OPPOSITION No B 3 039 628

Manufacture de Tabacs Heintz van Landewyck Sàrl, 31, rue de Hollerich, 1741 Luxembourg, Luxembourg (opponent), represented by Office Freylinger S.A., 234, route d’Arlon B.P. 48, 8001 Strassen, Luxembourg (professional representative)

a g a i n s t

JT International S.A., Rue Kazem-Radjavi 8, 1202 Geneva, Switzerland (applicant), represented by Matthew Michael Sammon, Calls Wharf 2, The Calls, LS2 7JU Leeds, United Kingdom (professional representative).

On 22/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 039 628 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 486 218, ‘AYA’ (word mark). The opposition is based on European Union trade mark registrations No 4 172 615, ‘MAYA’ (word mark) and No 11 106 507 (figurative mark). The opponent invoked Article 8(1)(b) 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.

Proof of use of the earlier mark No 4 172 615 was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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. Since the earlier EUTM No 4 172 615 is a word mark, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 4 172 615.

a) The goods

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

Class 34: Tobacco, raw, tobacco for smoking, snuff, chewing tobacco; cigars, cigarettes, cigarillos; cigarette papers, cigarette cases; tobacco in plug form and in rolls; smokers’ articles.

The contested goods are the following:

Class 34: Electronic cigarettes; cases for electronic cigarettes; cases for electronic cigarette accessories; cigarettes; cigars; smokers’ mouthpieces for electronic cigarettes; flavorings, other than essential oils, for use in electronic cigarettes; vaporizing devices for tobacco; vaporizers for smoking purposes; oral vaporizers for smokers; cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes; electronic cigarette liquid comprised of flavorings in liquid form, other than essential oils, used to refill electronic cigarette cartridges; liquid nicotine solutions for electronic cigarettes; tobacco substitutes; tobacco; cigarettes containing tobacco substances, not for medicinal purposes; ashtrays; lighters for smokers; smokers’ articles, tobacco products.

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.

Although some of the goods under comparison are identical, for example tobacco, cigarettes and cigars are identically contained in both lists (despite minor differences in wordings), it is clear that the contested goods and the opponent’s smokers’ articles are at least sold in the same type of retail outlets, such as tobacconists; they target the same public who can expect that these goods are produced under the control of the same business entity. Since smokers’ articles include electronic cigarettes, some of the contested goods, such as smokers’ mouthpieces for electronic cigarettes; cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes are complementary to such electronic smoking devices. Therefore, and even if it cannot be excluded that some of the goods coincide in other relevant criteria for the comparison, it is considered that the contested goods are at least similar to the opponent’s tobacco for smoking; cigars, cigarettes; smokers’ articles.

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 relevant goods are directed at the public at large.

The degree of attention may vary from average to higher than average, depending on the specialised nature of the goods, the frequency of purchase and their price. In particular, even if 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. MARK)/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.).

c) Distinctiveness of the earlier mark and comparison of the signs

MAYA	AYA
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 distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion. Since the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se.

The earlier mark is a one-word mark. The word ‘MAYA’ will be perceived by the relevant public as a female name. It is also not excluded that part of the relevant public will associate it with an ancient Maya civilisation in southern Mexico and elsewhere in central America. In any case, the word ‘Maya’ is not related in any way to the relevant goods and therefore the distinctiveness of the earlier mark is seen as normal.

The contested sign is also a one-word mark. The word ‘AYA’ has no meaning for the significant part of the relevant public. However, it is not excluded that part of the relevant public will perceive it as a female name as the opponent claims, however, even if perceived as a female name, it will be perceived as a different female name from ‘Maya’. Furthermore, it is not excluded that part of the relevant public may attribute another concept to the verbal element ‘AYA’ as, for example, part of the Spanish-speaking part of the public may associate it with a person at home who is in charge of taking care of the children (a nanny) or the Italian-speaking part of the public may associate it with a similar Italian word ‘aia’ which means a ‘farmyard’. Independently of the word ‘AYA’ being perceived as having the aforementioned meanings or as a meaningless word, its distinctiveness is average.

Visually, the signs coincide in the letters ‘AYA’ and they differ in the letter ‘M’ in the earlier mark. The differing letter ‘M’ is the first letter of the earlier trade mark. The contested sign is a short sign as it is composed of only three letters and consumers will be able to perceive it immediately in its entirety. The earlier mark, too, is a relatively short sign. It means that each individual letter comprising these signs has an impact on the consumer. Taking into account the striking difference resulting from the letter ‘M’ in the earlier mark which has no resemblance to the letter ‘A’ in the contested sign, the signs are visually similar to a low degree.

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 ‛AYA’, present identically in both signs. The pronunciation differs in the sound of the letter ‛M’ of the earlier mark. The differing sound of the letter ‘M’ will be pronounced at the beginning, it is clearly perceivable aurally and, since it is a consonant, it sounds completely differently from the initial vowel of the contested sign. Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since the earlier mark will be associated with the female name and/or with the Maya civilisation whilst the contested sign will be either meaningless or will evoke different concepts as explained above (depending on the part of the public), the signs conceptually are dissimilar or not similar (depending on the public’s perception of the contested sign).

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

d) Global assessment, other arguments and conclusion

The goods are identical or at least similar. They target the public at large which displays between an average and higher-than-average degree of attentiveness. The signs are visually similar to a low degree, aurally similar to an average degree and conceptually dissimilar or not similar (depending on the relevant public’s perception of the contested sign).

