OPPOSITION No B 2 426 198

Ednolitchno Drujestvo S Ogranitchena Otgovornost ‘Finanskonsult’, ‘Altzeko’ Str. 16 4000 Plovdiv, Bulgaria (opponent), represented by Vassia Ivanova Germanova, Compl. Druzhba 2, bl. 273, vh.A, ap. 24, 1582 Sofia, Bulgaria (professional representative)

a g a i n s t

Mario Fernando Marqués Ramos Pereira, 23 Flamwood Drive, Klerksdrop 2570, South Africa (applicant), represented by Ingenias, Av. Diagonal 421, 2º 08008 Barcelona, Spain (professional representative).

On 23/05/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 426 198 is upheld for all the contested goods, namely:

Class 34: Articles for use with tobacco; Matches; Tobacco and tobacco products (including substitutes); Ashtrays; Lighters for smokers; Tobacco containers and humidors; Cigarettes (Pocket machines for rolling -); Cigarette holders of precious metal; Cigarette holders; Pipe stems; Cigar holders; Pipe knives; Cigarette paper; Absorbent paper for tobacco; Absorbent paper for tobacco pipes.

2. European Union trade mark application No 13 038 724 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 038 724, namely against all the goods in Class 34. The opposition is based on, inter alia, international trade mark registration designating the United Kingdom No 987 965. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of, inter alia, international trade mark registration designating the United Kingdom No 987 965.

According to Article 42(2) and (3) EUTMR, the earlier mark can only be subject to the request for proof of use when it has been registered for not less than five years at the date of publication of the contested trade mark.

In the present case the contested trade mark was published on 13/08/2014.

Earlier trade mark No 987 965 is an international registration designating, inter alia, the individual Member State of the United Kingdom. Each Member State has either a 12 or 18 month deadline to issue a provisional refusal under the Madrid Protocol. Where a provisional refusal is issued within this deadline, the date that shall be decisive in determining whether the mark is subject to proof of use obligation shall be the date when the proceedings leading to the provisional refusal are concluded, namely when the Statement of Grant of Protection is issued. Additionally, where a provisional refusal has not been issued, but a Statement of Grant of Protection is issued prior to the expiry of the 12 or 18 month deadline, this shall be the decisive date.

For the designation of the United Kingdom the Statement of Grant of Protection was issued by WIPO on 22/04/2010 which is the decisive date. Therefore, the request for proof of use is inadmissible, as it concerns international trade mark registration designating the United Kingdom No 987 965.

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 international trade mark registration designating the United Kingdom No 987 965.

1. The goods

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

Class 34: Tobacco; smokers’ articles; matches.

The contested goods are the following:

Class 34: Articles for use with tobacco; Matches; Tobacco and tobacco products (including substitutes); Ashtrays; Lighters for smokers; Tobacco containers and humidors; Cigarettes (Pocket machines for rolling -); Cigarette holders of precious metal; Cigarette holders; Pipe stems; Cigar holders; Pipe knives; Cigarette paper; Absorbent paper for tobacco; Absorbent paper for tobacco pipes.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

Articles for use with tobacco; matches; tobacco are identically contained in both lists of goods and services (including synonyms). The contested articles for use with tobacco is considered a synonym of smokers’ articles.

The contested ashtrays; lighters for smokers; tobacco containers and humidors; cigarettes (pocket machines for rolling -); cigarette holders of precious metal; cigarette holders; pipe stems; cigar holders; pipe knives; cigarette paper; absorbent paper for tobacco; absorbent paper for tobacco pipes are all included in the broad category of the opponent’s smokers’ articles. Therefore, they are identical.

The contested tobacco products (including substitutes) are included in the broad category of the opponent’s tobacco. Therefore, they are identical.

2. 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. The public’s degree of attention will be low, average or high, depending on the particular goods in question. In relation to tobacco and tobacco products in Class 34, it should be noted that, although tobacco products are relatively cheap 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 tobacco products are involved. On the other hand, in relation to some of the other goods in Class 34, for instance smokers’ articles such as ashtrays; lighters for smokers, which are not associated with such brand loyalty or a very carefully considered purchase, the degree of attention will be average. Finally, the public will have a low degree of attention with regard to matches, since they are cheap goods for mass consumption.

3. The signs

THE KING
Earlier trade mark	Contested sign

The relevant territory is United Kingdom.

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 is the word mark ‘THE KING’. The word ‘THE’ is the English definite article, used, inter alia, to precede a noun that has already been mentioned. The word ‘KING’ conveys the concept of, inter alia, a male monarch, a ruler of an independent state or a chief (information extracted on 28/04/2016 from Collins English Dictionary at http://www.collinsdictionary.com/dictionary/english/king). The expression ‘THE KING’ will be perceived as a reference to a particular monarch, ruler of a state or chief. To this extent, the word ‘THE’ of the earlier sign is a weak element that will not help consumers to distinguish between goods from one undertaking and those from another. Rather, when encountering the earlier mark, consumers will pay more attention to the word ‘KING’, which has no particular meaning in relation to the goods in question. Therefore, the word ‘KING’ is more distinctive than the article ‘THE’.

The contested sign is a composite mark containing the words ‘Kings’ Legend’, in a slightly stylised white italic typeface. This verbal element is placed against a red banner with black and red shading immediately beneath it. The banner is positioned in front of a circle in shades of orange and yellow with a black perimeter. Above these two graphic elements is a pale square with a red outline. Within the square are four very small red triangles on an orange rectangle, and, in the centre, a black shape that part of the public will perceive as a letter ‘K’ pointing downwards. The word ‘Legend’ will convey, inter alia, the concept of a well-known old story, that, in the context of the word ‘Kings’ ’, will be perceived as referring to a well-known old story relating to monarchs.

