OPPOSITION No B 3 066 018

Dunhill Tobacco of London Limited, Globe House, 4 Temple Place, London WC2R 2PG, United Kingdom (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

Aoxin Zhitong (Guangzhou) Trading Co., Ltd., Rm A8, 2-3F, West Side, No. 3-1 Dasonggang, Jiangnan Avenue Middle Rd, Haizhu Dist, Guangzhou, Guangdong, People’s Republic of China (applicant), represented by Sakellarides Law Offices, Adrianou Str. 70, 10556 Athens, Greece (professional representative).

On 10/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 066 018 is upheld for all the contested goods.

2. European Union trade mark application No 17 900 515 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 17 900 515 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 3 476 355 for the word mark ‘DUNHILL’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in relation to that earlier right.

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier European Union trade mark registration No 3 476 355 for the word mark ‘DUNHILL’, for which the opponent claimed repute in the EU.

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 above mentioned 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 mark

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 14/05/2018. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union 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:

Class 34: Cigarettes, cigars, cigarillos, roll-your-own tobacco, pipe tobacco, tobacco and tobacco products.

The opposition is directed against the following goods:

Class 34: Electronic smoking pipes; electronic cigarettes; electronic cigarette boxes; flavored tobacco; cigars; cigarettes; cigar cutters; safety matches; leaf tobacco; electronic cigars.

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 09/05/2019, the opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence primarily consists of enclosure 2, namely a witness statement by the Trade Mark and Marketing Counsel of the opponent’s company, signed on 09/05/2019, and containing detailed information about the launch and the history of the opponent’s brand ‘DUNHILL’ marketed both, worldwide and particularly in the EU. According to the witness, BAT (British American Tobacco, in the role of house brand) is considered one of the largest tobacco companies in the world selling its brands in more than 200 markets. Furthermore, so the witness states, BAT was a market leader in more than 55 markets in 2018. In addition, ‘BAT owns some of the world’s most well-known cigarette brands, among which is the earlier mark “DUNHILL”’.

The Opposition Division notes that none of the last claims have been supported by particular evidence. Nevertheless, the witness provides a set of attachments that have to be taken into account in the present assessment:

Exhibit 1: extracts from the official website of the opponent’s company, www.bat.com, illustrating details of the opponent’s establishment, development and expanding through the years until the present moment. As may be seen from the time line given, the opponent’s company was formed in 1902 in the United Kingdom as a joint venture between the UK Imperial Tobacco Company and the US American Tobacco Company. Moreover, as may be deducted from the information contained, the opponent’s company is one of 13 companies to be recognised as a Global Top Employer 2018 by the Top Employers Institute.

Exhibit 2: a screenshot from the official page of the London Stock Exchange, where BAT is listed, inter alia, as constituent of the FTSE 100 Index (dated 29/04/2019).

Exhibits 2A, 3 and 4: extracts containing pictures, dated between 1970 and 1980 (according to the witness), which demonstrate the opponent’s mark ‘Dunhill’ displayed on posters, stands, signages, cafeterias, bars, vehicles, magazines, etc. In addition, the exhibits contain the full history of the brand including some picture references, as well as extract from the Tobacco encyclopaedia by Ernst Voges, published in 1984, containing a section mentioning Dunhill as an international cigarette brand (initially established as a UK company).

Exhibit 5: extracts from a brochure ‘Celebrating Our First 100 Years, Our company, Our Brands, Our People’, which according to the opponent was issued by BAT in 2002 on its 100th anniversary. The Dunhill brand appears with a special column recognised as ‘key cigarette brand in the premium/super premium segment, sold in 120 countries around the world’.

Exhibit 6: extracts from the internet statistics portal Statista (a third party portal containing ‘statistics and studies from more than 22,500 sources’), which despite being accessible via subscription, in the description visible to any users refers in a general manner to the results of a survey conducted by TGI, in particular the number of Dunhill cigarettes purchasers in the UK for 2013 and 2014, estimated as 65,800 in 2013.

