OPPOSITION Nо B 3 087 524

 

JT International Canarias, S.A., C/ Juan Ravina Méndez 1, Barrio de Chamberí, Santa Cruz de Tenerife, Spain (opponent), represented by Baylos, C/ José Lázaro Galdiano, 6, 28036 Madrid, Spain (professional representative)

 

a g a i n s t

 

Flavour Warehouse Holdings Limited, Global Way, Darwen, Lancashire, Bb3 0rw, United Kingdom, Bb3 0rw Darwen, United Kingdom (applicant), represented by Wilson Gunn (Europe), Gudridarstig 2-4, Reykjavik 113, Iceland

On 21/12/2020, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 087 524 is rejected in its entirety.

 

2.	The opponent bears the costs, fixed at EUR 300.

 

REASONS

 

The opponent filed an opposition against all the goods of European Union trade mark application No 18 029 822 ROX (word mark). The opposition is based on the following earlier rights:

- European Union trade mark registration No 3 463 403, REX (word mark) (hereinafter referred to as earlier mark 1);

- Spanish trade mark application No 271 487, REX (word mark) (hereinafter referred to as earlier mark 2).

The opponent invoked  Article 8(1)(b) EUTMR in relation to both earlier rights.

 

PROOF OF USE

Proof of use of the earlier marks was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T-296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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.

  

a)  The goods

 

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

 

Earlier mark 1

Class 34: Tobacco, cigars, cigarettes, cigarillos; Smokers' articles, cigarette holders, pipes, cigar cutters, cigar cases, tobacco jars not of precious metal, tobacco humidifiers, lighters not of precious metal; matches.

Earlier mark 2

Class 34: Cigars, cigarettes, fine-cut tobacco and all types of tobacco.

The contested goods are the following:

 

Class 34: Electronic cigarettes; liquid nicotine solutions for use in electronic cigarettes; flavourings, other than essential oils, for use in electronic cigarettes; electronic cigarette liquids; electronic cigarette liquid solutions containing nicotine; flavour essences for electronic cigarettes and electronic smoking devices; electronic cigarette atomizers; electronic cigarette cartomizers; nicotine-free liquid solutions containing flavourings for electronic cigarettes and electronic smoking devices; personal vaporisers and electronic cigarettes; electronic cigarette boxes; electronic cigarette cases; smokers' articles; parts and fittings for all the aforesaid goods.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier marks which, for the opponent, is the best light in which the opposition can be examined.

 

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 assumed to be identical are directed at the public at large.

An average degree of attention will be paid in relation to part of the goods, for instance in relation to some of the goods covered by the category of the contested smokers' articles, since this category includes, inter alia, lighters, which are cheap and regularly purchased.

 

The rest of the goods consist mainly of smokers´ articles, personal vaporisers and electronic cigarettes, flavourings and solutions therefor, and related parts and fittings. The degree of attention that consumers will pay when purchasing these goods is, by analogy, the same one paid when purchasing regular tobacco products, since they are both directed at smokers, who will choose between them in order to fulfill one same purpose. 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.) Therefore, as explained above, by analogy, a higher degree of brand loyalty and attention is also expected to be paid in relation to the goods herein concerned.

c)  The signs

 

REX	ROX
Earlier trade marks	Contested sign

 

 

The relevant territories are Spain (in relation to the earlier mark 2) and the European Union (in relation to the mark 1)

 

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Both parties claim that the signs compared are meaningless for the relevant public. However, the Opposition Division is aware of the fact that part of the public could perceive the words forming the marks as having a concept (e.g. ‘REX’ being the Latin word for ‘king’), and that for this part of the public the marks could be differentiated from a conceptual perspective. Therefore, in order to focus on the best scenario for likelihood of confusion to arise, the Opposition Division will focus on the significant part of the public in the relevant territories for which the signs are meaningless and of average distinctive character.

 

In the present case, it is relevant to note that the signs are formed only by three letters, and are, therefore, short signs. The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

 

Visually, the signs coincide in their first and third letters, namely ’R’ and ’X’ and differ in their middle letters, ’E’ vs. ’O’, in the earlier mark and contested sign, respectively.

