OPPOSITION No B 3 091 893

Agio Sigarenfabrieken N.V., Wolverstraat 23, 5525 AR, Duizel, Netherlands (opponent), represented by NLO Shieldmark B.V., New Babylon City Offices. 2e étage Anna van Buerenplein 21A, 2595DA Den Haag, Netherlands (professional representative)

a g a i n s t

Al-Furat For Tobacco and Cigarettes Industry Co., Al-Basrah Street, Jabal Amman 5th Circle, 11194 Amman, Jordan (applicant), represented by Novagraaf Belgium S.A./N.V., Chaussée de la Hulpe 187, 1170 Bruxelles / Brussel, Belgium (professional representative).

On 09/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 091 893 is upheld for all the contested goods.

2. European Union trade mark application No 18 051 621 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 18 051 621 for the figurative mark . The opposition is based on, inter alia, Benelux trade mark registration No 401 614 for the word mark ‘ELEGANT’. 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 Benelux trade mark registration No 401 614.

a) The goods

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

Class 34: Tobacco and products manufactured from it; smokers’ articles; matches.

The contested goods are the following:

Class 34: Cigarettes and cigarette papers.

The contested cigarettes and cigarette papers are included in the broad category of the opponent’s smokers’ articles. 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

ELEGANT
Earlier trade mark	Contested sign

The relevant territory is the Benelux.

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 earlier mark ‘ELEGANT’ will be perceived by the relevant public as ‘pleasingly graceful and stylish in appearance or manner’ and the verbal element ‘ELEGANCE’ as ‘the quality of being graceful and stylish in appearance or manner, style’. Those elements are laudatory and therefore have a low degree of distinctiveness.

The figurative element in the contested sign, although not very clear, might be perceived as an eagle wearing a crown and is distinctive. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because 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).

The contested sign has no element that could be considered clearly more dominant (eye-catching) than other elements.

Visually, the signs coincide in their first six letters ‘ELEGAN’. This coincidence at the beginning of the verbal elements is particularly relevant since consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. However, they differ in their last letters, ‘T’ in the earlier mark and ‘CE’ in the contested sign, which, due to their position, will attract less attention. Furthermore, the signs differ in the figurative element in the contested sign, although this has less impact than the verbal element, which will be used to refer to the mark, as explained above.

Therefore, the signs are visually similar to a high degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides for part of the relevant public in the sound of the letters ‘ELEGAN’, and differs only in the last two letters (‘CE’) of the contested sign, since the last letter (‘T’) in the earlier mark will be mute, at least for the French-speaking part of the relevant public. For the rest of the relevant public there will be a greater difference in pronunciation, as the last letter (‘T’) of the earlier mark will be pronounced, and the vowels ‘A’ will be pronounced differently.

Therefore, for part of the relevant public, the signs are aurally similar to a high degree, while, for another part of the relevant public, they are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning on account of the verbal elements ‘ELEGANT’ and ‘ELEGANCE’, and the figurative element in the contested sign has less impact than the verbal elements, as explained above, the signs are conceptually similar to a high 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The relevant public is the public at large; the degree of attention is high.

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).

The goods are identical.

The signs are visually, aurally (for part of the relevant public) and conceptually similar to a high degree.

The earlier mark has a low degree of distinctiveness, which implies that its scope of protection is narrower. However, this is counterbalanced by the identity between the goods and the high similarity between the signs for part of the relevant public (for French speakers). The similarities between the signs are so striking that the relevant public, on purchasing the identical goods, might be led to believe that the goods come from the same or economically linked undertakings, even when that public pays a high degree of attention.

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 Benelux trade mark registration No 401 614. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Benelux trade mark registration 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

Marzena MACIAK

Saida CRABBE

Carlos MATEO PÉREZ

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.