OPPOSITION No B 2 575 804

GRE Grand River Enterprises Deutschland GmbH, Rietzer Berg 28, 14797 Kloster Lehnin/OT Rietz, Germany (opponent), represented by Zenk Rechtsanwälte Partnerschaft mbB, Hartwicusstraße 5, 22087 Hamburg, Germany (professional representative)

a g a i n s t

British American Tobacco (Brands) Limited, Globe House, 4 Temple Place, London WC2R 2PG, United Kingdom (applicant), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative).

On 22/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 575 804 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 011 407. The opposition is based on:

• European Union trade mark registration No 9 148 628 ‘MARK ADAMS NO 1’;

• European Union trade mark registration No 12 052 536 ‘Mark Adams No 1’;

• European Union trade mark application No 12 052 528 ‘MARK E’ (withdrawn);

• European Union trade mark application No 13 719 216 .

The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remark

The opponent’s European Union trade mark application No 12 052 528 ‘MARK E’ was withdrawn on 24/03/2017 and will therefore not be considered in the examination of the opposition.

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 European Union trade mark application No 13 719 216 , since this mark, in the Office’s opinion, is the most similar to the contested sign.

1. The goods

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

Class 34:        Raw tobacco; tobacco products, included in class 34, in particular nicotine pastilles based on tobacco for oral use, cigars, cigarettes, cigarillos, fine-cut tobacco, pipe tobacco, snuff, tobacco substitutes, cigars and cigarettes containing tobacco substitutes, not for medical or curative purposes; smokers’ articles, In particular tobacco jars, cases for cigarettes, cigarette holders, ashtrays (all the aforesaid goods not of precious metal or coated therewith), cigarette paper, cigarette tubes, cigarette filters, pipes, pocket apparatus for rolling cigarettes, lighters, all the aforesaid goods included in class 34; matches; cigarette cases of precious metal; cases (cigarette -), of precious metal; cigarette holders of precious metal; cigar cases of precious metal and wood; boxes (cigar -), of precious metal; cigar holders of precious metal; electric cigarettes, electronic cigarettes, electric cigars, electronic cigars, electric cigarillos, electronic cigarillos, electric pipes and electronic pipes; liquids, ampoules, and cartridges for electric cigarettes, electronic cigarettes, electronic cigars, electronic cigarillos, and electric pipes; refill liquid for use in electronic smoking equipment and electronic cigarettes; refill cartridges for use in electronic cigarettes and electronic smoking equipment; atomizers and cartomizers for use in electronic cigarettes and electronic smoking equipment; vaporising devices for tobacco, tobacco products and tobacco substitutes; parts, components of electronic cigarettes and electronic smoking equipment, and vaporizing devices for tobacco, tobacco products and tobacco substitutes; carrying cases and containers specially adapted for the aforementioned goods; stands specially adapted for the aforementioned goods; parts and spare parts of the aforementioned goods.

The contested goods are the following:

Class 34:        Cigarettes; tobacco; tobacco products; lighters; matches; smokers’ articles.

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

The term ‘in particular’, used in the opponent’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).

Cigarettes; tobacco products; lighters; matches; smokers’ articles are identically contained in both lists of goods.

The contested tobacco is included in the broad category of the opponent’s tobacco products. 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.

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. Therefore, in the case of tobacco products a higher degree of similarity of signs may be required for confusion to occur. 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.).

In the present case, the goods found to be identical are directed at the public at large. The degree of attention will be high.

3. The signs

	MAKE YOUR MARK
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element ‘MARK’, present in both signs, is an English word that will be understood by some of the relevant consumers in the European Union as referring to a trade mark and will, for those consumers, be considered as having a low degree of distinctive character. However, the significant part of the relevant public that does not understand any English will not understand the word ‘MARK’ or will perceive it as the name of a person and it will therefore be fully distinctive. The Opposition Division will therefore, with the opponent’s best interests in mind, concentrate on the part of the public that will not perceive the word ‘MARK’ as referring to a trade mark.

In the earlier mark, the word ‘ADAMS’ will be understood as a surname, the verbal element ‘NO.’ will be understood as a common abbreviation for ‘number’ and the numeral ‘1’ will be understood as such; the combination ‘NO. 1’ will be weak, since it implies value. This is true regardless of whether the relevant public understands English or not. On the other hand, the words ‘MAKE YOUR’ in the contested sign will not be understood by the part of the relevant public that does not understand English.

The opponent’s mark is a figurative mark made up of stylised text; the elements ‘MARK 1’ are much larger than the rest of the elements of the mark, ‘ADAMS NO.’. The elements ‘MARK 1’ are therefore the dominant elements of the earlier mark.

Visually and aurally, the signs coincide in the word ‘MARK’. However, they differ in the numeral ‘1’ and the text ‘ADAMS NO.’ in the earlier mark and in the words ‘MAKE YOUR’ at the beginning of the contested sign. They also differ in the graphic depiction of the earlier mark. Visually, the contested sign gives the impression of being a sentence, ‘MAKE YOUR MARK’, even if the meaning is not understood. In the earlier mark, the word ‘MARK’ and the numeral ‘1’ will, due to their size and position, be seen as elements that belong together.

