CANCELLATION No C 43 804 (INVALIDITY) 

 

Yunnan Tobacco International Co., Ltd, No. 345, Panjing Street, Panlong District, Kunming City, Yunnan Province, People’s Republic of China (applicant), represented by Loesenbeck · Specht · Dantz, Am Zwinger 2, 33602 Bielefeld, Germany (professional representative)

 

a g a i n s t

 

Shenzhen Horizon Technology Company Limited, Room 602 Bldg. A Jialingyugongmao Mansion Dabu North Rd Houting Community Shajing Street Baoan Dist., Shenzhen, People’s Republic of China (EUTM proprietor), represented by Nextmarq, 1 Rue Chabrier, 13100 Aix-en-Provence, France (professional representative).

On 04/05/2021, the Cancellation Division takes the following

 

 

DECISION

 

 

1.	The application for a declaration of invalidity is upheld.

 

2.	European Union trade mark No 17 993 504 is declared invalid in its entirety.

 

3.	The EUTM proprietor bears the costs, fixed at EUR 1 080.

 

REASONS

 

On 13/05/2020, the applicant filed a request for a declaration of invalidity against European Union trade mark registration No 17 993 504 (figurative mark), (the EUTM). The request is directed against all the goods covered by the EUTM, namely against all the registered goods in Class 34. The application is based on European Union trade mark registration No 15 912 959  (figurative mark), (the Earlier EUTM). The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

 

SUMMARY OF THE PARTIES’ ARGUMENTS

 

The applicant argues that there is a likelihood of confusion on the part of the relevant public on account of the identity of the goods and the similarity of the signs.

 

The EUTM proprietor requests for the invalidity application to be rejected in its entirety since, in its view, the signs differ visually, aurally and conceptually.

The Cancellation Division will detail and assess further down below the arguments of the parties that are relevant for the case at hand.

 

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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. 

 

a) The goods

 

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

 

Class 34: Tobacco, whether manufactured or unmanufactured; tobacco products; tobacco substitutes, none being for medicinal or curative purposes; cigarettes; cigarillos; cigars; hand-held machines for making cigarettes; cigarette tubes; cigarette filters; cigarette papers; electronic cigarettes; liquids for electronic cigarettes; matches and smokers' articles.

The contested goods are the following: 

Class 34: Electronic cigarettes; ashtrays for smokers; snuff boxes; tobacco pipes; oral vaporizers for smokers; matchboxes; lighters for smokers; cigarette paper; flavorings, other than essential oils, for use in electronic cigarettes.

All of the contested goods are identical to goods of the Earlier EUTM. The contested electronic cigarettes, matchboxes and cigarette paper are also reproduced in the specification of the Earlier EUTM (including synonyms). The contested ashtrays for smokers; snuff boxes; tobacco pipes and lighters for smokers are encompassed by the broader category of the applicant’s smokers’ articles. The contested oral vaporizers for smokers fall under the broad category of the applicant’s electronic cigarettes or at least they overlap and the contested flavorings, other than essential oils, for use in electronic cigarettes are covered by the broader category of liquids for electronic cigarettes of the Earlier EUTM.

 

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. As regards the degree of attention of the relevant public, the applicant claims that the consumer has a lower degree of attention and awareness, whereas the EUTM proprietor puts forward that, given the nature of the contested goods in Class 34, the awareness of the relevant public is higher than average.

The Cancellation Division agrees with the EUTM proprietor in that 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.). Albeit the case at hand concerns, inter alia, electronic cigarettes, liquids for electronic cigarettes and flavorings, other than essential oils, for use in electronic cigarettes and not classical cigarettes, the Cancellation Division is of the opinion that a higher than average degree of attention also applies to the respective relevant goods, for similar reasons related to brand loyalty. Nevertheless, the relevant goods also encompass products for which the above does not hold true, such as matches or smokers’ articles in relation to which the level of attention can vary from low to average, depending on their price or frequency of purchase.

 

c) The signs

 

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, bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The marks to be compared are figurative, as shown in the above table.

A part of the relevant public (such as the English-, French-, Spanish-, Italian- or German- speaking consumers) will understand ‘HORIZON’ of the earlier mark as referring to the line at which the earth's surface and the sky appear to meet, either because this word exists as such in the respective language (horizon in English or French) or because it is close to the equivalent word (horizonte in Spanish, orrizonte in Italian or Horizont in German). For the remaining consumers this element will not be associated with any semantic content. Either way, the ability of this word to indicate the commercial origin of the relevant goods is average, since it bears no descriptive or otherwise weak meaning in relation to the goods concerned.

The earlier mark further includes a figurative element of a stylized leaf in black, on the surface of which other elements, of a significantly smaller size, are portrayed in white (an open hand, a house, a bird, a sun or a flower etc.). On account of the particular way this element is depicted, the Cancellation Division is of the view that the respective element does not convey any clear, immediate and perceptible meaning in relation to the relevant goods and as such its distinctiveness per se is average. Nonetheless, it is recalled that the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37). Bearing in mind the foregoing, the Cancellation Division is of the opinion that, contrary to the proprietor’s views, it is the verbal component ‘HORIZON’ that will primarily focus and retain consumers’ attention and thus have a stronger impact on the relevant public and not the figurative element of the leaf.

