of the Fourth Board of Appeal
of 8 July 2015
In Case R 2627/2014-4
Philip Morris Brands Sàrl
Quai Jeanrenaud 3
Opponent / Appellant
represented by HOYNG MONEGIER SPAIN LLP, Calle Ruiz de Alarcón, 7-2º Dcha, E-28014 Madrid, Spain
OLSEN SPÓŁKA CYWILNA Katarzyna Czernek, Jerzy Czernek
Ul. Relaksowa 6
Applicant / Respondent
represented by KANCELARIA PATENTOWA TADEUSZ WILCZARSKI, ul. Norwida 12, PL-83-110 Tczew, Poland
APPEAL relating to Opposition Proceedings No B 2 206 434 (Community trade mark application No 11 474 822)
The Fourth Board of Appeal
composed of D. Schennen (Chairman and Rapporteur), C. Bartos (Member) and E. Fink (Member)
Registrar: H. Dijkema
gives the following
Summary of the facts
By an application filed on 9.1.2013, the applicant sought to register
for the following list of goods and services, as amended:
Class 4 – Charcoal for water pipes.
Class 34 – Tobacco pipes, water pipes, snuff, cigarettes, tobacco, pipe tobacco, smokers’ materials, cigarette tubes, cigarette papers, cigarette filters, smokers' requisites, accessories for water pipes, matches.
Class 35 – Retailing and/or wholesaling of the following goods: tobacco pipes, water pipes, snuff, cigarettes, tobacco, pipe tobacco, smokers’' materials, smokers’ requisites, accessories for water pipes, charcoal for water pipes, matches, sales promotion, for others, relating to tobacco goods and smokers’ requisites.
On 20.6.2013, the appellant filed a notice of opposition based on:
Community trade mark No 75 705
registered on 16.10.1998 and duly renewed for the following goods:
Class 34 – Tobacco, raw or manufactured; cigarettes, cigars, cigarillos, smoking and chewing tobacco; smokers’ articles; matches.
Hungarian trade mark No 116 545
registered on 20.6.1974 and duly renewed for the following goods
Class 34 – Cigarettes and pipe tobacco.
The grounds for opposition were those laid down in Article 8(1)(b) and 8(5) CTMR. The opposition was directed against all the goods and services of the application and was based on all the goods for which the earlier trade marks are registered.
Reputation was claimed for these earlier trade marks in the European Union as a whole and in each Member State, including Hungary. In support of this claim, the appellant filed the following evidence:
An article dated 25.6.2009 from Marketing Week entitled ‘Britain’s line-up of flagship brands’ mentioning the ‘Marlboro’ brand by Philip Morris, together with a table of the top 50 British brands from the same publication, also mentioning Marlboro but without any reference to ‘Bond Street’.
1-page Google print-out about Bond Street in London and opponent’s cigarette brand respectively.
1-page document from ‘source: GCTS Report (12MM)’ entitled ‘Surveys on the recognition of the brand – 2004 to 2013’, showing ‘total awareness’ for Bond Street between April 2009 and October 2013, inclusive, based on ‘random sample’. No indication is given as to the sample size, survey questions or any methodology used to achieve these results, nor is the relevant territory indicated.
1-page document from ‘source: Nielsen Retail Audit Report’ entitled ‘Market share evolution’ showing ‘market shares’ between 2004 and 2013, inclusive. No indication is given as to the relevant product or market, the methodology used to achieve these results, nor is the relevant territory indicated.
1-page print-out from ‘source: GSPR IMS Data Report’ entitled ‘Sales figures 2004-2013’ showing ‘Volumes mio Cig’ between 2004 and 2013, inclusive. No indication is given as to the relevant product (although presumably ‘Cig’ means cigarettes) or market, the methodology used to achieve these results, nor is the relevant territory indicated.
‘Information on packaging & communication materials, photos on the market’ from 2009 to 2013, inclusive, showing cigarette packets, posters and communication materials upon which the very large word ‘BOND’ is written either in bold above and surrounding the far less noticeable word ‘STREET’ (some ten times smaller, not in bold letters), or as very large bold capital black letters written vertically with the far smaller wording ‘STREET’ being written in white on a small dark label intersecting and following the final letter ‘D’.
