OPPOSITION No B 3 042 473

Villiger Söhne GmbH, Schwarzenbergstr. 3-7, , Waldshut-Tiengen, Germany (opponent), represented by Bender Harrer Krevet, Fahnenbergplatz 1, 79098, Freiburg, Germany (professional representative)

a g a i n s t

www.smart-filter.com s.r.o., Pšenčíkova 464/1a, 14200, Praha 4, Czech Republic (applicant), represented by Jan Onheiser, Betlémské nám. 2, 11000, Praha 1, Czech Republic (professional representative).

On 14/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 042 473 is upheld for all the contested goods, namely:

Class 34: Cigarettes; filter-tipped cigarettes; cigarettes containing tobacco substitutes; cigarettes containing tobacco substitutes, not for medical purposes; tobacco free cigarettes, other than for medical purposes; tobacco filters.

2. European Union trade mark application No 17 443 417 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 443 417 for the figurative mark , namely against all the goods in Class 34. The opposition is based on international trade mark registration No 1 077 243 designating the European Union for the figurative mark . 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.

1. The goods

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

Class 34: Tobacco, unprocessed or processed, tobacco products including cigars, cigarettes, cigarillos, rolling tobacco for cigarettes, pipe tobacco, chewing tobacco, snuff, tobacco substitutes (other than for medical purposes); smokers' articles including cigarette paper and cigarette tubes, cigarette filters, tobacco boxes, cigarette cases, cigar cases, cigarillo cases and ashtrays for smokers; tobacco pipes, pocket machines for rolling cigarettes, lighters for smokers, matches.

The contested goods are the following:

Class 34: Cigarettes; filter-tipped cigarettes; cigarettes containing tobacco substitutes; cigarettes containing tobacco substitutes, not for medical purposes; tobacco free cigarettes, other than for medical purposes; tobacco filters.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (on the use of ‘in particular’, which has the same function as ‘including’, see a reference in 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

Contested goods in Class 34

The contested cigarettes are identically contained in both lists of goods.

The contested filter-tipped cigarettes; cigarettes containing tobacco substitutes; cigarettes containing tobacco substitutes, not for medical purposes; tobacco free cigarettes, other than for medical purposes are included in the broad category of the opponent’s tobacco, unprocessed or processed, tobacco products including cigars, cigarettes, cigarillos, rolling tobacco for cigarettes, pipe tobacco, chewing tobacco, snuff, tobacco substitutes (other than for medical purposes). Therefore, they are identical.

The contested tobacco filters are identically contained in both lists of goods (including synonyms).

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.

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.).

Based on the above, the level of attention of the relevant public with regard to the goods found to be identical will be high, also with respect to tobacco substitutes.

3. The signs

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements of the marks are not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English speaking part of the public such as in Poland and Hungary, for example.

The earlier mark is a complex trade mark, consisting of a verbal element ‘Roll’s’, and two device elements. The verbal element has no meaning for the relevant public and is, therefore, distinctive. It is written in enlarged, slightly stylised, upper case letters and is positioned in the centre of the mark. Above the verbal element, there is a figurative element consisting of a double circle, flanked by two three-leafed devices set above a ribbon device containing five stars. The silhouette of a figure riding a penny farthing bicycle is depicted in the centre of the circle. A further, decorative ribbon is depicted beneath the verbal element. Ribbons are commonplace on labels or packaging and do not tend to confer distinctive character. The graphic element above the verbal element appears as an emblem with less of an impact than the word ‘Roll’s’.

In this regard, it should be noted that 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).

The same applies to the contested sign, which is also a figurative mark. It is made up of the English words ‘Rolls’ in stylised lower case on a black circular device and surrounded by a thin white circle. The verbal element does not resemble its linguistic equivalent in the relevant territory, and will be perceived as distinctive in respect of the goods there. The circular device is not particularly striking and will be perceived as an ordinary graphical means of bringing the verbal elements to the attention of the public.

Visually, the signs coincide in the letter sequence ‘ROLL*S’ of the verbal elements. They differ in the apostrophe of the earlier mark, which has a reduced significance as it will not be recognised as indicating possession in the relevant territory. The figurative elements, except for the circular device similarly included in both signs, do not coincide, but they have a reduced impact in the signs. Therefore, the signs are visually highly similar.

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 ‛ROLL*S’, present identically in both signs. Therefore, the signs are aurally identical.

Conceptually, the verbal elements of the signs have no meaning and will be considered fanciful. The silhouette of a person riding a penny farthing bicycle included in the earlier mark will most likely be perceived as a cyclist and will render the signs conceptually dissimilar. However, taking into account the previous assertions concerning the semantic content conveyed by the signs, this element, along with the other figurative elements, will have a reduced impact on the conceptual comparison 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.

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.

5. Global assessment 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).

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 undertaking or economically linked undertakings.

The goods are identical and target the public at large, which will pay a high degree of attention. The earlier mark has a normal degree of distinctiveness. The signs are visually highly similar and aurally identical, and the dominant verbal element of the earlier sign, itself distinctive, is essentially contained in the contested sign. The signs are conceptually dissimilar, but as explained above the impact of the conceptual perception will be extremely limited.

In this context, it is considered that the differences between the signs are not sufficient to counteract the similarities between them.

Indeed, it is conceivable that the relevant consumer, even taking into account a high degree of attentiveness where it pertains, will perceive the contested mark as a sub-brand or a variation of the earlier mark, configured in a different way.

Considering all the above, there is a likelihood of confusion on the part of the Polish and Hungarian-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.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 077 243 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods. It may proceed for the remaining goods and services.

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

José Antonio GARRIDO OTAOLA

Valeria ANCHINI

Aldo BLASI

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.