OPPOSITION No B 3 096 688

Yildizhan Nargile Imalat Sanayi Ve Ticaret Limited Sirketi, No: 14a Cihangir Mahallesi, 34310 Istanbul, Turkey (opponent), represented by Luther Rechtsanwaltsgesellschaft mbH, Anna-Schneider-Steig 22, 50678 Köln, Germany (employee representative)

a g a i n s t

UEG United E-smoking Group B.V., Biezenbeemd 1, 4907 EE Oosterhout, the Netherlands (applicant), represented by Joey Baart, Biezenbeemd 1, 4907 EE Oosterhout, the Netherlands (employee representative).

On 08/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 096 688 is upheld for all the contested goods.

2. European Union trade mark application No 18 095 918 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 18 095 918 for the word mark ‘EL PATRóN’. The opposition is based on European Union trade mark registration No 18 048 072 for the word mark ‘El Patron’. 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.

a) The goods

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

Class 34: Tobacco; smoking tobacco; leaf tobacco; pipe tobacco; tobacco substitutes; tobacco and tobacco products (including substitutes); flavourings for tobacco; articles for use with tobacco; flavourings, other than essential oils, for tobacco.

The contested goods are the following:

Class 34: Personal vaporisers and electronic cigarettes, and flavourings and solutions therefor; flavourings, other than essential oils, for use in electronic cigarettes.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The contested flavourings and solutions for personal vaporisers and electronic cigarettes and the flavourings, other than essential oils, for use in electronic cigarettes are highly similar to the opponent’s flavourings, other than essential oils, for tobacco. These goods have the same nature and purpose, are produced by the same manufacturers and sold through the same distribution channels to the same relevant public.

The contested personal vaporisers and electronic cigarettes are similar to the opponent’s tobacco because they have the same purpose, namely smoking. They further coincide in method of use, distribution channels and relevant public. Moreover, they are in competition.

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.

Although tobacco products are relatively cheap articles and electronic cigarettes are goods 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 these 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.).

In the present case, the goods found to be similar are directed at the public at large.

The degree of attention is considered higher than average.

c) The signs and the distinctiveness of the earlier mark

El Patron	EL PATRóN
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 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).

Both signs are word marks and in this case it is the word as such that is protected and not its written form. The use of title case or upper-case letters is immaterial.

The signs coincide in their verbal elements with the only difference being the accent on the letter ‘o’ in the contested sign. The signs will be understood as meaning ‘the boss’ or ‘the captain’ for part of the public in the relevant territory. For another part of the relevant public the signs will be meaningless. In either case, the verbal elements are not related to the relevant goods and are therefore distinctive to an average degree.

Since 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 – and since the opponent has not claimed enhanced distinctiveness – the distinctiveness of the earlier mark must be seen as normal.

Visually and aurally, the signs are quasi-identical, since they only differ in the additional accent on the ‘o’ in the contested sign, which may aurally result in a slightly different pronunciation for part of the relevant public.

Conceptually, the signs are identical if a meaning is assigned to them, and when this is not the case, the conceptual similarity does not influence this assessment.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Global assessment, other arguments and conclusion

As concluded above, the goods are similar to varying degrees and target the public at large with a higher than average degree of attention.

The signs are visually and aurally quasi-identical and conceptually identical or the conceptual similarity does not influence the assessment, depending on the perception of the public. The distinctiveness of the earlier mark is normal.

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 only difference between the signs, namely the accent on the letter ‘o’ in the contested sign, will most likely be ignored by the public when they encounter the marks in the market.

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 European Union trade mark registration No 18 048 072. It follows that the contested trade mark must be rejected for all the contested goods.

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

Aldo BLASI

Sylvie ALBRECHT

Valeria ANCHINI

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.