OPPOSITION No B 2 622 366

Agio Sigarenfabrieken N.V., Wolverstraat 3, 5525 AR Duizel, The Netherlands  (opponent), represented by NLO Shieldmark B.V., New Babylon City Offices. 2e étage Anna van Buerenplein 21A, 2595DA Den Haag, The Netherlands (professional representative)

a g a i n s t

JVG Finance B.V., Craneveldstraat 181, 5914SH Venlo, The Netherlands (applicant), represented by Thomas Cluesmann, Aegidientorplatz 2 B, 30159 Hannover, Germany (professional representative).

On 17/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 622 366 is upheld for all the contested goods, namely

Class 34: Smokers' articles; Tobacco and tobacco products (including substitutes); Herbs for smoking; Flavorings, other than essential oils, for use in electronic cigarettes; Tobacco substitutes; Cigarettes containing tobacco substitutes; Tobacco substitutes not for medical purposes; Tobacco and tobacco products (including substitutes); Cigarettes containing tobacco substitutes, not for medical purposes; Herbs for smoking; Tobacco substitutes; Flavourings for tobacco.

2.        European Union trade mark application No 14 571 269 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 571 269, namely against all the goods in Class 34. The opposition is based on, inter alia, Benelux trade mark registration No 830 135. 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: Tobacco; smokers' articles; matches.

The contested goods are the following:

Class 34: Smokers' articles; Tobacco and tobacco products (including substitutes); Herbs for smoking; Flavorings, other than essential oils, for use in electronic cigarettes; Tobacco substitutes; Cigarettes containing tobacco substitutes; Tobacco substitutes not for medical purposes; Tobacco and tobacco products (including substitutes); Cigarettes containing tobacco substitutes, not for medical purposes; Herbs for smoking; Tobacco substitutes; Flavourings for tobacco.

Smokers' articles; Tobacco are identically contained in both lists of goods.

The contested Tobacco products (including substitutes); Herbs for smoking; Flavorings, other than essential oils, for use in electronic cigarettes; Tobacco substitutes; Cigarettes containing tobacco substitutes; Tobacco substitutes not for medical purposes; Tobacco and tobacco products (including substitutes); Cigarettes containing tobacco substitutes, not for medical purposes; Herbs for smoking; Tobacco substitutes are either identical or at least similar to the opponent’s tobacco. To the extent that they are made of tobacco, they are included in the broad category tobacco and identical and in so far as they are made of other substances they are similar because they can be used for the same purpose as the opponent’s tobacco. In that sense, they are in competition and can coincide in their methods of use. Furthermore, they can be of interest to the same consumer circles and can be distributed through the same commercial channels. In view of all the foregoing consumers can expect that the goods are manufactured under the control of the same entity.

The contested flavourings for tobacco are substances (in the form of sprays or drops for instance) used to impart flavour to dried tobacco leaves, for example when used in smoking pipes or handrolled cigarettes. The goods can be directed at the same public and move through the same commercial channels as the opponent’s tobacco. Moreover, it is not uncommon that distributors of tobacco products offer their own blends of tobacco, which can be flavoured with the contested goods. 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 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. 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.). However, for the flavourings for tobacco the level of attention is average.

3. The signs

DESSERT	Desert
Earlier trade mark	Contested sign

The relevant territory is the Benelux.

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 Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (09/03/2005, T-33/03, Hai/Shark, EU:T:2005:89, § 39 and 03/03/2004, T-355/02, SIR / ZIHR, EU:T:2004:62 § 36).

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on  part of the relevant public that does not speak French since in French for them the signs evoke dissimilar concepts but in the other languages of the relevant territory not.

Indeed conceptually the Dutch and German speaking part of the public will perceive the earlier mark ‘DESSERT’ as ‘the sweet course eaten at the end of a meal’ which is distinctive in relation to the goods at hand. The contested sign ‘DESERT’ has no meaning in Dutch or German but may be perceived as a misspelling of ‘dessert’ Either way this word is distinctive and depending on the public’s perception the signs will be not similar or highly similar to the earlier mark from a semantic point of view.

Visually and aurally, the signs coincide in the letter sequence ‘DES*ERT’ and merely differ in the additional ‘S’ in the earlier mark. Considering that this extra letter is located in the centre of the mark and placed next to another ‘S’ it will be easily overlooked or misheard. Therefore, the signs are highly similar.  

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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eight recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the contested goods are identical or similar to various degrees and are directed at the public at large whose level of attention is above average. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness and the marks in dispute have been found to be visually and aurally highly similar since they merely differ in one of their central letter(s). As a consequence, the contested sign may be considered a misspelling of the earlier mark or vice versa and to that extent they are also conceptually highly similar for part of the public.

Therefore, on an overall assessment, taking into account the fact that the average consumer only occasionally has the opportunity to carry out a direct comparison of the various trade marks but must rely on their imperfect mental image of them, it is reasonable to find that even a more attentive public is likely to confuse the marks or believe that the identical or similar goods in question come from the same undertaking or, as the case may be, economically linked undertakings.

Having regard to the high similarly of the signs on all levels for part of the public, and taking into account the principle of interdependence – according to which a higher degree of similarity between the signs counteracts a lower degree of similarity between the conflicting goods and vice versa –, it must be concluded that this also applies to the goods found to be similar to a low degree, especially considering that the consumers’ level of attention when purchasing the flavourings for tobacco is merely average.

Considering all the above, there is a likelihood of confusion on the part of the non-French-speaking part of the public. 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 Benelux trade mark registration No 830 135. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Benelux trade mark registration No 830 135 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

Benjamin Erik WINSNER

Adriana VAN ROODEN

Catherine MEDINA

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.