OPPOSITION No B 3 057 438

CTBAT International Co. Limited, 29th Floor, Oxford House, Taikoo Place 979 King's Road Island East, Hong Kong, Hong Kong Special Administrative Region of the People's Republic of China (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

Nobel Quest International Pte Ltd, OMC Chambers, P. O. Box 3152 Road Town, Tortola, Virgin Islands (British) (applicant), represented by Cam Trade Marks and IP Services, St John's Innovation Centre Cowley Road CB4 0WS Cambridge, United Kingdom (professional representative).

On 26/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 057 438 is upheld for all the contested goods.

2. European Union trade mark application No 17 885 515 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 17 885 515 for the word mark ‘XISHANGXI’. The opposition is based on, inter alia, European Union trade mark registration No 13 298 468 for the word mark ‘SHUANGXI’. 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.

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 European Union trade mark registration No 13 298 468.

1. The goods

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

Class 34: Cigarettes; tobacco; tobacco products; lighters; matches; smokers' articles.

The contested goods are the following:

Class 34: Tobacco; smokers' articles; matches; cigarettes; cigarette cases; cigarette filters; cigarette holders; cigarette paper; cigarette tips; mouthpieces for cigarette holders; tobacco pipes; cigarillos; cigars; ashtrays for smokers; lighters for smokers.

The contested cigarillos; cigars are included in the broad category of the earlier tobacco products. Consequently, they are identical.

Cigarettes; tobacco; matches; smokers' articles are identically contained in both lists of goods (including synonyms).

The contested cigarette cases; cigarette filters; cigarette holders; cigarette paper; cigarette tips; mouthpieces for cigarette holders; tobacco pipes; ashtrays for smokers are included in the broad category of the earlier smokers' articles. Therefore, they are identical.

The contested lighters for smokers are included in the broad category of the earlier lighters. Thus, 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.

The degree of attention is considered to vary from average to high.

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 is not valid for other goods in Class 34 such as matches or lighters, for which the degree of attention is deemed to be average.

3. The signs

SHUANGXI	XISHANGXI
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 is a word mark. It consists of the word ‘SHUANGXI’. The contested sign consists of the word ’XISHANGXI’. None of these words has a meaning in any of the European languages. Therefore, these signs are distinctive.

Visually, the signs coincide in the letters ‘SH(x)ANGXI’ of the distinctive word ‘SHUANGXI’ of the earlier mark and of the distinctive word ‘XISHANGXI’ of the contested sign. However, they differ in the additional third letter ‘U’ of the earlier mark and the first two letters ‘XI’ of the contested sign, ‘XISHANGXI’.

Therefore, the signs are visually similar to an average 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 ‘S-H-(x)-A-N-G-X-I’, present identically in both signs. However, they differ in the sound of the third letter ‘U’ of the earlier mark ‘SHUANGXI’ and in the sound of the first two letters ‘XI-‘ of the contested sign. As regards these two latter elements, the Opposition Division notes that they correspond to the last syllable of both signs, namely ‘XI’. This circumstance counterbalances the degree of dissimilarity that they give to the signs overall.

Consequently, the signs are aurally similar to an average degree.

Conceptually, as also claimed by the applicant in its observations of 15/03/2019, given that Chinese is not an official language of the European Union and the average consumer in the relevant territory does not have any knowledge of Chinese, a conceptual comparison of the marks cannot be made.

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, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods in Class 34 covered by the trade marks in dispute have been found identical. They are directed at the public at large whose degree of attention is considered to vary, in this case, from average to relatively high.

As regards the signs, they are visually and aurally similar to an average degree. In fact, they coincide in the majority of their letters, which are, respectively, XISHANGXI’ and ‘SHUANGXI’. These verbal elements have no meaning in any of the European languages and are, therefore, distinctive.

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).

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).

As the goods are identical and there is a visual and aural similarity to an average degree between the signs, and in the absence of any other factor, a likelihood of confusion exists, also because the differences between the signs are confined to secondary elements and aspects. This is valid also for those goods for which the consumers are expected to pay more attention, such as cigarettes and tobacco.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 298 468. It follows that the contested sign must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 13 298 468 leads to the success of the opposition and to the rejection of the contested sign for all the goods against which the opposition was directed, there is no need to examine the other earlier marks invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Andrea VALISA

Andrea VALISA

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.