OPPOSITION No B 2 611 591

Imperial Tobacco Limited, 121 Winterstoke Road, Bristol BS3 2LL, United Kingdom (opponent), represented by Stevens Hewlett & Perkins, 1 St Augustine’s Place, Bristol BS1 4UD, United Kingdom (professional representative)

a g a i n s t

DEL – VIS Krzysztof Wisniewski, ul. Polna 4, 87162 Lubicz, Poland (applicant), represented by Kancelaria Patentowa Rawa & Rawa SP.J., ul. Stokrotkowa 52, 87-100 Toruń, Poland (professional representative).

On 16/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 611 591 is upheld for all the contested goods.

2.        European Union trade mark application No 14 065 775 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 065 775. The opposition is based on, inter alia, Irish trade mark registration No 133 116. 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 more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Irish trade mark registration No 133 116.

1. The goods

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

Class 34: Cigarettes.

The contested goods are the following:

Class 34: Cigarette tubes; Cigarette paper; Tobacco filters; Cigarette filters; Cigarette tips; Roll your own tobacco; Cigarette wrappers; Tobacco tins; Tobacco pouches; Tobacco pouches; Lighters for smokers; Smokers’ articles; Cigarette cases; Gas containers for cigar lighters; Matches; Cigarette cases.

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 cigarette tubes; cigarette paper; tobacco filters; cigarette filters; cigarette tips; roll your own tobacco; cigarette wrappers are goods that may be used for self-rolling tobacco and preparing a cigarette. These goods are in considerable competition with the opponent’s cigarettes, as they may be a cheaper alternative to more expensive cigarette brands. Furthermore, the goods may coincide with the opponent’s goods in manufacturers, distribution channels and relevant public. Therefore, they are considered similar.

The contested smokers’ articles, as well as the remaining tobacco tins; tobacco pouches; tobacco pouches; lighters for smokers; cigarette cases (listed twice); gas containers for cigar lighters, which are in fact smokers’ articles, designate all the indispensable or important articles commonly used for smoking tobacco and cigarettes. These contested goods are related to the opponent’s cigarettes and not only do they have the same relevant public and distribution channels, but it cannot be ruled out that they may also have the same manufacturers. In addition, the goods may complement each other, for instance cigarette cases and cigarettes. For all these reasons, these goods are similar.

The contested matches are small sticks of wood or strips of cardboard coated on one end with a compound that ignites when scratched against a rough or chemically treated surface. These goods have many things in common with the opponent’s cigarettes. In fact, in spite of their different natures and purposes, these goods may have the same end users (smokers) and distribution channels, and they can be used together (as cigarettes can be lit with a match instead of a lighter). Finally, it is a normal commercial practice for cigarette producers to use match boxes as a vehicle for the promotion of their products. Therefore, the goods are similar to a low degree.

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 similar to various degrees are directed at the public at large. However, the degree of attention will vary, depending on the specifications of the goods. For instance, the public will pay less attention to cheap or frequently purchased goods such as matches, cigarette papers, filters and wrappers.

In contrast, the public may show a higher degree of attention with respect to goods for which brand loyalty has been developed. In principle, 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 cigarettes, it may require a higher degree of similarity between the signs for confusion to occur. This has been confirmed by several Boards of Appeal decisions (26/02/2010, R 1562/2008-2, victory slims, in which it was stated that the consumers of Class 34 goods are generally very attentive and brand loyal; and 25/04/2006, R 0061/2005-2, Granducato).

3. The signs

GOLD LEAF
Earlier trade mark	Contested sign

The relevant territory is Ireland.

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 a word mark consisting of the two words ‘GOLD LEAF’ in upper case letters. However, in the case of word marks, it is the word as such that is protected, and not its written form. Therefore, it is immaterial whether the earlier mark is written in upper or lower case letters.

The contested sign is a figurative mark consisting of several verbal and figurative components, in particular the expression ‘Golden Leaf’, written in gold title case letters and with a small leaf device above the letter ‘N’, the expression ‘CIGARETTE FILTERED TUBES’, set underneath in standard black upper case letters set against a white banner, and the expression ‘KING SIZE’, set underneath that in gold upper case letters. All the verbal elements are set against a black rectangular background crossed by several horizontal gold lines; on the left of the expressions described above is the emblem of a leaf surrounded, above and below, by the words ‘GOLDEN LEAF’ and on the right is a figurative element consisting of two cigarettes.

The expression ‘GOLD LEAF’ will be understood by the relevant public in its entirety as a reference to ‘very thin gold sheet, produced by rolling or hammering gold and used for decoration’ (Collins Dictionary Online). To that extent, the earlier mark has no elements that could be considered clearly more distinctive in relation to the goods in question.

However, it cannot be completely ruled out that the verbal expressions ‘Golden Leaf’ or ‘Gold Leaf’ to some extent may be associated by some of the public with the tobacco leaves having a brownish or yellowish colour. In such case, the expressions may be somewhat allusive to the nature of some of the goods in question being tobacco products.  

Furthermore, the expression ‘CIGARETTE FILTERED TUBES’ of the contested sign will be understood by the relevant public as an indication related to the nature of the goods, as it either describes them directly or at least alludes to their character as components of cigarettes. The second expression, ‘KING SIZE’, will be understood as a reference to a size of cigarettes and rolling paper. In addition, the image of the two cigarettes will be associated with tobacco products in general. Bearing in mind that the relevant goods are tobacco and related items, these elements of the contested sign are weak or even non-distinctive for all the relevant goods.

