OPPOSITION No B 3 026 310

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 3 026 310 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 447 111 ‘LAS VEGAS’, namely against all the goods in Classes 9 and 34. The opposition is based on Spanish trade mark registration No 2 054 384 ‘VEGAS ROBAINA’ and European Union trade mark registration No 538 520 . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in relation to both earlier marks.

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, as notified already by the Office to the parties on 28/11/2018, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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.

a) Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in Spain and in the European Union, respectively.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 08/11/2017. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in Spain and in the European Union, respectively, prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

ES No 2 054 384 ‘VEGAS ROBAINA’

Class 34: Tobacco; articles for smokers, matches.

EUTM No 538 520

Class 34: Raw Tobacco, cigars, cigarettes, cigarillos and any other manufactured tobacco, cut tobacco, matches and smoker's articles.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 30/08/2018 the opponent submitted evidence to support this claim. Before proceeding to list the evidence of use, it is noted that the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties. The Opposition Division accepts this request insofar as it relates to part of the evidence (specifically the sensitive commercial information contained in the documents). Therefore, it will describe that part of the evidence only in the most general of terms without divulging any such data or specific information which could breach the terms of the confidentiality request made and accepted. However, this does not apply to evidence which consists of information that is already in the public domain (including available to the public, either in mass media or on the websites of the opponent).

The evidence consists of the following documents:

 Catalogues/brochures: 2 undated brochures in French and Italian titled ‘Vegas Robaina’, and 2 undated catalogues (according to the opponent from 2014 and 2017) in German; all featuring the opponent’s figurative mark in relation to cigars (Annex 1, Item 1; Annex 2, Item 1; Annex 3, Items 1 and 2).

 Invoices:

- 27 invoices addressed to various clients in France, dated between 11/01/2016 and 20/06/2018, concerning the sale of the products ‘Vegas Robaina Famosos’, ‘Vegas Robaina Familiar’, ‘Vegas Robaina Don Alejandro’, ‘Vegas Robaina Unicos’, ‘Vegas Robaina Clasicos’ (Annex 1, Item 2);

- 4 invoices addressed to clients in Italy, dated between 19/03/2018 and 07/06/2018, concerning the sale of the product ‘Vegas Robaina Famosos’ (Annex 2, Item 2);

- 20 invoices addressed to various clients in Germany, dated between 17/01/2012 and 24/05/2018, concerning the sale of the products ‘Vegas Robaina Don Alejandro’, ‘Vegas Robaina Famosos’ and ‘Vegas Robaina Unicos’ (Annex 3, Item 4);

- 7 documents in Bulgarian which, according to the opponent, are ‘Product order invoices 2017-2018’. They contain some references to ‘Vegas Robaina Famosos’, ‘Vegas Robaina Unicos’ and ‘Vegas Robaina Don Alejandro’, and some dates (07/06/2017, 20/10/2017, 08/01/2018, 11/01/2018, 01/06/2018) (Annex 4, Item 1).

 Press articles: Extracts from the magazines Havanoscope 2016, 2017 and 2018, in French, showing cigars sold under ‘Vegas Robaina’ brand, namely ‘Clasicos’, ‘Don Alejandro’, ‘Familiar’, ‘Famosos’ and ‘Unicos’ (Annex 1, Item 3).

 Price lists:

- 9 order forms with price lists of ‘Vegas Robaina’ products (‘Clasicos’, ‘Don Alejandro’, ‘Familiar’, ‘Famosos’ and ‘Unicos’), in French, dated between 2016 and 2018 (Annex 1, Item 4),

- undated price list in Italian, including ‘Vegas Robaina Famosos’ (Annex 2, Item 3).

 Printouts from websites:

- 4-page printout from the website www.habanos-zigarren.com, dated 21/08/2018, containing information about Vegas Robaina cigars in German (Annex 3, Item 3)

- Printout with results of a Google search for ‘vegas robaina’ performed on 21/08/2018 (Annex 6, Item 1).

- Wikipedia article ‘Vegas Robaina’, extracted on 18/05/2019, explaining that ‘Vegas Robaina is the name of a premium cigar brand’ and explaining the history of the brand (Annex 6, Item 2).

 Sales figures:

Internal documents dated 21/08/2018 indicating (by country and by client/distributor) the quantity of ‘Vegas Robaina Unicos’ and ‘Vegas Robaina Famosos’ products sold in various European countries between 01/01/2013 and 22/06/2018 (Annex 5, Items 1-3).