By decision of 22.8.2014, the Opposition Division rejected the opposition in its entirety and ordered the appellant to bear the costs. Its reasoning was essentially that:
Article 8(1)(b) CTMR
In comparison with the Class 34 goods for which the earlier Community trade mark is registered, the contested goods and services were found to be, variously, identical (i.e. cigarettes, matches, tobacco, tobacco pipes, water pipes, snuff, cigarette tubes, cigarette papers, cigarette filters, accessories for water pipes, smokers’ materials, smokers’ requisites, and pipe tobacco, all in Class 34), similar (i.e. charcoal for water pipes in Class 4), similar to a low degree (i.e. the Class 35 service of retailing and/or wholesaling of the following goods: tobacco pipes, water pipes, snuff, cigarettes, tobacco, pipe tobacco, smokers’ materials, smokers’ requisites, accessories for water pipes and matches) or dissimilar (i.e. the Class 35 services of retailing and/or wholesaling of the following goods: charcoal for water pipes and sales promotion, for others, relating to tobacco goods and smokers’ requisites).
The signs were found to be visually and aurally similar to the extent that they both consist of a first word which begins with ‘B’ and a second word ‘STREET’, and conceptually similar to the extent that they both refer to a street, this being a basic and well-known English word whose meaning will be grasped also by the part of the relevant public which does not speak English. It cannot be excluded that the consumers would also know both of these as famous streets in London. ‘BOND’ and ‘BAKER’ as understood by English-speaking members of the public constitute a conceptual difference, as well as for non-English-speaking consumers with the requisite geographical and cultural knowledge.
Neither sign has any dominant element.
Regarding the appellant’s claim for enhanced distinctiveness of the earlier trade mark due to its long-standing and intensive use in the European Union for the goods for which it is registered, the evidence filed is insufficient to support such a claim. No information is provided on the extent of use of the trade mark nor is the relevant territory or public clearly indicated. Accordingly, the intrinsic distinctiveness of the earlier mark was held to be normal in light of the fact that it has no meaning as a whole for the relevant goods.
The goods and services found to be identical and similar are directed to the public at large, and concern relatively cheap mass consumption articles. However, smokers are particularly careful and loyal in their choice of brand, and the services concern a rather infrequent selection of providers, so the level of attention shown by the relevant public will be higher than average.
Overall, the differences outweigh the similarities between the signs, especially given the higher level of attention of the relevant public. The difference between ‘BOND’ and ‘BAKER’ will have a greater impact. There is accordingly no likelihood of confusion under Article 8(1)(b) CTMR even for the identical goods.
Article 8(5) CTMR
The evidence filed is insufficient to show reputation of the earlier trade marks, for the same reasons that it was also insufficient to prove an enhanced level of distinctiveness. Nor were any facts, arguments or evidence provided by the appellant to support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks. According, the opposition based on Article 8(5) CTMR was also rejected.
Submissions and arguments of the parties
The appellant filed a notice of appeal against the contested decision followed by a statement of grounds. Its arguments may be summarised as follows:
In light of the identity and similarity of the conflicting goods and services and the similarity of the signs, and bearing in mind that ‘STREET’ is fanciful for the goods and services at issue, the Opposition Division should have found that a likelihood of confusion under Article 8(1)(b) CTMR exists.
‘Charcoal water pipes’ in Class 4 are not merely similar to the earlier ‘smokers’ articles’ but in fact highly similar since they are complementary, addressed to identical customers and are distributed through identical channels. Further, the contested services in Class 35 are highly similar to the earlier goods since they concern identical items, and not merely similar to a low degree.
The evidence establishes that the earlier trade mark does have an enhanced degree of distinctive character. Supplementary evidence is filed in this regard.
With regard to Article 8(5) CTMR, that evidence proves reputation of the earlier trade marks. Argument is provided in relation to unfair advantage of, and detriment to, the distinctive character and repute of the earlier trade marks. The opposition should also be successful of this ground.
In relation to distinctive character and reputation, supplementary evidence is filed:
• Annex 1: a declaration signed in the name of Philip Morris Hungry [sic] Ltd by people, subsequently stated to be two commercial managers, confirming that the ‘below data’ (i.e. the 1-page documents entitled respectively ‘Market share evolution 2004-2013’, ‘Sales figures 2004-2013’ and ‘Surveys on the recognition of the brand – 2004-2013’ as already submitted in evidence and listed in paragraph 4 above) ‘refer to Hungary’.
