OPPOSITION No B 3 025 858

Corporacion Habanos, S.A. (Habanos, S.A.), Carretera Vieja de Guanabacoa y Línea del Ferrocarril Final, Guanabacoa, La Habana, Cuba (opponent), represented by Ars Privilegium, S.L., Felipe IV, 10, 28014 Madrid, Spain (professional representative)

a g a i n s t

GRE Grand River Enterprises Deutschland GmbH, Rietzer Berg 28, 14797 Kloster Lehnin/OT Rietz, Germany (applicant), represented by Zenk Rechtsanwälte Partnerschaft mbB, Neuer Wall 25 / Schleusenbrücke 1, 20354 Hamburg, Germany (professional representative).

On 29/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 025 858 is upheld for all the contested goods.

2. European Union trade mark application No 17 447 103 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 447 103 ‘VEGAS', namely against all the goods in Classes 9 and 34. After a limitation of the list of goods by the applicant, these are all the remaining goods of the contested application. The opposition is based on, inter alia, Spanish trade mark registration No 2 054 384 ‘VEGAS ROBAINA’. 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.

The applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 Spanish trade mark registration No 2 054 384 ‘VEGAS ROBAINA’.

a) The goods

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

Class 34: Tobacco; articles for smokers, matches.

The contested goods are the following:

Class 9: Batteries for electric cigarettes, electronic cigarettes, electric cigars, electronic cigars, electric cigarillos, electronic cigarillos, electric pipes, electronic pipes, and vaporizing devices for tobacco, tobacco products and tobacco substitutes; accumulators for electric cigarettes, electronic cigarettes, electric cigars, electronic cigars, electric cigarillos, electronic cigarillos, electric pipes, and electronic pipes, and vaporizing devices for tobacco, tobacco products and tobacco substitutes; Battery chargers, chargers, adapters for vehicles; Cables for electric cigarettes, electronic cigarettes, electric cigars, electronic cigars, electric cigarillos, electronic cigarillos, electric pipes, electronic pipes and vaporising devices for tobacco, tobacco products and tobacco substitutes; electronic and electrical components for use with electric cigarettes, electronic cigarettes, electric cigars, electronic cigars, electric cigarillos, electronic cigarillos, electric pipes, and electronic pipes, and vaporizing devices for tobacco, tobacco products and tobacco substitutes.

Class 34: Raw tobacco; Tobacco products, included in class 34, in particular nicotine pastilles based on tobacco for oral use, cigars, cigarettes, cigarillos, fine-cut tobacco, pipe tobacco, snuff, tobacco substitutes, cigars and cigarettes containing tobacco substitutes, not for medical or curative purposes; Smokers' articles, in particular tobacco tins, cigarette cases, cigarette holders, ashtrays (all the aforesaid goods not of precious metal or coated therewith), cigarette papers, cigarette tubing, cigarette filters, smoking pipes, pocket apparatus for rolling cigarettes, lighters, included in class 34; Matches; Cigarette cases of precious metal; Cases (cigarette -), of precious metal; Cigarette holders of precious metal; Cigar cases of precious metal and wood; Boxes (cigar -), of precious metal; Cigar holders of precious metal; Electric cigarettes, electronic cigarettes, electric cigars, electronic cigars, electric cigarillos, electronic cigarillos, electric pipes and electronic pipes; liquids, ampoules, and cartridges for electric cigarettes, electronic cigarettes, electronic cigars, electronic cigarillos, and electric pipes; Refill liquid for use in electronic smoking equipment and electronic cigarettes; refill cartridges for use in electronic cigarettes and electronic smoking equipment; atomizers and cartomizers for use in electronic cigarettes and electronic smoking equipment; vaporising devices for tobacco, tobacco products and tobacco substitutes; parts, components of electronic cigarettes and electronic smoking equipment, and vaporizing devices for tobacco, tobacco products and tobacco substitutes; carrying cases and containers specially adapted for the aforementioned goods; stands specially adapted for the aforementioned goods; parts and spare parts of the aforementioned goods.