The length of the signs may influence their overall impression and thus the effect of the differences between them. In principle, the shorter a sign, the more easily the public is able to perceive all of its single elements. The signs at issue are either short marks or relatively short and consumers will be able to perceive them immediately in their entirety. Therefore, it is considered that the difference between the marks in one letter is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs.

The additional different letter in the earlier mark, namely letter ‘M’, is not a phonetically and/or visually similar letter to the letters ‘AYA’. In addition, the fact that this differing letter ‘M’ appears at the beginning of the earlier mark is also important. Moreover, conceptually the earlier mark conveys a concept for the relevant public whilst the contested sign is either meaningless or conveys a different concept. As explained above, even if both words ‘Maya’ and ‘Aya’ are perceived as female names, they will be perceived as two different names and not variations of each other. Given the concepts evoked by the earlier mark or by both signs, and taking into account that consumers will be able to immediately grasp all the letters of the contested sign, it is unlikely that consumers could confuse the signs because of the imperfect recollection of them, especially when the degree of attentiveness of the relevant public is at least average. Consequently, although the earlier mark contains the letters that are present in the contested mark, this is not sufficient in itself to lead to a finding of likelihood of confusion. The Opposition Division considers that the consumers will be able to safely distinguish between the signs.

There is also no reason to conclude that consumers would, even if they did not confuse the marks directly, assume that the goods bearing the marks in question originate from the same undertaking, even though the goods are identical or at least similar. Due to the concept evoked by the earlier trade mark whilst the contested sign is either meaningless or evokes different concepts, consumers have no reason to assume that the marks are variants of each other designating different lines of products.

The opponent refers to previous decisions of the Office to support its arguments, namely to decisions in oppositions B 1 116 690, B 2 680 737, B 2 697 384, B  2 749 433 and to the decision of the Boards of Appeal in case R 2231/2014. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent with respect to the similarity between the signs are not relevant to the present proceedings because contrary to the present case, in the cases referred to by the opponent either both signs conveyed the same meaning (‘Power’ v ‘V-Power’) or there was conceptual similarity between the signs (‘vapouriz and ‘vapourized’) or the only two letters of the earlier mark were incorporated in the contested sign ‘VT’ v ‘VT VEGA TORO’ (fig.mark), whereas in the present case the signs are conceptually not similar or even dissimilar as explained above. Therefore, the opponent’s references to those cases have to be disregarded.

The opponent has also submitted a copy of a previous national decision to support its arguments, namely it submitted the decision of the Swiss Federal Institute of Intellectual Property. However, the copy of this decision was filed in a language other than the language of the present proceedings. Furthermore, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Considering all the above, there is no likelihood of confusion on the part of the public even for identical or similar goods. Therefore, the opposition must be rejected.

The opponent has also based its opposition on earlier European Union trade mark registration No 11 106 507 (figurative mark) registered for the following goods:

Class 34: Tobacco; smokers’ articles; matches; matches; match boxes; tips of yellow amber for cigar and cigarette holders; tobacco pouches; humidors; cigarette tips; mouthpieces for cigarette holders; lighters for smokers; books of cigarette papers; ashtrays for smokers; chewing tobacco; cigars; cigarettes; cigarettes (pocket machines for rolling -); cigarettes containing tobacco substitutes, not for medical purposes; cigarillos; cigar cutters; spittoons for tobacco users; pipe cleaners for tobacco pipes; cigarette filters; cigar holders; cigarette holders; herbs for smoking; cigarette paper; absorbent paper for tobacco pipes; firestones; tobacco pipes; match holders; cigar cases; cigarette cases; tobacco jars; snuff; pipe racks for tobacco pipes; gas containers for cigar lighters; tobacco; snuff boxes; unworked and manufactured tobacco; tobacco for smoking, snuff, chewing tobacco; herbs for smoking; cigars, cigarettes, cigarillos; herbal cigarettes; cigarette paper; cigarette cases; tobacco in plug form and in rolls; matches; smokers’ articles; lighters for smokers; cigar and cigarette boxes, not of precious metal; cigar and cigarette cases, not of precious metal.

This earlier right invoked by the opponent is less similar to the contested mark. This is because it is a figurative mark and its only verbal element is depicted vertically instead of horizontally — which is a normal way of writing — and such an unconventional way of displaying the verbal element makes it more difficult to read and perceive the verbal element as ‘Maya’, and, consequently, creates an even larger difference from the contested sign. Furthermore, the verbal element in this trade mark is placed against a multicolour rectangular background which also adds further visual difference between this mark and the contested sign. Therefore, despite this earlier trade mark covering a wider scope of the goods than the earlier trade mark No 4 172 615, the outcome cannot be different with respect to this earlier mark; nor does a likelihood of confusion exist on the basis of the earlier European Union trade mark No 11 106 507.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent. For the sake of completeness, the Opposition Division notes that both earlier rights invoked by the opponent are currently under cancellation proceedings. However, it is not necessary to suspend the present proceedings until a final decision is taken in these cancellation actions, as the present opposition is not successful on the basis of these rights.

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, 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

Solveiga BIEZA

Birute SATAITE-GONZALEZ

Erkki MÜNTER

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.