OPPOSITION No B 2 982 471

Japan Tobacco Inc., 2-2-1 Toranomon, Minato-ku, Tokyo, Japan (opponent), represented by Baylos, C/ José Lázaro Galdiano 6, 28036 Madrid, Spain (professional representative)

a g a i n s t

Shenzhen Innokin Technology Co. Limited, Building 6, Xinxintian Industrial Park, Xinsha Road, Shajing Street, Baoan District, 518000 Shenzhen, China (applicant), represented by Beetz & Partner, Steinsdorfstr 10, 80538 München, Germany (professional representative).

On 03/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 982 471 is upheld for all the contested goods.

2. European Union trade mark application No 16 888 621 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 888 621 for the figurative mark .The opposition is based on European trade mark registration No 13 026 811 for the word mark ‘WINSTON’. The opponent invoked Article 8(1)(b) and Article 8(5) 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, whether manufactured or unmanufactured; smoking tobacco, pipe tobacco, hand rolling tobacco, chewing tobacco, snus tobacco; cigarettes, electronic cigarettes, cigars, cigarillos; snuff; smokers' articles included in class 34; cigarette papers, cigarette tubes and matches.

The contested goods are the following:

Class 34: Tobacco; electronic cigarettes; cigarettes; liquid nicotine solutions for use in electronic cigarettes; tobacco pipes (not of precious metal); filter tips; cigarette lighter; oral vaporizers for smokers; flavourings, other than essential oils, for use in electronic cigarettes; cigarette filters.

Contested goods in Class 34

Electronic cigarettes; tobacco; cigarettes are identically contained in both lists of goods.

The contested tobacco pipes (not of precious metal); filter tips; cigarette filters; cigarette lighter; oral vaporizers for smokers are smokers’ articles and are included in the broad category of the opponent’s smokers' articles included in class 34. Therefore, they are identical.

The contested liquid nicotine solutions for use in electronic cigarettes; flavourings, other than essential oils, for use in electronic cigarettes cannot be used without the opponent’s electronic cigarettes. These goods are complementary. Furthermore, they target the same consumers, who look for them in the same retail outlets and could expect that such goods are manufactured under the control of the same entity. Therefore, they are similar.

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 or similar are directed at the public at large. The degree of attention may vary from average to high, depending on the particular goods involved. For example, although tobacco products in Class 34 are relatively cheap mass-consumption articles, smokers are considered particularly careful and selective as to the brand of tobacco they smoke, so a high 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.). However, the degree of attention with regard to goods such as cigarette lighters will, in principle, be average.

3. The signs

WINSTON
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.

The earlier mark will be understood by the English-speaking part of the public as a given male name. The contested sign is the English word ‘Windstorm’ which is defined as a storm consisting of violent winds (Source: https://www.collinsdictionary.com/dictionary/english/windstorm). This conceptual difference sets the signs apart in the perception of this part of the relevant public.

However, the elements ‘WINSTON’ and ‘Windstorm’ are meaningless in certain territories, for example in those countries where English is not understood. Consequently, for reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English speaking part of the public, which does not attribute any meaning to the elements ‘WINSTON’ and ‘Windstorm’ such as the Greek speaking public.

The figurative elements of the contested sign are limited to the minimal stylisation of the characters ‘Windstorm’ and have no distinctive character on their own. The contested sign is composed of only one, indivisible element and as such it has no element that could be considered clearly more dominant than other elements.

The earlier mark is a word mark composed of one element, ‘WINSTON’. In the case of a word mark, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether it is in upper or lower case letters, or a combination thereof. Moreover, as a word mark, it has no elements that could be considered more dominant (visually eye-catching) than other elements.

As mentioned above, the elements ‘WINSTON’ and ‘Windstorm’ are meaningless for the analysed public and therefore distinctive to an average degree.

Visually, the signs coincide in the letters ‘WIN*STO*’. However, they differ in the last letter which is ‘N’ in the earlier mark and ‘M’ in the contested sign. Moreover, the contested sign contains the additional letters *D*R*’ which have no counterparts in the earlier sign. However, they are placed in the middle of the contested sign, where the difference is not so obvious. Moreover, if the earlier right is represented in title case characters, ‘Winston’, the similarities are even higher, as the final letters ‘n’ versus ‘m’ are visually very similar. When comparing signs in terms of their word elements, similarity may be found despite the fact that the letters are graphically portrayed in different typefaces, in italics or bold, in upper or lower case or in colour (18/06/2009, T-418/07, LiBRO, EU:T:2009:208; 15/11/2011, T-434/10, Alpine Pro Sportswear & Equipment, EU:T:2011:663; 29/11/2012, C-42/12 P, Alpine Pro Sportswear & Equipment, EU:C:2012:765, appeal dismissed). In the light of the foregoing, the signs are visually similar to a high degree.

Aurally, the signs coincide in the sound of the letters ‘WIN*STO*’, present identically in both signs. Moreover, the last letters of the marks, ‘N’ and ‘M’ respectively, are phonetically highly similar given they are nasal consonants. The pronunciation differs in the sound of the letters *D*R* of the contested mark, which have no counterparts in the earlier sign. Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the analysed public. 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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 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

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).

In the present case, the goods are identical or similar and target the public at large, whose degree of attention varies from average to high due to the higher degree of brand loyalty regarding some of the goods in question.

Furthermore, the earlier mark has been examined under the assumption that it has an average degree of distinctiveness.

The signs are visually and aurally highly similar. Conceptually, for the analysed public they have no meaning that could differentiate them.

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/services covered are from the same or economically linked undertakings.

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). Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

In the present case the visual and aural similarities between the signs are preponderant, especially taking into account that the signs in question have no meanings that could help the public to differentiate them. Furthermore, while it may be true that the relevant public is more attentive when acquiring some of the goods in question, it does not mean that the purchaser has always the opportunity to compare both marks side-by-side. Accordingly, some degree of imperfect recollection of the absent mark at the time of acquisition cannot be totally ruled out.

Considering all the above, there is a likelihood of confusion on the part of the Greek-speaking part of the 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.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely 8(5) EUTMR.

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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Anna ZIÓŁKOWSKA

Aliki SPANDAGOU

Beatrix STELTER

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.