OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 520 065
Flamagas, S.A., Metalúrgia, 38-42, 08038 Barcelona, Spain (opponent), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative)
a g a i n s t
Tuanfang Liu, No. 2, Xia'an, Zhongzhou Village, Zhouhu Town, Anfu County, Ji'an City, Jiangxi Province, People's Republic of China (applicant), represented by Office Kirkpatric N.V./S.A., Avenue Wolferslaan 32, 1310 La Hulpe – Terhulpen, Belgium (professional representative).
On 04/03/2016, the Opposition Division takes the following
Community trade mark application No 13 730 718 is rejected in its entirety.
The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of Community trade mark application No 13 730 718. The opposition is based on Community trade mark registration No 3 799 897. The opponent invoked Article 8(1)(b) CTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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 goods on which the opposition is based are the following:
Class 34: Lighters and smokers' articles.
The contested goods are the following:
Class 34: Cigarettes containing tobacco substitutes, not for medical purposes; Cigarettes; Cigarette tips; Cigarette cases; Mouthpieces for cigarette holders; Snuff; Snuff boxes; Lighters for smokers; Firestones; Tobacco pipes; 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 lighters for smokers are despite the differences in the wordings identically included in the list of the goods of the opponent.
The contested cigarette tips; cigarette cases; mouthpieces for cigarette holders; snuff boxes; firestones; tobacco pipes; electronic cigarettes are included in the broad category of the opponent’s smokers' articles. The goods are identical.
The contested cigarettes containing tobacco substitutes, not for medical purposes; cigarettes; snuff are similar to the opponent’s smokers' articles, as they can coincide in end user and distribution channels. Furthermore, they are complementary.
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 or similar are smokers’ articles and cigarettes. Although tobacco products in Class 34 are relatively cheap mass-consumption articles, smokers are considered particularly careful and selective as to the brand of tobacco they smoke, so a higher degree of brand loyalty and attention is assumed when tobacco products are involved. However, the level of attention with regard to certain relevant goods is considered to be average (e.g. cigarette cases, snuff boxes).
Earlier trade mark
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 bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).
The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English speaking part of the relevant public.
The earlier mark is a figurative mark consisting of the word ‘exis’, where the letters ‘ex-s’ are written in lowercase empty bold typeface and the letter ‘i’ is written in black typeface with the dot over the letter ‘i’ having a slightly stylised shape.
The contested sign is a figurative mark consisting of the word ‘EXIST’ in uppercase typeface. Above the word element, a figurative abstract element appears.
The term ‘EXIS’ carries no meaning for the relevant public and is distinctive to an average degree. The same applies to the word ‘EXIST’ in the contested sign. The marks have no elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the letters ‘exis-’, taking into account the difference in the stylisation of the letters. The earlier mark is entirely included in the contested mark. The marks visually differ in the letter ‘-T’ placed at the end of the contested mark. They also differ in the abstract figurative element placed above the word ‘EXIST’ of the contested mark. 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). The signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛EXIS-’, present in both signs. The pronunciation of the marks differs in the sound of the letter ‛-T’ placed at the end of the contested mark. The signs are aurally similar to a high 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.
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. 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.
Global assessment, other arguments and conclusion
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).
The contested goods are partially identical and partially similar to the opponent’s goods. The signs under comparison are visually similar to an average degree and aurally similar to a high degree. They share the letter/sound sequence ‘EXIS-’ which forms the entirety of the earlier mark and is included at the beginning of the contested mark ‘EXIST’ where the consumers normally direct more attention. The marks differ in the stylisation of the letters and in the additional figurative element, placed above the term ‘EXIST’ in the contested mark.
Based on the average degree of inherent distinctiveness of the earlier mark, it is considered that the similarities in the sequence of the letters/sounds ‘EXIS-’, clearly outweighs the differences that are confined to the additional letter ‘-T’ and the figurative element of the contested mark and the stylisation of the marks. Therefore, even where the relevant public has a higher degree of attention in relation to the goods at issue, the differences between the signs are not enough to outweigh the similarities between the signs.
Considering all the above, there is a likelihood of confusion on the non-English speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s Community trade mark registration No 3 799 897. It follows that the contested trade mark must be rejected for all the contested goods.
According to Article 85(1) CTMR, 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), (6) and (7)(d)(i) CTMIR, 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
According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.