Taking into account the fact that both signs are very short, it is considered that the differences between the signs introduced by the different second letter, out of only three letters, will not go unnoticed by the relevant consumers when they perceive the marks visually. A difference in one character in a sign of only three characters is indeed significant. Moreover, in this case, there is no visual similarity between the letter ‘E and the letter ‘O’ (see, per analogy, 04/05/2018, R-1997/2017-2, LAX (fig.) / Lux et al. § 43).

Considering the above, it is considered that the marks are visually similar to a lower than average degree.

Aurally, irrespective of the different pronunciation rules in the different parts of the territory under analysis, the pronunciation of the signs shows a certain similarity on account of the presence of the same consonants ‘R’ and ‘X’. The pronunciation differs in the sound of the differing middle vowels ‘E’ and ‘O’; the presence of these different sounds in the signs under comparison noticeably alters their aural structure.

Considering the above, and taking into account the fact that both signs are very short, it is considered that there are perceptible aural differences between them that will be immediately grasped by the consumers. Consequently, the marks are considered aurally similar to a degree that is lower than average.

Conceptually, for the part of the public referred to above, and as agreed by the parties, the signs are perceived as meaningless. Therefore, 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 marks

 

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

 

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

 

e)  Global assessment, other arguments and conclusion

The goods have been assumed to be identical and are directed at the public at large. The degree of attention paid during their purchase will be average in relation to part of the goods and high in relation to another part of them. The higher degree of attention is due to the brand loyalty existing in relation to some of the goods.

The signs are visually and aurally similar to a lower than average degree, and for the public referred to above, they cannot be compared conceptually. The distinctiveness of the earlier marks is average.

As explained in the description of signs above, the shorter a sign, the more easily the public is able to perceive all of its single elements. In the present case, the signs under comparison are both very short and one of three letters in each verbal element differs, as described above. This does have an impact when the signs only consist of three letters, and militates in favour of a finding of no likelihood of confusion, even where identity of goods exists (04/05/2018, R- 1997/2017-2, LAX (fig.) / Lux et al. § 52).

An examination of the similarity between the signs must take account of the overall impressions produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details.

When trade marks are composed of only three letters, with no meaning, the difference of one letter may be sufficient to render them not confusingly similar, especially if these differing letters do not present any visual or aural similarities (Cf. 20/07/2011, R-2318/2010-2, OXI / OVI; 30/09/2009, R-698/2008-1, ESN / ERN et al.). Taking into account the fact that the signs are very short, the visual and aural differences between the signs are all the more readily noticeable for the consumers, given that they must be deemed reasonably observant and circumspect.

The relevant public is accustomed to viewing short signs combining letters and will certainly not perceive the mark applied for as a variant or misspelling of the earlier sign, which moreover, does not enjoy any enhanced distinctive character.

Bearing in mind the very short length of both signs and the differences between the three-letter signs created by the presence of a visually and aurally totally different letter (out of three letters, in total) that will certainly not go unnoticed by a reasonably observant and circumspect consumer, it is considered that these differences between the signs are sufficiently perceptible and suffice to exclude any likelihood of confusion between them, despite the assumed identity of the goods, for the relevant public under analysis with a degree of attention that varies from average to high. Even the public with an average degree of attention will clearly perceive the differences and will not confuse the marks.

Considering all the above, there is no likelihood of confusion on the part of the relevant public for whom likelihood of confusion was more likely to arise (i.e. that perceiving the marks as having no conceptual differences). This absence of a likelihood of confusion equally applies to the rest of the public (i.e. that for which the signs are perceived as having a concept). This is because, as a result of said conceptual perception, that part of the public will perceive the signs as being even less similar.

Therefore, the opposition must be rejected.

 

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

 

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

 

 

 

The Opposition Division

 

 

Saida CRABBE

María del Carmen SUCH SANCHEZ

Chantal VAN RIEL

 

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.