The contested mark has no elements that could be considered clearly more distinctive or more dominant than other elements.

Visually, the signs coincide in the letters ‘KING’. However, they differ in the verbal element ‘K’, for the part of the public that recognises it as such, and in the characters ‘*s’ Legend’, the figurative elements and the stylisation of the main verbal element of the contested sign, which have no counterparts in the earlier mark. The signs also differ in the definite article ‘THE’ of the earlier mark; however, this is a weak element.

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 (judgment of 14/07/2005, T‑312/03 Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 0233/2011-4, Best Tone, § 24; and 13/12/2011, R 0053/2011-5, Jumbo, § 59).

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛KING’, present identically in both signs. The pronunciation differs in the sound of the letters ‛THE’ of the earlier sign, which have no counterparts in the contested mark. The signs also differ in the pronunciation of the letter ‘K’, if it is recognised as such, and the characters ‘*s’ Legend’ of the contested sign, which have no counterparts in the earlier sign.

Therefore, the signs are similar to an average degree.

Conceptually, the public in the relevant territory will perceive the earlier sign as referring to, inter alia, a male monarch, a ruler of an independent state or a chief. The relevant public will perceive the contested mark as an expression referring to a well‑known old story relating to monarchs.

As the signs will be associated with a similar meaning to the extent that both contain the word ‘KING’, in its singular form in the earlier mark and in its plural possessive form in the contested sign, the signs are conceptually similar to a low degree.

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

4. 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 international trade mark registration designating the United Kingdom No 987 965 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. 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 despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods are identical. They target the public at large. In addition, taking into account the different natures of the goods at issue, the public’s degree of attention when purchasing these goods will vary between low and high.

The signs are visually and aurally similar to an average degree and, due to the concept associated with the words ‘KING/KINGS’ that they have in common, the signs are also conceptually similar to a low degree.

As mentioned above in section c) of this decision, the word ‘THE’ of the earlier sign is a weak element, since it is the English definite article, used to precede a noun that has already been mentioned, and therefore the attention of the public will focus on the second verbal element, ‘KING’, of the sign. The relevant public will pay less attention to elements that are weak or devoid of any distinctive character; consequently, less attention will be paid to the word ‘THE’ of the earlier sign, notwithstanding its position at the beginning of the sign. The verbal element ‘KING’ does not have any meaning in relation to the goods at issue and has a normal degree of distinctiveness; therefore, it has more importance with regard to the identification of the trade mark than the word ‘THE’.

The contested sign includes the verbal element ‘KING’, which is the most distinctive element of the earlier mark, in its entirety. This element is at the beginning of the contested sign and, thus, as established by case law, it will have a stronger impact on consumers. The verbal element ‘KINGS’ ’ will be remembered more clearly than the other verbal elements of the sign, that is, the letter ‘K’ – which may not be recognised as such, due to its small size and unusual position – and the verbal element ‘Legend’, which is at the end of the sign.

In addition, in accordance with the principle of interdependence according to which a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa, the degree of similarity between the marks in question is sufficient to establish that the relevant consumers might think that the contested goods, which are identical to the opponent’s goods, are manufactured by the same undertaking, or, as the case may be, by economically linked undertakings; this may be the case even in relation to the goods for which the degree of attention is high. Taking into account that, because of the coinciding element ‘KING’, which is the most distinctive element of the earlier mark, the signs are, overall, visually, aurally and (to a low degree) conceptually similarity for the relevant public, it is very likely that the consumers in the relevant territory will believe that the conflicting marks have the same commercial origin and that, for example, the contested mark represents a new line or a parallel line of the opponent’s goods (05/09/2007, T‑220/06, Jako-O/Lagerfeld Jako, ECLI:EU:T:2007:244).

Therefore, the differences between the signs are not sufficient to exclude the likelihood of confusion, including the likelihood of association.

In relation to the degree of distinctiveness of the word ‘King’, it should be pointed out that this element does not necessarily suggest to consumers the quality or size of the product bearing the trade mark in question. It could do so if it were followed by the word ‘quality’ or ‘size’. However, ‘King’ alone does not have any meaning in relation to tobacco or tobacco products.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the verbal element ‘King’. In support of its argument, the applicant refers to some trade mark registrations in, inter alia, the European Union, Poland and Benelux.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘KING’. Moreover, the extract from the register submitted by the applicant shows that the verbal element ‘King’ is mostly used with the word ‘size’; therefore, it is used to give an indication of the size of the product in question. Under these circumstances, the applicant’s claims must be set aside.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. In the decision of 20/01/2015, R 1159/2014-4, Magic White (FIG. MARK) / MAGIC, the differences between the conflicting signs resulted from a dominant element, while the similarities resulted from a secondary element. In the decisions of 22/02/2010, B 990 533, and of 24/11/2005, B 646 333, the differences between the signs were found to be sufficient exclude a likelihood of confusion. In the decision of 07/07/2006, B 719 494, a likelihood of confusion was excluded on the basis of evident visual dissimilarities.

Considering all the above, there is a likelihood of confusion on the part of the public.

As the earlier right international trade mark registration designating the United Kingdom No 987 965 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).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8 (5) EUTMR.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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

Victoria DAFAUCE MENÉNDEZ

Agueda MAS PASTOR

Andrea VALISA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.