OPPOSITION No B 3 073 343

Cigarros y Puros Canarios, S.L., Avd. de los Menceyes, 366, 38205 San Cristobal de la Laguna, Spain (opponent), represented by C.I. de Propiedad Industrial, S.L., Calle Alberto Alcocer, 3-5º-dcha., 28036 Madrid, Spain (professional representative)

a g a i n s t

CS food experience B.V., Voorsteven 7, 4871 DX Etten-Leur, the Netherlands (applicant), represented by Signfield N.V., Paardenmarkt 1, 1811 KH Alkmaar, the Netherlands (professional representative).

On 30/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 073 343 is upheld for all the contested goods.

2. European Union trade mark application No 17 953 117 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 17 953 117 . The opposition is based on, inter alia, Spanish trade mark registration No M 3 686 168 . The opponent invoked Article 8(1)(a) and (b) EUTMR.

PRELIMINARY REMARK

The applicant claims that the earlier Spanish trade marks on which the opposition is based were filed in bad faith, and submitted evidence in this regard. However, the Office is not competent to assess these allegations. In the absence of any evidence showing that proceedings are pending against those earlier marks before the competent national authorities, and also taking into account the current status of the marks as shown in TM View, they are considered valid bases of this opposition.

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 Spanish trade mark registration No M 3 686 168.

a) The goods

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

Class 32: Beers; mineral waters and other drinks without alcohol; beverages based on fruits and fruit juices; siropes and other preparations to prepare beverages; all of them with extract of cannabis and / or essence of cannabis.

The contested goods are the following:

Class 32: Beers; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages; Energy drinks.

The opponent’s goods, which are different kinds of drinks and preparations for the making of such, are included in, or overlap with, the contested goods. Therefore, the goods are identical.

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 are directed at the public at large, whose degree of attention is considered to be average.

c) The signs

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 contested sign is a figurative mark composed of the verbal elements ‘CANNA’, in green, bold capital letters in a slightly stylised typeface with a pattern consisting of cannabis leaves and, thereunder, ‘shot’, in pink, bold lowercase letters in a rather standard typeface. Above these verbal elements there is a grey figurative element composed of a spherical device with a cannabis leaf, from which two thunderbolt-like elements emerge to the left and right.

The earlier mark is a figurative mark composed of the verbal elements ‘CANNA’, in green, bold capital letters in a rather standard typeface and ‘SHOT’, in pink, bold capital letters in a slightly stylised typeface. These verbal elements are depicted against a background made up of green cannabis leaves.

The cannabis leaves forming the background of the earlier mark and also included in the contested sign essentially point to the fact that the relevant goods contain extracts of cannabis, i.e. of the hemp plant, in particular Indian hemp (https://dle.rae.es/cánnabis). Moreover, these figurative elements are of a rather decorative nature. Therefore, they are less distinctive than the verbal elements of the signs. This is because the latter, taken as a whole, have no meaning for the relevant public, although the element ‘CANNA’ may be perceived as allusive of cannabis in the given context, at least by a part of the public. In that case its distinctiveness is reduced.

The earlier mark has no element that could be considered clearly more dominant than other elements, while the elements ‘CANNA’ and ‘shot’ dominate the contested sign, as they are more eye-catching than the considerably smaller figurative element on top.

Visually, the signs coincide in their verbal elements, ‘CANNA’ and ‘SHOT’, and in their depiction in the same shades of green and pink. They also coincide in the typefaces used, although in reverse order, and in the use of cannabis leaves as figurative elements. They merely differ in the positioning of the verbal elements next to each other and in two lines, respectively, in the use of upper vs. lower case letters in the element ‘shot’, and in the concrete configuration of their figurative elements.

Taking into account what has been stated above with regard to the distinctiveness of the signs’ individual components, the signs are visually highly similar.

Aurally, the signs are identical.

Conceptually, neither of the signs has a meaning as a whole. The attention of the relevant public will mainly be attracted by the verbal elements, which, at least in their combination, are fanciful. However, the coinciding element ‘CANNA’, if perceived as allusive of cannabis, and the figurative elements, although they are all less distinctive, will evoke the same concept in both signs, as explained above. To that extent, the signs are conceptually similar to a low degree.

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 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, despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

e) 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).

Likelihood of confusion covers situations where the consumer directly confuses the trademarks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings.

Account is also 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).

The goods have been found identical, and the distinctiveness of the earlier mark is normal. The signs, which are composed of identical verbal elements and similar figurative elements and colours, are visually highly similar and aurally identical. They also display a low conceptual similarity owing to their figurative components and, as the case may be, to the coinciding verbal element ‘CANNA’. Therefore, consumers who display an average degree of attention may be mistaken about the origin of the identical goods.

Indeed, consumers could be led to believe that the signs constitute variations of the same mark, configured in a slightly different way, for example to fit different sizes or formats of packaging, or within the framework of a modernisation of the mark.

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

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No M 3 686 168. It follows that the contested trade mark must be rejected for all the contested goods.

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

Likewise, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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

Judit NÉMETH

Natascha GALPERIN

Robert MULAC

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.