OPPOSITION No B 2 604 091

Dos Santos, S.A. Dosantosa, Azuaje, 2, 35010 Las Palmas de Gran Canaria, Spain, (opponent), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Kosova Tobacco, Q.T., ‘Bregu i Diellit’ Lok.35, 10000 Priština, Kosovo (applicant), represented by Patentna Pisarna D.O.O., Čopova 14, 1001 Ljubljana, Slovenia (professional representative).

On 10/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 604 091 is upheld for all the contested goods.

2.        European Union trade mark application No 14 418 222 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 14 418 222. The opposition is based on Spanish trade mark registration No 2 785 308. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely Spanish trade mark No 2 785 308.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 04/08/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 04/08/2010 to 03/08/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 34:        Tobacco; smokers’ articles; matches.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 22/04/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 27/06/2016 to submit evidence of use of the earlier trade mark. At the opponent’s request, the time limit was extended to 27/08/2016. On 29/08/2016, the opponent submitted evidence of use. On 27/08/2016, the Office was not open for receipt of documents and the time limit was extended to the first working day thereafter, which was 29/08/2016; therefore, it is considered that the opponent submitted evidence of use within the time limit.

The evidence to be taken into account is the following:

• Document 1: an article in La Provincia Diario de Las Palmas (in Spanish, with a partial translation into English), published on 23/07/2013, indicating that Dos Santos was established in 1923 and is the owner of the trade marks ‘Mecánicos’ and ‘Herencia Palmera’ for cigarettes and ‘La Regenta’ and ‘Cónsul’ for cigars.

• Document 2: one delivery note and four invoices issued by Dos Santos S.A.U. (14 pages), dated mostly within the relevant period and showing sales to different customers in, inter alia, Gran Canaria, Spain, of goods designated as CONSUL No 1 C/25, CONSUL No 3 C/25, CONSUL No 4 C/25, CONSUL No 5 C/25, CONSUL No 6 C/25, CONSUL CORONA INMENSO C/25 and CONSUL ROBUSTO C/25.

• Document 3: a list of prices, a product catalogue and a poster, all of them undated:

• a list of prices, which includes the figurative mark , a picture of a cigar box bearing the figurative mark , the word ‘Cónsul’ referring to cigars in the text, and prices for cigars No 1, No 3, No 4, No 5, No 6, Robusto and Corona Inmenso;
• a product catalogue produced by Dos Santos S.A.U. entitled ‘NEW DEVELOPMENTS’, showing the cigars CÓNSUL Corona Inmenso, CÓNSUL Robusto, CÓNSUL No 1, CÓNSUL No 3, CÓNSUL No 4, CÓNSUL No 5 and CÓNSUL No 6, bearing the word mark ‘CÓNSUL’ at the top of the page and pictures of boxes of cigars marked with the figurative mark ‘CÓNSUL’:

;

• a poster, which displays the figurative mark , a picture of a cigar box bearing the figurative mark  and the word ‘Cónsul’ referring to cigars in the text.

The applicant argues that the opponent did not submit translations of the whole article submitted as Document 1 or the invoices submitted as Document 2, which are in Spanish, and that that makes it difficult for the applicant to comment on this evidence. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the fact that a translation into English was submitted for the relevant part of the article (Document 1) and that the other relevant documents that have not been translated, namely the invoices (Document 2), the list of prices, the catalogue and the poster (Document 3), are self-explanatory, the Opposition Division considers that there is no need to request a translation.

The applicant contests the evidence of use filed by the opponent on the grounds that it originates not from the opponent itself but from the company Dos Santos or Dos Santos S.A.U.

According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor is deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States. To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that, even if the use of the mark was made by other companies, it was made with the opponent’s consent and thus is equivalent to use made by the opponent.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered. The applicant’s argument is based on an individual assessment of each item of evidence regarding the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The article in the newspaper La Provincia Diario de Las Palmas, the invoices and the product catalogue, together with the list of prices and the poster, show that the place of use is Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned (euros) and some addresses in Las Palmas de Gran Canaria (Spain). Therefore, the evidence relates to the relevant territory.

The evidence submitted as Document 1 and most of the evidence submitted as Document 2 is dated within the relevant period.

According to settled case-law, evidence referring to use made outside the relevant timeframe can be taken into account if it contains conclusive indirect proof that the mark must have been put to genuine use also during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50). In the present case, the evidence referring to use outside the relevant period is one invoice dated 26/02/2016 and a delivery note that relates partly to the period after 03/08/2015 (for the period 01/01/2015 to 31/12/2015). However, these merely confirm the use of the opponent’s mark within the relevant period, since the use that they demonstrate is quite close in time to the relevant period and shows continued use when considered in connection with the other invoices, dated 04/06/2013, 12/03/2013, 20/07/2015, and considering that the delivery note relates partly to the relevant period (Document 2).