• Annex 2: a University of Oregon Investment Group document dated 25/11/2013 on Philip Morris International (PMI), stating that Bond Street is PMI’s low-priced brand and is the third largest brand in its portfolio, and that total cigarette shipment volume of Bond Street was 46.8 billion units in 2012, representing a 4.1% increase from the previous year. The only specific countries mentioned in relation to Bond Street are Kazakhstan and Ukraine.
• Annex 3: a print-out in Hungarian from a Hungarian blog dated 20/09/2014 with translation, entitled ‘BOND Buying Cigarettes’ and containing inter alia the phrases ‘Bond, James Bond. Who does not know these legendary words?’, ‘Bond Street cigarettes have been a classic for those who believe that smoking is a daily ritual.’ ‘Beautiful design and high quality, classic Bond Street cigarettes describe this cigarette brand (…).’ ‘Bond Street cigarettes classical ideal choice!’ Under ‘Get Bond Street Cigarettes’, it states that ‘the tobacco bonds are in the market of more than 50 countries around the world, having acquired a special popularity in Eastern Europe.’ (emphasis added).
• Annex 4: a print-out from the website fr.cigs.depot.com dated 12/19/2014 offering online purchase of Bond Street cigarettes, stating that they are sold in more than 50 countries around the world, that ‘some countries in Europe like France, Italy in particular are quite fond of Bond Street Fine Cheap Cigarettes”. It goes on to say that this is one of the most famous brands of Philip Morris Tobacco Company, and invites customers to select Bond Street cigarettes and ‘Feel yourself a real James Bond’. (emphasis added).
• Annex 5: a print-out from the website Mydiscountcigarette.net dated 19/12/2014 stating in particular that ‘That was when Bond cigarettes came to the leading positions.’ (in Eastern Europe and former Soviet nations). ‘Bond has a stylish pack (…) So, it’s not surprising that Bond brand is one of the leading cigarette brands.” This is accompanied by a large photograph of 007 bearing tine words JAMES BOND diagonally above a smaller picture of a carton of Bond Street cigarettes, upon which the word ‘BOND’ is much larger, bolder and visually striking that the word ‘STREET’ below it.
• Annex 6: a print-out from the website globalcigs.com stating that ‘Currently, Bond tobacco is marketed in more than 50 countries all over the world, having obtained a special popularity in Eastern Europe.’ (emphasis added).
The respondent filed observations, stating that the contested decision was correct, that the conflicting signs as a whole are different and that the evidence is insufficient to prove either an enhanced level of distinctiveness or reputation of the earlier marks.
The appeal is admissible but not well-founded. Whereas the Opposition Division found that the signs under comparison are similar, the Board finds that the signs as a whole will be seen dissimilar by the relevant public, and accordingly the opposition cannot succeed on the basis of Article 8(1)(b) CTMR. With regard to Article 8(5) CMTR, the evidence submitted by the appellant is insufficient to prove reputation of the earlier trade marks.
Article 8(1)(b) CTMR
Since both of the earlier trade marks relied upon by the appellant share identical signs, and the goods protected under the earlier Hungarian trade mark No 116 545 are included in those for which the earlier Community trade mark No 75 705 is registered, the Board will proceed on the basis of this earlier Community trade mark (paragraph 2(a) above).
In accordance with Article 8(1)(b) CTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (22.6.1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 19; 29.9.1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).
The word marks ‘BAKER STREET’ and ‘BOND STREET’ are under comparison.
The contested decision held that the word ‘STREET’ is a basic and well-known English word and its meaning will be grasped by the relevant public, including those who are not native English speakers. This finding is not contested by the appellant, who argues instead that this word means a public road and is thus fanciful as regards the pertinent goods. It argues that since both signs refer to famous London streets, and Underground stations, conceptually the signs are almost identical. Phonetically, it asserts that similarity is indisputable because the consumer will focus on the element ‘STREET’ which catches the attention, and the initial ‘B’ reinforces this similarity. Visually, it submits that both signs have an identical two-word structure, the first word of each beginning with ‘B’ and the second word being the identical element ‘STREET’ and so the marks are similar.
The Board does not accept that the arguments of the appellant result in an overall similarity between the signs; the contrary is the case. As the appellant acknowledges, ‘two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects’ (emphasis added).
