OPPOSITION No B 3 050 739

Landewyck Tobacco S.A., 3, 1 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

Shenzhen Zun Yi Pin Technology Co. Ltd, 3/F No.45 Futang Road, Tangxiayong Industrial Area, Songgang Sub-District, Bao An District, Shenzhen City, Guangdong Province, China (applicant), represented by Aomb Polska sp. z o.o., Emilii Plater 53, 21st floor, 00 113 Warszawa, Poland (professional representative).

On 17/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 739 is upheld for all the contested goods.

2. European Union trade mark application No 17 619 412 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 17 619 412 for the word mark ‘AUSTON’, namely against all the goods in Class 34. The opposition is based on European Union trade mark registration No 1 381 086 for the word mark ‘AUSTIN’. 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: Cigarettes, cigars, tobacco leaves or manufactured tobacco; smokers' articles; matches, cigarette filters; cigarette paper.

The contested goods are the following:

Class 34: Electronic cigarettes; liquid solution for use in electronic cigarettes; flavouring, other than essential oils, for use in electronic cigarettes; tips of yellow amber for cigar and cigarette holders; tobacco pouches; tobacco pipes; cigarette cases; cigarette holders; cigarettes; mouthpieces for cigarette holders; pipe cleaners for tobacco pipes; oral vaporizers for smokers; lighters for smokers; tobacco.

Contested goods in Class 34

Cigarettes are identically contained in both lists of goods.

Tobacco is a product prepared from the leaves of the tobacco plant and consumed by way of smoking. Therefore, the opponent’s tobacco leaves or manufactured tobacco is included in the contested tobacco, as it is the broader category. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Smokers’ articles are equipment and accessories used to and related to smoking. The contested electronic cigarettes; liquid solution for use in electronic cigarettes; flavouring, other than essential oils, for use in electronic cigarettes; cigarette holders; tips of yellow amber for cigar and cigarette holders; tobacco pipes; lighters for smokers; cigarette cases; mouthpieces for cigarette holders; tobacco pouches; pipe cleaners for tobacco pipes; oral vaporizers for smokers are all items that are smoked themselves or used in connection with the smoking habit. Hence, they are included in the broad category or overlap with the opponent’s smokers’ articles. Therefore they are identical.

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.)

The same applies to smokers’ articles, because, for instance, smokers of roll-your-own cigarettes also show a certain brand loyalty towards cigarette papers and filters (21/10/2014, R 2515/2013-5, D&B (fig.) / D&J (fig.), § 16).

3. The signs

AUSTIN	AUSTON
Earlier trade mark	Contested sign

The relevant territory is 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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The contested mark is a word mark solely composed of the word ‘AUSTON’, which has no dictionary meaning and is therefore distinctive for the relevant goods.

The earlier mark is a word mark consisting of the word ‘AUSTIN’. The verbal element for part of the relevant public may be known as the name of city in central Texas, on the Colorado River or as a masculine name (information extracted from Collins Dictionary on 16/04/2019 at https://www.collinsdictionary.com/dictionary/english/austin). For the remaining part of the public, which is not familiar with such a city or name, ‘AUSTIN’ will be perceived as a fanciful word.

In any case, the word ‘AUSTIN’ is considered distinctive, as it will be perceived either as having no meaning or with a meaning, which does not evoke any of the characteristics of the relevant goods.

Visually and aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in their four first letters and their final letter, namely ‘AUST*N’. The signs differ only in their penultimate letters ‘I/O’ and this difference is less noticeable than the commonalities arising from the elements found to be identical.

Taking above into account, the signs are considered visually and aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Therefore, for the part of the relevant public for which the earlier mark evokes a concept, the signs are not conceptually similar.

For the part of the relevant public, which perceives the earlier sign as a fanciful word, neither of the signs has a meaning for the public in the relevant territory. 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.

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. Considering what has been stated in section c) of this decision, the distinctiveness of the earlier mark is average for the goods in question.

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).

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 who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

In the present case, the goods in conflict are identical. They are directed at the public at large whose degree of attention is higher than average. The earlier mark has a normal degree of distinctiveness.

The differences between the signs in comparison, which lie only in their respective penultimate letters, are not sufficient to counteract their high degree of visual and aural similarity. Although the signs are conceptually not similar for a part of the public, neither of the marks conveys a concept that could assist in differentiating them for the rest of the relevant public. Consequently, when encountering the signs in relation to identical goods, the relevant public, even with higher degree of attention is likely to think that they come from the same undertaking or from economically linked undertakings.

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 1 381 086. It follows that the contested trade mark must be rejected for all the contested goods.

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

Claudia MARTINI

Alexandra APOSTOLAKIS

Renata COTTRELL

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.