Preliminary remark

The applicant argues that the opponent did not submit translations of some of the evidence of reputation and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the evidence filed with a view to show the reputation of the earlier mark(s), unless it is specifically requested to do so by the Office (Article 7(4) EUTMDR in conjunction with Article 24 EUTMIR).

In any case, on 01/02/2019 in response to the applicant’s arguments the opponent provided a partial translation of evidence previously filed in Annexes 1, 2 and 3. Although the Opposition Division will take these documents into account, it does not consider it necessary to reopen the present proceedings to allow another round of observations to comment on them. This is because on the one hand, this is the best light in which the opponent’s case can be considered, and on the other hand, it will not prejudice the rights of the applicant since these translations will not allow the Opposition Division to take a different final conclusion on the reputation claim.

Moreover, the Opposition Division considers that there is no need to request a translation of the remaining parts of the evidence contested by the applicant, such as the documents in Bulgarian in Annex 4. In fact, their character is at least partly self-explanatory as they include references to ‘Vegas Robaina’ and further details such as dates and quantities that can be understood. Finally, even if the opponent provided a full translation of these particular documents it would not affect the outcome the present assessment.

Assessment of the evidence

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

The opponent claims that the earlier marks have ‘an extraordinary reputation in the referred market’. It describes the history of the brand of Cuban cigars ‘Vegas Robaina’, created in 1997, as a tribute to a famous tobacco farmer Alejandro Robaina. The opponent’s observations provide a description of different types of ‘Vegas Robaina’ cigars such as ‘Clásicos’, ‘Don Alejandro’, ‘Familiar’, ‘Famosos’ and ‘Unicos’, and contain screenshots from websites showing pictures of the opponent’s products (www.habanos.com/es/marcas/vegasrobaina, www.cigars-review.org/cigars/Vegas-Robaina.htm and www.finestcubancigars.com/brands/all-cigar-brands/vegas-robaina.html, all consulted on 21/08/2018). According to the opponent the evidence filed together with the observations proves an intense presence of the tobacco ‘Vegas Robaina’ in Europe, knowledge of the opponent’s products by the public and the reputation of the earlier marks.

The Opposition Division finds that the evidence listed above does not corroborate the opponent’s submissions.

As regards the earlier EUTM, the evidence, despite showing use of that trade mark within the European Union, does not provide any indication of the degree of the trade mark’s recognition by the relevant public. The invoices, the catalogues/brochures and the price lists confirm the presence of the earlier mark on the relevant market. The invoices give sufficient information about the commercial volume, the territorial scope, the duration, and the frequency of use of the earlier mark. However, this extent of use is not of such dimensions as to allow the Opposition Division to consider that the earlier mark has been subject to long-standing and intensive use within the relevant territory.

Furthermore, the sales volumes are only presented in an internal document and in an insufficient manner (Annex 5). Information deriving directly from the opponent is unlikely to be enough on its own, especially if it is of an unofficial character and lacks objective confirmation. In this respect, the sales figures for the years 2013-2018 submitted by the opponent in Annex 5 do not consist of official accounting documents issued by third party auditors, but of internal tables drawn up by the opponent itself, including data and figures of unknown and unverified origin, and are therefore of little probative value on their own. Moreover, these sales figures cannot be inferred or supported by the other evidence submitted. Furthermore, the data and information presented in these documents is not totally clear. For example, quantities in Annex 5, Item 1 are expressed in ‘units’ and it is not explained if they relate to units of boxes or cigars; it also remains unclear if the ‘sales’ refer to the sales of the opponent’s products to its distributors or to the sales by the distributors in each of the listed country; ‘quantities’ and ‘amounts’ in the tables in Annex 5, Items 2 and 3 are expressed in undefined units and do not correspond to the quantities indicated on the invoices (for example in Annex 3) issued by the same distributor on the matching dates.

Moreover and more importantly, the evidence concerning sales figures is not put into the context of the market and competitors. It does not indicate the market share gained under the earlier trade mark or the extent to which the trade mark has been promoted. Therefore, it cannot be deduced whether or not there is a certain degree of knowledge among the relevant public concerning the mark due to intensive use for example.

The evidence does not allow the Opposition Division to conclude on the proportion of the public which identifies the relevant goods as originating from the opponent, as none of the evidence gives any direct insight in to the trade mark’s perception by the public. Since the evidence does not provide any objective and clear indication of the degree of recognition of the earlier trade mark by the relevant public, it follows that it does not show that the trade mark is known by a significant part of the relevant public. The evidence in this regard and evidence originating from independent sources is lacking.