Indeed, the global assessment of likelihood of confusion must be based, as regards the visual, phonetic or conceptual similarity of the signs in question, on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The average consumer normally perceives a sign as a whole and does not proceed to analyse its various details (11.11.1997, C‑251/95, ‘Sabèl’, EU:C:1997:528, § 23; 6.10.2005, C‑120/04, ‘Thomson Life’, EU:C:2005:594, § 28).
Regarding the dominant and distinct elements of the respective signs, it is well known throughout the European Union that the basic English ‘street’ denotes a road and in particular is used to indicate an address. Moreover, it is equally well known that this word is a suffix which follows the identifying and thus crucial element in such indications of roads and addresses. When comparing one street name with another street name, the differentiating element preceding the word ‘street’ is normally of decisive importance in differentiating one place or address from another. Hence, when the relevant consumer is faced with the signs at hand, he will immediately perceive the most relevant and striking element as the respective elements ‘BAKER’ and ‘BOND’ – which are the differentiating ‘identifiers’ – to be more dominant and distinctive than the subsidiary element ‘STREET’ in each sign. In other words, the signs ‘BAKER STREET’ and ‘BOND STREET’ are not identical in any relevant aspect from the point of view of the relevant public.
Conceptually, then, it will be immediately obvious to the relevant public that the respective signs are for two different street names regardless of whether the conceptual meaning is attributed or not to the English words ‘baker’ and ‘bond’. Even for the members of the relevant public who do not know that Baker Street and Bond Street are the names of specific streets in central London (and indeed also in various towns and cities across the English-speaking world), it will be immediately obvious that each sign denotes a different road and thus a different address or place. This is so regardless of the fact that the non-English-speaking public will not understand the dictionary meaning of ‘BAKER’ (referring to somebody who bakes bread) or ‘BOND’. A surname is not a concept and insofar as the opponent relies on that the mark would refer to the character of ‘James Bond’ (an argument which by the way contradicts the one that it refers to a street in London) there is no ‘detective Baker’ or the like. Nor is the fact that both words appear as street names in a given city a common concept. The marks are not conceptually similar under any conceivable pretext. Indeed, in this context even the English-speaking public will not normally pause to examine the conceptual meaning of the identifying word to which the suffix ‘street’ is added – the two-word signs as a whole will be immediately perceived merely as an indication of different addresses or places without further analysis, irrespective of whether such a street or address actually exists and if so, whether the public in a given country (United Kingdom, Hungary) will know those streets.
Visually, then, the comparison of the two signs must focus on the dominant and distinct elements ‘BAKER’ as against ‘BOND’. Regardless of the common first letter ‘B’, and the secondary element ‘STREET’, these words create a different overall visual impression when looking at the two signs each as a whole.
The same is true phonetically. Contrary to the appellant’s submission, the signs do not share an identical first syllable – the syllable ‘ba’ of ‘BAKER’ is very different to the syllable ‘bo’ of ‘BOND’ regardless of how the relevant public pronounces these English words. The phonetic identity of the secondary element ‘STREET’ will be accorded less importance as explained above.
As a result, the Board finds that as a whole, the signs are dissimilar. The overlap of the subsidiary element ‘STREET’ cannot be considered to result in overall similarity, either visually, phonetically or conceptually. Although the two word elements in each sign are separated by a space in the case at hand, it would be artificial to make a finding of similarity on the basis of this second element, the very purpose of which is to indicate that the preceding word is the element of primary differentiating importance.
In order to reach a finding of a likelihood of similarity under Article 8(1)(b) CTMR, it is a necessary condition that the signs be similar in at least one of the three aspects (visually, phonetically, or conceptually). Since in the present case, this condition is not fulfilled, it is not necessary to proceed to the comparison of the goods and services. Even the identity between the goods and services cannot outweigh the lack of similarity between the signs at issue (29.9.2011, T‑107/10, ‘Naturaviva’, EU:T:2011:551, § 54 to 56).
Consequently, the opposition based on Article 8(1)(b) CTMR must be rejected.
Article 8(5) CTMR
According to Article 8(5) CTMR, an opposition to an application for a Community trade mark may be founded on an earlier Community trade mark which has a reputation in the European Union, even though the earlier mark is registered for goods or services which are not similar to the goods or services covered by the application for a Community trade mark, provided that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
The application of Article 8(5) CTMR is subject to the following cumulative conditions: first, that the earlier mark is identical or similar to the mark applied for; secondly, that the earlier mark has a reputation in the territory in which it is registered; thirdly, that there is a risk that the use of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark; and fourthly, that the use of the younger mark would be without due cause. These conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (25.5.2005, T‑67/04, ‘Spa-Finders’, EU:T:2005:179, § 30).