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency. It has been demonstrated that ‘CONSUL’ cigars were sold in 2013 and 2015 (invoices submitted as Document 2), which was confirmed by the article (Document 1) providing some additional information about the opponent’s commercial activity. Although the invoices dated 04/06/2016, 12/06/2013 and 20/07/2015 (Document 2) indicate quite a low commercial volume and frequency of use, when assessed in connection with the product catalogue ‘NEW DEVELOPMENTS’, the price list and the poster (Document 3), as well as the article in La Provincia Diario de Las Palmas dated 23/07/2013 (Document 1), the evidence submitted provides the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use of the earlier mark, and it can be clearly seen that that the owner has seriously tried to acquire a commercial position in the relevant market by using its mark for ‘CONSUL’ cigars within the relevant period.

The applicant claims that the opponent has failed to submit any evidence for 2010, 2011, 2012 or 2014. However, use does not have to be continuous during the relevant period of five years. It is sufficient if use has been made at the very beginning or end of the period, provided that this use was genuine (16/12/2008, T-86/07, Deitech, EU:T:2008:577). Moreover, the opponent is not under any obligation to reveal the total volume of sales or turnover figures.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark in Spain.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The evidence submitted as Documents 2 and 3 shows that the earlier sign was used in such a way as to establish a clear link between the goods and the person responsible for their marketing.

In view of the above, the Opposition Division considers that the evidence shows use of the sign as a trade mark.

The evidence submitted by the opponent shows that the mark ‘CONSUL’ has been used as a trade mark for cigars in the form in which it is registered, namely as a word mark in the form ‘CONSUL’ (Document 2) and ‘CÓNSUL’ (Document 1) and as the figurative marks  and  (Document 3). However, the word mark ‘CÓNSUL’ differs from the mark as registered, ‘CONSUL’, only in the accent over the letter ‘O’; the figurative marks contains additional figurative elements, such as bands and tree branches surrounding the word ‘CÓNSUL’, that are of a rather decorative nature, the crown is a commonly used element to indicate royalty or high quality of the goods, and one of the marks contains the additional and much smaller element ‘DOS SANTOS’, which is a part of the opponent’s name. The Opposition Division considers that differences in these elements do not alter the distinctive character of the mark in the form in which it was registered.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

The applicant contests the outward use of the mark, claiming that it is not clear from the evidence submitted whether or not the products actually reached end consumers. However, outward use does not necessarily imply use aimed at end consumers. In the present case, the evidence submitted as Document 2 demonstrates that the opponent sold its products to external purchasers, which is sufficient to demonstrate that the mark was used publicly and outwardly.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, according to Article 42(2) EUTMR, if the earlier trade mark has been used only in relation to part of the goods for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods.

According to case-law, when applying the abovementioned provision, the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use only for cigars. These goods can be considered to form an objective subcategory of tobacco, namely cigars. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for the following goods:

Class 34:        Cigars.

Consequently, the Opposition Division will only consider the abovementioned goods in its further 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.

1. The goods

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

Class 34:        Cigars.

The contested goods are the following:

Class 34:        Cigarettes; cigars; cigarillos; tobacco; smokers’ articles; matches.

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.

Cigars are identically contained in both lists of goods.

The contested tobacco includes, as a broader category, the opponent’s cigars, which are tightly rolled bundles of dried and fermented tobacco. Therefore, they are identical.

The contested cigarettes are small tubes of paper containing finely cut tobacco leaves; the contested cigarillos are small cigars, often only slightly larger than a cigarette. They have the same nature and purpose as the opponent’s cigars. Moreover, they can have the same producers, distribution channels and end users. Therefore, they are similar.

The contested smokers’ articles are considered similar to the opponent’s cigars, since they can have the same distribution channels and relevant consumers. Furthermore, they are complementary.

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. Despite differing in nature from the opponent’s cigars, these goods may have the same end users (smokers) and the same distribution channels. Moreover, they can be used or sold together. Therefore, they 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 identical or similar (to different degrees) 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 or cigars 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.). In relation to matches and smokers’ articles (relatively cheap articles for mass consumption), the relevant consumers’ degree of attention will vary from lower than average to average.

3. The signs

CONSUL
Earlier trade mark	Contested sign

The relevant territory is Spain.

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, ‘CONSUL’. In the case of word marks, the words themselves are protected, not their written form.