As regards the earlier Spanish trade mark, it is noted that although one of the printouts indicates that the ‘Vegas Robaina’ line was officially launched in Spain in 1997, there is no evidence that would objectively confirm the presence of the opponent’s earlier mark in the Spanish market. The remaining reference to Spain appears only in Annex 5, Item 1, where the quantities of ‘Vegas Robaina Unicos’ and ‘Vegas Robaina Famosos’ sold in Spain (or to a Spanish distributor) between 01/01/2013 and 22/06/2018, are indicated. However, as explained above, these tables emanate form the opponent itself and their probative value is extremely limited.

Taking into account all the foregoing, in the absence of any substantial evidence regarding commercial volumes and consumer recognition in the relevant territories, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired 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 marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar as it is based on this Article.

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.

a) The goods

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

Spanish trade mark registration No 2 054 384

Class 34: Tobacco; articles for smokers, matches.

EUTM registration No 538 520

Class 34: Raw Tobacco, cigars, cigarettes, cigarillos and any other manufactured tobacco, cut tobacco, matches and smoker's articles.

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 in 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

The contested matches are identically contained in the opponent’s lists of goods.

Raw tobacco is identically listed in the list of the opponent’s EUTM and it is included in the broad category of tobacco of the opponent’s Spanish mark.

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 categories of tobacco in the Spanish mark (see 25/07/2013, R 68/2013-1, The King (fig. mark) / King’s et al., § 13-15) and overlap with cigars, cigarettes, cigarillos and any other manufactured tobacco of the opponent’s EUTM.

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

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 electronic accessories for smokers’ articles in Class 9 or matches and in Class 34.

c) The signs

c.1) Spanish trade mark registration No 2 054 384

VEGAS ROBAINA	LAS 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 comprises two words, ‘VEGAS’ and ‘ROBAINA’. Part of the relevant public will perceive the earlier mark as a family name, composed of – in accordance with the Spanish naming customs – two surnames, Vegas and Robaina. 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 structure of the sign, another part of the public may perceive ‘VEGAS’ as a plural form of the Spanish word ‘vega’ which means ‘a large plain fertile valley; very humid land; land planted with tobacco’ (information extracted from Diccionario de la lengua española de la Real Academia Española on 20/05/2018 at www.rae.es). In that case, the meaningless term ‘ROBAINA’ will be understood as the name of that geographical area. However, the public would not be able to determine if such a place really exists or is only an imaginary location. Since part of the public will perceive the element ‘VEGAS’ as allusive for the tobacco-related goods, the element ‘ROBAINA’ will be in that case the most distinctive element of the earlier mark. Otherwise, both elements are considered normally distinctive.

As regards the contested mark, the expression ‘LAS VEGAS’ will be immediately and unequivocally perceived by the Spanish public as the name of the famous city in the United States of America. Even though Las Vegas is a particular geographical location, with which the target public is familiar, it is distinctive in relation to the goods concerned because the public would not expect the relevant goods to originate from the city known primarily for its gambling, entertainment and nightlife.

It follows from the above that the signs will be associated with different meanings. Consequently, they are conceptually dissimilar.

Visually and aurally, the signs coincide in the word ‘VEGAS’, which is the first element of the earlier mark and the second part of the indivisible expression composing the contested sign. The different role, length and position of the element ‘ROBAINA’ in the earlier mark, and the beginning, ‘LAS’, of the contested sign, alter the similarities created by the common word ‘VEGAS’.

Therefore, taking into account the distinctiveness of the elements of the earlier mark, depending on their understanding by the public, the visual and aural similarity between the signs ranges between low and at most average.

c.2) EUTM registration No 538 520

	LAS VEGAS
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 comprises various verbal and figurative elements. Its overall impression is dominated by the word element ‘ROBAINA’ and the figurative element representing a man, fields, mountains and various smaller details.

The element ‘ROBAINA’ is normally distinctive given that it will be perceived by the public as either a meaningless word or a family name. The letter ‘R’ placed in the circle in the lower part of the sign is likely to be seen as corresponding to the first letter of the largest verbal element of the sign, ‘ROBAINA’, and it is also distinctive.

The large figurative element is a complex picture, more likely to be perceived as decorative rather than an indication of commercial origin of the goods. Moreover, its distinctiveness is also reduced because the depiction of (tobacco) fields is allusive of the relevant goods which are, contain, or are related to tobacco.

Above the element ‘ROBAINA’, there is a significantly smaller word element, ‘VEGAS’. For part of the public, for example, the Spanish public, this element conveys a meaning as it refers to the plural form of the Spanish word ‘vega’ as explained above or can be perceived as a surname. It cannot be also excluded that some EU consumers, for example the English-speakers, may recognise in ‘VEGAS’ a reference to the city of Las Vegas in the United States of America. For the remaining part of the public, this word is meaningless. Accordingly, the distinctiveness of the element ‘VEGAS’ varies from low (in case it is perceived as referring to a land planted with tobacco) to average. However, regardless of its understanding by the relevant public, it plays a minor role in the earlier mark due to its limited size and position.