The sole component of the contested sign, ‘HorizonTech’, does not exist as such in any of the official languages spoken in the relevant territory. It is however settled case-law that although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). It follows from the foregoing that the public under analysis will naturally break down the contested sign and single out ‘Horizon’ and ‘Tech’. The element ‘Tech’ will be treated by the relevant public as a reference to technical or technology since the use of the abbreviated form ‘Tech’ is customary and has become part of general usage in word combinations (see by analogy decision of the Board of Appeal of 27/01/2017, R 1260/2016-5, GALVOTEK LASER (fig.) / GRAVOTECH et al., § 28). In the context of the relevant goods and contrary to the proprietor’s claims, ʽTechʼ will be perceived as a reference to the fact that these goods have, or have been produced with, innovative technological features. Given its descriptive nature this element does not lend itself to functioning as an identifier of commercial origin. The considerations on the meaning and distinctiveness of ‘HORIZON’ in the earlier mark are equally valid and apply to the element ‘Horizon’ of the contested sign. Against this background, the most distinctive element of the contested sign is ‘Horizon’.

The EUTM proprietor’s argument that the Earlier EUTM depicts the term ‘HORIZON’ in a particular typeface cannot prosper. The stylization of the marks’ verbal elements is neither particularly striking nor fanciful and does not depart significantly from a standard typeface. In any case it will be perceived as a mere embellishment of the words themselves and as such with no trade mark significance.

The contested sign does not have an element which is clearly more visually outstanding than other elements.

Contrary to the EUTM proprietor’s assertions, the same applies to the earlier mark. While the figurative element of the leaf is, admittedly, positioned above the verbal component and depicted in a slightly bigger size, the word element ‘HORIZON’ is nevertheless clearly legible and visible in the mark and it cannot be deemed as overshadowed by said figurative component to the point where the latter could be deemed as undoubtedly visually dominant.

 

Visually, the contested sign reproduces in its beginning, where consumers’ attention is mostly focused on and as its most distinctive element, the entirety of the earlier mark’s sole verbal element, ‘HORIZON’. The differences between the signs are confined to the figurative element of the leaf in the earlier mark, the remaining component ‘-Tech’ of the contested sign and the overall stylization of the marks’ script. However, as detailed above, ‘Tech’ has no ability to function as a badge of origin. Furthermore, consumers will not attribute any trade mark significance to the marks’ stylization. Therefore and account also taken of the impact of the figurative element of the leaf (as explained), the signs are similar to at least 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 ‘h/o/r/i/z/o/n’, present identically in both signs and differs in the sound of the last four letters ‘t/e/c/h’ of the contested mark. Bearing in mind the weight attributed to the differentiating element, it is concluded that the signs are aurally similar to a high degree.

 

Conceptually, the EUTM proprietor contends that the signs refer to totally different meanings and are therefore dissimilar. In its view, the contested sign refers to a technology called ‘Horizon’, whereas the earlier mark refers to the environment and landscape through the presence of the leaf and of the meaningful term ‘horizon’. Such arguments cannot be accepted. There is no reason to assume that those consumers that understand ‘HORIZON’ with the meaning of the line at which the earth's surface and the sky appear to meet, will perceive this concept in the earlier mark only and at the same time see ‘Horizon’ as a meaningless ‘name’ of a technology in the contested sign. Therefore, the Cancellation Division takes the view that for part of the public there is a link on account of ‘HORIZON’ and to that extent the signs are conceptually similar to an average degree. For the remaining consumers that do not perceive a semantic content in this word, the signs are not conceptually similar since in any case the Earlier EUTM will be associated with the distinctive concept of a leaf.

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 applicant argued that the distinctiveness of the Earlier EUTM is above average since the word ‘Horizon’ is very fanciful for the goods in question. In this regard, the Cancellation Division recalls that a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and/or services (16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71). It is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. This degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use or because it is highly original, unusual or unique (26/03/2015, T-581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49, last alternative). However, in the case at hand no such evidence has been made available by the applicant.

 

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 from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

 

e) Global assessment, other arguments and conclusion 

 

The contested goods are identical to goods of the Earlier EUTM.

As shown in detail in section c) above, the signs are similar overall visually and aurally, and, for a part of the public, also conceptually.

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. In the present case it is highly conceivable that when encountering the contested sign the relevant consumers (even when displaying a higher degree of attention) will make an association with the Earlier EUTM which will lead them to believe that the goods that were found identical come from the same or economically linked undertakings.

 

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

 

Therefore, the application is well founded on the basis of the applicant’s Earlier EUTM. It follows that the contested trade mark must be declared invalid for all the contested goods.

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

 

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

 

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

 

 

The Cancellation Division

 

Nicole CLARKE

Oana-Alina STURZA

Ana MUÑIZ RODRIGUEZ

 

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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.