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

The term ‘in particular’ used in the applicant’s list of goods in Class 34, 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The opponent’s articles for smokers include goods such as electric cigarettes, electronic cigarettes, electric cigars, electronic cigars, electric cigarillos, electronic cigarillos, electric pipes, electronic pipes, and vaporizing devices for tobacco, tobacco products and tobacco substitutes. The contested goods in this Class are all electric and electronic accessories to be used with these types of smokers’ articles, and even where not specifically indicated, they can still encompass them. These goods are complementary in the sense that the use of the contested goods is indispensable or important for the use of the opponent’s goods. They target the same public, are distributed through the same distribution channels and may be manufactured by the same undertakings. Therefore, they are similar.

Contested goods in Class 34

Matches are identically contained in both lists of goods.

Raw tobacco; Tobacco products, included in class 34, in particular nicotine pastilles based on tobacco for oral use, cigars, cigarettes, cigarillos, fine-cut tobacco, pipe tobacco, snuff, tobacco substitutes, cigars and cigarettes containing tobacco substitutes, not for medical or curative purposes are included in the opponent’s broad category of tobacco (see 25/07/2013,R 68/2013-1, The King (fig. mark) / King’s et al., § 13-15).

The remaining contested goods in this Class belong to the broad category of the opponent’s articles for smokers.

Therefore, all the contested goods in Class 34 are identical to the opponent’s goods.

b) 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.

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.). This applies equally to smokers’ articles such as cigarette papers. Moreover a higher than average degree of attention is expected in relation to expensive goods, for example the contested cigarette cases of precious metal. Finally, the degree of attention of the relevant public is average in relation to other relevant goods, not concerned by brand loyalty and not particularly expensive, such as electronic accessories for smokers’ articles in Class 9 or matches and in Class 34.

c) The signs

VEGAS ROBAINA	VEGAS
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 a word mark comprising two elements. It will be perceived by at least a significant part of the relevant public as a family name, composed of – in accordance with the Spanish naming customs – two surnames, Vegas and Robaina. In the contested mark, the term ‘VEGAS’ alone, will be perceived - among other possible interpretations – as a surname too. Neither of the surnames is particularly common in Spain and, since they have no relation to the goods in question, their distinctiveness is considered to be normal.

Taking into account the foregoing, the Opposition Division considers appropriate to start the comparison of the signs from the perspective of the significant part of the public which perceives both signs as surnames and will only proceed with a further analysis of possible meanings conveyed by the marks if necessary.

It follows that conceptually the signs are similar on account of the coinciding surname Vegas. The fact that the earlier mark also contains a second surname, Robaina, does not alter the function of the first surname, Vegas.

Therefore, the signs are conceptually similar to an average degree.

Visually and aurally, the signs coincide in the element ‘VEGAS’ and differ in the element ‘ROBAINA’ of the earlier mark which has no counterpart in the contested sign.

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. Consequently, in the present case, the coincidence in the element which is placed at the beginning of the earlier mark and which constitutes the entire contested sign is of a particular relevance.

Therefore, the signs are visually and aurally similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

Some of the goods are identical and some are similar. They target the public at large whose degree of attention varies from average to high. The signs are visually, aurally and conceptually similar to an average degree. The inherent distinctiveness of the earlier mark as a whole is normal.

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.

Even if the earlier mark contains the additional distinctive verbal element, ‘ROBAINA’, which is not present in the contested sign, the coinciding verbal element ‘VEGAS’ is also distinctive to a normal degree for the relevant public under analysis and has an independent distinctive role in the earlier mark (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 30).

In such a case, the overall impression produced by the marks may lead the public to believe that the goods at issue derive, if not from the same company, from companies that are, at the very least, linked economically, in which case a likelihood of confusion must be held to be established (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 31).

As a result, even if the consumers will pay a higher degree of attention when purchasing some of the goods concerned and will take notice of the additional verbal element in the earlier mark or its omission in the contested sign, the relevant public is still likely to believe that these goods originate from the same or economically linked undertakings in view of the coincidence between the signs in the identical verbal element ‘VEGAS’ placed in the first position in the earlier mark where the attention of the public will focus.

Considering all the above, there is a likelihood of confusion on the part of the public.

Given that a likelihood of confusion for the significant part of the relevant public which perceives the signs as surnames is sufficient to reject the contested application, there is no need to analyse the remaining possible meanings that could be conveyed by the element ‘VEGAS’.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 054 384 ‘VEGAS ROBAINA’. It follows that the contested trade mark must be rejected for all the contested goods.

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 extensive use and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the above mentioned earlier right 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 Article 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

Nicole CLARKE

Zuzanna STOJKOWICZ

Cynthia DEN DEKKER

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.