The evidence submitted by the appellant in these proceedings, both before the Opposition Division and before the Board of Appeal, is insufficient to prove that its earlier marks have a reputation in the relevant territory.
This is because none of the evidence, listed in paragraphs 4 and 6 above, provides any indication of the extent of use of either of the earlier trade marks in the respective territories, nor are the territories and public concerned indicated with sufficient clarity. While the scant declaration filed as supplementary evidence states that the three 1-page documents on market share, sales figures and brand recognition all ‘refer to Hungary’, no indication is given as to how these figures were elaborated, the provenance and reliability of the core data upon which they were based, the methodology or sample size/composition/selection methods used, or even the specific products concerned. The tables appear to have been extracted from reports elaborated by, respectively, GCTS, Nielsen and GSPR, yet none of these reports has been provided in its entirety, and it is accordingly impossible for the Board to verify the accuracy or reliability of the data summaries. In particular, for surveys on brand recognition, it is essential to provide the methodology and exact questions used, to explain the sample size and selection method (and not merely state that it was ‘random’), and to see how the conclusions as to ‘awareness’ were formed.
For neither Hungary nor any other of the Member States of the European Union has the appellant provided any country specific figures with regard to total sales turnover or promotion in relation to only products marketed under this ‘BOND STREET’ trade mark. Unspecific references to worldwide cigarette shipment volume to ‘more than 50 countries around the world’ does not contain the necessary detail to allow the Board to isolate the level of sales or turnover in the relevant European Union Member States alone. Generalised references to the ‘special popularity’ of Bond Street cigarettes in ‘Eastern Europe’ and ‘former Soviet nations’ are also too vague, since (as indeed the evidence shows) these include (even with a primary focus, such as Annex 2.a on the statement of grounds of appeal) non-EU countries such as Ukraine or Kazakhstan, amongst others. The single statement by an online cigarette seller that ‘some countries in Europe like France, Italy in particular are quite fond of Bond Street Fine Cheap Cigarettes’ also clearly falls far short of establishing reputation there.
Finally, the Board observes that in any case the evidence submitted by the appellant shows that the cigarettes appear to be commonly referred to as ‘Bond cigarettes’ or merely ‘Bond’ or the ‘Bond brand’, that the packaging and promotion material centre very much on the word ‘BOND’ and present it in a far more striking manner than the word ‘STREET’ on the products as marketed. This in turn is supported by the clear reliance of the image and reputation of James Bond in the marketing of the appellant’s cigarettes, as shown by various pieces of evidence submitted. The references to the ‘Bond cigarettes’ or merely ‘Bond’ or the ‘Bond brand’ also corroborate the conclusions of the Board that for the relevant public the element ‘BOND’ is far more striking than the element ‘STREET’. For these reasons the public exposed to the respective signs will not establish a link between the signs merely on the basis of the isolated element ‘STREET’.
All in all, the evidence submitted considered as a whole and individually is clearly insufficient to prove the reputation of either of the earlier ‘BOND STREET’ trade marks relied upon. For this reason, to the extent that it is based on Article 8(5) CTMR, the opposition also fails.
The appeal is dismissed.
Since the appellant (opponent) is the losing party within the meaning of Article 85(1) CTMR in this appeal, it must bear the costs incurred by the respondent (applicant) in the appeal proceedings. The Opposition Division correctly decided that the appellant shall bear the costs of the opposition proceedings.
Fixing of costs
In accordance with Article 85(6) CTMR and Rule 94(7)(d)(ii) and (vi) CTMIR, the Board fixes the amount of representation costs to be paid by the appellant to the respondent for the appeal proceedings at EUR 550 and for the opposition proceedings at EUR 300. The total amount is EUR 850.
On those grounds,
Dismisses the appeal;
Orders the appellant to bear the costs of the appeal proceedings;
Fixes the amount of costs to be paid by the appellant to the respondent with respect to the opposition and appeal proceedings at EUR 850.
DECISION OF 8 july 2015 – R 2627/2014-4 – BAKER STREET / BOND STREET