Finally, there are also two other verbal elements in the lower part of the earlier mark, ‘HABANA’ and ‘CUBA’. Taking into account that Cuba is generally well known for tobacco products, these indications are purely descriptive as they refer to the origin of the goods. In any case, they are hardly perceptible and likely to be disregarded by the relevant public. Therefore, the Opposition Division will not consider these negligible elements in the comparison of the signs.

As regards the contested mark, the public throughout the entire European Union will perceive the expression ‘LAS VEGAS’ as the name of the famous city in the United States of America. Reference is made to the previous assertions concerning the distinctiveness of this term in relation to the relevant goods in section c.1) above.

It follows from the above that, conceptually, the contested sign conveys a clear concept of the city in the USA, while the earlier mark contains various meaningful elements, depending on their understanding by different parts of the relevant public. For part of the public, the signs convey different meanings. Only when the element ‘VEGAS’ in the earlier mark is perceived as referring to the city of Las Vegas, is it possible to find a conceptual link between the signs. However, due to its reduced size and position, ‘VEGAS’ plays a secondary role within the earlier mark and is overshadowed by other meaningful elements. Therefore, the signs are conceptually at most similar to a low degree.

Visually, the signs coincide in the element ‘VEGAS’. They differ in the element ‘LAS’ in the contested sign and in the remaining verbal and figurative elements of the earlier mark. Taking into account the dominance of the figurative device of the earlier mark and of the verbal element ‘ROBAINA’, a minor role played by the element ‘VEGAS’, and the distinctiveness of all these elements, the signs are visually similar to at most a very low degree.

Aurally, the Opposition Division considers that it is likely that the public will refer to the earlier sign by its dominant verbal element ‘ROBAINA’. However, it cannot be excluded that the term ‘VEGAS’ may be pronounced by at least a part of the relevant public. Therefore, taking into account the distinctiveness and dominance of the elements of the earlier mark, the aural similarity between the signs is at most average.

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 marks

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 marks have a reputation in connection with all the goods on which the opposition is based. 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 evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(5) EUTMR. Reference is made to those findings.

Although the threshold for a finding of enhanced distinctiveness may be lower than the threshold of recognition to be met for a finding of reputation, the Opposition Division finds that the evidence filed by the opponent clearly fails to prove that the earlier marks have reached the required threshold for reputation or even for enhanced distinctiveness.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks, as a whole, have 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 marks must be seen as normal.

e) Global assessment, other arguments and conclusion

Some of the contested goods are identical and some are similar to those covered by the earlier marks. They are directed at the general public whose degree of attention in relation to these purchases varies from average to high. Both earlier marks enjoy an average degree of inherent distinctiveness which affords them a normal scope of protection.

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).

The visual and aural similarity between the contested sign and the earlier Spanish mark ranges between low and at most average, depending on the distinctiveness of the common element ‘VEGAS’ in the earlier mark. The signs are conceptually dissimilar for the Spanish public. According to case-law, the conceptual differences between signs may counteract their visual and phonetic similarity (12/01/2006, C-361/04, Picaro, EU:C:2006:25, § 20). In the present case, each trade mark has a clear concept that is immediately grasped by the public and these concepts are different. It is considered that this is sufficient to outweigh the visual and aural similarities between the signs and to allow the consumers - whose degree of attention is at least average or even high in relation to some of the goods - to safely distinguish between the goods.

In the other earlier mark invoked by the opponent, namely the earlier figurative EUTM, the coinciding element ‘VEGAS’ plays a secondary role and is overshadowed by other elements such as the dominant verbal element ‘ROBAINA’ and the dominant figurative features of the mark. For these reasons, the visual similarity between this earlier mark and the contested sign is at most very low. Aurally the marks are similar to at most an average degree. Finally, due to a broader relevant territory than in the case of the first earlier mark, the presence of the element ‘VEGAS’ leads to some - although low - conceptual similarity between the signs for part of the relevant public. The Opposition Division finds that these similarities do not outweigh the additional different elements which are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks, bearing in mind also that the common element is not the dominant element of the signs.

In these circumstances, it is unlikely that the public may believe that the goods in question originate from the same or economically-linked undertakings.

Considering all the above, there is no likelihood of confusion on the part of the public. 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

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.