OPPOSITION No B 2 753 708

Aldi Einkauf GmbH & Co. OhG, Eckenbergstr. 16 A, 45307 Essen, Germany (opponent), represented by Schmidt, Von Der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft Mbb, Haumannplatz 28, 45130 Essen, Germany (professional representative)

a g a i n s t

Nakhla Tobacco Co. S.A.E., 3 Soliman Al Halabi Street, Azbakia, Cairo, Egypt (applicant), represented by Marks & Clerk Llp, Alpha Tower, Suffolk Street, Queensway, Birmingham  B1 1TT, United Kingdom (professional representative).

On 14/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 753 708 is upheld for all the contested goods.

2.        European Union trade mark application No 15 407 299 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 15 407 299 ‘CORAL RED’. The opposition is based on German trade mark registration No 65 048 ‘Kora’. 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

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

Class 34:         Smoking-, chewing- and smokeless tobacco, cigarettes and cigarette papers.

The contested goods are the following:

Class 34:         Hookah tobacco.

The contested hookah tobacco is syrupy tobacco mix with molasses and vegetable glycerol as moisturizer and specific flavours added to it. It is smoked with a hookah (water pipe). Being a tobacco product used for smoking and containing nicotine, it falls under the broad category of the opponent’s Smoking tobacco. The goods are identical therefore.

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 or type of tobacco  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

Kora	CORAL RED
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 marks are word marks.

The earlier mark KORA has no meaning for the relevant public and is, therefore, distinctive.

The term CORAL in contested mark has no meaning for the relevant public and is, therefore, distinctive. The term RED is a very basic English word and would be understood by the general German public as referring to a specific colour. Considering that the goods are tobacco products, namely hookah tobacco, and taking into account that red tobacco refers to ‘leaves of air-cured or flue-cured tobacco having a reddish color’ (www.merriam-webster.com, 08/08/2017), it is considered that the term ‘RED’ is weak for the relevant goods.

Visually, the signs coincide in the second to fourth letters ORA. However, the marks differ in their first letters K/C and in the element RED, the latter found weak for the relevant goods.

Therefore, the signs are visually similar to an average degree.

Aurally, the earlier mark is pronounced as KO-RA and the contested mark as KO-RAL RED, since the letter C has, in the present case, the same pronunciation as the letter K . The pronunciation of the signs coincides in the syllable KO and in the beginning of the syllable RA/RAL. The pronunciation differs in the last sound L of the second syllable RAL in the contested mark, and in the pronunciation of the element RED, which was found weak.  

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the weak element in the contested 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

The goods have been found identical. The visual, aural and conceptual aspects have been examined.

The earlier sign and the contested sign have been found to be visually similar to the extent that they have letters _ORA_ in common. Although the general rule that the public tends to pay particular attention to the first part of the trade mark is not being disregarded in the present case, the differences between the signs, cannot outweigh the prevailing coinciding elements perceived by the public. Aurally the signs further coincide in the sound of their initial letters, since according to the German pronunciation rules, the letter C has in the present case the same pronunciation as letter K, resulting to the high similarity of the words KORA/CORAL. The visual dissimilarities between the signs lie in their initial letters K versus C and the additional letter “L” in the contested sign. Nevertheless, the latter difference is not particularly striking from the aural perspective since the earlier sign and the most distinctive element of the contested sign will be pronounced in two syllables, they have the same vowels and their beginnings are the same. The additional differing word RED was found weak. In addition, note is taken that the word ‘RED’ in the contested sign may be perceived as an indication of a sub brand, as colours are commonly used in the relevant area (of tobacco products) to indicate a brand or sub brand of the product.

Moreover, it should be taken into account that the average consumer only rarely has the chance to make a direct comparison between the different marks and the consumers may be easily confused because they will have to rely on the imperfect picture of the marks that they have kept in their mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

It is considered that the established similarities between the signs are sufficient to cause at least part of the public to believe that the conflicting goods which are identical come from the same or economically liked undertakings.  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,  and taking into account that the earlier mark has a normal degree of distinctiveness, 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 German trade mark registration No 65 048. It follows that the contested trade mark must be rejected for all the contested 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 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

Zuzanna STOJKOWICZ

Erkki MÜNTER

Irina SOTIROVA

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.