OPPOSITION No B 2 238 676

Tobacna Ljubljana, d.o.o., Ljubljana, Cesta 24. junija 90, 1231 Ljubljana - Crnuce, Slovenia (opponent), represented by Stevens Hewlett & Perkins, 1 St Augustine's Place, BS1 4UD Bristol, United Kingdom (professional representative)

a g a i n s t

China Tobacco International Europe Company Srl, Strada Cernica 21, Pantelimon Ilfov, Romania (applicant), represented by Bogdan Alecu, Brasov, strada Paducelului 18, 600012 Brasov, Romania (professional representative).

On 30/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 238 676 is partially upheld, namely for the following contested goods:

Class 34: Tobacco; smokers' articles; matches.

2. European Union trade mark application No 11 702 818 is rejected for all the above goods. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 11 702 818 for the word mark ‘DOUBOSS’. The opposition is based on, inter alia, Slovenian trade mark registration No 2010 70 390 for which the opponent invoked Article 8(1)(b) EUTMR.

The opponent initially relied on the non-registered trade marks ‘BOSS’ in Slovenia and Croatia. However, on 15/11/2013 the opponent indicated that it no longer wished to rely on these marks.

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 and services

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

Class 34: Tobacco, whether manufactured or unmanufactured; tobacco products; tobacco substitutes, none being for medicinal or curative purposes; cigarettes; cigarillos; cigars; hand-held machines for making one’s own cigarettes; cigarette tubes; cigarette filters; cigarette paper; matches and smoker’s articles.

The contested goods and services are the following:

Class 34: Tobacco; Smokers' articles; Matches.

Class 35: Advertising; Business management; Business administration; Office functions.

Contested goods in Class 34

The contested goods are identically included in both lists.

Contested services in Class 35

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. Business administration and office functions are aimed at completing administrative and clerical tasks linked to day-to-day operations that are required by a business to achieve its commercial purpose.

These contested services are fundamentally different in nature and purpose from the manufacture of goods. The goods and services differ in producers/providers, distribution channels, they are neither complementary nor in competition. They are therefore dissimilar.

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.

In relations to smokers' articles; matches the degree of attention is average.

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

	DOUBOSS
Earlier trade mark	Contested sign

The relevant territory is Slovenia.

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).

‘BOSS’ and ‘DOUBOSS’ are both meaningless, thus distinctive terms in the relevant territory.

The earlier mark’s colours, typeface, and the vertical blue lines on its left and right are fairly standard, non-distinctive decorative features.

Visually and aurally the signs coincide in ‘BOSS’. The signs differ in the contested mark’s letters/sounds ‘DOU’ and the earlier mark’s decorative stylisation and colours.

Therefore, given that the signs coincide in all the letters (sounds) of the earlier mark, in a standard typeface, the signs are visually and aurally similar to an average 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the services covered are from the same or economically linked undertakings.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

If there is identity between the goods, such a finding would imply, that, if there is to be no likelihood of confusion, the degree of difference between the marks at issue must be high (13/11/2012, T-555/11, tesa TACK, EU:T:2012:594, § 53 and the case-law cited).

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).

In the present case, the goods are identical, while the services are dissimilar. The signs coincide in all four letters or sounds of the earlier mark. In the context of identical goods, the contested mark’s additional three letters or standard stylisation are not sufficient to safely exclude a likelihood of confusion, not even for attentive and brand loyal consumers.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public. It follows that the contested trade mark must be rejected for the goods found to be identical to the goods of the earlier trade mark.

The contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

 Slovenian trade mark registration No 2012 71 377 for tobacco, whether manufactured or unmanufactured; tobacco products; tobacco substitutes, none being for medicinal or curative purposes; cigarettes, cigars, cigarillos, snuff; cigarette tubes; cigarette filters; cigarette paper; hand-held machines for making one’s own cigarettes; smoker’s articles and matches in Class 34.

 Slovenian trade mark registration No 2012 71 378 for tobacco, whether manufactured or unmanufactured; tobacco products; tobacco substitutes, none being for medicinal or curative purposes; cigarettes, cigars, cigarillos, snuff; cigarette tubes; cigarette filters; cigarette paper; hand-held machines for making one’s own cigarettes; smoker’s articles and matches in Class 34. 

