OPPOSITION No B 2 874 306

Innovative, Boulevard de Bigorre, ZE de Ma Campagne, 16000 Angoulême, France (opponent), represented by Selas Altij, 26 rue du Temple, 33000 Bordeaux, France (professional representative)

a g a i n s t

Apollo Future Technology, 7A Rathbone Square, Tanfield Road, Croydon, CR0 1BT, United Kingdom (applicant).

On 17/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 874 306 is upheld for all the contested goods.

2. European Union trade mark application No 16 212 003 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 212 003 ‘O’So Good Donuts’ (word mark), namely against all the goods in Class 34. The opposition is based on European Union trade mark registration No 11 867 082 (figurative mark). 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.

1. The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

Class 34: Cigarettes, Tobacco, Cigars, Cigarillos, Cigarettes containing tobacco substitutes, not for medical purposes, Smoking herbs, tobacco goods, Cigarette lighters not of precious metal, Matches, pipe tobacco, roller tobacco for smokers, Cigarette paper, Chewing tobacco, Snuff, Swedish chewing tobacco, snuff (chewing tobacco); Smokers’ articles (not of precious metal); Boxes and cases for cigarettes, cigars, pipe tobacco, roller tobacco for smokers, not of precious metals, ashtrays, pipes, pocket articles for rolling cigarettes, boxes and cases for smokers designed to contain electronic cigarette kits, refills therefor, liquid food flavourings and electric batteries.

The contested goods are the following:

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

Tobacco is identically contained in both lists of goods.

The contested articles for use with tobacco; personal vaporisers and electronic cigarettes, and flavourings and solutions therefor; tobacco products (including substitutes) are included in the broad category of, or overlap with, the opponent’s smokers’ articles (not of precious metals). 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.

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.).

3. The signs

	O’So Good Donuts
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union 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.

The verbal elements of the two signs, as explained below, are not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public, such as the public in Lithuania, Poland and/or Slovakia.

The earlier mark is a figurative mark depicting the verbal elements ‘SO’ and ‘GOOD’, in black bold upper case stylised letters, inside a square frame with two rounded corners. The element ‘GOOD’ is underneath the element ‘SO’, the latter being twice as large. There is a figurative element depicting a black drop inside the letter ‘O’ of the element ‘SO’. The verbal elements are meaningless for the relevant public and the figurative element is not descriptive of or related to the relevant goods; therefore, all three of these elements are distinctive to an average degree. However, in principle, the verbal component of a sign usually has a stronger impact on the consumer than the figurative component, 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). Due to its relatively large size and position at the top of the mark, the element ‘SO’ is visually dominant.

The contested sign is a word mark, ‘O’So Good Donuts’. Since none of the words is meaningful for the relevant public, they are distinctive.

Visually, the signs coincide in the verbal elements ‘SO’ and ‘GOOD’, albeit they are stylised in the earlier mark. However, they differ in the additional elements of the contested sign, namely ‘O” and ‘Donuts’, and in the stylisation and the figurative element depicting a drop in the earlier mark. Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the verbal elements ‘SO’ and ‘GOOD’, present identically in both signs. The pronunciation differs in the additional verbal elements of the contested sign, namely ‘O’ and ‘Donuts’. The figurative element of the earlier sign will not be pronounced. Therefore, the signs are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the figurative element in the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 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.

5. 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 signs are visually similar to a low degree, aurally similar to an average degree and conceptually not similar. Since the goods are identical and the distinctive verbal elements of the earlier mark are fully incorporated in the contested sign (albeit in a stylised form), applying the principle of interdependence, a likelihood of confusion cannot be safely ruled out. In addition, 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).

Considering all the above, there is a likelihood of confusion on the part of the non-English-speaking part of the public, such as the public in Lithuania, Poland and/or Slovakia. 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 European Union trade mark registration No 11 867 082. It follows that the contested trade mark must be rejected for all the contested goods.

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

Benoit VLEMINCQ

Milda CERNIAUSKAITE

Pedro JURADO

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.