The contested sign is a figurative mark depicting a dark grey cigarette packet of ordinary shape with the word ‘CONSUL’ written in white upper case letters in the middle on a black band, with a white figurative element depicting a stylised lily (fleur-de-lis) above the band and the words ‘premium tobacco’ and ‘cigarettes made from finest world tabaccos’ written in small black letters positioned on the right side below the band.

The word ‘CONSUL’ in both marks will be perceived by Spanish consumers as the word ‘CÓNSUL’, meaning ‘an official who is sent by his or her government to live in a foreign city in order to look after all the people there that belong to his or her own country’ (see Real Academia Española Dictionary). The Opposition Division does not agree with the applicant’s argument that the word ‘CONSUL’ suggests that the goods are of high quality, since this word is not used in the relevant market for such a purpose, nor does it allude to any characteristics of the goods in question. Therefore, in relation to the relevant goods the word ‘CONSUL’ is distinctive.

The applicant also claims that the figurative element and the words ‘premium tobacco’ and ‘cigarettes made from finest world tabaccos’ of the contested sign are the most distinctive elements of the mark, since they do not have any meaning in Spanish. The Opposition Division, however, is of the opinion that the words ‘premium tobacco’ and ‘cigarettes made from finest world tabaccos’, due to their size and depiction in black, are barely perceptible on the dark grey background and, therefore, they are considered negligible in the overall composition of the mark. Since these elements are likely to be disregarded by the relevant public, they will not be taken into consideration in the further assessment.

The figurative element depicting the stylised lily may be perceived by the relevant public as referring to the high quality of the goods (considering that this symbol, in general, represents royalty) or as a rather decorative element. The dark grey background in the form of a cigarette packet is one of usual forms used in the relevant market and, therefore, is of limited distinctiveness for the relevant goods.

Considering that, when a sign consists of both verbal and figurative elements, the verbal elements of the sign usually have a stronger impact on the consumer than the figurative elements, the word ‘CONSUL’ will have the strongest impact on the relevant consumers and the remaining elements are considered secondary or negligible in the overall impression. Therefore, it is considered that the word ‘CONSUL’ is the most distinctive element of the contested sign.

Despite some differences in the sizes of the word and figurative elements, it is considered that the contested sign has no elements that could be considered clearly the most dominant (visually eye-catching) than other elements.

Visually, the entire earlier mark, ‘CONSUL’, is reproduced as the most distinctive element of the contested sign that will have the greatest impact on the overall visual impression of the contested sign. The differences between the signs are limited to secondary elements of the contested sign. Therefore, the signs are considered visually similar to a higher than average degree.

Aurally, the pronunciation of the marks coincides in the sound of the letters ‘CONSUL’, present identically in both signs. The figurative elements of the contested sign are not subject to an aural assessment, since they will not be referred to aurally by the relevant public. Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs are therefore similar to the extent that they both convey the meaning of the word ‘CONSUL’ and they differ in the concept of the figurative element of the contested mark. Bearing in mind that the coincidence is in the most distinctive element of the contested sign, ‘CONSUL’, and the weight attributed to its figurative elements, the signs are considered conceptually similar to a higher than average degree.

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).

As concluded above, the contested goods are partly identical and partly similar (to different degrees) to the opponent’s goods. They target the public at large, whose degree of attention is higher than average in relation to tobacco products (cigarettes; cigars; cigarillos; tobacco), considering smokers’ brand loyalty, carefulness and selectiveness in relation to these goods, and varies from lower than average to average in relation to the remaining goods.

The signs are considered visually and conceptually similar to a higher than average degree and aurally identical on account of the coinciding distinctive element ‘CONSUL’. The degree of distinctiveness of the earlier mark is average.

The Opposition Division agrees with the applicant that the goods of both parties may be sold in the same place, and the possibility of direct comparison between the marks is not excluded. However, direct comparison would only increase the likelihood of confusion, since the marks have an identical distinctive element and the contested sign completely reproduces the earlier mark.

Taking into account that the differences between signs arise from negligible and secondary elements of the contested sign, it must be concluded that they are not capable of counteracting the similarities. Therefore, and applying the abovementioned principle of interdependence, the relevant public, even considering its higher than average degree of attention, is likely to perceive the contested sign as a variant of the earlier mark and believe that the goods in question (even those that are similar to a low degree) come from the same undertaking or, as the case may be, from economically-linked undertakings.

Considering all the above, the Opposition Division finds that 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 Spanish trade mark registration No 2 785 308. 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

Anunciata SEVA MICO

Rasa BARAKAUSKIENE

Denitza STOYANOVA-VALCHANOVA

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.