Exhibit 7: extracts from the web portal ‘Brand Finance, Brandirectory’ (www.brandirectory.com), demonstrating the Tobacco 50 rating for 2016. As may be seen in the survey, ‘Dunhill’ (UK) is ranked 12th among the most valuable tobacco brands in the world in 2016.

Exhibit 8: a copy of an article published in The Guardian on 05/10/2005, entitled ‘No smoke without fire for Dunhill sponsors’, in which the opponent’s brand ‘Dunhill’ is referred to as ‘one of the world’s most recognisable cigarette brands’.

Exhibits 9-10: extracts showing advertisement stock materials illustrating the vintage packaging of the brand ‘Dunhill’, available at www.alamy.com, as well as Dunhill-branded advertisement items for sale on eBay (jugs, posters, key holders, etc.). In addition, Exhibit 10 contains a screenshot demonstrating commercials published on YouTube channels in 2015.

Exhibits 11 and 12: documents concerning the Dunhill advertisement campaigns, conducted in Bulgaria (dated between 2016 and 2019) and Romania (dated between 2005 and 2018), as well as a screenshot from the website www.cigarety.by, containing references to the Dunhill products sold internationally.

In addition, the witness presents a table demonstrating significant sales of Dunhill branded products over the course of the last years in the EU Member States for 2014-2018. The witness further addresses a survey conducted by the market research agency Nielsen with market shares and sales of the products in various Member States. However, the survey has not been presented additionally in more detail and its results cannot be strictly taken into consideration in that sense. Further references made by the witness are that Dunhill is the fourth biggest selling brand in Malta, fifth in Romania and seventh in Bulgaria. Finally, the witness provides a self-produced table containing the advertisement expenditures of the campaigns referred to in Exhibit 11. None of those facts have been presented with more supportive information and to that extent the Opposition Division will refrain from making a conclusion on those statements only.

However, based on the exhibits only, examined in collaboration with each other and in the context of the facts presented by the witness, the Opposition Division concludes that the earlier trade mark enjoys a high degree of reputation in the European Union, particularly in Bulgaria, Romania and the United Kingdom in relation to cigarettes (Class 34).

As may be deduced from the abovementioned evidence, the earlier trade mark ‘DUNHILL’ has been used for a substantial period of time and is widely known in the EU as a major player in the tobacco sector. It is notable that throughout the years the opponent made the effort to promote its trade mark using various marketing and public relations channels, such information has been attested to in particular in exhibits 1, 2A, 3-5, 8 and 9-12. The results of such marketing efforts are supported by the surveys, rankings and publications presented in exhibits 6-8, which are another strong indicator of the continuous presence and leading role of the opponent’s trade mark in its segment (including referring to its market share).

Consequently, the marketing expenditures, the rankings and the references in various independent media demonstrated by the evidence, all unequivocally demonstrate that the mark ‘DUNHILL’ enjoys a high degree of recognition among a considerable part of the EU consumers (particularly in Bulgaria, Romania and the United Kingdom), in particular, in relation to cigarettes.

b) The signs

DUNHILL
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 elements constituting the two signs are meaningless per se for the EU consumers and are, therefore, distinctive. Contrary to what the opponent states, the relevant consumers, in particular the English-speaking public, have no reason to break down the signs and recognise the words ‘HILL’ in their secondary parts. By contrast, consumers will perceive the signs as a whole, without proceeding to analyse their details and artificially perceive concepts in isolation.

The stylisation of the contested sign (albeit figurative mark) is minor (it is quite a standard typeface) and will have no significant impact on the overall perception of the sign.

Visually and aurally, the signs coincide in the string and the sound of four final letters, ‘***HILL’. However, they differ in their first parts, ‘DUN’ in the earlier mark and ‘Bo’ in the contested sign. Given the fact that consumers usually pay more attention to the beginnings of the signs (reading takes place from left to right), the signs are visually and aurally similar to a low degree.

