OPPOSITION No B 3 081 540

JT International S.A., Rue Kazem-Radjavi 8, 1202 Geneva, Switzerland (opponent), represented by Baylos, C/ José Lázaro Galdiano, 6, 28036 Madrid, Spain (professional representative)

a g a i n s t

Shenzhen Innokin Technology CO. LTD, Building 6, XinXinTian Industrial Park Xinsha Road, Shajing Baoan District, 518104 Shenzhen, People’s Republic of China, (applicant), represented by Metida Law Firm Zaboliene and Partners, Business center V3 Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).

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

DECISION:

1. Opposition No B 3 081 540 is upheld for all the contested goods.

2. European Union trade mark application No 18 012 723 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 18 012 723 for the figurative sign . The opposition is based on, inter alia, international trade mark registration No 1 187 348 designating, inter alia, Spain for the word mark ‘SLIDE’. 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 international trade mark registration No 1 187 348 designating Spain for the word mark ‘SLIDE’.

a) The goods

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

Class 34: Tobacco, raw or manufactured; smoking tobacco, pipe tobacco, rolling tobacco, chewing tobacco, moist tobacco powder called "snus"; cigarettes, cigars, cigarillos; substances for smoking sold separately or mixed with tobacco for non-medical and non-therapeutic purposes; snuff; smokers' articles included in this class; cigarette paper, cigarette tubes and matches.

The contested goods are the following:

Class 34: Tobacco; electronic cigarettes; cigarettes; liquid nicotine solutions for use in electronic cigarettes; tobacco pipes (not of precious metal); filter tips; cigarette lighters; oral vaporizers for smokers; flavourings, other than essential oils, for use in electronic cigarettes; cigarette filters.

Tobacco; cigarettes are identically contained in both lists of goods (including synonyms).

The contested electronic cigarettes; liquid nicotine solutions for use in electronic cigarettes; tobacco pipes (not of precious metal); filter tips; cigarette lighters; oral vaporizers for smokers; flavourings, other than essential oils, for use in electronic cigarettes; cigarette filters are included in the broad category of, or overlap with, the opponent’s smokers' articles included in this class. Therefore, they 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. 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.).

c) The signs

SLIDE
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 verbal elements ‘SLIDE’ and ‘ZLIDE’ are meaningless in Spanish. As these verbal elements have no meaning for the relevant public, they are, therefore, distinctive. The stylisation of the letters in the contested sign is rather commonplace and has, therefore, a limited impact on the comparison.

Visually, the signs coincide in ‘*LIDE’. However, they differ in their first letters, namely ‘S’ in the earlier mark and ‘Z’ in the contested sign, and also in the slight stylisation of the verbal element in the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘*LIDE’, present identically in both signs. The pronunciation differs in the sound of their first letters, that is, namely ‘S’ in the earlier mark and ‘Z’ in the contested sign. However, these letters are pronounced very similarly.

Therefore, the signs are aurally similar to a high 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.

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.

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).

The goods are identical and they target the general public, whose degree of attention is higher than average. The signs are visually similar to an average degree and aurally similar to a high degree. The conceptual aspect does not influence the assessment of the similarity of the signs. Furthermore, the earlier mark has a normal degree of distinctiveness.

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).

Bearing in mind the consumer’s imperfect recollection, the similarities between the signs and the identity between the goods, as well as the fact that the signs coincide in four out of five letters and that the only different letters have a similar pronunciation, the aforesaid differences are not sufficient to outweigh the similarities between them and to exclude any likelihood of confusion. Although more attention is usually paid to the beginnings of signs, this perspective cannot prevail in all cases and cannot undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs. The signs as such are meaningless which makes the confusion very likely as the public cannot differentiate between the signs due to their meaning.

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

As the earlier right, namely international trade mark registration No 1 187 348 designating Spain for the word mark ‘SLIDE’, 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).

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, 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

Helen Louise MOSBACK

Michal KRUK

Teodora TSENOVA-PETROVA

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.