In the contested sign, the word ‘MARK’ is in a secondary position, as it is the final word in a sequence of three words; it is therefore less likely to be noticed than the other elements of the mark. In the earlier mark, the word ‘MARK’ will be strongly connected to the numeral ‘1’; therefore, the signs are visually and aurally similar to only a low 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.

4. Distinctiveness of the earlier mark

According to the opponent, the earlier trade marks enjoys a high degree of distinctiveness as result of its long standing and intensive use in the European Union in connection with all the goods for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• Invoices, 32 in total, dated between 2012 to 2015 showing sales of goods under the name ‘MARK 1’ or ‘MARK ONE’, with additional words such as ‘red’, ‘gold’, ‘white’, ‘silver’ or ‘menthol’. The invoices were sent to different addresses in Germany.

• An affidavit by Bernard Johnston, an authorised signatory of the opponent, stating that Grand River Enterprises Deutschland GmbH has used the trade marks ‘MARK ADAMS’ and ‘MARK ADAMS NO 1’ extensively since 2009 for tobacco products such as cigarettes, fine cut tobacco, cigarette tubes, matches, lighters and ashtrays.

• Advertisements and images showing the trade mark and a variation of this trade mark being used on packaging and advertising materials, including a sales catalogue allegedly from 2014.

• Screenshots of online tobacco shops showing sales of tobacco products (cigarettes) under the trade mark  and other variations of this figurative mark. All of the screenshots are dated 27/10/2016.

• Earlier registrations: a list containing earlier registrations and applications, 22 in total, from throughout the European Union, primarily showing registrations for ‘MARK ADAMS NO. 1’ as a word mark but also as figurative marks as shown above or as variations very similar to that figurative mark. There are also three registrations for the word mark ‘MARK ADAMS’. All of the registrations and applications are for, inter alia, goods in Class 34.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

First, the Opposition Division notes that, according to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Opposition Division cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

The opponent must show that the earlier mark had acquired a reputation by the filing date of the contested European Union trade mark application (12/06/2015).

The invoices and the images of packaging and advertising materials do give some information about the actual use of the mark in the market, but do not give information on its degree of recognition among the relevant public.

The affidavit by Mr Bernard Johnston concerning the extensive use of the trade marks ‘MARK ADAMS’ and ‘MARK ADAMS NO 1’ is not supported by any independent evidence. The opponent has not provided any opinion polls, market surveys or sales figures regarding turnover and expenditure or quantitative data or information, which would provide indications of the market share held by the earlier mark, of the intensity of its use and distribution, and of the extent to which it has been promoted.

The screenshots from online sales sites are all dated after the publication of the contested sign and could not be taken into consideration when assessing the enhanced distinctiveness of the earlier mark.

The abovementioned evidence is not conclusive regarding the reputation and high degree of distinctiveness of the mark because it does not provide much information about the degree of awareness of the trade mark among the relevant public. In fact, no evidence was provided to show that the marks are sufficiently recognised by the relevant consumers. Under these circumstances, the Office concludes that the opponent failed to prove that its marks have a reputation or have acquired a high degree of distinctiveness through their use. The evidence proves only that the marks at stake were promoted to some degree. However, there is no conclusive evidence on the extent of the sales of the product, the market share held by the product or the degree of knowledge of the signs ‘MARK E’, ‘MARK ADAMS NO 1’ or  among the relevant public.

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

The goods are identical. The marks are visually and aurally similar to a low degree and have no concept in common.

Although the signs coincide in the word ‘MARK’, a likelihood of confusion does not exist, since there are additional verbal elements in the signs allowing them to be safely distinguished. Furthermore, it should be noted that the degree of attention of the relevant consumer is high, which will make the relevant consumer more likely to notice the distinctive differences between the marks, namely the elements ‘ADAMS NO. 1’ of the earlier mark and the words ‘MAKE YOUR’ in the contested sign, as well as the graphic depiction of the earlier mark.

It remains necessary to consider the opponent’s argument that the earlier trade mark is part of a ‘family of marks’ or ‘marks in a series’, all characterised by the presence of the same word component, ‘MARK’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the goods identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65.

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

In the present case, the opponent failed to prove that it uses a family of ‘MARK’ marks, and moreover that it uses such a family in the same fields as those covered by the contested trade mark. The evidence filed by the opponent, as seen above, shows use of the figurative mark  in advertisements and on online sales sites, and in some of the advertising materials, the word mark ‘MARK ADAMS NO.1’ is used. These ‘two’ trade marks are not sufficient to form a ‘family of marks’.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘MARK’ is weak. This is because, as a result of the weak character of that element, that part of the public will perceive the signs as being even less similar.

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

• European Union trade mark registration No 9 148 628 ‘MARK ADAMS NO 1’;

• European Union trade mark registration No 12 052 536 ‘Mark Adams No 1’.

The other earlier rights invoked by the opponent are less similar to the contested mark. This is because the coinciding element of the contested sign and the opponent’s earlier marks is the word ‘MARK’ and this word is much more dominant in the opponent’s mark No 13 719 216 than in the other two earlier marks, which are word marks, ‘MARK ADAMS NO. 1’ and ‘Mark Adams No 1’. The word ‘MARK’ in these marks will be seen as the name of a person, with the word ‘ADAMS’ perceived as a surname, thus distancing them from the contested sign. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Martin EBERL

Magnus ABRAMSSON

Tobias KLEE

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.