Conceptually, 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.

The signs are similar to the extent that they have the letters ‘HILL’ in common, which, as concluded above, is positioned in the latter parts of the signs, and conveys some remote similarity between them.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

As has been established above, the earlier mark enjoys a high degree of recognition in relation to cigarettes in Class 34. Furthermore, the conflicting signs are remotely similar. Despite having no concept in common, as concluded above, the signs contain the identical verbal structure ‘HILL’ at their endings. The applicant seeks protection for goods in Class 34, which appear to be:

1. Identical to the opponent’s reputed goods (cigarettes);

2. goods of complementary character (tobacco, matches, etc.);

3. goods that might be directly seen as competition products or alternatives for smokers (electronic cigarettes, electronic pipes, cigars, etc.).

The two parties will operate in the same commercial sector, while the signs are or will be featured on identical or similar goods, that is to say, these products will target the same groups (smokers) and will mostly be available at the same sale spots. Furthermore, the loyalty factor also should be borne in mind since smokers usually exhibit particular preferences when purchasing tobacco products. Consequently, given the proximity of the signs, it is not far from presuming that consumers will be immediately reminded of the earlier mark when encountering the contested sign in the same or neighbouring products segment.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that, the relevant consumers will be likely to associate the contested sign ‘Bohill’ with the earlier mark ‘DUNHILL’, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

d) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims the following:

The use of the trade mark applied for will take unfair advantage of the reputation of the earlier mark, in that it enhances the consumers’ readiness to take note of, and trust in, the products marketed under the trade mark applied for. This risk is greatly enhanced by the very high degree of recognition enjoyed by the earlier mark as shown in enclosure 2. Moreover, due to the consistent and significant use of the brand, the brand ‘DUNHILL’ is unique in its field and triggers an immediate association on the part of the consumers.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following.

 The sign applied for seeks protection for a variety of products for smoking, while all of these goods are identical or highly similar to DUNHILL’s famous tobacco products, in particular to cigarettes.

 The earlier mark ‘DUNHILL’ is famous for its premium quality and exquisite taste and will evoke such sentiment in consumers.

 In view of the close proximity of the goods at issue, consumers would wrongly attribute the positive connotations connected with the earlier reputed mark to the junior mark. The use of the contested sign on the market is likely to cause a material association or link to be made by the relevant average consumer between the applicant and the opponent.

 The applicant is likely to benefit in various ways from the transfer of the reputation and positive characteristics associated with the reputed earlier mark ‘DUNHILL’ without making the necessary efforts, such as extensive brand advertising and wide spread promotion.

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36.)

To sum up, in particular the proximity of the signs seen in the context of the same commercial sector in which both parties seem to be market players, and adding the reputation established in relation to the earlier mark, the Opposition Division concludes that the contested sign may benefit from the positive qualities conveyed by the opponent’s brand. The higher the reputation of the earlier mark, the easier it will be to accept that unfair advantage has been (or will be) taken (14/091999, C‑375/97, Chevy, EU:C:1999:408, § 30; 16/04/2008, T‑181/05, CITI, EU:T:2008:112, § 80; 16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 83).

Indeed, the evidence provided by the opponent for the earlier mark ‘DUNHILL’ not only proves the latter as a longstanding and leading brand in the tobacco sector internationally, but demonstrates that the brand conveys the image of a luxury and premium quality product to consumers. Consequently, the association of the contested sign with the opponent’s reputed brand may serve as a vehicle to facilitate the easier entrance of the mark ‘Bohill’ or to give it an unfair boost in the tobacco sector, for which the applicant did not make the financial efforts. Finally, the good image of the earlier mark may additionally enable positive association of a premium brand, the transfer of which would inevitably change consumer’s behaviour towards the newly appearing brand ‘Bohill’.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

e) Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the remaining ground and earlier rights on which the opposition was based.

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

Sofia SACRISTAN MARTINEZ

Manuela RUSEVA

María del Carmen SUCH SÁNCHEZ

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.