OPPOSITION No B 2 897 976

JT International S.A., Rue Kazem-Radjavi 8, 1202 Geneva, Switzerland (opponent), represented by Matthew Michael Sammon, Calls Wharf 2 The Calls, LS2 7JU, Leeds, United Kingdom (professional representative)

a g a i n s t

Hamed Mahmoudi, Gulf Emerald General Trading LLC, Unit No. 104, B Block, Baniyas Complex, Maktoum Street, 181239 Dubai, United Arab Emirates (applicant), represented by Winheller Rechtsanwaltsgesellschaft mbH, Tower 185, Friedrich-Ebert-Anlage 35-37, 60327 Frankfurt am Main, Germany (professional representative).

On 28/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 897 976 is upheld for all the contested goods.

2. European Union trade mark application No 16 126 914 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 16 126 914 for the figurative mark . The opposition was based on European Union trade mark applications No 15 904 337 for the word mark ‘EMERALD WINTER’ and No 15 904 329 for the word mark ‘LOGIC EMERALD WINTER’. Both earlier rights have been registered during the course of the opposition proceedings. 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.

The opposition is based on two earlier trade marks. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 15 904 337 since it is the earlier right that shows more similarities with the contested sign, as will be explained below.

1. The goods

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

Class 34: Electronic cigarettes; liquids for electronic cigarettes; tobacco substitutes, none being for medicinal or curative purposes; liquids for electric and/or electronic cigarettes; vaporizing devices for tobacco, tobacco products and tobacco substitutes; cigarettes containing tobacco substitutes; smokers articles for electric and/or electronic cigarettes; pouches for carrying electric and/or electronic cigarettes; mouth pieces for electric and/or electronic cigarettes; tobacco whether manufactured or un-manufactured; cigarettes; cigars; tobacco products.

The contested goods are the following:

Class 34: Articles for use with tobacco; Tobacco and tobacco products (including substitutes); Matches; Personal vaporisers and electronic cigarettes, and flavourings and solutions therefor.

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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107), which will therefore not be expressly mentioned in the comparison.

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.

Tobacco and tobacco products; electronic cigarettes are identically contained in both lists of goods (including synonyms).

The contested articles for use with tobacco include, as a broader category, the opponent’s electronic cigarettes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested personal vaporisers are included in the broad category of the opponent’s vaporizing devices for tobacco. Therefore, they are identical.

The contested flavourings and solutions therefor include, as a broader category, the opponent’s liquids for electronic cigarettes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s

The contested matches are similar to the opponent’s cigarettes as they usually coincide in relevant public and distribution channels. In general terms, they are both used for smoking. It is considered that the relevant public may think that the responsibility for the production of those goods lies with the same undertaking. Shops selling tobacco and tobacco products are in many Member States specialised shops that sell not only the goods of the earlier mark but also the contested goods (10/10/2019, R 833/2019‑2, XOMO (fig.) / Zomo (fig.), para. 32). Furthermore, the goods in question are complementary. It should be noted that goods may be complementary because the contested goods are important for the use of the goods covered by the earlier mark. In order to find a complementarity between goods, it is not needed that the use of some goods is essential for the use of others (13/02/2014, T-380/12, Demon, EU:T:2014:76, § 41).

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 or similar are directed at the public at large.

The degree of attention may vary from average to higher than average, depending on the specialised nature of the goods, the frequency of purchase and their price.

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.).

However, an average degree of attention is usually paid in relation to some articles for use with tobacco, for instance matches.

3. The signs

EMERALD WINTER
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).

The element ‘EMERALD’ that the signs have in common is an English word that refers either to a precious stone, which is clear and bright green, or to this specific colour. This word is very close to the equivalent words in other EU languages (e.g. ‘esmeralda’ in Portuguese and Spanish, ‘smeraldo’ in Italian and ‘émeraude’ in French) having the same meanings. Since these meanings have no direct relation to the goods in question, this element is distinctive. For the remaining part of the relevant public that will not associate this element with any meaning, it is also distinctive.

The second element of the earlier mark, ‘WINTER’, will be understood by the English‑ and German‑speaking part of the relevant public as the season between autumn and spring when the weather is usually cold. The remaining part of the relevant public will not associate this element with any meaning. In both scenarios, this element is distinctive, since it has no relation whatsoever to the goods in question.

Accordingly, for the part of the public that will understand the two words contained in the earlier mark, the meaning of the sign as a whole is not directly related to the relevant goods in a clear way that could impair its distinctiveness.

The figurative element of the contested sign is an abstract geometric shape. The opponent asserts that it is a simple drawing of an emerald. However, the Opposition Division considers that this particular precious stone could only be identified if the relevant public also understands the meaning of the verbal element present in the sign, ‘EMERALD’. If the relevant public perceives this object, it would reinforce the concept of the verbal element. This figurative element is, in any case, distinctive. It must be stressed, however, that 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).

Contrary to the opponent’s opinion, the contested sign has no element that could be considered clearly more dominant (visually eye‑catching) than other elements.

Visually and aurally, the signs coincide in the element/sound of the letters ‘EMERALD’, which is the first element in the earlier mark and the only verbal element of the contested sign. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. However, the signs differ in the additional second element of the earlier mark, ‘WINTER’, and the figurative element of the contested sign. The typeface in which the verbal element of the contested sign is written is not particularly elaborated or sophisticated and it will not draw the consumer’s attention away from the elements it embellishes.

Therefore, taking into account the above assertions, the signs are visually and aurally similar to an above average degree.

Conceptually, for the part of the relevant public that will perceive the meaning of the element ‘EMERALD’ as explained above, as the signs will be associated with a similar meaning, the signs are conceptually highly similar.

For the part of the relevant public that will only perceive the meaning of the element ‘WINTER’ (e.g. the German‑speaking public), since the other sign will not be associated with any meaning, the signs are conceptually not similar.

For the part of the relevant public that will not associate the elements of the signs with any meaning, a conceptual comparison is not possible.

As the signs have been found similar in all the aspects 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 claimed that the earlier trade mark enjoys enhanced distinctiveness. In this regard, the opponent asserts that the earlier mark is ‘particularly distinctive’ given that the elements forming the signs have no descriptive connotation in relation to the goods in question. First, it is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. However, this degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.)/BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49, last alternative). It should, however, be recalled that a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (order of 16/05/2013, C‑379/12 P, H/Eich, EU:C:2013:317, § 71). Since the opponent did not submit any evidence of the enhanced distinctiveness of the earlier mark, this argument must, therefore, be set aside.

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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods are partly identical and partly similar. They target the public at large with a degree of attention that varies from average to higher than average.

The signs are visually and aurally similar to an above average degree. Indeed, the contested sign reproduces the first element of the earlier mark and it performs an independent distinctive role therein. Furthermore, the coinciding element consists of seven letters, whereas the additional second element in the earlier mark is shorter. The figurative element in the contested sign has a lower impact, for the reasons pointed out in section c) of the present decision. Conceptually, the signs are either highly similar, conceptually not similar or a conceptual comparison is not possible depending on the part of the public, as explained above.

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 goods/services covered are from the same or economically linked undertakings. Indeed, in the present case, 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 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 (including a likelihood of association) 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 15 904 337. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 15 904 337 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268)

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Helen Louise MOSBACK

Marta GARCÍA COLLADO

María del Carmen SUCH SÁNCHEZ

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.