Furthermore, the contested sign is composed of distinctive, non-distinctive or less distinctive verbal elements, a weak figurative element and a figurative element of a purely decorative nature, namely the slightly stylised black rectangular that forms the background.

Therefore, taking into account all the relevant findings above, the expression ‘Golden Leaf’, although it might be allusive to some extent as commented above, is still the most distinctive part of the contested sign; consequently, the relevant public will pay less or no attention at all to the other verbal and figurative elements of the sign and focus instead on the words ‘Golden Leaf’. As far as the golden leaf depicted above the letter ‘N’ and the emblem to the left of the expression are concerned, it is assumed that these elements rather reinforce the impact of this distinctive element, as they are repeatedly used as a concept and as a graphical representation.

In addition, the expression ‘Golden Leaf’ overshadows the remaining verbal elements of the mark by virtue of its central position, size and stylisation. This element is the visually dominant verbal element of the contested trade mark. On the other hand, the earlier mark has no more dominant elements.

Visually, the signs coincide in the letter sequence ‘GOLD** LEAF’, constituting the entire earlier mark and incorporated in the most distinctive element of the contested sign. They differ only in the last two letters, ‘EN’, in the contested sign, which have no counterparts in the earlier mark. In addition, the signs also differ in all the remaining verbal and figurative elements of the contested sign; however, these were considered to have either a limited degree of distinctiveness or no distinctiveness in relation to the relevant goods.

Furthermore, in principle, when signs consist of both verbal and figurative components, 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). Therefore, as previously pointed out, the relevant public will focus its attention on the most distinctive and dominant element of the contested sign, namely ‘GOLDEN LEAF’.

Therefore, for all the reasons listed above, and especially given the limited or non-existent degree of distinctiveness of the differentiating verbal and figurative elements in the contested sign, the signs are considered visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letter sequence ‘GOLD** LEAF’, present identically in both signs. The pronunciation differs in the sound of the last two letters, ‛EN’, of the contested sign, which have no counterparts in the earlier mark. Furthermore, taking into account the fact that the relevant public will pay more attention to the most distinctive and dominant element of the contested sign, ‘GOLDEN LEAF’, it could be assumed that the remaining verbal elements will not be verbally referred to at all. Therefore, the signs are considered aurally highly similar.

Conceptually, firstly, the public in the relevant territory will perceive the earlier sign as a whole, as referred to above, and the more distinctive part of the contested sign may be perceived as having the same or similar meaning as the earlier mark. However, it can be noted that the word ‘gold’ is an adjective designating ‘a deep yellow colour, sometimes with a brownish tinge’ and the word ‘golden’ in the contested sign means ‘of the yellowish or brownish-yellow metallic colour of gold’. Even though they differ slightly in their use of the words ‘gold’ and ‘golden’, the two expressions may have the same general connotation, as indicated above. Therefore, bearing in mind the limited or non-existent degree of distinctiveness of the remaining verbal and figurative elements in the contested sign, the signs are conceptually highly 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

The goods in question are found to be similar to different degrees and the level of attention will vary depending on the particular tobacco product or related smoker’s item, as referred to above in section b).

The marks are found to be visually, aurally and conceptually highly similar to the extent that the contested sign entirely incorporates the earlier mark, ‘GOLD** LEAF’. Furthermore, as noted above, the additional ending, ‘EN’, of the contested sign’s first word will not be capable of outweighing the similarities on any of those levels, since 1) from visual and aural points of view, it is in a secondary position at the end of the word, and 2) from a conceptual point of view, it does not introduce any other concept but is an adjective used to describe the colour or content of gold. Furthermore, as demonstrated above, the additional elements of the contested sign have a limited or no distinctive character and they will be paid no particular attention, or less attention than the most distinctive and dominant element of the sign, namely ‘GOLD** LEAF’, which, as already stated, incorporates the entire earlier mark.

In addition, as regards the heightened degree of attention in relation to some of the goods, as referred to above, even though consumers may pay more attention due to brand loyalty, this does not help them to differentiate between the signs in this case, as the two conflicting signs have the same general concept. Furthermore, rebranding is not uncommon in the market sector in question. This is particularly common at present, as European law now obliges tobacco manufacturers to add an increased number of deterrent slogans or images to their packaging to warn consumers about the risks of tobacco smoking. For the sake of completeness, the above is also true for those goods that are not to be smoked, as, when rebranding takes place, it affects all goods branded with the same mark. Moreover, the fact that the earlier mark is fully included in the contested sign, and has an independent role within it, counteracts the high degree of attention paid to some goods by the relevant public, and will, therefore, not be sufficient to prevent a likelihood of confusion.

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). This principle also has to be applied in respect of the goods found to be similar to a low degree when the signs in question are highly similar.

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

Therefore, the opposition is well founded on the basis of the opponent’s Irish trade mark registration No 133 116. It follows that the contested trade mark must be rejected for all the contested goods.

As the abovementioned earlier right 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).

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

Steve HAUSER

Cristina CRESPO MOLTÓ

Zuzanna STOJKOWICZ

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.