 Slovenian trade mark registration No 2012 71 379 for tobacco, whether manufactured or unmanufactured; tobacco products; tobacco substitutes, none being for medicinal or curative purposes; cigarettes, cigars, cigarillos, snuff; cigarette tubes; cigarette filters; cigarette paper; hand-held machines for making one’s own cigarettes; smoker’s articles and matches in Class 34.

 Slovenian trade mark registration No 2012 71 380 for tobacco, whether manufactured or unmanufactured; tobacco products; tobacco substitutes, none being for medicinal or curative purposes; cigarettes, cigars, cigarillos, snuff; cigarette tubes; cigarette filters; cigarette paper; hand-held machines for making one’s own cigarettes; smoker’s articles and matches in Class 34. 

 Slovenian trade mark registration No 8 780 854 for cigarettes in Class 34.

 Slovenian trade mark registration No 9 181 966 for tobacco, whether manufactured or unmanufactured; smoker’s articles; matches in Class 34.

 Slovenian trade mark registration No 2006 70 432 for tobacco, whether manufactured or unmanufactured; tobacco products; tobacco substitutes, none being for medicinal or curative purposes; cigarettes, cigars; smoker’s articles and matches in Class 34. 

 Slovenian trade mark registration No 9 470 012 for tobacco; cigarettes; smoker’s articles and matches in Class 34. 

 Slovenian trade mark registration No 2012 71 299 for tobacco, whether manufactured or unmanufactured; tobacco products; tobacco substitutes, none being for medicinal or curative purposes; cigarettes, cigars; smoker’s articles and matches in Class 34.  

 Slovenian trade mark registration No 2012 71 298 for tobacco, whether manufactured or unmanufactured; tobacco products; tobacco substitutes, none being for medicinal or curative purposes; cigarettes, cigars; smoker’s articles and matches in Class 34.  

 Slovenian trade mark registration No 2012 70 551 for tobacco, whether manufactured or unmanufactured; tobacco products; tobacco substitutes, none being for medicinal or curative purposes; cigarettes, cigars; smoker’s articles and matches in Class 34. 

 Slovenian trade mark registration No 2012 70 248 for tobacco; smoker’s articles and matches in Class 34.

 Slovenian trade mark registration No 2010 70 391 for tobacco, whether manufactured or unmanufactured; tobacco products; tobacco substitutes, none being for medicinal or curative purposes; cigarettes, cigars; smoker’s articles and matches in Class 34.    

 Slovenian trade mark registration No 2011 70 115 for tobacco, whether manufactured or unmanufactured; tobacco products; tobacco substitutes, none being for medicinal or curative purposes; cigarettes, cigars; smoker’s articles and matches in Class 34. 

 Slovenian trade mark application No Z 210 71 655 for tobacco, whether manufactured or unmanufactured; tobacco products; tobacco substitutes, none being for medicinal or curative purposes; cigarettes, cigars; smoker’s articles and matches in Class 34. 

 Slovenian trade mark application No Z 2010 71 656 for tobacco, whether manufactured or unmanufactured; tobacco products; tobacco substitutes, none being for medicinal or curative purposes; cigarettes, cigars; smoker’s articles and matches in Class 34. 

 Croatian trade mark registration No Z 933 387 for cigarettes in Class 34.

 Croatian trade mark registration No Z 941 372 for tobacco, cigarettes, smoker’s articles, matches in Class 34.

These other earlier rights invoked by the opponent cover the same or a narrower scope of goods. Therefore, irrespective of whether or not these earlier rights are substantiated, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

The opponent also invoked eight Slovenian trade mark applications covering goods in Class 34, four Slovenian trade mark applications covering goods in Class 34 and services in Class 35, and five Croatian trade mark applications covering goods in Class 34 and services in Class 35. However, on 10/01/2019 and on 02/04/2019, the opponent indicated that it had withdrawn these applications and no longer wished to rely on them.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Aldo BLASI

Marianna KONDAS

Sandra IBAÑEZ

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.