trade marks, all characterised by the presence of the same word component, ‘Masis’ that constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark, which contains the same word component as the earlier marks, will be led to believe that the goods identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T 194/03, Bainbridge, EU:T:2006:65.

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics that give grounds for regarding them as forming part of a single ‘series’ or ‘family’, a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

On 12/09/2017 the opponent filed the following evidence:

• Five pictures of tobacco (raw and packets of cigarettes). Only in two pictures, the word ‘MASIS’ is visible. There are no indications as to the date or the place of use.

• Certificates of trade marks registered in 1997, 1998, 2004, 2005 and 2015 in Armenia with an English translation thereof.

• Certificates of trade marks registered in 2014 in Iran and in 2016 in Jordan with an English translation thereof.

• Certificates of four international registrations of 2005 and 2012 not claimed as basis of the current opposition.

• An article from Wikipedia on the Armenian diaspora.

• Screen shots from internet shops such as ‘ebay’ or ‘SAS Supermarket’ with ‘MASIS’ cigarettes on offer.

• Pictures of a stand at a trade fair Grandtabac. There are no indications as to the signs, to the date, nor the place of use.

• Pictures of packets of cigarettes, some of them bearing the trade mark ‘MASIS’. There are no indications as to the date or the place of use.

• Correspondence and one invoice relating to the booking of a stand at the Intertabac international fair held in Dortmund, Germany in September 2016.

• Invoice of 24/08/2016 to a client in Essen, Germany for the selling of several packs of cigarettes including ‘MASIS’.

• A copy of a page in a book reproducing four pictures of products in bottles and jars and packets of cigarettes. It is impossible to see if ‘MASIS’ is one of them and there are no indications as to the date or the place of use.

The only documents referring to the use of ‘MASIS’ are some pictures. However, they do not contain indications as to the date, nor the place of use. The rest of the evidence refers to countries outside the European Union, such as the registrations of trade marks in Iran and Jordan, or are not related to any use, such as the article in Wikipedia.

Therefore, in the present case, the opponent failed to prove that it uses a family of ‘MASIS’ marks.

2. Conclusion

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

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

The opposition is based on the non-registered trade mark used in the course of trade in Germany, ‘Masis’ and on the Company name used in the course of trade in Gemany ‘International Masis Tabak LLC’.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by precluding an earlier right that is not sufficiently definite - that is to say, important and significant in the course of trade - from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

In the present case, the contested trade mark was filed on 07/02/2017. Therefore, the opponent was required to prove that the signs on which the opposition is based was used in the course of trade of more than local significance in Germany prior to that date. The evidence must also show that the opponent’s signs have been used in the course of trade for:

- tobacco and tobacco products the non-registered trade mark used in the course of trade in Germany, ‘Masis’,

- manufacture and commercialization of tobacco and tobacco products the Company name used in the course of trade in Germany ‘International Masis Tabak LLC’.

The evidence submitted on 12/09/2017 to prove use of the earlier right is the same than the one submitted to prove the existence of a family of marks, which has been listed above.

The only documents referring to the relevant territory, namely, Germany, are the ones relating to the booking at an international fair and to the selling of ‘MASIS’ cigarettes to a client in Essen. The rest of the documents bear no indication as to the place of use, such as the pictures, or refer to other countries, such as the registrations in Iran and Jordan, or are not related to any use, such as the article in Wikipedia.

Most of the documents do not contain any indication concerning the time of use. Only the two invoices relating to the booking at an international fair and to the selling of ‘MASIS’ cigarettes, dated in 2016 can be taken into account.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The two invoices referred above, do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use, as the participation at an international fair and one act of selling can be considered only occasional acts of use.

Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of use of the earlier rights.

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145 and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier rights were genuinely used in the relevant territory during the relevant period of time.

2. Conclusion

Considering all the above, the Opposition Division finds the opposition is not well founded on the basis of the opponent’s non-registered trade mark used in the course of trade in Germany, ‘Masis’ nor on the Company name used in the course of trade in Germany ‘International Masis Tabak LLC’. Therefore, 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

Irina SOTIROVA

Loreto URRACA LUQUE

Claudia ATTINÀ

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.